19
To allow a party, without special circumstances, to resile from an agreement deliberately reached at a pre-trial conference would be to negate the object of rule 37, which is to limit issues and to curtail the scope of the litigation (cf Price NO v Allied-JBS Building Society 1980 (3) SA874 (A) 882D-H). If a party elects to limit the ambit of his case, the election is usually binding (AJ" Shepherd (Edms) Bpk v Santam Verseteringsmaatstappy Bpk 1985 (1) SA399 (A) 415B-D; Chemfos Ltd v Plaasfosfaat (Pty) Ltd 1985 (3) SA 106 (A) 114I-115B). No reason exists why the principle should not apply in this case. The relief sought in the petition must consequently be refused.
Lack of novelty - document "BE":
To succeed on this ground the appellant has to establish (see s 1 (ix) (d) of the 1952 Act) that at the effective date -
(a) the document "BB" was published,
20
(b)
there was a copy of it in the Republic,
(c)
and the document describes the invention.
To prove (a) and (b) , the appellant relied on a compliments slip dated 15 September 1975, addressed to Mr Ubsdell, to which "BB"
(dated August 1975) was attached. The compliment slip was that of Brandt and not of the patentee. Ubsdell no doubt received the compliment
slip with "BB", but it is not possible to date the receipt. "BB", according to other Brandt documents was replaced
by another brochure dated March 1976. During preparation for the trial other copies of "BB" were found in the possession of former clients of Brandt. Since the documentation relied upon purportedly emanated from Brandt, I have some difficulty in comprehending how the facts (especially
the dates) they record are admissible against the patentee. Providing a copy to one person hardly amounts to a "publication",
although it shows a willingness to publish. I should pause to point out that the patentee sought to discredit "BB" and the compliments slip, contending that they were not
21
genuine. Reason to suspect these documents initially there certainly was, but the patentee's attack on them failed completely. It
is not necessary to reach a firm conclusion on whether the facts recited prove point (a) and (b) because of my conclusion on (c).
On the other hand, the facts recited do have an important bearing on prior knowledge and use, subjects I deal with later.
Document "BB" is a technical pamphlet dealing on the face of it with a particular Viledon filter, stated to be a product of Freudenberg. The filter is identified as "Pocket Filter
Type G 35/K", but the document does not state what G 35/K signifies. Technical data accompanied by a graph with no descriptive
importance or of any relevance in the present context are provided. There is a photographic representation of the product and the
text identifies its uses and sets out the following under four bullet points:
* "Homogeneous connection of frame to filter pockets by hard polyurethane foaming process."
22
*
"Stable filter pockets are welded to form leak free
seams."
*
"Total media usage due to reliable spacer elements."
* "Universal seal arrangement."
Netlon Ltd and another v Pacnet (Pty) Ltd 1977 (3) SA 840 (A) at 861H-862B, summarized the principles involved:
"... the defence (or objection) of anticipation relates to the claims and not to the description of the invention in the body
of the specification in suit (see, too, the Letraset case, supra at pp. 264-5); the prior printed publication alleged to be anticipatory must be construed, for the exercise is primarily one of construing and
comparing the two documents; moreover it must be construed as at the date of its publication to the exclusion of information subsequently
discovered; the question then considered is whether the prior publication 'describes' the invention in suit as claimed; that is,
whether it sets forth or recites at least the latter's essential integers in such a way that the same or substantially the same process
or apparatus is identifiable or perceptible and hence made known or the same or substantially the same product can be made from that description in the prior publication; if the description in the prior document differs, even in a small respect, provided it is a real difference, such as the non-recital
of a single essential integer, the anticipation fails; the opinions of expert-witnesses that the prior
23
publication does or does not anticipate a claim in suit must be disregarded for that is for the Court to decide."
A test referred to in Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A) at 646F-G was applied (at 866E) -
"Hence for it to 'describe' the invented process etc., it must set forth or recite at least its essential integers in such a
way that the same or substantially the same process is identifiable or perceptible and hence made known, or the same or substantially
the same thing can be made, from that description. 'Substantially the same' means practically the same, or, to use Lord WESTBURY'S
phrase adopted by VESSELS, J.A., in Veasey's case, p. 269, the same 'for the purposes of practical utility'; i.e., substance and
not form must be regarded."
Letraset Ltd v Helios Ltd 1972 (3) SA 245 (A) 267A-C, emphasized that the court must look at a document through its own eyes and not through the eyes of a skilled worker in the art.
