Gentiruco AG v Firestone SA (Pty) Ltd

• Jurisdiction: South Africa
• Citation: 1972 (1) SA 589 (A)

Gentiruco AG v Firestone SA (Pty) Ltd
1972 (1) SA 589 (A)

1972 (1) SA p589

Citation	1972 (1) SA 589 (A)
Court	Appellate Division
Judge	Ogilvie Thompson CJ, Trollip JA, Rabie JA, Muller JA and Corbett AJA
Heard	February 15, 1971; February 16, 1971; February 17, 1971; February 18, 1971; February 19, 1971; February 20, 1971; February 21, 1971; February 22, 1971; February 23, 1971; February 24, 1971; February 25, 1971; February 26, 1971; February 27, 1971; February 28, 1971
Judgment	September 22, 1971

Flynote : Sleutelwoorde

Appeal — Proceedings for D infringement and revocation of patent in Commissioner's Court — Proceedings, decisions, and orders of that Court not reviewable — Act 59 of 1959 secs. 1, 19, 21 (2) (a), 24 — Peremption — Leave to cross-appeal from decisions given on appeal to Provincial Division necessary — Absence of cross-appeal precludes E Court from dealing with order suspending Court a quo's order suspending revocation of a patent — Patent — Admissibility in evidence of inventors' data from which specification compiled — Invalidity of claim for ambiguity under Patents Act, 9 of 1916 — Admissibility of extrinsic evidence and the rules for construction of a F specification — Onus of proving invalidity of patent — Meaning of 'suitable for a rubber tire' in a claim — Ambiguity of an expression which is the essential integer in the claims and which is defined in the body of the specification — Invalidity of claims for insufficiency and inutility — Meaning in claim of 'the method according to any of the preceding claims in which the steps are carried out' G etc — Insufficiency of claim under Patents Act, 9 of 1916, for going beyond description of invention in the body of the specification — Sec. 27 (1) (g) of Act — Efficacy of concluding, omnibus claims 'substantially as described' — The law as to anticipation — The law as to inventiveness and common knowledge as an element thereof — H Caution about applying foreign text-books and decisions — Suspension of order of revocation and amendment of specification under Patents Act, 37 of 1952 — Costs — Apportionment of on different issues.

Headnote : Kopnota

The Court of the Commissioner of Patents, established and governed by the Patents Act, 37 of 1952, is not an 'inferior court' as defined by section 1 of the Supreme Court Act, 59 of 1959. Hence the proceedings, decisions, and orders of the Commissioner's Court are not subject to review by a Provincial Division under sections 19 and 24 of the Supreme Court Act. The

1972 (1) SA p590

maxims expressio unius est exclusio alterius and generalia specialibus non derogant applied.

Appellant ('Gentiruco') had sued respondent ('Firestone') in the Court of the Commissioner of Patents for an interdict and damages for infringing its South African patent for making pneumatic tyres out of synthetic rubber. The patent was granted, with priority as from 20th A November, 1950, under the Patents Act, 9 of 1916, since repealed by the Patents Act, 37 of 1952. Firestone denied infringement and alleged that in any event the patent was invalid for insufficiency and inutility and for lacking inventiveness and novelty and counterclaimed for its revocation on those grounds of invalidity. Its liability to be revoked had to be determined under the Patents Act, 9 of 1916. The Commissioner held that the patent was valid and had been infringed. He consequently B dismissed Firestone's counterclaim and granted judgment and certain orders for relief in favour of Gentiruco. During the course of the trial the Commissioner overruled Gentiruco's objection to the admissibility of certain evidence taken on commission in England at Firestone's instance. He also ruled that certain exhibits and the evidence given thereon were inadmissible. Those exhibits were documents containing data of experiments and tyre tests conducted by or for the inventors of the C patent in suit from which data the patent's specification had been partly compiled. In consequence of the ruling those exhibits were not further investigated and the evidence thereon was not completed, but the exhibits and evidence were not expunged from the record. Firestone appealed to the Transvaal Provincial Division, the Court a quo. By separate application, Firestone also sought to move the same Court to review the decision of the Commissioner in which he had ruled that the abovementioned exhibits and evidence were inadmissible. Firestone's appeal succeeded, but its review application was dismissed with costs. D During the course of the argument on the appeal in the Court a quo, Gentiruco applied for the Commissioner's ruling on the admissibility of the English evidence to be reversed and for the evidence to be struck out. That was granted. The Court a quo also ordered Firestone to pay certain costs. With the leave of the Court a quo, Gentiruco appealed against the orders adverse to it. Without the leave of the Court a quo, Firestone cross-appealed against the order dismissing its review application, the order striking out the English evidence, and the E special orders on costs. On appeal Gentiruco contended that Firestone had perempted its right to cross-appeal against the dismissal of its review application.

