Sandvik Intellectual Property AB v Outokumpu OYJ
| Jurisdiction | South Africa |
| Judge | TM Makgoka J |
| Judgment Date | 14 December 2017 |
| Docket Number | 5826/2002 |
| Court | Gauteng Division, Pretoria |
| Hearing Date | 14 December 2017 |
| Citation | 2018 JDR 0202 (GP) |
Makgoka, J
This is an application for the revocation of the South African Patent number 2002/5826 (the patent). [1] The applicant, Sandvik Intellectual Property AB, is a Swedish corporation. The patent concerns a conveyor belt for use in a thermal treatment. The technical field of the invention relates to a continuously operated, conveyor type belt for the thermal treatment of a material bed on the belt. The belt is made of interconnected elements provided with perforations for conducting heating and possibly cooling gases to be fed through the material bed and simultaneously through the belt.
The patent has one independent claim (claim 1) and nine independent claims. The last is a so-called 'omnibus claim'. Claim 1 can conveniently be broken down into integers A-F, as follows:
a conveyor belt for a continuously operated conveyor-type thermal treatment, i.e sintering, of a material bed;
said conveyor belt being provided with perforations in order to allow the gases (sic) that are used for heating and possibly cooling the material bed to flow through the material bed and the conveyor belt;
and said conveyor being based on elements connected to each other;
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characterized in that the conveyor belt is made of a perforated, at least one-part element made of a mental piece and allowing the gas to flow through;
and that the perforations are arranged in zones alternating with perforation-free element parts;
and that the area of the perforations is about 20-60% of the total area of the conveyor belt.
It is claimed in the patent specification that the disadvantage of the prior art is that the belts in the prior art have slots in the centre of the belt in adjacent, spaced apart rows. It is said that these rows are made of elongate slots transverse to the proceeding direction of the conveyor belt. It is then contended that when those belts wear off, they must be replaced in their entirety; and such replacement is both time-consuming and costly. Accordingly, it is claimed that the object of the invention is to eliminate the disadvantages of the prior art and to achieve a continuously operated conveyor-type belt that is economical to manufacture and that can be replaced in parts.
The applicant seeks revocation of the patent on three grounds, namely lack of clarity, lack of novelty and lack of inventive step. Before I consider each of the grounds, I set out the general approach to patent interpretation. The first task of the court is to ascertain the nature of the invention as claimed and its precise scope by construing the specification and claims. See Gentiruco AG V Firestone (SA)
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(Pty) Ltd 1972 (1) SA 589 (A) at 614A-616D, where the rules of construction were formulated, which were restated in Monsato Co v MDB Animal Health (Pty) Ltd (formerly MD Biologics CC 2001 (2) SA 887 (SCA) paras 8 and 9 as follows:
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;
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, i.e what the intention was as conveyed by the specification, properly construed;
To ascertain that meaning the words used must be read grammatically and in their ordinary sense;
Technical words of the art or science involved in the invention must also be given their ordinary meaning, i.e as they are ordinarily understood in the particular art of science;
If it appears 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
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the intention that it should bear that meaning in its body or claims, thereby providing its own dictionary for its interpretation;
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 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.
In recent years, there has been a shift away from literalism towards contexualism. See for example Aktiebolaget Hassle and another v Triomed (Pty) Limited 2003 (1) SA 155 (SCA) para 8, where Nugent JA undertook a useful review of the South African decisions (and the adoption of the approach in Catnic Components Ltd and Another v Hill and Smith Ltd [1982] RPC 183 (HL) at 242). In Vari-Deals 101 (Pty) Ltd v Sunsmart Products (Pty) Ltd 2008 (3) SA 447 (SCA) the approach was set out as follows:
'...(W)hat is sought by a purposive construction is to establish what were intended to be the essential elements, or the essence, of the invention, which is not to be found by viewing each word in isolation but rather by viewing them in the context of the invention as a whole ....it is of course true that Catnic did not change the law relating to construction, but it certainly restricted the scope for contesting litigants to indulge in meticulous verbal analysis' of specifications and claims - usually to an extent which would have been inconceivable to the
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ordinary skilled addressee reading the patent to ascertain the invention and the ambit of protection claimed. It also relieved the courts of the metaphorical 'straitjacket' of having to arrive at any interpretation of claims without having free recourse (subject to the well-established limits) to the specification in order to decide what the skilled addressee would have understood those claims to mean.'
The question as to whether the defendant is infringing the asserted claims of the plaintiff's patent, involves a comparison between the alleged infringing product and the actual words of the asserted claims. [2] It is only an infringement if each of the essential integers of a particular claim is present in the alleged infringing product. The claim is to be purposively interpreted by a mind willing to understand and 'not with an attitude of studied obtuseness'. [3] The court must, in other words, be placed in the position of the notional 'addressee' of the patent in issue. This person has been judicially defined as the 'typical representative' or 'ordinary skilled or qualified persons in the art'. [4]
As stated already the applicant attacks the validity of the patent on the the grounds of lack of clarity, lack of novelty and lack of inventiveness. I consider these in turn. Section 61(1)(f)(i) of the Act provides that a patent may be revoked
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if the claims of the complete specification concerned are not clear. The applicant alleges that claim 1 of the patent lacks the requisite clarity and that the claim is consequently invalid and liable to be revoked. In this regard it was argued that while integer B does claim or belt with 'perforations' there is no antecedent in any of the integers of claim 1, or even in any of the subsequent dependent claims, for 'perforation free element parts,' particularly where the 'elements' claimed in integer C are characterized in integer D as being 'perforated' and made of 'a metal piece.' According to the applicant, a conveyor belt comprising 'one element made of a metal piece' as claimed in integer D is inconceivable because:
it is not a continuously operated conveyor belt;
a one-element belt can also not comprise elements connected to each other as required in integer C;
a one-element belt can also not comprise perforated and perforation free elements (as claimed in integer E) connected to each other (as claimed in integer C.
it would also defeat the object of providing a belt of which worn parts, as opposed to the entire belt itself, could easily be replaced (as stated to be one of the advantages of the invention).
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the intention that it should bear that meaning in its body or claims, thereby providing its own dictionary for its interpretation;
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 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.
In recent years, there has been a shift away from literalism towards contexualism. See for example Aktiebolaget Hassle and another v Triomed (Pty) Limited 2003 (1) SA 155 (SCA) para 8, where Nugent JA undertook a useful review of the South African decisions (and the adoption of the approach in Catnic Components Ltd and Another v Hill and Smith Ltd [1982] RPC 183 (HL) at 242). In Vari-Deals 101 (Pty) Ltd v Sunsmart Products (Pty) Ltd 2008 (3) SA 447 (SCA) the approach was set out as follows:
'...(W)hat is sought by a purposive construction is to establish what were intended to be the essential elements, or the essence, of the invention, which is not to be found by viewing each word in isolation but rather by viewing them in the context of the invention as a whole ....it is of course true that Catnic did not change the law relating to construction, but it certainly restricted the scope for contesting litigants to indulge in meticulous verbal analysis' of specifications and claims - usually to an extent which would have been inconceivable to the
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