In support of the proposition, Jansen JA quoted what he called an instructive passage from C van der Lely NV v Bamfords Ltd 1963 RPC 61 (HL) at 71 lines 5-19 (per Lord Reid) :
24
"We were informed that this is the first case in which the question of anticipation has turned on the proper inference to be drawn from photographs, although there have been cases of anticipation by published drawings. There is no doubt
that, where the matter alleged to amount to anticipation consists of a written description, the interpretation of that description
is, like the interpretation of any document, a question for the court assisted where necessary by evidence regarding the meaning of technical language. It was argued that the same applied to a photograph. I do not think so. Lawyers are expected to
be experts in the use of the English language, but we are not experts in the reading or interpretation of photographs. The question
is what the eye of the man with appropriate engineering skill and experience would see in the photograph, and that appears to me
to be a matter for evidence. Where the evidence is contradictory the judge must decide. But the judge ought not, in my opinion, to
attempt to read or construe the photograph himself; he looks at the photograph in determining which of the explanations given by
the witnesses appears to be most worthy of acceptance."
Mr Franklin used the quotation for another purpose, namely to impress upon the Court that it should refrain from interpreting the
photograph in "BB" but should be led by what the witnesses had to say about it. I will limit myself to say that my impression
is that lawyers are no longer expected to
25
be experts in the use of any language; photographs - moving or still - form part of everyone's daily diet but seldom require much by way of expertise to enable them to be "read"; if anything,
I would underline the concluding words.
Mr Moldow, the appellant's expert, when shown the photograph on "BB" and having his attention drawn to a black line inside the filter pockets was asked the leading question -one of many - whether he saw a weld line. Moldow did not accept the suggestion and identified the line as a small thin steel rod or
wire cast into the support frame. He expressed the opinion that the filter pockets shown were not self-supporting.
Undaunted by this evidence, Mr Franklin argued that the rod (which is patently present) does not support the filter depicted on the photograph. His submission was that the text states that the filter pockets are welded and the photograph shows the
presence of spacers; the patent implies that filter pockets that are welded and have spacers are self-supporting;
26
the filter shown with the rod removed would therefore also be self-supporting; the rod is simply an additional integer and should be ignored when considering prior description.
The fallacy of the argument was exposed in the context of infringement and inutility where it was pointed out that it is premised upon an incorrect construction of the patent. To repeat, there is no evidence that a filter with welds and spacers inevitably has self-supporting properties. Nothing in "BB" suggests that the filter will not sag or collapse under its own weight if the rod is removed. This means that "BB" fails to pass muster.
Anticipation - prior use or knowledge:
An invention was also not 'new' under the 1952 Act if the invention was "known or used in the Republic by anyone other than the applicant or his agent ... (secret knowledge ... being excluded)". (See s 1(ix)(a)). Although the appellant pleaded the individual uses or knowledge referred to earlier,
27
the evidence should rather be considered as a whole to judge its effect. The major problem confronting the parties was that the facts to be established or disproved occurred some twenty years ago. Witnesses were bound to rely on imperfect memories, often prompted by what they had heard from others, or by incomplete documentation. Such evidence is inherently suspect. Honesty is not the issue, rather the reliability of the evidence. Moldow, for instance, felt the need to apologise for his failing memory and conceded that he had no independent recollection of the events which took place during 1975. He did not know
of the patent before the 1980 's and he had no reason to remember the sequence of events. Bubenzer was to recall what had happened at a company he had left in 1979. The company, Brandt, was liquidated during the intervening years and some of its documents - clearly not all - were located a few days
before the trial by the appellant. The patentee did not have free access to these documents. The patentee, it was accepted, did not
retain any records relating to the relevant
28
period. In such circumstances the onus is usually decisive and one tends to seek for corroboration rather than to rely on the ipse dixit of honest witnesses.
The patentee was the manufacturer of a filter material marketed under the trademark "Viledon". Because of serious competition, it decided to develop a pocket filter using the Viledon material. Development took time. On 18 March 1975 filter design technicians within the VILEDON group held a conference attended by Moldow. Moldow, then the Danish agent of the patentee, was a member of the development team and visited the patentee regularly about this over a period of more than two years. At the meeting production samples of "the now completed COMPACT 'GROB' and 'FEIN' Pocket Filter Elements" were displayed and the meeting was informed that they were to be called "Viledon Compact Filter Bags". ('Grob' is German for 'coarse' and 'fein' means 'fine'; both terms describe the nature or grade of the Viledon filter material.) The minutes of the meeting do not give the physical features of the
29
products in any detail, but state that they are "very compact, internally stable, 'flutter-proof ... [have] the homogeneous 'filter-frame' connection, [and] the functionally reliable spacer element
etc ...". Attached to the minute is a page setting out the technical data of the two filter bags. 'Grob' has four pockets and its technical data are identical to those of the product shown in "BB".
