Ccom Pty Ltd and Ronald Howard Thomas v Jiejing Pty Ltd, Allan Garnham, Jeffrey John Yates and Eric Russell Chappell [1993] FCA 653;

Ccom Pty Ltd and Ronald Howard Thomas v Jiejing Pty Ltd, Allan Garnham, Jeffrey John Yates and Eric Russell Chappell [1993] FCA 653; - FCA 1993 case summary — Zoe

[71]

"Because of the necessity to define such a large number of

characters for writing in Chinese, the adoption of mechanised

writing of Chinese has been slow. For instance, a typical

Chinese typesetting machine has one thousand two hundred keys,

compared to approximately one hundred for an alphanumeric

typesetter, and consequently is much more costly and difficult

to use. It is also not possible to type-set many of the rarer

characters.

A further problem confronting users and students of the Chinese

language is the difficulty of finding the exact shape and

meaning of a character using a dictionary. The primary access

mode for a Chinese dictionary is by reference to the official

number of character strokes for that character. Thus as a

prerequisite the user must know the character stroke count for

the particular character. A user must then search the section

of the dictionary devoted to characters with that official

character stroke count number, using the logical radical

contained within the character to further sub-divide the search

category.

Word processing using Chinese characters presents a similar

problem, as hitherto it has been very inconvenient to define

the desired characters for input to the word processor using a

keyboard. Some Chinese word processors utilise digitizing pads

for their inputs, and the operators must draw the characters by

compiling character strokes one at a time on the pad.

Digitizing pads are expensive and require considerable digital

processing for relating the scanned image on the digitizing pad

to the character which was intended.

Many currently available Chinese word processing computers,

contrary to the manner of writing, require an operator to

mentally break a character up into a phoneme or series of

phonemes selected from, say, thirty-seven phonemes which are

graphically represented on a keyboard overlay. The phoneme

series is entered through the keyboard, and software displays

on the display screen all characters to which that series of

phonemes may apply. Unfortunately the operator first has to

learn a new way of thinking about the construction of the

Chinese language and, because a great many characters do sound

the same, the operator must often select the desired character

from a large number of characters displayed. This limits the

number of characters which can be used. In addition, while the

meaning of Chinese characters is uniform through the

Chinese-speaking world, the pronunciation may vary because of regional

dialects, rendering the system unreliable for users other than

speakers of dialects such as Mandarin".

[84]

"In Rolls-Royce Limited's Application (1963) RPC 251 the method

claimed was for operating and reducing the noise from an

aircraft powered with gas turbine engines by the pilot, inter

alia, increasing the effective area of the final jet nozzle

shortly after take-off to increase the mass overflow through

the by-pass duct thereby reducing the noise emitted by the jet

nozzle. Lloyd-Jacob, J held that this method was not

patentable, being merely 'the disclosure of a general flight

plan directing the initial operational movements of an aircraft

between take-off and the commencement of free-flying

conditions'. He continues, 'this in my judgment is as much

outside the operation of any of the useful arts as would be a

trainer's direction to a jockey in his control of a racehorse'.

This case seems to us to be the strongest from the point of

view of Mr. Aldous' argument, but there is a significant

distinction. In the Rolls-Royce case, no actual modification

of the mechanism of the aircraft itself resulted from the

employment of the claimed method. In the present case the

method necessarily involves a modification. The system is

programmed so that it must in every case operate in accordance

with the method claimed whenever and by whomsoever it is put

into operation. The programme in fact constrains the apparatus

to function in a particular way as long as the apparatus

embodies that programme. In the Rolls-Royce case on the other

hand it can be said that the method was no more than

information or instructions which could be given to a pilot on

which he might, or might not, act.

.....

Having listened carefully to the arguments, we consider the

correct conclusion in the present case is as follows: If a

claim, whatever words are used, namely, whether the claim is

for example for 'a method of transmitting data...', 'a method

of controlling a system of computers' or 'a method of operating

or programming a computer...', is clearly directed to a method

involving the use of apparatus modified or programmed to

operate in a new way, as the present claims are, it should be

accepted. This may conveniently be done by using some such

words as 'a method of transmitting data over a system of

computers (or of controlling a system of computers) consisting

in programming such computers so that...' Claims in this form

in truth meet Mr. Aldous' argument that there must be an

artificial end product or effect before a method can be

patentable. Whether the argument is right or not, there is in

fact such an effect in this case.

