Ems Industries (Pty) Ltd v Inteletrack CC
| Jurisdiction | South Africa |
| Judge | Jansen J |
| Judgment Date | 01 April 2015 |
| Docket Number | 2010/01326 |
| Court | Commissioner of Patents |
| Hearing Date | 01 March 2015 |
| Citation | 2015 JDR 1927 (GP) |
Jansen J:
This matter relates to the alleged infringement of a patent and, as defence thereto, the alleged non-infringement and the alleged invalidity of the patent in terms of section 65(4) of the Patents Act 57 of 1978. It raises various interesting questions, not the least of which are the following two issues:-
When is a patent invalid for lack of an inventive step?
When does a term in a patent claim cover a somewhat non-conventional meaning which may or may not be stated to fall within the meaning of the term?
The subject matter of the patent:
The title of the South African patent, number 2010/01326 is: "A coupling for connecting a brake pipe hose to telemetry equipment". The complete specification of the patent was filed on 24 February 2010, claiming priority from a South African provisional patent application filed on 11 March 2009. The priority date of the patent is thus 11 March 2009. Although it is unclear from the title of the patent, the patent relates to the brake pressure of vacuum and pressure braking systems on, for example, trains, which require constant monitoring during operation to ensure the safe operation of the braking systems.
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Jansen J
Before embarking upon an analysis of the above issues a brief background to the action is required.
The issues:
These are conveniently set out in the defendant's heads of argument as follows:-
The defendant has, since at least 3 September 2010, offered for sale a coupling device or a so-called dual coupler for connecting a vacuum or pressure brake pipe hose to telemetry equipment. It sold, inter alia, 350 of these coupling devices to Transnet. It is the plaintiff's case that the offer for sale and sale of the defendant's dual coupler constitutes an infringement of claims 1 to 15 of the patent.
The defendant further pleads, as a defence to the alleged infringement of the plaintiff's patent, that the patent is invalid in terms of section 65(4) read with section 2(10) of the Patents Act 57 of 1978 (the "Patents Act"), that the patent is invalid in that the subject matter of claims 1 to 15 of the patent would have been obvious to a person skilled in the art of the patent at its priority date namely 11 March 2009. [1]
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Jansen J
The specification provides a useful summary which contextualises the alleged invention: -
The monitoring was traditionally carried out by a person but is today carried out via a telemetry system which measures the brake pressure and transmits this data to a train driver.
The telemetry unit is connected to the brake pipe hose of the last car of a train so that a continuous closed brake pipe line is formed between all the brake pipe hoses of connected train cars. The telemetry unit is connected to an existing
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Jansen J
glad-hand connector of the brake pipe hose of the last car via a hose extending from the telemetry unit.
In a pressure brake system the hose of the telemetry unit has a glad-hand connector at a free end thereof to facilitate connection thereof to the glad-hand connector of the brake pipe hose.
Whereas the aforesaid connection can be used with facility for pressure braking systems it cannot be used for vacuum braking systems which contain a free end of hoses with a vacuum hose coupling as opposed to a glad-hand connector.
Regarding the validity of the patent, the novelty of the invention was admitted. The crisp issue regarding the validity of the patent is therefore whether it involves an inventive step.
The integers of Claim 1:
The parties agreed that only claim 1 of the patent need be considered for both the enquiries regarding infringement and the validity of the patent. The parties further agreed that Claim 1 can conveniently be divided into the following integers:-
A brake hose coupling including:
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Jansen J
a body portion;
a connector arranged on a first side of the body portion for permitting connection of a pressure hose to the body portion;
a gasket arrangement arranged on an opposed, second side of the body portion,
which gasket arrangement includes two overlaying gaskets,
a first being configured and dimensioned to engage with a vacuum hose coupling of a brake pipe hose of a vacuum braking system;
a second being configured and dimensioned to engage with a glad-hand connector of a brake pipe hose of a pressure braking system;
a through passage extending through the connector, body portion, and gasket arrangement to permit fluid flow communication between the braking system and the pressure hose; and
a locking arrangement for locking the body portion in place during connection thereof to a glad-hand connector or a vacuum hose coupling." [2]
It was further common cause that the defendant's defence was limited to an argument regarding whether its allegedly infringing product contains integers (e) to (g) as set out above. In the court's opinion integer (d) also has to be considered for reasons which will become clear from what is set out below.
