Letraset Ltd v Helios Ltd

• Jurisdiction: South Africa
• Judge: Holmes JA, Potgieter JA, Jansen JA, van Winsen AJA and Kotzé AJA
• Judgment Date: 04 April 1972
• Citation: 1972 (3) SA 245 (A)
• Court: Appellate Division

Holmes, J.A.:

The appellant, a company incorporated under British law, B is the owner of South African patent No. R61/259 relating to a particular type of letterpress adhesive transfer. The respondent, incorporated under South African law, is trading in an adhesive transfer known as MecaNorma. The appellant, averring infringement, brought an action against the respondent in the court of the Commissioner for C Patents for South Africa. The respondent denied infringement, and counterclaimed for revocation of the appellant's patent.

The issues may be summarised thus:

(a)

Is the appellant's patent revocable -

(i)

for insufficiency of definition of the claims;

(ii)

for lack of novelty;

(iii)

for material misrepresentation.

(b)

D If all the foregoing are answered negatively, has the respondent infringed the appellant's patent?

In the court of first instance SNYMAN, J., sitting as the Commissioner of Patents, answered (a) (i) to (iii) negatively, and (b) affirmatively; granted an order restraining further infringement, with E ancillary relief; and dismissed the counterclaim for revocation. On successful appeal, the Transvaal Provincial Division answered (a) (i) in the negative, but (a) (ii) affirmatively; granted an order revoking the patent; and dismissed the action for infringement.

F Stated very simply, the patent relates basically to an invention for transferring images, such as letters of the alphabet. There is a single sheet of transparent polyethylene on which images have been printed, and it is coated on the printed side with a dry adhesive. You lay this sheet, printed side downwards, on the surface to which you wish the images to be transferred. Then, using a stylus or ball-point pen, you G scribble with some pressure on the back of the sheet over the particular images which you wish to be transferred. Finally, you lift up the sheet; and lo, the images are seen to be transferred to the selected surface. There are other facets which will be referred to later.

The invention is more fully and technically defined in the first two claims in the patent, as follows:

'1.

A transfer material comprising a light-transmitting extensible H base sheet printed with indicia on one face and said indicia supercoated with an adhesive, the adhesive being of a character which will not adhere to another surface under light finger pressure but which will adhere to another surface when a substantial pressure is applied to the reverse side of the base sheet, whereby when the base sheet is subsequently lifted away the indicia remains, stuck by the adhesive, on said other surface.

2.

A transfer material comprising a carrier sheet consisting of a sheet of transparent or translucent film of high dimensional stability under normally varying conditions of temperature and humidity but which is readily capable of stretching on application of tension thereto, indicia in printing ink carried by said carrier sheet, said printing ink being based essentially

Holmes JA

on a polymeric material and containing a plasticiser therefore, and a thin layer of a pressure-sensitive adhesive in register with said indicia or extending over the whole printed area of the carrier sheet on the printed side, the adhesion between the said indicia and the carrier sheet being reducible by local stretching of the carrier sheet in the region thereof and the A pressure-sensitive adhesive being substantially non-bonding at pressures less than 50 1bs. per square inch.'

There are several other claims in the patent, to which reference will be made later.

With that prelude I turn to a consideration of the issues seriatim.

Insufficiency of Definition

A patent may be revoked if

'the claims of the complete specification do not sufficiently and B clearly define the subject-matter for which protection is claimed';

see sec. 23 (1) (g) read with sec. 43 (1) of the Patents Act, 37 of 1952. The words 'sufficiently and clearly' relate to the requirements of sec. 10 (3) (c) and (4) of the Act. With regard to the specification which is lodged with the application for a patent in respect of an C invention, sub-sec. (3) requires the complete specification (a) to describe and ascertain the invention fully, and the manner in which it is to be performed; (b) to disclose the best method of performing the invention known to the applicant at the relevant time; and (c) - which is of particular relevance here - to conclude with a claim or claims D defining the subject-matter for which protection is claimed. And sub-sec. (4) provides that the claim or claims shall relate to a single invention, shall be 'clear and succinct', and shall be fairly based on the matter disclosed in the specification.

