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Northpark Trading 3 (Pty) Ltd v Ausplow (Pty) Ltd (278/07) [2008] ZASCA 46 (31 March 2008)
.RTF of original document
THE SUPREME COURT OF APPEAL
OF SOUTH AFRICA
Not Reportable
CASE NO: 278/07
In the matter between :
NORTHPARK TRADING 3 (PTY) LTD
Appellant
and
AUSPLOW (PTY) LTD
Respondent
___________________________________________________________________
Before:
STREICHER, NUGENT, HEHER JJA, HURT & SNYDERS AJJA
Heard:
14 MARCH 2008
Delivered:
31 MARCH 2008
Summary:
Patent – revocation
– not involving an inventive step
Neutral citation:
Northpark Trading v Ausplow (278/07) [2008] ZASCA 46 (31 March 2008)
________________________________________________________________________
J U D G M E N T
________________________________________________________________________
NUGENT JA:
[1]
This is an appeal from the Court of the Commissioner of Patents (Southwood J) where the appellant
was the defendant in an action brought by the respondent for patent infringement. I will refer to the parties as they were referred
to in the court below. The defendant was alleged to have infringed South African Patent No. 95/0812 registered in the name of the
plaintiff under the Patents Act 57 of 1978, with a priority date 3 February 1994. The defendant denied infringement, denied the validity
of the patent, and counterclaimed for its revocation on the grounds that the invention claimed was not new, did not involve an inventive
step, and was unclear. The court below dismissed the defences and the counterclaim hence the present appeal, which is before us with
the leave of that court.
[2]
It is convenient to deal at the outset with the validity of the patent because in my view that is
decisive of this appeal. The dispute in that regard falls within a decidedly narrow compass. I think that the point of dispute can
most conveniently be identified by briefly summarising the description of the invention as it appears in the specification before
turning to the claims.
[3]
The invention is entitled ‘Improvements in or Relating to Seeding Machinery.’ A brief
description of the machinery of the prior art will assist to understand the claims. The machinery is designed for planting seeds
in untilled soil. It is essentially a frame that is dragged behind a tractor on which a series of tools are mounted in a line one
behind the other each performing one of a series of functions. First in line is a tine (or share) that cuts a slot in the untilled
soil. Optionally, a tube might be mounted behind the tine, through which fertiliser may be deposited in the slot. Behind the tube
is a device of one kind or another that collapses soil into the slot so as to partially fill it, which serves a dual purpose: the
collapsed soil separates the fertiliser (if fertiliser is used) from the seed and avoids the seed being burnt, and it forms a suitable
bed upon which to deposit the seeds. Behind that tool is another vertically-mounted tube through which seeds are deposited on the
bed. And behind that is a wheel, wider than the slot, which dislodges more soil from the sides of the slot, covering the seed, and
simultaneously tamping it down to ensure that the seed is in good contact with the surrounding soil.
[4]
Under the heading ‘Background to the Invention’ the specification describes a problem
that may be encountered with seeding machinery of that kind:
‘It has been found in practice that tined seeding machinery and attachments have difficulty in penetrating soil deeply whilst at the
same time maintaining accurate placement of seed and fertilizer. Due to the undulating ground conditions nearly always encountered,
and with seeding depth controlled by widely spaced ground wheels, seeding depth cannot be maintained, often with seed and fertilizer
placed together on a hard impenetrable barrier causing poor seed germination, loss of plant vigour, low yields, poor water infiltration,
waterlogging and fertilizer toxicity and a greater incidence of disease.’
The specification records that the object of the invention is
‘to overcome or substantially ameliorate the above disadvantages.’
[5]
While that is said to be the object of the invention the claims are not confined to a means of overcoming
the difficulty described in the specification. Claim 1 reads as follows:
‘A seeding assembly to be used with a plough frame supporting at least one plough tine, said assembly comprising:
a seeding tube to extend downwardly into a slot formed in a soil layer by the tine, said tube having a lower extremity through which
seed is delivered into the soil layer;
a closing tool fixed with respect to said lower extremity and having a leading surface forward thereof relative to the normal direction
of travel of the frame over the soil layer, said closing tool being aligned in said direction with respect to said lower extremity
so that it engages soil adjacent said slot to dislodge the soil to partly close the slot and provide a seed bed onto which seed leaving
said lower extremity is delivered;
mounting means to attach the tube and closing tool to the frame to permit height adjustment of the tube and the closing tool with
respect to the frame; and
ground engaging means operatively associated with the tube and closing tool to engage the soil layer to cause said height adjustment.’