It is plain that the question of patentability must in every

case be considered on the facts before a conclusion can be

reached as to whether the claim covers a mere idea or method,

or is more than that and results in fact in some improved or

modified apparatus, or an old apparatus operating in a novel

way, with consequent economic importance or advantages in the

field of the useful as opposed to the fine arts".

[99]

"The Act contains no definition or description of what is meant

by the expression 'program for a computer'. For present

purposes it is sufficient to note that a computer program is

essentially a series of instructions capable of being followed

by a cpu to produce a desired result. The instructions, as

such, are not patentable. This is not surprising. A computer is

an apparatus which operates, within its capacity, in response

to instructions. That is how it is intended to operate. In

principle, the instructions in a computer program do no more

than prescribe a particular manner of operation of a computer

within the range of operations for which it was constructed.

Thus writing a fresh set of instructions for use in a computer

in particular circumstances or for particular purposes cannot

in itself be regarded as an 'invention'. As at present advised,

I think this would have been so even if the Act had not

contained section 1(2), which is expressed in declaratory

terms, and even if section 1(2) had not expressly included

computer programs in the catalogue of disqualified items.

However, it is not necessary to pursue this point on this

appeal.

A further point is to be noted here. To be used in a computer,

a series of instructions has to be recorded in a physical form

which a computer can understand. Typically, but by no means

always, the instructions will be recorded either on a disc

inserted in the computer when required or, in the case of

sequences of instructions routinely or frequently required, in

a ROM which normally is inserted in a computer and not removed.

Plainly, however, if the instructions qua instructions are not

patentable, a claimant's position is not improved by claiming a

disc on which those instructions have been recorded or a ROM in

which they have been embodied. The disc or ROM is no more than

an established type of artefact in which the instructions are

physically embedded. It is merely the vehicle used for carrying

them. If the disc or ROM, considered as a disc or ROM, is in

all respects conventional, a claim can no more be made for the

disc or ROM incorporating those instructions than a claim for a

patent could be made for a conventional compact disc on which a

particular new piece of music has been recorded. Every compact

disc on which a piece of music is recorded differs physically

from every other compact disc on which different pieces of

music are recorded. But these physical differences are not

material for patent purposes, because they constitute no more

than the use of a compact disc for its intended purpose.

Likewise with a disc or ROM which records or reproduces a new

set of instructions, if those instructions are recorded on a

conventional disc, or are stored in a ROM using conventional

methods. To decide otherwise would be to exalt form over

substance".

[136]

"This invention relates to symbol definition apparatus.

This invention has particular but not exclusive application to

the input of Chinese or Japanese characters into electronic

storage, retrieval and transmittal apparatus, and for

illustrative purposes reference will be made to such

application. However, it is to be understood that this

invention could be used in other applications, such as defining

mathematical and other symbols as computer inputs.

The Chinese written language is a symbolic language, rather

than an alphabetic language, and contains many thousands of

symbols, each of which may represent a word. Chinese characters

are all formed from unique combinations of eight

uniquely-shaped basic elements or 'strokes'. Each stroke type is

characterized by its size and direction, and over fifty strokes

may be used to form the most complex characters, although most

characters can be defined with between six and twenty-one

strokes. Each character has a particular stroke count number

associated with it, although the official stroke count number

can vary from the actual stroke count number in a small number

of cases.

.....

In a further aspect, this invention resides in a method of

entering Chinese characters into an electronic processing

apparatus, said method including:-

providing character definition apparatus having Chinese

character stroke entry means for the electronic information

processing apparatus, character stroke data storage means and

character identification means for identifying characters

according to the character stroke content and order thereof;

and

operating said character stroke entry means for entry of the

character strokes forming a character in the stroke order

defined by standard practice.

The method may further include subdividing the character set

into character data segments according to character stroke

count number and using an entered stroke count number for

access to the desired one of said character data segments,

whereby the proportion of the total character set which must be

searched by the entry of character stroke content and order may

be minimised, and whereby the number of character strokes which

must be entered before a unique character definition is

achieved may be minimised.

