Pasadena Leather Products CC v Resca

• Jurisdiction: South Africa
• Judge: Leach JA, Swain JA, Dambuza JA and Mathopo JA and Makgoka AJA
• Judgment Date: 15 December 2016
• Docket Number: 137/2016
• Hearing Date: 23 November 2016
• Court: Supreme Court of Appeal

Leach JA (Swain, Dambuza and Mathopo JJA and Makgoka AJA concurring)

[1]

The first appellant manufactures what is called a 'swivel holster' in which handheld firearms may be housed, a product both appellants have disposed of in this country. The respondents are the joint registered proprietors of a registered patent number ZA 98/6778 entitled 'A Lockable Holster' (the patent). They sued the appellants in the Court of the Commissioner of Patents, claiming that their swivel holster infringes the patent in various respects and seeking consequential relief. The appellants, in turn, filed a counter claim,

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Leach JA (Swain, Dambuza and Mathopo JJA and Makgoka AJA concurring)

contending that the patent was invalid as the invention to which it referred is not patentable under s 25 of the Patents Act 57 of 1978 (the Act) and ought to be revoked.

[2]

The respondents were successful. Not only was the appellants' counter claim dismissed but an order in the respondents' favour containing, inter alia, the following relief, was granted:

'(i)

The first and second appellants are interdicted from infringing each of claims 1 and 7 of the patent by, in the Republic, manufacturing, using, making, disposing or offering to dispose of the Swivel Holster or any other product falling within the scope of those claims.

(ii)

An order for the delivery up for destruction of any product in the possession or under the control of the appellants which infringe any of claims 1 and 7 of the patent;

(iii)

An enquiry into damages suffered by the respondents as a consequence of the infringement of the patent and payment of the amount of damages found to have been so suffered, alternatively into the extent of the infringement and the amount of a reasonable royalty to be paid in lieu of damages, and payment of the amount of royalties found to be so payable.'

It is against this order that the appellants appeal to this court. There is no appeal against the dismissal of their counter claim or a further order declaring the patent to be valid.

[3]

It is hardly necessary to say that an inquiry as to whether there has been an alleged infringement of a patent requires, as a first step, an interpretation of the patent itself. A patent is divided into two parts, firstly a description or the

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Leach JA (Swain, Dambuza and Mathopo JJA and Makgoka AJA concurring)

body of the specification which serves to describe the invention in sufficient detail that the rational person skilled in 'that art' can understand what the invention is and how it is put into practice. The second contains the claims in the patent, which serve to define and set limits to the monopoly that the patent is intended to secure and protect. As opposed to the specifications, the function of the claims in a patent is 'to inform prospective rivals of the limits of the field denied to them while the patent lasts'. [1]

[4]

The various claims thus define the exclusive rights of the patentee and are often referred to as the 'fences' or 'boundaries' which provide the 'fields' of the monopoly. As the primary object of a claim is therefore to limit and not extend the patentee's monopoly, it has given rise to the well-worn phrase that 'what is not claimed is disclaimed'. As was said in Electric and Musical Industries:

'The function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundary of the area within which they will be trespassers. Their primary object is to limit and not extend the monopoly. What is not claimed is disclaimed. The claims must undoubtedly be read as part of the entire document and not as a separate document; but the forbidden field must be found in the language of the claims and not elsewhere.' [2]

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Leach JA (Swain, Dambuza and Mathopo JJA and Makgoka AJA concurring)

The necessity for the monopoly to be defined in the claim was graphically described as follows in Marconi's Wireless Telegraph v Phillips Lamps Ltd 1933 RPC 287: [3]

'It is not sufficient for the inventor to discover his gold mine - he must also peg out his claim. Outside the pegs, the gold, if it is there, is free to all.'

[5]

Bearing these principles in mind, I turn first to the specifications which are exhaustively and repetitively set out in the patent. Mention is made therein of 'camming' surfaces and how 'attempted withdrawal of the fire-arm from the holster cavity without releasing the locking member results in the trigger guard bearing against the second camming surface exerting a moment around the pivot axis of the locking member thereby urging the locking member into a more firmly locked position'.

[6]

Crucial to this description and the operation of the invention (and for that matter the outcome of this appeal) is the meaning of 'camming' surfaces. In M Props (Pty) Ltd v K Riemann and Riemann Associates and another 1997 BIP 17 (CP) 22 the expert witnesses on both sides agreed that a cam is 'a mechanical device used to convert one kind of displacement or motion to another kind of displacement or motion by making use of a specially designed profile'. The court (MacArthur J) accepted this and continued:

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Leach JA (Swain, Dambuza and Mathopo JJA and Makgoka AJA concurring)

'The conversion of the motion is achieved by the cam driving or guiding another component called a follower. It is not necessary to discuss the situations referred to by Dr Hunt where the follower controls the cam. Through the special shaping of the cam, i.e. the designed profile, the rotational movement in the cam may be converted into a linear motion in the follower. In the same way the cam could have a linear motion and be provided with a particular profile as to give a different linear motion in the follower. Likewise a rotational motion in the cam can provide a different rotational movement in the follower. In other words, the cam mechanism which comprises the cam and the follower can convert a given input motion into an output motion of a particular desired form. A cam system is clearly a versatile and flexible tool.'

[7]

Relying upon M Props, the court a quo held a 'camming surface' to be the surface or site at which motion is imparted to the cam by the follower, in this case, the trigger guard. This finding was accepted by both sides in the appeal in this court, quite correctly, and will be used by me in the analysis that follows.

[8]

Bearing that in mind, the somewhat convoluted description of the patented holster's operation set out above becomes clear once regard is had to the drawing, Figure 2, annexed to the patent and reproduced below:

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Leach JA (Swain, Dambuza and Mathopo JJA and Makgoka AJA concurring)

[9]

In this figure, numeral 10 generally indicates a holster broadly in accordance with the invention. The working of the invention is further described in the specification in terms similar to those already quoted above:

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Leach JA (Swain, Dambuza and Mathopo JJA and Makgoka AJA concurring)

'The holster 10 has a body 12 and a locking member in the form of a latch 16 mounted on the body 12.

. . .

The latch 16 is pivotally mounted on an outer surface 17 of the body 12 for limited pivotal translation about a pivot axis defined by a pivot pin 26. The latch 16 is in the form of a first order lever and includes an effort arm 30 and a working arm 31 positioned on opposite sides of the pivot axis. A biasing spring 28 is positioned in compression between the effort arm 30 of the latch 16 and the body 12, biasing the effort arm 30 away from the body 12 into a locked or fire-arm retain position of the latch 16 (shown in solid lines in Figure 2), in which a portion of the working arm 31 protrudes into a trigger guard passage interfering position in the trigger guard retaining region 20 of the cavity 14. Two angularly spaced camming surfaces namely, a first camming surface 18 and a second camming surface 19 are provided on that portion of the working arm 31 which, in the locked or fire-arm retaining position of the latch 16 protrudes through the aperture 26 into the trigger guard region 20.

. . .

In Figure 2, reference numeral 50 generally indicates a fire-arm. The fire-arm 50 has a muzzle 58 and a trigger guard 52 having a leading or outer edge 54 and a trailing or inner edge 56.

. . .

In use, when the fire-arm 50 is inserted into the holster 10, the camming surface 18 of the latch 16 is engaged by the leading edge 54 of the trigger guard 52, cam-follower fashion, urging the camming surface 18 outwardly and...