JUDGMENT No. ou C1 Sua onde CATCHWORDS PATENTS - revocation ~ want of novelty - meaning of term "adjoining" - skilled addressee - requirement that complete specification "describe the invention fully" - best method of performing invention. Patents Act 1952, s. 40 Patents Act 1990, s. 40, 5s. 233 (1) and (4) Welch Perrin & Co. Pty Ltd v Worrel (1961) 106 C.L.R. 588 Minnesota Mining and Manufacturing Co. v Beiersdorft (Australia) Ltd (1980) 144 C.L.R. 253 Martin v Scribal Pty Ltd (1954) 92 C.L.R. 17 Kauzal v Lee (1936) 58 C.L.R. 670 Adhesives Pty Ltd v Aktieselskabet Dansk _Gaerings—Industri (1935) 55 C.L.R. 523 Natural Colour Kinematograph Co. Ltd (In Liquidation v Bioschemes Ltd (1915) 32 R.P.C. 256 C.Van der Lely NV v Bamfords Ltd [1963] R.P.C. 61 PETER DOUGLAS FREEMAN & ANOR v T.J. AND F.L. POHLNER PTY LIMITED & ANOR No. SG65 of 1994 BEFORE: BLACK C.J., GUMMOW, O'LOUGHLIN JJ. PLACE: ADELAIDE. DATE: 20 DECEMBER 1994. RECEIVED 22 DEC 1994 FEDERAL COURT OF AUSTRALIA PRINCIPAL REGISTRY + pemueated ' rede kre 1 -- IN THE FEDERAL COURT OF AUSTRALIA ) SOUTH AUSTRALIA DISTRICT REGISTRY ) No. SG65 of 1994 GENERAL DIVISION ) On appeal from a Judge of the Federal Court of Australia BETWEEN: PETER DOUGLAS FREEMAN First Appellant FREE-ROLL_ PTY LIMITED Second Appellant , AND: T.J. AND F.L. POHLNER PTY LIMITED First Respondent TREVOR JOHN POHLNER Second Respondent BEFORE: BLACK C.J., GUMMOW, O'LOUGHLIN JJ. PLACE: ADELAIDE. DATE: 20 DECEMBER 1994. MINUTE OF ORDERS THE COURT ORDERS THAT: (1) The appeal be dismissed. (2) The appellants pay the costs of the respondents of the appeal. (3) The stay on the execution of order 3 made by Branson J. on 1 September 1994 be removed. Note: Settlement and entry of orders is dealt with by Order 36 of''the Federal Court Rules. IN THE FEDERAL COURT OF AUSTRALIA SOUTH AUSTRALIA DISTRICT REGISTRY ) No. SG65 of 1994 GENERAL DIVISION ) On appeal from a Judge of the Federal Court of Australia BETWEEN: PETER DOUGLAS FREEMAN First Appellant FREE-ROLL PTY LIMITED Second Appellant . AND: T.J. AND F.L. POHLNER PTY LIMITED First Respondent TREVOR JOHN POHLNER Second Respondent BEFORE : BLACK C.J., GUMMOW, O'LOUGHLIN JJ. PLACE : ADELAIDE. DATE: 20 DECEMBER 1994. REASONS FOR JUDGMENT THE COURT: The first appellant ("Mr Freeman") is proprietor of standard patent No. 593354, for an invention entitled "Improvements relating to Road Making Apparatus" ("the Patent"). The Patent was sealed on 18 May 1990, that is to say whilst the Patents Act 1952 ("the 1952 Act") was in force and before the commencement of the Patents Act 1990 ("the 1990 Act"). The 1990 Act commenced on 30 April 1991. ~2- Sub-section 233 (1) of the 1990 Act provides that this statute applies in relation to a patent granted under the 1952 Act as if granted under the 1990 Act. However, sub-s. 233 (4) provides that objection cannot be taken to validity of a patent granted under the 1952 Act, and such a patent is not invalid, on a ground which would not have been available against it under the 1952 Act. The result is that in a case such as the present the patentee is not to be worse off than if the 1952 Act had continued in operation, but that the patentee may be better off if the 1990 Act treats as no longer applicable what was previously a relevant ground of revocation. By proceeding commenced in this Court on 11 August 1993, the appellants sought' relief in respect of alleged infringement by the respondents. On the pleadings, the second appellant was alleged to be a licensee, but we were told by counsel that an assertion of an exclusive licence is what was intended. Section 120 of the 1990 Act provides that infringement proceedings may be started by the patentee or an exclusive licensee, but that if an exclusive licensee starts infringement proceedings the patentee must be joined as a defendant unless joined as a plaintiff. In view of the result reached by the primary Judge (Branson J.) as to _ the disposition of the proceeding, it was unnecessary to consider the standing of the second appellant. As will appear, that is true also of this appeal. - 3 - At the trial, the applicants sought injunctive relief against infringement. Issues of damages and profits were deferred. By cross-claim, the respondents alleged that the claims of the Patent were invalid and they sought revocation. The complete specification of the Patent has seven claims. At the trial, the appellants abandoned reliance on all except claims 1 and 7. Claim 1 is drawn in the broadest terms, whilst claim 7 is for "[a]j]n arrangement substantially as described in the specification with reference to and as illustrated by the accompanying drawings". On the closure of the appellants' case of infringement, the respondents conceded infringement of claim 1. However, they pressed and succeeded on their cross-claim. The primary Judge held that claim 1 and the dependent claims of the Patent were invalid for lack of novelty at the priority date of 22 May 1986. She accepted uncontradicted