[6]
A patent may be granted for an invention only if – amongst other things – the invention
is new and it involves an inventive step. A patent that has been granted for an invention that does not meet those criteria may be revoked. An invention is not new if it forms part of the state of the art immediately before the priority date of a claim to the invention.
The state of the art includes all matter that has been made available to the public, whether in the Republic or elsewhere, by written
or oral description.
[7]
In support of its claim of want of novelty the defendant relied on three patents granted in the
United States on various dates that precede the priority date of the patent that is now in issue – the Halford patent, the
Anderson patent and the Dreyer patent – and on one South African patent. Reliance upon the South African patent was abandoned
in the heads of argument. Applying the well-established approach to this question as it was explained by this court in Gentiruco and later summarised in Netlon the court below held that none of the earlier patents described all the integers of the patent that is now in issue. For reasons that
will become apparent it is necessary only to consider the Dreyer patent (US Patent No. 4,726,304).
[8]
It is not necessary in this case to divide claim 1 of the patent in issue into its constituent elements
because there is only one element that is not described in Dreyer. The Dreyer invention is described in summarised form in the specification
as follows:
‘The object of the present invention is to attain a reliably separated deposit of two materials, such as seed and fertilizer, even in heavy soils
and especially in zero tillage.
This object is attained in accordance with the invention in that an expansion structure that extends down into the furrow is positioned
in the vicinity of the rear outlet of each sowing share, in that the expansion structure is at least somewhat wider than the ripping
structure, and in that the bottom end of the expansion structure is higher than the bottom of the point of the ripping structure.
The expansion structure on the sowing share between the forward and rear outlet ensures that the material deposited in the furrow
through the first outlet will be covered with soil in such a way that the fertilizer and seed will be separated by a layer of soil
even when the soil is very heavy or a lot of soil is thrown up. The expansion structure always pushes at least a little soil ahead,
forcing it over the material deposited in the furrow from the first outlet. The material coming from the rear outlet on the sowing
share will then always fall on top of the soil covering the first material.’
The Dreyer invention might also have an impact structure mounted on the rear of the expansion structure, which ensures that the second
material (ordinarily the seed) is spread in a ribbon, but that is an optional feature that does not limit the description.
[9]
Dreyer discloses all but one of the elements of the invention that is now in issue. There was some
suggestion in argument that Dreyer does not disclose the ‘closing tool’ of the present invention (the tool of the prior
art that functions to partially fill the slot) but I think the apparent distinction is one of nomenclature only. What Dreyer describes
as the ‘expansion structure’ in the summary I have given is in all respects the equivalent of the ‘closing tool’
of the present invention. It was also suggested that the apparatus of the present invention has the seed being deposited in a line
while Dreyer has it being deposited in a ribbon but I have already pointed out that that feature of the Dreyer invention is optional.
[10]
But there is this distinction: the invention that is now in issue has the seeding tube extending downwardly
‘into’ the slot that is formed by the tine, which is not described by Dreyer. It was submitted on behalf of the appellant
that the seed outlet of the Dreyer patent is capable of projecting into the slot but that is not correct. It was accepted on behalf
of the appellant that all the integers of the present invention – including that integer – were intended by the inventor
to be essential to the claim. It follows that to the extent that the seed-tube of the invention projects into the slot the invention
is not described by Dreyer. (All its integers are also not described by the other documents relied upon by the appellant but in view
of the conclusion to which I have come it is not necessary to compare those descriptions.)
[11]
For a patent to be valid the claimed invention must not only be new but must also involve an inventive
step. An invention is deemed to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any
matter which forms, immediately before the priority date of the invention, part of the state of the art. It was not disputed that
the state of the art immediately before the priority date for this purpose includes the Dreyer and the Anderson patents.