The reason for sec. 10 is that a patent represents a quid pro quo, as it E was aptly put by Viscount DUNEDIN in Pope Applicance Corporation v Spanish River Pulp and Paper Mills, Ltd., 1929 A.C. 269 at p. 281. The quid is the monopoly conferred upon the patentee for a number of years; see sec. 28 (1) and 32 of the Act. The quo is the new knowledge which he presents to the public, and which, after the expiry of the patent, will F be available for general utilisation. Hence the function of the claim is to inform prospective rivals of the limits of the field denied to them while the patent lasts; and the function of the body of the specification is to instruct the public how to carry out the invention when the field is eventually open. See Griesel v Phoenix Foundry, 1929 T.P.D. 806 at p. 811. As regards the claim, the Legislature obviously G intended that the monopoly must clearly and succinctly define the limits of the field closed to others, so that he who runs may read. As it was put by GALGUT, J., in Transvaal and O.F.S. Chamber of Mines v Hukki, 1964 (2) SA 518 (T) at p. 532 G,

'The public who use this art, the persons trained in the art, should not be left to hazard any guess as to what the forbidden field is.'

The respondent, in counterclaiming for revocation on ground of H insufficient definition, gave particulars thereof in regard to claims 1 and 2 of the appellant's patent. Before dealing with them I summarise the basic principles of approach. For these I am indebted in the main to the arguments of counsel; to the judgment of COLMAN, J., in the Court a quo answering this particular issue in favour of the patent in suit; and, authoritatively, to the judgment of TROLLIP, J.A., in Gentiruco A.C. v Firestone SA (Pty.) Ltd., 1972 (1) SA 589 (AD).

Holmes JA

(a)

It follows from sec. 10 (3) (c) and (4), supra, that the beacons of the monopoly must be found in the claim alone; see Power Steel Construction Co. (Pty.) Ltd. v African Batignolles Constructions (Pty.) Ltd., 1955 (4) SA 215 (AD) at p. 224.

(b)

A As a matter of interpretation of the claim, however, as pointed out by TROLLIP, J.A., in the Gentiruco case, at p. 615E, if 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 be construed accordingly.

(c)

B The degree of sufficiency and clarity of the definition of the subject-matter for which protection is claimed is not stated in the Act. This point was left open in the Gentiruco case, supra at p. 615 in fin, but it is necessary to decide it in the present case. In my view what is required is reasonable certainty. Absolutism does not perch happily on the banners of C our law. See also the judgment of BROOME, J., (as he then was) in Rex v Jopp and Another, 1949 (4) SA 11 (N) at p. 14.

(d)

A technical term is to be interpreted in the light of evidence given by witnesses learned or skilled in the relevant art; see D Electric and Musical Industries Ltd., v Lissen Ltd., 56 R.P.C. 23 at p. 41.

(e)

Words which have no special technical meaning are to be interpreted, not by witnesses, but by the Court, and are to be given their natural and ordinary meaning, as read in their context. (ibid ).

(f)

E With further regard to the evidence of expert witnesses -

'The area of the territory in which in cases of this kind an expert witness may legitimately move is not doubtful. He is entitled to give evidence as to the state of the art at any given time. He is entitled to explain the meaning of any technical terms used in the art. He is entitled to say whether in his opinion that which is described in the specification on a given hypothesis as to its meaning is capable of being carried F into effect by a skilled worker. He is entitled to say what at a given time to him as skilled in the art a given piece of apparatus or a given sentence on any given hypothesis as to its meaning would have taught or suggested to him. He is entitled to say whether in his opinion a particular operation in connection with the art could be carried out and generally to give any explanation required as to facts of a scientific kind.

He is not entitled to say nor is counsel entitled to ask him G what the specification means, nor does the question become any more admissible if it takes the form of asking him what it means to him as an engineer or a chemist.'

- Per Lord TOMLIN in British Celanese Ltd., v Courtaulds Ltd., (1935) 52 R.P.C. 171 at p. 196.

(g)

H The foregoing citation was approved of by this Court in the Gentiruco case, supra at p. 617H to 618A. And at p. 618E TROLLIP, J.A., summarised the position in regard to the issue of insufficiency, as follows -

'Consequently, the evidence of the experts' opinions in the present case as to the meaning of the specification was inadmissible and must be disregarded. On the other hand their opinion evidence was admissible on the sufficiency or insufficiency of the specification or the utility or inutility of the invention described therein on any premised hypothesis as to its correct meaning, and such evidence must, of...