Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd

Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd - [1970] HCA 38 - HCA 1970 case summary — Zoe

[26]

Whether there has or has not been an inventive step in constructing a device for giving effect to an idea which when given effect to seems a simple idea which ought to or might have occurred to anyone, is often [a] matter of dispute. More especially is this the case when many integers of the new device are already known. Nothing is easier than to say, after the event, that the thing was obvious and involved no invention. The words of Moulton L.J. [2] may well be called to mind in this connexion: - "I confess" (he said) "that I view with suspicion arguments to the effect that a new combination, bringing with it new and important consequences in the shape of practical machines, is not an invention, because, when it has once been established, it is easy to show how it might be arrived at by starting from something known, and taking a series of apparently easy steps. This ex post facto analysis of invention is unfair to the inventors, and in my opinion it is not countenanced by English patent law." My Lords, it is always pertinent to ask, as to the article which is alleged to have been a mere workshop improvement, and to have involved no inventive step, has it been a commercial success? Has it supplied a want? Some language used by Tomlin J. in the case of Samuel Parkes & Co. Ltd. v Cocker Bros. Ltd. [3] , may be cited as apposite: "Nobody, however, has told me, and I do not suppose that anybody ever will tell me, what is the precise characteristic or quality the presence of which distinguishes invention from workshop improvement The truth is that when once it has been found, as I find here, that the problem had waited solution for many years, and that the device is in fact novel and superior to what had gone before, and has been widely used, and used in preference to alternative devices, it is, I think, practically impossible to say that there is not present that scintilla of invention necessary to support the patent." No evidence is more cogent of the success of the invention than that the defendants simply copied it and made profits by making and selling the products. 1. (1943) 60 R.P.C. 135, at p. 142. 2. British Westinghouse Electric & Manufacturing Co. v Braulik (1910), 27 R.P.C. 209, at p. 230. 3. (1929) 46 R.P.C. 241, at p. 248.

[33]

First there was the evidence of two of the directors of the defendant companies, Mr. Graham and Mr. Yates, that from time to time in the period between 1942 and 1954 they had seen welding and cutting equipment comprising inter alia a mixing tube with the features, or some of the features, described in the plaintiff's letters patent 202348. I cannot rely upon this evidence. It is not that I dismiss the evidence as deliberately untruthful - although I am disposed to think that the evidence relating to Ex. 8 and Ex. 9 - which was a less than accurate representation of Ex. 8 - was not wholly frank - it is rather that I cannot accept as reliable, oral evidence relating to particular pieces of equipment to which some reference has been found in the records of the defendant company, and then, as if by unaided recollection of observations made up to twenty-eight years ago, that equipment has been identified and described by the witnesses. It is apparent that during the long period since the equipment was seen, the witnesses must have looked at hundreds, if not thousands, of unremarkable pieces of similar equipment, and I have no confidence in their stated recollections of particular pieces of equipment among those numbers. One instance will serve to illustrate the difficulty that I feel about evidence of this sort. Mr. Yates described in detail the mixing chamber of a cutter which he saw in 1953 and about which the defendants had a job card from which it was inferred that it was an American piece of apparatus made by a company called National. No particulars were given about this mixing chamber and there was no description of it in the records, but Mr. Yates - his memory no doubt stimulated by later examination of apparatus made by the National company, and photographs of such apparatus which may, or may not, have been the same as the apparatus examined in 1953 - gave an elaborate description of the particular mixing chamber seen by him seventeen years ago. It is apparent to me that although Mr. Yates said he was relying entirely upon his memory - and perhaps he believed he was - nevertheless what he was doing was describing what he now thought he would have found in the particular mixing chamber which he had seen so long ago. I have no doubt he was reconstructing on the basis of later observations; he was not remembering what he actually saw.

