Stauffer Chemical Co and Another v Safsan Marketing and Distribution Co (Pty) Ltd and Others

• Jurisdiction: South Africa

Stauffer Chemical Co and Another v Safsan Marketing and Distribution Co (Pty) Ltd and Others
1987 (2) SA 331 (A)

1987 (2) SA p331

Citation	1987 (2) SA 331 (A)
Court	Appellate Division
Judge	Corbett JA, Viljoen JA, Hefer JA, Galgut AJA and Nicholas AJA
Heard	March 17, 1986; March 18, 1986
Judgment	August 18, 1986

Flynote : Sleutelwoorde

Patent — Infringement of — Infringing article not falling literally within claim — Contention that infringing substance (a herbicide) had C appropriated the pith and marrow of patent — Doctrine of infringement by substitution of equivalents applicable only to unessential features or integers of claim — To determine what constitutes essential features of claim, specification to be interpreted purposively with understanding of persons with practical knowledge and experience of kind of work in which D invention to be used and in light of what generally known by such persons at date of patent — In instant case, where appellant's had in formulating their specifications listed a large number of possible constituent compounds, Court holding that person skilled in the field would, in the light of what was known at that time, have understood the claim to define E exhaustively the possible constituents — Accordingly the choice of one of the listed compounds was an essential integer of the claim and therefore there was no room for the application of the doctrine of chemical equivalence — Appellants in any event having failed to show that constituent of 222 infringing compound a known and obvious variant of F listed compound at time of patent — Appellants' action for infringement accordingly held to have been correctly dismissed by Court of Commissioner of Patents.

Costs — Party and party — Expert witnesses — Qualifying fees of — Such witnesses not called to give evidence as opposing party no longer pursuing the contention on which the 'witnesses were to testify — No authority for G proposition that Court will not make order in respect of qualifying fees for persons not called as witnesses — Fact that such persons not called to testify is merely a factor to be considered in the context of all other relevant circumstances in determining whether the payment of qualifying H fees was reasonably necessary — Court holding that such fees allowable where it became clear during the trial that it was no longer necessary for such witnesses to testify as other party no longer pursuing the contention on which they were to testify.

Headnote : Kopnota

The general rule in regard to the allowance of qualifying fees of expert witnesses is that the court will grant an order for I such qualifying fees only where it is satisfied that the payment of such qualifying fees were reasonably necessary. There is no authority for the proposition that normally the court will not make an order in respect of qualifying fees paid to persons not called as witnesses. In fact, it appears that such authority as there is, is contrary thereto. The true position is that the fact that the person concerned was not called as a witness is merely a factor to be considered, in the context of all other relevant circumstances, in determing whether the payment of his qualifying fees by the party J applying for the order was reasonably necessary. In

1987 (2) SA p332

A the absence of any explanation, the failure to call the person as a witness would generally lead to the inference that the payment of fees was not reasonably necessary. Where, however, as in the present case, it appears that the party in question originally intended to call the person as a witness and that, in the light of the issues then subsisting, the person's evidence would have been relevant, but that subsequently the issues were narrowed down or eliminated by reason of the attitude adopted by the other party to the case B in such a way as to render the calling of the person as a witness unnecessary, then the non-appearance by such person in the witness stand would not of itself lead to such an inference and the court might well come to the conclusion in such circumstances that the payment of qualifying fees was reasonably necessary.

Appellants had brought an action in the Court of the Commissioner of Patents alleging that the respondents C (defendants in the Court a quo) were infringing its patent. The respondents in turn alleged in a counterclaim that the patent was invalid. The Court dismissed the infringement action as well as the counterclaim. The appellant's appealed against this decision and the respondents noted a cross-appeal. It appeared that the appellant's had registered a patent on 4 May 1973 (with 16 April 1971 as its priority date) in respect of a weed-killer defined in the specification as a 'herbicidal composition' comprising 'an active herbicidal compound' and an antidote therefor. The specification provided that the antidote D compound correspond to a particular formula which was given wherein the various constituents could consist of various possible substances which were also listed. The infringement complained of by appellant's concerned a compound marketed by the respondents as 'Genep Plus'. The antidote compound thereof was first synthesised in 1979 and in 1981 a US patent was granted therefore and in 1982 a South African patent. The infringement action was concerned with only one of the constituents of the antidote which the appellant's alleged was E a chemical equivalent or trivial variant of one of the constituents of their antidote as set out in the patent specification. The appellant's argued that the respondents had taken the substance or pith and marrow of the invention and that it was not essential for there to be infringement that the relevant component had to be one of the components listed in the claim specification but that it could be a variant of such a component which achieved the same result.