Shortly after the meeting, and at a trade fair in Germany, the patentee exhibited its filters behind closed doors to a select group of customers. A. circular (probably addressed to the patentee's agents) of 7 April 1975 offered the Viledon compact to the recipients. Two weeks later a short pamphlet (document
"B" referred to earlier) was sent to Moldow and he was asked to state the number of copies he required. Document "B"
is fairly indistinct but it does contain a representation of two "Viledon compact filter bag unit[s]", the one 'grob' with
four pockets and the other 'fein' with eight. Much more is not visible and although it states that the filters are
30
stable and self-supporting, it gives no reason for or explanation of this quality. The technical data does not differ from those given
in the conference minutes, and, for "grob", in "BB".
These products were soon marketed because it is known that by 3 September 1975 they had 'found full acceptance in the marketplace' and 'interesting turnovers' had been attained. They reached the South African market in unknown quantities. That was established at the trial through, at least, Mr Ubsdell who during July 1975 purchased from Brandt, the patentee's local agent, 'Viledon G35 Coarse' and 'Viledon F45 Fine' filters. As mentioned,
document "BB" dated August 1975 was sent to Ubsdell without any restrictions two days before the effective date of the
patent.
On 3 September 1975, the patentee informed its agents that it had a new pocket for the market, namely a Viledon Compact "Grob 8", a "new version with 8 pockets". The existing pockets were to be marketed as Viledon Compact "Grob 4" and
31
"Fein". The first reference to these three names in trade literature is found in a technical brochure of Brandt dated March
1976 which, according to a note found, replaced "BB". The filters shown in this brochure do not, on the face of it, have
any rods. The technical data concerning 'Grob 4' differ in some respects from that contained in the product it was supposed to replace,
namely the one in "BB". Technical differences between the "Fein" disclosed at the meeting of 18 March 1975 and
the "Fine" of the March 1976 document are apparent. There is no indication at all when the filters offered in the circular of 3 September 1975 reached the market, whether in South Africa or elsewhere. What is relevant, is that all the sales relied upon by the appellant as proof of prior knowledge or use in South Africa predate this circular. On what is on record, these filters had to be those described in the minutes of 18 March 1975, one of which
was depicted on "BB". Nothing further is known of the "Fein".
To prove that the Viledon pocket filters brought to
32
South Africa before the effective date were made according to the invention, the appellant relied heavily on what was submitted to be common cause, namely that (quoting from the heads of argument) the 'compact filters of 1975 were identical to those of today and that they had all the integers of the claims' and that 'it was admitted by the respondents that the first respondent has only ever sold one type of Viledon compact filter, i e that made in accordance with the patent'.
Temporary interdict proceedings preceded the trial, and in a replying affidavit a deponent - the head of the patentee's patent department - who did not testify at the trial, although present, admitted that 'the configuration as well as the production method of today's VILEDON COMPACT FILTERS is essentially identical to those of 1975. There were only some minor changes in the quality of the materials and fibres utilized.' He added that the Viledon bag filters were self-supporting and that filters were produced fitted with a cross-rod to provide additional support for the filter pockets.
33
The date given, namely 1975 is, in the light of what 1 have said, somewhat ambiguous and confusing. Reliance was also placed upon the evidence of Mr Schorn, who, at the time was employed by Brandt. According to his testimony, the patentee, to his knowledge, never made any Viledon compact filters save according to the invention. There is nothing to show that he knew the contents of the specification, either in 1975 or even at the time of the trial. Finally, Bubenzer, the manager of Brandt at the time, asked whether the patentee had ever sold any pocket filter other than the pocket filters exemplified by the exhibits before the court, said no.
Many exhibits were before the court; some of them did not fall within the scope of the patent. For instance, there was another version of the Viledon G35/K (which first appeared on "BB") without a rod, spacers or welds for the spacers and with five pockets. There were Viledon M 85 and M 95 pocket filters that collapse if their holding wires are removed. These Viledon pocket filters that fall outside the scope of the
34
patent were introduced by Mr Franklin to prove the lack of utility. Another Viledon filter not covered by the patent is the one exemplified
on "BB". Mr Franklin thus clearly and effectively established that the 'admissions' he wishes to rely upon were wrongly made. His submission that the matter was common cause, overstates the position, because it was the appellant's main case that neither the ordinary Viledon filter, nor the appellant's copy, falls within the scope of the claims because the self-supporting properties derive from the filter material and not the welds and spacers.
Moldow did not take the matter much further. He knew the product depicted in "BB" and although he said that it was an early model (which it was), he did not say (as Mr Franklin
put it to Schorn and during argument) that the product was merely a prototype. Ubsdell's evidence proves no more than that he purchased
Viledon pocket filters and requested and received "BB". He did not say that the filters received were identical to or different
from that portrayed on "BB". In an
35
attempt to remedy this defect in his evidence, Mr Franklin sought to rely on Ubsdell's affidavit filed by the appellant in the interim interdict proceedings in which he expressed the opinion that the filters he had dealt with during 1975 had all the
integers of claim 1. He did not describe or illustrate the filters, he gave no reasons for his opinion, he was not called as an expert,
and he did not confirm his opinion in court. The belated recourse to s 34(1) of the Civil Proceedings Evidence Act 25 of 1965 must fail. No intimation was given at the trial that reliance would be placed upon the contents of the affidavit in addition to the oral evidence. Nor was any reason proffered why Ubsdell could not have given the evidence in court. In short, 'there was no factual reason or need for the appellant to invoke sec. 34 at all' (Narlis v South African Bank of Athens 1976 (2) SA 573 (A) 578A-B).