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Jansen J
It was argued by the plaintiff that integers (e) to (g) clearly envisage that the interfaces need to seal. It should be borne in mind that the two overlaying gaskets, in terms of the integers of claim 1, have to be configured and dimensioned for one to engage with a vacuum hose coupling and the other with the glad-hand connector of a brake pipe hose of a pressure braking system. It is not stated that they have to engage "sealingly". However, from a reading of claim 1 and the specification, were the gaskets not to form a seal, the braking system would fail. Hence, on a proper construction of the patent specification and the claims thereof the gaskets should cause surfaces to engage "sealingly". (The manner in which a patent should be read and understood is set out below.)
The methodology to be adopted when interpreting the claims of a patent:
Although claims form part of the body of a specification, claims were, traditionally, read separately and apart from the body of the specification save if terms used therein were ambiguous. The patent specification may, for example, disclose a wide-ranging invention, but the claims may demarcate a much smaller monopoly than that disclosed in the specification. [3]
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Jansen J
This well-known legal principle was, to some extent, qualified by Harms JA in Monsanto Co. v MDB Animal Health (Pty) Ltd (formerly MD Biologics CC) 2001 (2) SA 887 (SCA) ("Monsanto") in paragraphs [8] and [9] (although the SCA has recently remarked that "(Gentiruco) remains the leading case on the construction of patent specifications", per Nugent JA in Cipla Medpro v Aventis Pharma 2013 (4) SA 579 (SCA)). A summary of these rules are: -
"The rules relating to the interpretation of patents have often been stated and do not need any reformulation. The problem lies in their sensible application in any given case. For present purposes the following rules as they appear in Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A) at 614A-616D may be emphasised: (a) a specification should be construed like any other document, subject to the interpreter being mindful of the objects of a specification and its several parts; (b) the rule of interpretation is to ascertain, not what the inventor or patentee may have had in mind, but what the language used in the specification means, ie what the intention was as conveyed by the specification, properly construed; (c) to ascertain that meaning the words used must be read grammatically and in their ordinary sense; (d) technical words of the art or science involved in the invention must also be given their ordinary meaning, ie as they are ordinarily understood in the particular art or science; (e) if it appears
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Jansen J
that a word or expression is used, not in its ordinary sense, but with some special connotation, it must be given that meaning since the specification may occasionally define a particular word or expression with the intention that it should bear that meaning in its body or claims, thereby providing its own dictionary for its interpretation; (f) if a word or expression is susceptible of some flexibility in its ordinary connotation, it should be interpreted so as to conform with and not to be inconsistent with or repugnant to the rest of the specification; and (g) if it appears from reading the specification as a whole that certain words or expressions in the claims are affected or defined by what is said in the body of the specification, the language of the claims must then be construed accordingly." [emphasis added]
Hence the court must endeavour to understand what the language of the claims of the patent means by having regard to their ordinary meaning. The words must be understood (i) as they would be understood by a person skilled in the art; and (ii) in the context of the remainder of the specification. [4] Thus, the courts in interpreting patent claims should have recourse to the full context and background of a specification in order to decide what the skilled
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addressee would have understood the claims to mean. [5] A term in a claim may bear a different meaning to a person skilled in the art and not its ordinary dictionary meaning. A specialist meaning of a term has to be proffered in evidence. In this matter, no specialist meaning was attributed to the word gasket in any of the expert witnesses' summaries or their evidence. In fact, the defendant's expert witness, Mr Bernard, expressly confirms in his written expert summary that "[t]he witness will indicate that, as the specification and the claims of the patent are in plain...
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