In order that this invention may be more easily understood and

put into practical effect, reference will now be made to the

accompanying drawings which illustrate a preferred embodiment

of the invention, wherein:-

FIG. 1 is a diagram of the stroke number allocations made to

the eight basic character strokes from which Chinese characters

are formed;

FIG. 2 is a block diagram of an electronic processing apparatus

according to the invention;

FIG. 3 is a diagram of the keyboard of the electronic

processing apparatus in the word-processing mode, and

FIG. 4 is a diagram of the keyboard shown in FIG. 3 in the

character search mode.

As illustrated in FIG. 1, the eight basic character strokes 10

through 18 which are used in the formation of Chinese

characters have been allocated arbitrary stroke number one to

eight respectively. These stroke numbers are utilised by the

electronic processing apparatus 20 shown in FIG. 2 as numerical

reference codes for storage and retrieval of character data.

.....

It will of course be realised that the above has been given

only by way of illustrative example of the invention and that

all such modifications and variations thereto as would be

apparent to persons skilled in the art are deemed to fall

within the broad scope and ambit of the invention as is herein

set forth".

(Emphasis added)

[205]

"The generally accepted test for anticipation is the 'reverse

infringement' test: General Tire and Rubber Co v. Firestone

Tyre and Rubber Co Ltd (1972) RPC 457 at 485-6; Meyers Taylor

Pty Ltd v. Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228; 13 ALR

605; Minnesota Mining and Manufacturing Co v. Beiersdorf

(Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253; 29 ALR 29; RD Werner and Co

Inc v. Bailey Aluminium Products Pty Ltd (1989) 85 ALR 679; 13

IPR 513 at 517.

It is well established that the prior art must disclose all

features of the invention embodied in the patent in suit and

must do so in clear, unequivocal and unmistakable terms. The

prior art must enable the notional skilled addressee at once to

perceive and understand and be able practically to apply the

discovery without the necessity of making further experiments.

Whatever is essential to the invention must be read out of or

gleaned from the prior publication: see Hill v. Evans (1862) 31

LJ Ch 457 at 466; General Tire and Rubber Co v Firestone Tyre

and Rubber Co Ltd, supra, at 486; Washtex Machinery Corp v Roy

Burton and Co Pty Ltd (1974) 49 ALJR 12 at 18; and Van der Lely

NV v. Bamfords Ltd (1963) RPC 61 at 72-3.

In revocation proceedings the prior publication must disclose

all of the integers with the possible exception of the

substitution of 'mechanical equivalents to perform analogous

purposes': Sunbeam Corop v MorphyRichards (Aust) Pty Ltd (1961)

[1961] HCA 39; 35 ALJR 212 per Windeyer at 220; R D Manufacturing Co v.

Monarch Marking Systems Inc. [1983] FCA 159; (1983) 66 ALR 265 at 273, 274, 276

and 286. Although nothing turns on it in this case, I accept

the correctness of the submission of counsel for the

respondents that the term 'mechanical equivalents' is properly

used in cases of want of novelty and the term 'workshop

improvement' is essentially a term applicable to cases of

obviousness: see Blanco White, Patents of Inventions, 5th ed,

para. 4.212 and Terrell, The Law of Patents, 13th ed, para

5.108; cfr Terrell, para 6.52.

The invention must appear in a single disclosure, so it is not

permissible to make a pattern or mosaic of or to read together

various pieces of prior art in different patents. It is,

however, permissible to refer not only to the patent relied on

as the source of disclosure but to another patent or other

patents incorporated by reference provided that it is plain

that the incorporation by reference unequivocally and plainly

demonstrates that the draftsman has adopted the cross-referencing

system solely as a shorthand means of incorporating

a writing disclosing the invention: George c Warner

Laboratories Pty Ltd v. Chemspray Pty Ltd (1967) 37 AOJP 2513

at 2516; Blanco White, 5th ed, at para 4.107 and Gratwick,

'Having Regard to What was Known and Used' (1972) 88 LQR 341 at

[208]

"(1) The claims define the invention which is the subject of

the patent. These must be construed according to their terms

upon ordinary principles. Any purely verbal or grammatical

question that can be answered according to ordinary rules for

the construction of written documents is to be resolved

accordingly.