evidence that what were identified as the Standen rollers had been in public use in combination with road graders since before the priority date, and that they possessed every integer claimed in claims 1 and 7. Accordingly, her Honour made an order for revocation. This order has been stayed pending the disposition of the present appeal. The respondents also contended at the trial that the complete specification did not describe the invention fully, including the best method known to the first appellant of =- 4 - performing the invention. That is to say, reliance was placed upon para. 40 (2) (a) of the 1990 Act. This does not differ, in any significant respect, from the provisions of para. 40 (1) (a) of the 1952 Act. Her Honour dealt in detail with the submissions concerning "best method" but concluded by finding that there had been no failure to comply with the requirement that the complete specification describe the best method known to the patentee of performing the invention. This conclusion flowed from the interpretation her Honour gave to the phrase "in adjoining coaxial alignment" as it appeared both in the body of the specification and in claim 1. By notice of contention, the respondents submit that in view of the findings made by the primary Judge, she should have gone on to reach the opposite result and concluded that there had been a failure to comply with para. 40 (2) (a) of the 1990 Act. The respondents then rely upon this as an additional ground in support of revocation. The invention is claimed for a product or item of equipment being a combination of mechanical integers or elements which is more than a collocation of separate parts. What is claimed is an interrelation between these integers producing a new result, in accordance with the principles explained in Welch Perrin & Co. Pty Ltd v Worrel (1961) 106 C.L.R. 588 at 611, and Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd (1980) 144 C.L.R. 253 at 266. - 5 -~ The body of the complete specification states that the invention relates to rollers and has a particular application to road graders and other road making apparatus. It describes in the following terms the problems which the inventor claims successfully to have overcome: "It is conventional to use road graders to scrape and relocate earth using a blade and for the grader to have pulled behind it a roller which has the purpose of tamping down the freshly cut and moved earth. Such a roller is conventionally connected to the grader by a single pivot connection where the pivot connection allows for rotational motion of a draft frame supporting the roller about a substantially vertical axis. A problem that exists is that most actions require some forward motion and then a return motion for another cutting action of the grader. The problem that arises with such a large device as a road grader is that the grader during the backing movement must be steered so as to maintain the appropriate relative position of the roller during such a backing operation. In practice the roller may often have to be removed to allow for appropriate backing simply because of the difficulty of manipulating the grader to ensure that the roller does not jack- knife during this backing procedure. It takes little imagination to understand the very significant difficulty that presently exists both in time and costs that does presently occur with arrangements of this type." This passage suggests that problems which the inventor sought to overcome arose from the use of a single pivot as the conventional form of connection between the roller and the -6- grader. Hence the difficulty, referred to, in ensuring that the roller does not jack-knife during the backing movement of the grader. There follows the "consistory clause", wherein the inventor gives a general description of that which the inventor asserts his invention consists. The clause follows the terms of claim 1. Hence the present case exemplifies the modern practice, referred to in Welch Perrin at 612, whereby the consistory clause adopts the terms of the broadest of the claims. The consistory clause is as follows: "According to this invention there is proposed an arrangement of a roller in combination with a draft vehicle comprising a draft frame, axle means supported by the draft frame, and roller supported by the axle means so as to allow rotational freedom about a central axis of a cylindrical shape of the roller, said roller comprising a plurality of pneumatic tyres in adjoining coaxial alignment, the arrangement being characterised in that the draft frame is connected to the draft vehicle by means constraining rotation of the draft frame relative to the draft vehicle about a vertical axis." Preferred embodiments are then described as follows in the body of the specification: "In preference, the means connecting the draft frame to the draft vehicle include at least two releasable interconnecting connections which are spaced apart in a direction lateral to