[34]

The next evidence relating to prior use was given by Mr. Bulgin, who was, I think, both a truthful and a reliable witness. He is a welding or combustion engineer and had been in the business of the defendants in 1952-1953. Upon leaving the business he set up on his own account and manufactured blow pipes with mixer tubes. In the witness box he drew a sketch of the mixer tubes which he had made and sold in 1953-1954 (Ex. 32) and identified Ex. 8 as a tube of later construction, but as being the same as those which he had made in 1953-1954. In this time some eighty oxy-acetylene blow pipes, containing such mixer tubes, were sold. The safest course, in dealing with Mr. Bulgin's evidence, is probably to concentrate attention on Ex. 8 itself, for I am satisfied that if the plaintiff's invention is to be found in that piece of apparatus, then the plaintiff's patent is invalid. In my opinion, however, Ex. 8 does not lead to, nor does it even lead towards, the plaintiff's invention. Exhibit 8 is the end of a mixing chamber where the oxygen entrances are situated. Acetylene, it appears, entered the chamber at a higher point - see Ex. 32. Exhibit 8 shows a cavity which is almost a cone. In it there are drilled holes for the entry of the oxygen. I cannot be sure that the entry is at right angles, but, if it is not, the angle of entry is not much less than ninety degrees. However that may be, the cone could not reflect flashback along the axis of the mixer tube. Any flashback that was reflected would be reflected at various angles and would cause a good deal of turbulence. Moreover, the reflecting surface could not be regarded as extending completely across the mixer tube and it seems that oxygen does enter through the reflecting surface. Furthermore, the gases do not enter the tube closely adjacent to one another. Mr. Bulgin's sketch (Ex. 32) shows that. Again I have had the advantage of Mr. Clark's examination of Ex. 8 and I accept his view that there is nothing in that exhibit which would lead a skilled craftsman to the invention disclosed in the plaintiff's patent. I do not regard Mr. Bulgin's manufactures and sales in 1953 and 1954 as affecting the validity of the plaintiff's patent.

[42]

It is a matter of convenience, amounting to necessity, for the union whereby the tip carrying mixer tube is joined to the handpiece, to be such as will allow the tip to be readily adjustable relative to the handpiece so that the flame may be directed in accordance with the requirements of the work. It will also be appreciated that as two different gases have to be separately fed to the mixer tube, it is necessary to provide two distinctly separate seatings or sealing surfaces between the handpiece and the mixer tube required to be rotationally adjustable relative thereto. Earlier solutions are described as follows: Hitherto the mentioned adjustability has been achieved by providing the rearward or inlet end of the mixer tube with two seatings relative to the handpiece, one of these being made of fibre or other soft material which is able to deform under pressure and thereby enable gas-tight sealing on both seatings, but such arrangement as used heretofore have been generally unsatisfactory and have necessitated the use of spanners in order to ensure tightness of fit and thus increase the inconvenience of adjusting the mixer tube relative to the handpiece or removing it therefrom. The object of the plaintiff's invention as stated was as follows: The object of this invention is to overcome the stated disabilities in a simple manner by the provision of a union between the mixer tube and the handpiece, in which hand pressure alone is sufficient for gas-tight seating of the two sealing surfaces or for removal or adjustment of the mixer tube relative to the handpiece, and for retaining the mixer tube securely in selected adjustment, thus enabling, to the great convenience of the user, the welding tip to be turned to any convenient angle while the gases are flowing and even while the gases are ignited, without involving gas leakage, necessity for spanners, or other inconvenience. The invention consisted: in a mixer tube and handpiece union for a welding blowpipe; comprising, a spigot on the outlet end of the handpiece having a bore and a counterbore therein to the floors of which two gas passages respectively open, coaxial minor and major plugs on the inlet end of the mixer tube which are rotatable and axially movable within said bore and counterbore respectively, passages in said inlet end whereby the interior of said mixer tube is in communication with the interiors of both said bore and said counterbore, circumferential sealing means between said minor plug and said bore and between said major plug and said counterbore, and manually operable clamping means for holding said outlet and inlet ends tightly together in selected rotational adjustment of one relative to the other.

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Judgment (49 paragraphs)

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