(2) It is not legitimate to confine the scope of the claims by

reference to limitations which may be found in the body of the

specification but are not expressly or by proper inference

reproduced in the claims themselves. To put it another way, it

is not legitimate to narrow or expand the boundaries of

monopoly as fixed by the words of a claim by adding to those

words glosses drawn from other parts of the specification.

(3) Nevertheless, in approaching the task of construction, one

must read the specification as a whole.

(4) In some cases the meaning of the words used in the claims

may be qualified or defined by what is said in the body of the

specification.

(5) If a claim be clear, it is not to be made obscure because

obscurities can be found in particular sentences in other parts

of the document. But if an expression is not clear or is

ambiguous, it is permissible to resort to the body of the

specification to define or clarify the meaning of words used in

the claim.

(6) A patent specification should be given a purposive

construction rather than a purely literal one.

(7) In construing the specification, the court is not

construing a written instrument operating inter partes, but a

public instrument which must define a monopoly in such a way

that it is not reasonably capable of being misunderstood.

(8) The body, apart from the preamble, is there to instruct

those skilled in the art concerned in the carrying out of the

invention; provided it is comprehensible to, and does not

mislead, a skilled reader, the language used is seldom of

importance.

(9) Nevertheless, the claims, since they define the monopoly,

will be scrutinised with as much care as is used in construing

other documents defining a legal right.

(10) If it is impossible to ascertain what the invention is

from a fair reading of the specification as a whole, it will be

invalid. But the specification must be construed in the light

of the common knowledge in the art before the priority date".

[283]

"HIS HONOUR: Do I understand your evidence to be that the

addresses for the first of three key strokes are worked out

prior to the program being loaded into the computer?---Your

Honour, those addresses are built into the index - the

frequency index file which is called, in the case of

traditional T frequency dot JJ or simplified S frequency dot JJ

Part of the file is this table and it is pre-calculated by the

program which makes the table and it is simply loaded from the

disk and placed on the file, placed into the memory at the time

the program is first started.

.....

MR. GARNSEY: You said that the table - I think it was T

frequency JJ, to take the traditional version number - - -?---

Yes.

- - - was made when the program was loaded?--- No, it's made

well prior to that. It's made when the index was calculated,

which is done not with this program at all, with another.

What index?---The index being the tree and the table and the

word index.

You say the index being the tree and the table and the word

index?---Yes.

By the table, do you mean the table T frequency JJ?---No, no.

There's three parts to T frequency JJ It's not a single entity.

It's a single file but there are three parts of it. One is this

tree structure, one part.

Yes?---The second part is the table which is called the look-up

table or the go-to table or whatever you want to describe it

as, which is on example 3 of Thomas Rogers statement, and then

there is another section to do with the word index which brings

back our word help, which is not mentioned anywhere at all.

And when you said the tree section, you had in front of you

exhibit 29 of Mr Rogers' statement and you pointed to, did you,

page 2 of TR2?---Yes.

Now, I may have misunderstood your answer, but I thought you

said you used the programme to create the table when the

programme was first run?---No, I didn't - I haven't said that

at all, I don't think. If I have given that impression - that

is wrong. The table is not created by the programme. We have

got to specify which programme. It is not created by the

Jiejing programme which is loaded, no.

Is it created by another programme?---It is created by another

programme, but it is not part of the - of what was sold with

Jiejing.

And what is that other programme?---That programme is CC not

EXC.

Yes, and is that programme used to create the tree as well?---

It creates the entire structure necessary to retrieve the

characters in this matter.

And if you change the table would it be necessary to change the

tree?---They have to be related, of course, yes.

And the operation of the creation of those - of the three and

the table, I put to you, is a presearch of the entire data base

created, as you say, by Dr Chappell?---That is again a great

jump of things. There are a lot of stages in between there.

That statement is not - I can't say yes or no to anything

because there are a number of sections. If you break it up I

can answer each individual part.

Now the tree, though, is originally created, is it not, from a

search of the entire data base?---It's - no, it's created from

a file called Frequency.DBF. Frequency.DBF contains the

frequency values for the various characters and words used

within a particular version of the programme. The master data

base contains all words - that is Chinese words and their

stroke categories untruncated - that is complete. It is - there

is no truncation in the master data base. It has all of the

characters and all of the strokes, and that is equally true if

they're Japanese, Chinese, or Korean, for that matter. And from

that we select according to the ones which have a frequency for

that particular language that we're creating the frequency file

for - the T frequency file, for example, we select which

characters are going to be included and at that point that

creates the tree, the table, and the word associations".