[12]
In Ensign-Bickford Plewman JA restated the enquiry in this regard in four parts:
‘(1)
What is the inventive step said to be involved in the patent in suit?
(2)
What was, at the priority date, the state of the art (as statutorily defined) relevant to that step?
(3)
In what respect does the step go beyond, or differ from, that state of the art?
(4)
Having regard to such development or difference, would the taking of the step be obvious to the skilled man?”
[13]
Courts in this country and abroad have warned on numerous occasions against the danger posed by hindsight
in assessing whether a step is inventive. As pointed out in Windsurfing International Inc v Tabur Marine (Great Britain Ltd, cited with approval in Ensign-Bickford:
‘What with hindsight, seems plain and obvious, often was not so seen at the time.’
The extent to which expert evidence is admissible, and the role that it might play in the assessment of whether the invention involves
an inventive step, is not necessary to revisit in this case. Though expert evidence might be necessary in some cases – at least to educate a court in the technology involved – that
will not always be so. The proper enquiry has been formulated in various ways in the cases but I do not think it is necessary to
repeat them. As pointed out by Burrell,
‘the word “obvious” is a much-used word and … there really is no need to go beyond its primary dictionary meaning
of “very plain”’.
[14]
Whether the step would be obvious to a person skilled in the art falls to be judged with regard to material
that formed the state of the art at the material time, which need not be described in a single document. It is permissible in appropriate
cases to draw from more than one document to determine what would be obvious to a person skilled in the art.
[15]
I think it is fair to infer from the background to and object of the invention as it is recorded in the
specification that the inventive step that the inventor considered himself to be taking lay in linking the seeding assembly to the
tine in such a way that the seeding assembly is capable of moving in a vertical plane relative to the tine and causing the seeding
assembly to move in that plane so as to follow the profile of the soil. Implicitly, this would solve the difficulty that the inventor
said (in the portion of the specification that I have referred to) was the object of the invention.
[16]
The specification is silent as to any benefits that are to be achieved by extending the outlet of the
seeding tube into the slot and that integer is also immaterial to achieving the proclaimed object of the invention. But in argument
it was submitted that the inventiveness of projecting the seed tube into the slot lies in the propensity this gives to the seed tube
to avoid seed being displaced by wind. If that was why the inventor considered the projection of the tube into the slot to be an
inventive step it is remarkable that no reference was made to it when describing the background to and the object of the invention.
It seems to me that reliance upon that integer as constituting an inventive step is merely an opportunistic exploitation of the absence
of that integer from the description in Dreyer.
[17]
I do not think that integer can be said to constitute a step forward upon the state of the art and least
of all a step that is inventive. I think there can be little doubt that a person skilled in the art, faced with the problem of wishing
to ensure accuracy of the placement of the seed (which was the only reason advanced in argument for why the step is inventive) would
extend the outlet of the tube into the slot so as to be as close as possible to the bed upon which it is to be placed. To the extent
that he or she might not already know that, it would be apparent from the description in Anderson in which that is disclosed. In
my view the invention in the present case does not involve an inventive step.
[18]
We were asked by counsel for the respondent, if that were to be our finding, to postpone the order of
revocation to enable the patentee to effect amendments to the specification, as contemplated by s 68 of the Act. The appellant’s
counsel advanced no adequate reason why that should not be done.
[19]
The appeal is upheld with costs. The orders of the court below are set aside and the following orders
are substituted:
‘1.
The plaintiff’s action is dismissed
with costs.
2.
The defendant’s counterclaim for the revocation of South African Patent No. 95/0812 is
granted and, subject to the orders below, the patent is revoked.
3.
The order in paragraph (2) above is provisional. It will become fully operative if the patentee
does not within one month file notice of an application to amend the patent, or, having filed such application, withdraws it. If
an application as aforesaid is made and not withdrawn, it shall be decided at the hearing of such application whether or not the
revocation order is to be put into operation.
4.
The plaintiff is ordered to pay the defendant’s costs in respect of the counterclaim.’
___________________
R.W. NUGENT
JUDGE OF APPEAL
CONCUR:
STREICHER JA)
HEHER JA)
HURT AJA)
SNYDERS AJA)
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