Held, that the question whether a person who had taken all but F one of the features of an invention and, as regards that one feature, substituted an equivalent had infringed the patent in that he had appropriated the pith and marrow thereof, depended largely on whether the features of the claimed invention represented all the essential integers of the claim and a feature omitted or substituted by an equivalent was an unessential integer.

Held, further, that the doctrine of infringement by the substitution of equivalents applied only in respect of unessential features or integers of a claim.

G Held, further, that, in order to ascertain what are and what are not the essential integers of a claim, the specification was to be read and interpreted purposively with the understanding of persons with practical knowledge and experience of the kind of work in which the invention was intended to be used and in the light of what was generally known by such persons at the date of the patent (in our law the priority date of the claim).

H Held, further, that what the appellant's in the instant case had done in formulating their claim was that, realising that the antidotal effect of their invention could be achieved by compounds of different chemical compositions, they had cast their net as wide as possible: persons skilled in the field would in the light of what was known at the time have understood their claim to define exhaustively the many different alternatives for the constituent in question; accordingly the choice of one of the listed constituents was an essential integer of the claim and there was therefore no room I for the argument based on chemical equivalence.

Held, further, that, even if this were not the case, the appellant's had failed to show that the offending constituent of the Genep Plus antidote was at the time of the patent a known and obvious variant or substitute which performed the same function as one of the constituents listed under the claim.

Held, accordingly, that the appeal had to be dismissed and, the cross-appellant not having been able to show that the J appellant's' patent was invalid, the cross-appeal had also to be dismissed.

1987 (2) SA p333

Held, further, in regard to a cross-appeal against the A disallowance of the qualifying fees of three expert witnesses who were not called to testify as it became clear during the trial that the appellant was not pursuing the contention on which they would have testified, that the cross-appeal on this point should be allowed and the qualifying fees of the three witnesses allowed.

The decision in the Court of the Commissioner of Patents in Stauffer Chemical Co and Another v Safsan Marketing and B Distribution Co (Pty) Ltd and Others 1983 Burrell's Patent Law Reports 209 confirmed but the costs order varied in part.

Case Information

Appeal from a decision in the Court of the Commissioner of patents (Nestadt J). The facts appear from the judgment of Corbett JA.

C Plewman SC (with him C E Puckrin) for the appellant's referred to the following authorities: Gentiruco AG v Firestone C SA (Pty) Ltd 1972 (1) SA 589 (A) at 614; Power Steel Construction Co (Pty) Ltd v African Batignolles Constructions (Pty) Ltd 1955 (4) SA 215 (A) at 224A; American Cyanamid Company v Ethicon Ltd 1979 RPC at 249; Gold Ore Treatment Company of Western Australia Ltd (In Liquidation) v Golden Horseshoe Estates Co Ltd 1919 RPC at 95; Colgate-Palmolive Co v Unilever Ltd 1983 (4) SA 249 (T) at 253G; Multotec D Manufacturing (Pty) Ltd v Screenex Wire Weaving Manufacture's (Pty) Ltd 1983 (1) SA 709 (A) at 722; Catnic Components Ltd and Another v Hill & Smith Ltd 1982 RPC 183; Frank & Hirsch (Pty) Ltd v Rodi & Wienenberger AG 1960 (3) SA 747 (A) at 761; RCA Photophone v Gaumont British Picture Corporation 1936 RPC 167 at 197; Moroney v West Rand Engineering Works (1970) BP 452 at E 460; Nobel's Explosives Co Ltd v Anderson 1895 RPC 164 at 167; American Hospital Supply...