a forward direction of the roller whereby the -7J- draft frame is interlocked with respect to the draft vehicle about any vertical axis whereby rotation about said vertical axis relative to the draft vehicle is completely restrained. In preference, there are means allowing for the relative rotation of the draft frame together with the axle means and the supported roller about an axis transverse to a forward direction whereby the roller can be lifted or lowered relative to the draft vehicle. In preference, the draft vehicle is a road grader and the means for providing support of the roller is a three-point linkage. In preference, the cylindrical shape of the roller _is provided by a plurality o neumatic tyres _in adjoining coaxial alignment. In preference, there is a common pressure conduit coupled to each of the pneumatic tyres whereby each will be inflated upon a common pressure being applied to the conduit to the same pressure." [Emphasis supplied] What is said to be the invention is then described with reference to five drawings. The passage which follows includes: "Referring in detail to the drawings, the roller includes a plurality of inflatable tyres 1 which are supported on a single axle 2 which in turn is supported by a draft frame 3 such that the roller shape thus formed as a cylindrical shape is supported for rotational motion about its own cylindrical axis which in turn is adapted to be drawn so as to be rotatable about the axis which is transverse to a forward direction as shown at 5. Each of the tyres 1 is pneumatically coupled to a common conduit which is not shown but which has a single non-return valve so that each of the tyres can be inflated to a common pressure and will each hold such common pressure. The result of this is that when a significant pressure is applied to the roller, the pressure -g- will cause each of the tyres to conform to the shape being rolled more readily and with a common pressure, if there is for instance a crown shape in the road, then the tyres at the centre of the roller may well more easily conform to such a shape with the tyres at each side compensating in shape." Claim 1 states: - "1. An arrangement of a rolier in combination with a draft vehicle comprising a draft frame, axle means supported by the draft frame, and roller supported by the axle Means so as to allow rotational freedom about a central axis of a cylindrical shape of the roller, said roller comprising a plurality of pneumatic tyres in adjoinin coaxial alignment, the arrangement being characterised in that the draft frame is connected to the draft vehicle by means constraining rotation of the draft frame relative to the draft vehicle about a vertical axis." (Emphasis supplied] Two basic principles of interpretation in patent law were not in dispute. First, the specification must be construed in the light of the common knowledge in the art before the priority date, possessed by the hypothetical or notional person of ordinary skill in the relevant art. Secondly, claims should be construed so as to prefer a construction which makes the invention work to one which may not do so. See Martin v Scribal Pty Ltd (1954) 92 C.L.R. 17 at 97, Welch Perrin at 601-602, 610. The primary Judge interpreted the phrase "in adjoining coaxial alignment" in claim 1 as "importing no more than that - 9 - the tyres should be aligned side by side on the one axle either touching or in close proximity one to the other". From this construction, it followed that claim 1 and the dependent claims were invalid, because the prior art disclosed arrangements in which although the tyres did not touch they were in close proximity one to the other. - The appellants submit that "adjoining" as used in claim 1 means "touching", not merely "lying close to" and that the phrase "in adjoining coaxial alignment" should not have received the equivocal (or, more accurately, amphibolous) construction given it by her Honour. It follows, they submit, that because the prior art does not possess an essential integer of the claimed combination, there is no anticipation: Minnesota at 298. There is force in the submission for the appellants that the preferred canons of construction in this field favour a resuit in which one particular interpretation is given to the term "adjoining". In Kauzal v Lee (1936) 58 C.L.R. 670 at 685-686, Dixon and McTiernan JJ. referred to difficulties in grammatical construction of language used in a claim which left it open to attribute to an expression several meanings. Their Honours described this as a "verbal equivocation" and said: "When that happens a true question of construction arises. The language is open to two meanings. Each may be as definite as the other. The only doubt is which of the two was ~ 10 - meant and the doubt springs from verbal order, position or the like. In such a case, it is not likely that the scope of the claim would be so obscure as to disentitle the patentee to protection for what he meant to