Only the evidence concerning the prior use at or by H Lewinberg (Pty) Ltd deals in any way with the question whether the filters that
were sold before the effective date
36
fell within the scope of the claims. MacArthur J found the evidence on the issue 'unconvincing and somewhat contrived' and I am not satisfied that his assessment is wrong. On the assumption that he was too critical, 1 do not think that one can rely, without
a smattering of corroboration, on the statement of Mr Mostert that the filter he saw during January 1976 had no rods or wires. Even
if one could, the evidence does not show, directly or by way of inference, that this filter was supplied and installed before the
effective date. The witness who saw Viledon filters on the site before the effective date, Mr Schofield, was very vague, understandably
so, on what he had seen, and there is no reason why Mostert should have had a clearer recollection of what, at the time, was an insignificant
aspect of an otherwise mundane event.
It needs to be recorded that before the issue was raised during argument in this Court, counsel for the patentee, perhaps blinded by the dust of the arena, failed to comprehend the import of the facts as they unfolded during the trial. It
37
is a valid criticism of the patentee's case that it never sought to establish the nature of the Viledon filters as it was before the effective date of the patent. The case the patentee set out to make was that Viledon filters could not have been on the market in South Africa before the effective date. The attempt was unsuccessful. However, the stance taken by the patentee at the trial is understandable if regard is had to certain discrepancies in the documents and evidence, the late discovery of documents found under strange circumstances by the appellant, the liquidation of the patentee's South African agent (Brandt), the lapse of time, the absence of full and proper documentation and the unreliable memory of witnesses whose honesty was not impeached. Nevertheless, the criticism raised is an important factor which should be placed in the scale in deciding the probabilities.
Once the finding is, as it has to be in the light of all the evidence, that not all Viledon bag or pocket filters necessarily fell within the scope of the patent, one cannot
38
conclude with any degree of conviction that the filters known or sold in South Africa (or for that matter, abroad) before the effective date fell within the scope of the claims of the patent. That disposes of the attack upon the novelty of the patent.
Obviousness:
The alleged lack of subject-matter was based upon the evidence of Moldow, but his evidence on the issue was destructive of the appellant's case. According to him, there was an urgent commercial need for the product because he was unable to compete in the marketplace. The patentee began with research work during 1973 and allocated a group of technicians to the project. Moldow, an expert in the field, acted as consultant. The project was successfully completed only during 1975. The difficulty the patentee had in finding a solution for the known problem, given his evidence that all the integers of the invention were known to him as an expert, belies any
39
suggestion that the invention could have been obvious. Nor does his evidence answer the question whether the invention (the specific combination and interaction of the integers) was obvious to the ordinary worker in the art.
I find it unnecessary to deal in any detail with the evidence on the matter because it was not shown that the trial judge had erred in his assessment. The only point that needs mentioning, is the argument that the viledon filter was part of what
was common knowledge at the effective date of the patent. Assuming in favour of the appellant that the filters referred to in the minutes of 18 March 1975 indeed became part of the common knowledge before the effective date, the question remains what those filters were, and if the appellant could not discharge its onus on this question under the heading of prior knowledge and use, it similarly failed to do so under the present rubric.
Costs of the interim interdict proceedings:
40
The patentee applied for a temporary interdict which was not disposed of and the costs were reserved, either by
agreement or by court order, for the trial court. They were argued and MacArthur J, without supplying any reasons, ordered the appellant to pay those costs. One can assume that he based his decision on the reasoning that the appellant, having lost the main case, had no ground for opposing the interdict application.
This was the approach Mr Ginsburg submitted this Court should adopt. Mr Franklin, on the other hand, submitted that the patentee
should have been ordered to pay the costs because the application was not proceeded with, should never have been launched and that
a false reason was given why the application was not moved. These arguments, and others, were addressed to MacArthur J and there
is nothing to show that he did not have due regard to them. He was in the favourable position that he had the full application record
whereas only portions of the record were placed before this Court by the appellant. Even the notice of motion is missing and, for
41
example, only pages 1, 10, 14 and 15 of the founding affidavit are in the record. This Court is therefore not in a position to reconsider the exercise of his discretion.
In the result —
1.
the application for amendment of the "Response
to Pre-trial Questions" is dismissed with costs;
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