Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91

High Court of Australia Menzies J. Dixon C.J. Kitto and Windeyer JJ. Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91

ORDER Appeal dismissed with costs. Injunction varied by substituting for the words and figures claims 1 and 2 the words and figures claims 1, 2, or 22. Order varied so far as it certifies that upon the trial the validity of claims 1 and 2 came in question by adding after the words and figures claims 1 and 2 the word and figures and 22. Cross-appeal otherwise dismissed with no order as to costs.

Cur. adv. vult.

1960, Dec. 9 Menzies J . delivered the following written judgment:—

The plaintiffs, who are the grantee and licensee respectively of Australian Letters Patent 139,923, sue the defendant for infringement of the invention claimed in claims 1, 2, 3, 11, 22 and 23 of the complete specification upon which the letters patent were granted. The defendant, although admitting sales of the machines which it is alleged are infringements, both denies infringement and pleads that the claims relied upon by the plaintiffs are invalid because the specification does not comply with s. 40 of the Patents Act 1952 Cth (s. 100 (1) (c)) and because any invention claimed in those claims was obvious on 29th September 1947—the priority date of the claims— (s. 100 (1) (e)); or was not useful (s. 100 (1) (h)); or was not novel on 29th September 1947 (s. 100 (1) (g)).

The title chosen to indicate the subject matter of the invention was "side delivery hay rake" but an examination of the complete specification shows that it would have been more accurately described as "improvements in side delivery rakes" because the existence of side delivery rakes ("conventional" as they are called) is assumed and the first ten claims are expressly confined to certain features in a side delivery rake or hay rake having a "draft frame", i.e., a frame to be drawn, and certain other specified features. Claims 11 to 23, however, each refer to a side delivery rake comprising certain features, some of which are admittedly old (e.g., the draft frame) but some of which are not, so for the plaintiffs it is contended that these claims should be read as not claiming what is admittedly old but as confined to what is new either by itself or in combination with what is old. Because the specification as a whole does, I think, make it clear that there were previously conventional side delivery rakes having frames on wheels, direction control means, means for attachment to a prime-mover, support frames for raking means and so on, I do consider that this is a case in which the claims relied upon should, where possible, be construed as not covering what is old except in association with what appears from the specification as the invention. Authorities such as Haworth v. Hardcastle [1] , Lyon v. Goddard [1] , and Tubes Ltd. v. Perfecta Seamless Steel Tube Co. Ltd. [2] warrant such a construction. Although in this case there may be some difficulty in ascertaining just what is the invention, there is not, I think, much difficulty in seeing that much that appears in claims 11-23 is not claimed as the invention.