claim." However, when such equivocation cannot be resolved so that the claim remains fairly and equally open to two divers meanings, the claim will be bad as not "defining the invention" within tthe meaning of para. 40 (2) (b) of the 1990 Act, or as not being "clear" as required by sub-s. 40 (3): Blanco White, "Patents for Inventions", 5th ed., §4-701. It is against this background, of an appreciation of whence the construction placed upon claim 1 by the primary Judge would appear to lead, that one understands' the submission by the appellants that "adjoining" as used in claim 1 means "touching". Before dealing further with the submissions as to the true construction of claim 1, it is necessary first to refer to certain findings on the evidence made by the primary Judge. At the trial, the principal witnesses for the appellants were the inventor, the first appellant Mr Freeman, and Mr Schultz, a patent attorney, whose firm had acted for Mr Freeman on the application for the grant of the Patent. The primary Judge accepted the evidence of Mr Schultz that at the priority date a person skilled in the art would have believed that it was "problematic" for pneumatic tyres to be aligned so - 11- closely together as to touch. In her Honour's reasons, the following passage appears: "Mr Schultz spoke of what he described as the 'extraordinary discovery' of Mr Freeman with respect to the ability to place the pneumatic tyres of the roller in close contact in the following passage:- 'The discovery was that when tyres are so . close together that they actually contact - when under ordinary operating conditions, that they'll rub together, therefore hit and, essentially, destroy themselves very quickly. Now, that's well known in other uses of pneumatic tyres and, in this particular case, the almost accidental discovery by Peter Freeman that this was useful in this particular case, meant that what he was doing was putting the tyres so close together that it was in everyone's mind a crazy thing to do but he discovered that as applied to a roller of this type, putting the tyres together didn't surprise, surprise, surprise destroy them. »-. In other words, historically he would have expected them to rub together and destroy themselves and the staggering thing with this is that he's found that they don't and we've suddenly answered all sorts of problems in the industry." It was also part of the appellants' case at the trial that the expression "a plurality of pneumatic tyres in adjoining coaxial alignment" required a continuous external rubber face such that the tyres had to touch, when inflated, across the whole side surface from the inner edge of the tyre to its external surface. The point was expressed by Mr Freeman in his evidence as being that "it had to have rubber connecting right across". - 12 - The primary Judge found on the evidence that such a roller face could only be achieved using a plurality of pneumatic tyres of a special type. This was described as a "square shouldered tyre"; the round shoulders of conventional tyres meant they could not push together under inflationary pressure to achieve a continuous external roller face. - It is here, 1n our view, that a critical matter arises. If claim 1 be construed in accordance with the submissions for the appellants, then the claim is not bad for anticipation. However, if attention then is given to the body of the specification another question arises. It is whether the specification describes the best method known to the applicant of performing the invention or, indeed, whether the specification describes the invention fully or at all. The submission for the respondents is that (a) the body of the specification is concerned with describing an invention comprising an arrangement of a roller in combination with a grader comprising a draft frame and roller supported by an axle so as to allow rotational freedom about a central axis of a cylindrical shape of the roller, (b) there is no novelty in the combination claimed, subject to what follows, (c) the inventor nowhere mentions in the body of the specification, or seeks to apply, the "extraordinary discovery" referred to by Mr Schultz as having been made by Mr Freeman, and (d) the hypothetical addressee of the specification would have expected the tyres to rub together and damage or destroy - 13- themselves. Hence, the respondents submit, such a person would not read the phrase in the consistory clause or in claim 1 "in adjoining coaxial alignment" as referring to a plurality of pneumatic tyres in which each touched one or more of the others. The point was developed by the respondents in their 'submission that if claim 1 claimed an invention as alleged by the appellants, then the body of the specification failed to describe the invention fully or at all, let alone what, on the findings on the primary Judge, was the best method known to the first appellant; cf Samuel Taylor Pty Ltd v S.A. Brush Co. Ltd (1950) 83 C.L.R. 617 at 623-624, 