Held, that there had been no such peremption by Firestone.

Held, however, affirming the decision of the Court a quo but for different reasons, that Firestone's review application had been rightly dismissed.

Held, further, affirming the decision of the Court a quo, that the aforementioned exhibits and evidence thereon were admissible, not to construe the specification, but to prove that, properly construed, the F specification was insufficient or that the invention therein described was inutile, but that, as the evidence concerning the exhibits had not been completed and neither party wanted the case remitted to the Commissioner for that purpose, the exhibits and such evidence as had already been recorded should be ignored.

Held, further, that Firestone's cross-appeal should be struck-off with costs, since leave to cross-appeal was necessary and had not been granted.

Held, further, that the orders of the Court a quo as to certain costs G and expunging the English evidence were 'decisions given on appeal to it', against which, in terms of section 21 (2) (a) of the Supreme Court Act, 59 of 1959, there could be no further 'appeal', and hence no cross-appeal, without leave. The Appellate Division was consequently bound by the Court a quo's order expunging the English evidence from the record and that evidence had to be disregarded.

Held, further, that if a claim in a complete specification was ambiguous, i.e. uncertain or vague, it might vitiate the patent under H section 27 (1) (g) of the Patents Act, 1916, the test being whether or not such ambiguity resulted in the invention as claimed being insufficiently disclosed or explained in the complete specification read as a whole.

The admissibility of extrinsic evidence and the rules for the construction of a specification, including its claims, discussed.

Held, further, that if a claim was ambiguous, and, after invoking the body and title of the specification, it could not be given at least a reasonably certain meaning, it must be held invalid, since the maxim ut res magis valeat quam pereat had no application to a patent's specification in that respect.

Held, further, that in the present proceedings the opinion of an expert witness about what any part of the specification meant, or whether or not the inventor's

1972 (1) SA p591

step forward was obvious or whether the invention as claimed was anticipated by any prior publication, was inadmissible in evidence, since those were questions for the Court to decide.

Held, further, that the onus of proving that the patent in suit was invalid on any of the grounds alleged by Firestone rested on Firestone and that onus could be discharged on a balance of probabilities.

Held, further, that the expression, 'suitable for a rubber tire', used A in claim 1 of the specification in suit in relation to a rubber compound had a reasonably certain meaning, and it was a delimiting integer of the claim.

The meaning and effect of the words 'for' or 'suitable for' a particular purpose in a claim discussed.

Where an essential integer of claims 1 to 21 in the specification in suit was that the raw polymer used in the invented process or product had to have a minimum 'computed Mooney' plasticity, and it was B self-evident that the expression 'computed Mocney' had a special meaning that was to be found in the body of the specification,

Held, that, although it was permissible to set up the body of the specification as a dictionary for an expression used in the claims, the expression must there be defined with the same clarity and precision as if the definition was contained in the claims, that, as the only passage in the body of the specification in suit that in form approached to C being a definition of 'computed Mooney' was ambiguous, the Court being unable to say with reasonable certainty which of several possible meanings it bore, the specification did not sufficiently disclose or explain the invention as claimed, and claims 1 to 21 were consequently invalid for insufficiency in terms of section 27 (1) (g) of the Patents Act, 9 of 1916.

Held, further, that claims 10, 11, 14, 15 and 16 were also invalid for insufficiency and inutility, and claims 18, 19 and 21 for insufficiency, on other grounds, and those grounds were covered by Firestone's pleadings.

D Held, further, that the words in claim 10, 'the method according to any of the preceding claims in which the steps are carried out' etc., and similar words in claim 14, meant that the features embodied by each of the previous claims were incorporated into claims 10 and 14 as discrete alternatives, and there was no room...