Rose Holdings Pty Ltd v Carlton Shuttlecocks Ltd [1957] HCA 48

High Court of Australia Williams J. Rose Holdings Pty Ltd v Carlton Shuttlecocks Ltd [1957] HCA 48

ORDER Order that claims 6, 10-16 inclusive and 19-27 inclusive of Letters Patent No. 146,286 be revoked and that the respondent lodge at the Patents Office a disclaimer of these claims. Otherwise petition dismissed. Certify that the validity of claims 1-5 inclusive, 7-9 inclusive 17 and 18 came in question in this petition. Order the petitioner to pay two-thirds of the respondent's costs of the petition.

Cur. adv. vult.

Williams J delivered the following written judgment:—

July 5 Williams J

Rose Holdings Pty. Limited is petitioning under Pt. XI of the Patents Act 1952-1955 for the revocation of Letters Patent No. 146,286 granted to Carlton Shuttlecocks Limited (the priority date for all the claims in the specification being 1st May 1950) for an improved shuttlecock and method of manufacture used in the game of badminton. The specification which is a lengthy document contains twenty-seven claims but during the hearing the respondent abandoned claims 6, 10-16 inclusive and 19-27 inclusive and consented to an order being made for their revocation. This leaves the validity of claims 1-5 inclusive, 7, 8, 9, 17 and 18 in dispute. These are the only claims to which these reasons are intended to relate. Claim 1 is the principal claim and all the rest of these claims are tied to it. Unless claim 1 be valid it might be difficult to support the validity of these subsidiary claims although independent validity is claimed for them. The text of claim 1 is as follows: "A shuttlecock comprising a cap, an upper skirt and a lower skirt, and characterised by the cap and lower skirt being connected by stems which vary in thickness without sacrificing width and are connected to at least one other stem by material in the same mass and each stem has a plurality of ribs projecting from it in the area of the lower skirt." The inventor of the shuttlecock described in the specification is William Charles Carlton and he is the managing director of the respondent company. He gave detailed evidence of the experiments it was necessary for him to carry out before he was able to make the shuttlecock in question. His evidence completely satisfies me that it required a very considerable exercise of inventive ingenuity to achieve this result. According to the Encyclopaedia Britannica the game of badminton is by English standards not of great antiquity. It seems not to have been played in England prior to 1873 and to have been an offshoot of the very much older game of battledore and shuttlecock. But its popularity has since spread throughout the world. Be that as it may, at the time that Mr. Carlton was making his experiments, the accepted shuttlecock was a projectile which consisted of a nose-cap made of cork into which from fourteen to sixteen goose feathers were inserted in such a way as to make a conical-shaped skirt. To keep the feathers in position the ends of their stems were inserted into holes made to receive them in the nose-cap and also generally but not invariably the stems were bound together by one or more bands made of thread wound around the stems in the area of the upper skirt. The fourth of the laws of badminton requires that "A shuttle shall weigh from 73 to 85 grains (4.73 to 5.50 grammes) and shall have from 14 to 16 feathers fixed in a cork, 1 inch to 1⅛ inches (0.025 to 0.028 metres) in diameter. The feathers shall be from 2½ to 2¾ inches (0.064 to 0.070 metres) in length from the tip to the top of the cork base. They shall have from 2⅛ to 2½ inches (0.054 to 0.064 metres) spread at the top and shall be firmly fastened with thread or other suitable material. Subject to there being no substantial variation in the general design, pace, weight and flight of the shuttle, modifications in the above specifications may be made, subject to the approval of the national organisation concerned (a) in places where atmospheric conditions, due either to altitude or climate, make the standard shuttle unsuitable; or (b) if special circumstances exist which make it otherwise expedient in the interests of the game. A shuttle shall be deemed to be of correct pace if, when a player of average strength strikes it with a full underhand stroke from a spot immediately above one back boundary line in a line parallel to the side lines, and at an upward angle, it falls not less than 1 foot (0.30 metres), and not more than 2 feet 6 inches (0.76 metres) short of the other back boundary line".