626. In Adhesives Pty Ltd v Aktieselskabet Dansk Gaerings- Industri (1935) 55 C.L.R. 523 at 549, Evatt J., speaking of s. 36 of the Patents Act 1903, referred to what he described as the truism that the duty of the patentee was to describe the method of performing the invention so as to ensure that when the grant expired the public was put in full possession of the way in which to carry out the invention. Earlier, in Natural Colour Kinematograph Co. Ltd (In Liquidation) v Bioschemes Ltd (1915) 32 R.P.C. 256 at 272, Lord Parmoor referred to the use of the term "ambiguity" to identify a failure, in describing the nature and ambit of the invention, to use language sufficiently explicit to ensure to the public the benefit of the invention when the monopoly expires. This decision was - 14 - referred to by the High Court in Welch Perrin at 610 in a passage in which their Honours continued by saying: "[Wje are not construing a written instrument operating inter partes, but a public instrument which must, if it is to be valid, define a monopoly in such a way that it is not reasonably capable of being misunderstood." - It is appropriate now to return to the primary question. This concerns the construction in claim 1 of the phrase "in adjoining coaxial alignment". Counsel for the appellants submits that in its ordinary meaning ""adjoining" suggests touching or that which is contiguous. It is submitted that a meaning of "lying close to" is an inaccurate usage; therefore there is no ambiguity in the phrase as it appears in claim l, in the sense of a difficulty in accuracy of expression. Hence, counsel submits, it is, in accordance with settled principle, unnecessary and impermissible to resort to the body of the specification. For that step to be taken, the language of the claim must be, to use Taylor J.'s expression, "obscure or doubtful" (Martin at 97) rather than, in the expression of Barwick C.J. and Mason J., "plain and unambiguous" (Interlego AG v Toltoys Pty Ltd (1973) 130 C.L.R. 461 at 478). On the other hand, counsel for the respondents referred the Court to the 2nd edition, 1989, of The Oxford English Dictionary. Meaning l.a. of "adjoining" is shown as: "Lying next, contiguous, adjacent; neighbouring". - 15 - An example is given from as early as 1743 of "adjoining" in the sense of adjacent or neighbouring, in the phrase "Eton, a village adjoining to Windsor". In turn, "adjacent" is defined as follows: "Lying near or close (to); adjoining; .- contiguous, bordering. (Not necessarily - touching, though this is by no means precluded.)}" In our view, it follows that the language of claim 1 is sufficiently doubtful for the reader permissibly to seek resolution of the doubt by perusal of the body of the specification. (This conclusion is subject to what we say later in these reasons as to the reading which would be given the claim by the notional skilled addressee. ) Counsel for the appellants, as against the possibility that the Court would favour this view, then submitted that perusal of the specification in fact disclosed several matters favouring the construction sought by the appellants to be put upon claim 1. First, it was said that in a passage explaining the preferred embodiments, which we have set out earlier, with emphasis, in these reasons, there was a reference to the cylindrical shape of the roller provided by a plurality of pneumatic tyres in adjoining coaxial alignment. The phrase "roller shape thus formed as a cylindrical shape" appears - 16 - later in describing the drawings. The submission is that it would be stretching the ordinary notion of a cylindrical shape to use it to describe a plurality of tyres which, to any degree, were spaced apart. However, it is apparent that in the body of the specification the phrase "cylindrical shape" when used ,in relation to the roller is not used in any precise sense. Thus, the specification expressly contemplates that this cylindrical shape may be depressed to allow the tyres to conform to the shape of the road over which the roller operates. This appears in the following passage: "The result of this is that when a significant pressure is applied to the roller, the pressure will cause each of the tyres to conform to the shape being rolled more readily and with a common pressure, if there is for instance a crown shape in the road, then the tyres at the centre of the roller may well more easily conform to such a shape with the tyres at each side compensating in shape." Then it is submitted that figure 3 of the accompanying drawings plainly shows what appear to be touching tyres. So also, it was said, does figure 1. Figure 3 is described as a plan view of the same embodiment as shown in figure 1. The drawings, like the photographs considered by Lord Reid in C.Van der Lely NV v Bamfords Ltd [1963] R.P.C. 61 at 71, must be looked at through the eyes of the typical addressee of the specification, namely the kind of person who would be expected to make an apparatus