[318]

"THE WITNESS: Okay. After I had run the computer models and the

analysis we started to use the full size of the character

database. We noticed that several problems came up, and one was

that the machines were creating a lot of errors. This does

relate to contact. I contacted both Mr Yates and Mr Thomas to

say that there were a lot of difficulties with the machines,

and that led to in - on 11 January - no, on actually 16 January

- a larger computer with a little bit more power to be put in.

Those initial discussions resulted from my pointing out the

difficulties with the existing machines and that would have

been towards the end of the first week in January.

MRS. MULLINS: What contact did you have with Mr Thomas? Did you

have any other contact with Mr Thomas relating to the work that

you were actually doing on the project?---Okay. Now, there were

two separate stages in here which relate to my contact in

particular with Mr Thomas. Essentially, my work at that time

was working with characters in the stroke-type categories. I

worked with computers and with computer programmes, but the

part that I had wasn't able to be executed into a display on

the screen or anything which - like a word processor or

anything like that. Mr Yates worked on that. In order to put

those together, it was necessary for Mr Yates either to come

with his part to me or I had to take my part and go to him. Mr

Thomas was again quite anxious to get a working programme

altogether, and on January 11 Mr Yates came up from the Gold

Coast in order to update the programme. Now, what that means is

that Mr Yates had made changes to his programme, but that's

just a programme. Without any data, that wouldn't run, so what

he had to do was come up to the college in order to take now my

character compilation and make the it work with the programme.

Mr Thomas came out at that time, and we spent a lot of time

there. As you can imagine, if two people do work quite

correctly, particularly in computers, and I can remember it was

quite a long time. Mr Thomas stayed, and at the end - I think

it was around 8 o'clock or so, and then we stayed afterwards

and talked about it - Mr Yates completed putting that programme

together and had me demonstrate that, in fact, it would work.

He made copies. I was given a copy of a programme that worked,

and Mr Thomas was given a copy of a programme that worked. On

the 16, that is, the day when the 386 computer was actually put

in - the computer was supplied by UNI-X - that was brought out

and set up. Mr Thomas and I had a discussion, and he asked me

specifically for a list of the rules detailing how strokes were

placed in the stroke-type categories. He also asked me how long

I thought it would be before all of the stroke-type categories

would be useable and everything like that".

[332]

"Now, you say, in your statement that, during the Easter school

holidays in 1989, you performed the task of typing stroke type

categories into a computer?---Yes, that's correct.

Now, the Easter school holidays start on a Monday and finish on

the Thursday before the Good Friday holiday. What days of that

week did not spend at the office of Mr Thomas and Mr Stohr?---I

cannot remember the exact date, but I know there was five full

working days.

Can you explain to me exactly what you did during those five

full working days?---What I did - I had some - well, I had one

Chinese character appear on the screen for me, each time, and I

have to type in the stroke, as the way I would write it by

hand. And I do that for thousands of characters, in the five

days.

And if you made a mistake with the strokes that you typed in,

what did you do?---I left the way it is, because Tom - Mr

Thomas told me I would be able to get to do it, the next time

around. I actually did it twice.

Now, you say you did thousands of characters. Can you be a

little bit more specific?---I don't know my exact number, but

it would be around 12,000 - 13,000.

And they were characters, some of which contained over 20

strokes?---Yes.

And at that time, what would you say your vocabulary was, as

far as the number of Chinese characters you were familiar with

were?---When you say level, what do you mean? How do you

actually calculate the level?

Well, did you know all of the characters - - -?---No.

- - - that you categorised?---No.

Would you be able to estimate what percentage of the characters

that you categorised you were familiar with?---Approximately

about 65 to 80 per cent.

So, if you put in 12,000 characters, you were familiar with

about 8000 characters at that time?---Yes, roughly.

Did you find that you had any difficulties in categorising the

strokes?---Not really, because I just did it the way that I

will write them, by hand.

Now, you refer in your statement to using a document that Mr

Thomas gave you, I think. You say in your statement the eight

stroke type categories were illustrated and defined in the

patent application and in a fax which Ron Thomas has sent to

Wei Yan on 22 September 1988, both of which were shown to me by

Ron Thomas. So they were the documents that you had looked at

before you did your categorisation of the characters?---Yes.

