Ausplow (Pty) Ltd v North Park Trading 3 (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Southwood J
• Judgment Date: 10 November 2006
• Docket Number: 95/0812
• Court: Court of the Commissioner of Patents
• Hearing Date: 07 November 2006
• Citation: 2007 JDR 0161 (CP)

Southwood J:

[1]

The plaintiff, the patentee of South African Patent No. 95/0812 entitled Improvements in or relating to Seeding Machinery ('the patent') seeks an interdict restraining the defendant from continuing its infringement of the patent, an inquiry into damages, an order for delivery up and costs. It is common cause that the defendant has used and/or made and/or disposed of and/or offered to dispose of and/or sold an planter under the name Voor Planter.

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[2]

The plaintiff alleges that the Voor Planter falls within the scope of the claims of the patent and accordingly infringes it. The defendant admits that the plaintiff is the patentee of the patent but denies that the Voor Planter falls within the scope of the claims of the patent and infringes the patent. The defendant also denies that the patent is valid. In its counterclaim the defendant seeks the revocation of the patent on three grounds. First, the defendant alleges that in terms of section 61(1)(c) read with section 25 of the Patents Act, 57 of 1978 ('the Act') the invention claimed was not new. Second, the defendant alleges that in terms of section 61(1)(c) read with section 25 of the Act the invention claimed did not involve an inventive step. Third, the defendant alleges that in terms of section 61(1)(f) of the Act, the claims of the patent are not clear. For its attack on the patent on the grounds of lack of novelty and lack of inventiveness the defendant, in its counterclaim, relied on 42 documents which formed part of the state of the art. In its plea to the defendant's counterclaim the plaintiff admitted that 33 of the documents (listed in paragraph 1.1 to 1.33 of the defendant's statements of particulars) were published before the priority date of the claims of the invention (i.e. 3 February 1994) but denied that the invention was not new and that it did not involve an inventive step. The plaintiff also denied that the claims of the patent are not clear.

[3]

The invention of the patent relates to seeding machinery and more particularly but not exclusively to seeding machinery for attachment to a seeding or cultivating tine.

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Southwood J

According to the specification -

'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 plant vigour, low yields, poor water infiltration, waterlogging and fertilizer toxicity and a greater incidence of disease.'

The object of the invention is to overcome or substantially ameliorate these disadvantages.

The specification summarises the invention as follows:

'There is disclosed herein 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

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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.'

This is the essence of the patent's first claim.

[4]

The parties agree that the integers of claim 1 are as follows:

A seeding assembly to be used with a plough frame supporting at least one plough tine, said assembly comprising:

(A)

a seeding tube

(i)

to extend downwardly into a slot formed in a soil layer by the tine,

(ii)

said tube having a lower extremity through which seed is delivered into the soil layer;

(B)

a closing tool

(i)

fixed with respect to said lower extremity and

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(ii)

having a leading surface forward thereof relative to the normal direction of travel of the frame over the soil layer,

(iii)

said closing tool being aligned in said direction with respect to said lower extremity so that it engages soil adjacent said slot

(iv)

to dislodge the soil to partly close the slot and

(v)

provide a seed bed onto which seed leaving said lower extremity is delivered;

(C)

mounting means

(i)

to attach the tube and closing tool to the frame

(ii)

to permit height adjustment of the tube and the closing tool with respect to the frame; and

(D)

ground engaging means

(i)

operatively associated with the tube and closing tool

(ii)

to engage the soil layer to cause said height adjustment.

Onus

[5]

The onus of proving infringement rests on the plaintiff - Ensign-Bickford (SA) (Pty) Ltd and Others v AECI Explosives and Chemicals Limited 1999 (1) SA 70 (SCA) at 75H-I (1998 BIP 271 (SCA) at 274H). The onus of proving that the patent is invalid rests on the defendant - Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA

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589 (A) at 629E-F (1971 BP 58 (A) at 108B) ('the Gentiruco case'): Roman Roller CC and Another v Speedmark Holdings (Pty) Ltd 1996 (1) SA 405 (A) at 412F-G (1995 BIP 199 (A) at 208E-F).

The role of expert evidence

[6]

The principal issues in this case are -

(1)

whether the patent has been infringed;

(2)

whether the patent must be revoked because the invention was not new (section 61(1)(c) read with section 25 of the Act);

(3)

whether the patent must be revoked because the invention does not involve an inventive step (section 61(1)(c) read with section 25 of the Act); and

(4)

whether the patent must be revoked because the claims of the complete specification are not clear (section 61(1)(f) of the Act).

[7]

The parties tendered the evidence of three expert witnesses, all claiming to be skilled addressees of the patent. The plaintiff tendered the evidence of Professor Gert Andries Agenbag and Mr Jacobus Pieter le Roux and the defendant tendered the evidence of Mr Jan Carel Horak van Niekerk. The defendant delivered a notice and

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summary in respect of Mr Marais Steyn but did not call him to testify. According to the summary of his evidence, Mr Steyn developed the Voor Planter. All the witnesses expressed opinions.

[8]

Professor Agenbag is a professor in the Department of Agronomy at the University of Stellenbosch. He analysed the operation of the plaintiff's seeding assembly which forms part of the Ausseeder DBS Cultivator Bar (and is hereinafter referred to as the Ausseeder) in relation to the problems presented by no-tillage planting methods. He expressed the view that the Ausseeder (i.e. the product of the invention) is a no-tillage planter which overcomes the problems associated with prior no-tillage planters and is the first no-tillage planter which can be successfully and economically used in a variety of soil and climate conditions. He also expressed the opinion that the Ausseeder brought about a revolution in no-tillage planting operations and that the combination of the elements is not present in any of its predecessors. None of these predecessors is identified.

[9]

Mr Le Roux has a BSc in agricultural engineering (1962) and a MBA (1989) and more than 40 years practical experience of agricultural mechanisation. He analysed the features of the Ausseeder and the Voor Planter and concluded that the appearance, components and configuration of the seeding assembly of the Voor Planter (depicted in photographs 17 and 18 of Annexure JCLR2 to his summary) are for all practical purposes identical to and at least substantially similar to those

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of the seeding assembly which is described in the specification and which is shown in the drawings of the patent specification. He further expressed the view that these features of the Voor Planter fall within the scope of the patent's claims. Le Roux also analysed the state of the art documents relied on by the defendant for its attack on the validity of the patent. He stated, in respect of each of the four patents relied on to show lack of novelty, that it does not disclose all the integers of any one of the claims of the patent. On the issue of obviousness he considered the Ausseeder against the background of the state of the art patents relied upon by the defendant. He described the inventive step involved in the Ausseeder, the state of the art relevant to that inventive step, the respect in which the inventive step goes beyond or differs from the prior art and why taking that step would not be obvious to him. Finally, he explained why the expressions relied upon by the defendant do not lack clarity.

[10]

Mr Van Niekerk has a BSc in agricultural engineering (1971) and a Diploma in Business Administration and more than 30 years experience in developing, manufacturing and selling agricultural equipment and implements. He set out the integers of the claims of the patent (which are the integers agreed) and compared the features of the Voor Planter with these integers. He concluded (and this was his opinion) that the Voor Planter does not exhibit all of the integers of these claims. Van...