of this kind: Nicaro Holdings Pty itd v - 17 - Martin Engineering Co. (1990) 91 A.L.R. 513 at 547; CCOM Pty Ltd v Jiejing Pty Ltd (1994) 122 A.L.R. 417 at 436; Terrell, "The Law of Patents", 13th ed., §14.137; Blanco White, supra, §4-105. The primary Judge construed figure 1 in the light of expert evidence, but appears to have construed figure- 3 without it. She said that figure 3 plainly showed tyres either touching or with insignificant space between them. Her Honour noted that the specification described figure 1 and figure 3 as illustrating the same embodiment. As to figure 1, she accepted the evidence of Mr Bayly, an industrial designer called by the respondents, that it showed a series of sharp- edged tyred wheels spaced a small distance apart, rather than touching or pressing together. However, even to accept the contrary, that figure 1 and figure 3 both show tyres which touch or press upon each other, is not to lead the appellants out of their difficulties. The specification does not describe such an arrangement, why it is needed or useful, or how to achieve it. Nor does it identify or describe the point or points at which or the force with which, or the stages at which (before or after inflation) such touching or pressing must occur. Counsel for the respondents developed the point, in oral submissions, as follows: "Should they merely touch, should they touch with sufficient force to ensure that the frictional contact overcomes the rotational movement, should they touch before or after - 18 =- they are blown up, and should they touch along the whole of the wall, should they touch only at the point where the extreme edge of the face of the wall is in each case, so that there is presented a straight line along the top? If this draftsman had in mind to describe an invention which resided in the word 'adjoining', as signifying that they should touch, whereas in the prior art they were merely closely spaced apart, all those things, no doubt, would have been described. [The draftsman] would also no doubt, have explained ~- how it was that despite perceptions of the trade in relation to the difficulties of performing such a machine with the tyres touching, it could indeed be achieved without suffering those disadvantages." By this route also, one is returned to the proposition that the appellants, in truth, are presented with a dilemma. The relevant addressee at the priority date, faced with the identification of a plurality of pneumatic tyres said to be "in adjoining coaxial alignment" would have believed that it was problematic for pneumatic tyres to be aligned so closely together as to touch. Her Honour so found. On that footing, there is no obscurity or doubt in claim 1 because the relevant skilled addressee would interpret it in the manner contended for by the respondents. That, of course, brings with it an adverse finding as to validity, given the state of the prior art as found at the trial. On the other hand, if claim 1 be treated as including a term which is obscure or doubtful, so that recourse should be had to the body of the specification to ascertain whether it resolves the doubt by indicating that the tyres do touch or press each upon the others, a further difficulty arises. It - 19 - is that even if figures 1 and 3 be interpreted as the appellants would have them, what is disclosed would still fall far short of a description of the method of performing the invention. The public would not be put in full possession of the means to provide that integer which involves adjoining coaxial alignment between the pneumatic tyres whereby they touch or press each upon the others. . In our view, the dilemma is resolved by looking first to the notional skilled addressee and to the reaction of that person to claim 1, in the light of the knowledge in the art at the priority date, before an appreciation of any "extraordinary discovery" by the first appellant. In accordance with authority, such a person would lean to a construction which favoured the successful operation of the claimed combination, and thus to a reading of "adjoining" in its meaning of neighbouring or lying near or close to. Accordingly, we reach, though not entirely by the same route, the same conclusion as that of the primary Judge. This is that claim 1 is to be construed as submitted by the respondents, with the result that it and the other claims are anticipated. Therefore, no question of infringement can arise, the claims being bad. The appeal should be dismissed with costs. -~ 20 - I certify that this and the (19) Pages are a true co judgment of the Court. Associate: PW es ; - preceding nineteen py of the reasons for D 3 ; ate 20 December 1994, Counsel and solicitors Mr D.K. Catterns Q.C. and for the appellants: Miss L.J. King instructed by Stratford & Co. Counsel and solicitors Mr R.C. Macaw Q.C. and for the respondents: Mr B.J. Hess instructed ° by Fisher Jeffries. Date of hearing: 28 November 1994. Date of judgment: 20 December 1994.