That's correct".

[342]

189. Dr. Chappell took a sample of the character compilation in the EasyWord 2.5k manual (that is, 2,500 characters). He sampled 69% of the compilation and found that 60% of the character compilation in EasyWord matched exactly his character compilation. Where there were differences he said there were differences of only one stroke category from his compilation for the same character and in certain radicals some alternative forms were used. In evidence it was put to Dr. Chappell that he would expect 60% correlation if two different people were categorising the order of strokes and characters using the same stroke categorisation; he accepted that as correct. The final form of the stroke type categorisation database which appears in the EasyWord manual was taken from the program validated by Mrs. Wong. Mrs. Wong was given the eight stroke type categories and the description of them. Using her learning and experience as a teacher of Chinese language and writing she made some changes to the database which are reflected in the print-out. She made them because she believes that what was on the database was incorrect. She altered codings which would have been identical to those in Dr. Chappell's compilation but the changes she made were acceptable alternatives indicating that it was open to Mrs. Sue Kuo when forming the database to come to the same view as Dr. Chappell in relation to the choice made notwithstanding that Mrs. Wong later altered the encoding because she made a choice of an acceptable alternative coding. The changes which were made in four or five radicals does not mean the database was that of Dr. Chappell. Further, to suggest that because in the character database obtained by Mr. Thomas and reproduced in the EasyWord manuals certain strokes are shown as, for example, horizontal when they are written diagonally and falling, and the encoding of them in the manual shows them as correctly written and not as the character is graphically reproduced in the manual, does not mean that the stroke type categories have simply been inserted from Dr. Chappell's compilation into the new database. It does not follow that simply because the graphic representation is horizontal the stroke ought to be coded as a horizontal stroke. The principle underlying the system is that strokes are categorised as they are written. To either Mrs. Kuo or Mrs. Wong applying the criteria of the system the strokes would be coded as a vertical stroke notwithstanding that the stroke was graphically printed horizontally; to do otherwise would be to abandon the system.

[343]

190. There is another reason why I do not accept that the applicants and the third respondent have directly copied the compilation contained in written form as annexure "A" to exhibit 72 or in program form as contained in exhibit 60. Exhibit 60 contains a database of 13,000 odd characterisations by stroke type category. It was taken from the computer on which Dr. Chappell had been working on 7 February, 1989. A copy of that program as I have found never came into the possession of the applicants or Mr. Stohr. The material which I am satisfied that Mr. Lewis had was more probably than not a copy of the databases obtained on 11 January, 1989 by Mr. Thomas or an earlier copy of them. The relevant database of the program obtained on 11 January, 1989 had at a maximum the stroke type category entries for 6,000 - 8,000 characters. It was in terms of what is produced in the Easyword 13K manual significantly incomplete. It would require the addition of at least an additional 5,000 - 7,000 categorisations to bring it to the state of exhibit 60. If, as Dr. Chappell claims, his categorisation requires the application of certain rules developed by himself and Mr. Hong, it would require that some person analyse the categorisations contained in the partly completed database in order to code the balance of the database consistently with the criteria chosen in the earlier exercise. It may be that this would have occurred if Mr. Lewis had been successful in constructing the new database using the old material. However, when this was abandoned because of technical difficulties, the only practical alternative was to start from the beginning again and this is what has occurred. The criteria which have been applied are contained in the written document given by Mr. Thomas to Wendy Kuo in or about March or April, 1989. To this has been added the linguistic expertise of Mrs. Kuo and of Mrs. Wong as a teacher and writer of Chinese characters. Because the same criteria for categorisation have been used by persons with either intuitive or acquired linguistic skills, a similar result has been produced.

At a glance

Court

Decision date

Before

Source

Judgment (365 paragraphs)

Ccom Pty Ltd and Ronald Howard Thomas v Jiejing Pty Ltd, Allan Garnham, Jeffrey John Yates and Eric Russell Chappell [1993] FCA 653; (1994) Aipc 91-050 (1993) 27 IPR 577 (1993) 48 FCR 41 (24 December 1993)

Parties

Legislation Cited (5)

Cases Cited (24)