The defence is (1) a denial of the alleged infringement, and (2) that the patent was bad because the alleged invention was (a) not the proper subject matter for a patent, (b) not useful, (c) not new, (d) published prior to the date of the letters patent in Western Australia in Knight's Dictionary of Mechanics, and (e) used in Western Australia prior to the issue of the patent by the use of certain ploughshares known as Ransom's Y.O.H. and Y.F.L., Howard's B., Oliver's, Hornsby's R., and Smith's P.C.H.S., (f) insufficient distinguishment in the specification between the matters the plaintiffs claim to have invented and those which they do not claim to have invented and admit to be old. On the appeal to this Court the grounds insisted on in impeaching the letters patent were those I have termed (b), (c), (d) and (e), but the appellants also vigorously contested the alleged infringement, and claims 2 and 3 in the complete specification were the subject of opposing constructions. Claims 1, 4 and 5 were passed over, the appellants denying, and the respondents not asserting, that the footpiece the subject of these claims had been taken by the appellants.

In ploughs and cultivating implements the combination of a share having on the land side a part turned inward and upward forming a flange and tongue adapted to fit over a corresponding downwardly projecting rib on the foot and with a bolt or other suitable fastening on the wing side substantially as described and illustrated; and

A plough or cultivator share having a flange or tongue turned inwardly and upwardly from the land side adapted to engage a rib on the bottom of the footpiece substantially as described.

The case therefore mainly turns upon the share. The appellants sell ploughshares. They do not appear to make them. The firm of J. & T. Muir, the manufacturers in Melbourne from whom the defendants have been purchasing the allegedly infringing shares for sale in Western Australia, do not make the footpiece, nor do the appellants sell it. The share is a separate article which is bolted on to the footpiece for use in ploughing, and the footpiece in its turn is attached to the stem. Of the share manufactured by the plaintiffs, now respondents, there is a part turned inward and upward, the inward turn forming a flange and the upward turn forming a tongue, for so these portions are designated in the claim and in the evidence. The shares manufactured by J. & T. Muir have in effect the flange without the tongue; that is to say, the metal is bent at an angle to make the inward turn, and there is not a further angle to make the upward turn or tongue.

As the respondents used their appliance the flange and tongue fit over and engage the rib of the footpiece, to which the share is bolted on the wing side. The object of the respondents' appliance is obviously to give a better grip than was given by the socket as previously employed.

In the body of the specification the respondents say: - "The special feature of the share is that it has on the land side an inwardly turned portion forming a flange 2 with an upwardly projecting tongue 3 adapted to fit over and upon the lower portion of the specially shaped footpiece." See those numbers as they appear on figures 5 and 6 attached to the specification.

The fair reading of claim 2 seems to me to be that it claims for the combination of a share, containing a flange and a tongue, with a bolt on the wing side attaching it to the rib of the footpiece, and I take the meaning of claim 3 to be, either that the flanged and tongued share is claimed as an integer, or that the flange and tongue of the share are claimed as a combination. Of these two meanings the former seems to me to be the more consistent with the words of claim 3. Claim 2, in seeking protection for a "combination," uses that word; claim 3 does not: and comparing the two claims, and seeing that primâ facie a substantially identical description in each as a matter of sense indicates the same thing, the meaning is confirmed, since in claim 2 the similar terms used to describe the share are used to describe it as an integer in a combination of two things, one being the share and the other the "bolt or other suitable fastening on the wing side" there mentioned. I think, then, that in claim 3 the share is claimed as an integer. If it were not so, probably the consequences to the respondents would not be very different. In claim 2 the flange and tongue are stated to be "adapted to fit over a corresponding downwardly projecting rib on the foot." In the same paragraph the flange and tongue are stated to be "adapted to engage a rib on the bottom of the footpiece." In each case, reading the words in their ordinary meaning, they seem to be a mere description, which cannot extend but may limit the immediately preceding part of the claim. It would be a strained construction to treat them as claiming a combination of the share and the rib.

My conclusion, therefore, is that a share containing a flange turned inward and a tongue turned upward is claimed in each instance, in the first in combination with a bolt or other fastening on the wing side as described and illustrated, and in the second as of itself a substantive integral invention. As Wills J. says in Incandescent Gas Light Co. Ltd. v. De Mare Incandescent Gas Light System Ltd.[1], in the passage quoted by the learned Judge who tried the present case, "What the thing invented is must be gathered from the specification alone, and the patentee cannot escape from the thing he has claimed as the standard, and the only standard with which to compare the alleged infringement so as to see if it constitutes substantially the appropriation of the thing claimed." In the task of construction I have, as Wills J. thought to be the right course, "avoided any reference to the relative importance of different parts of the invention." But, as he further points out, "in dealing with the question of infringement, it is impossible not to consider them." It is when that question is reached - when we consider what has really been done - that the question arises, not what has been taken from the specification, but what has been taken from the thing patented, and whether the thing taken is the substance of the invention.

Having regard to the "previous state of knowledge" (in the sense of Lord Alverstone's judgment - also cited by McMillan A.C.J. - in Presto Gear Case and Components Co. Ltd. v. Orme, Evans & Co. Ltd.[2]), it is clear that in 1900, when this patent was taken out, the share with an inward flange, but not with an upward tongue, was well known. It existed in several of the socket shares, as they have been called, such as the Y.O.H., Y.F.L., and others of those already mentioned. A certain degree of grip was given by the inward flange, varying no doubt with its width inwards, as such variations are found in the specimens produced. No doubt the grip was assisted on the other side of the socket. But that does not alter the fact that the inward flange was a well known expedient to help the grip. It is undeniable that the grip was increased substantially by the respondents' addition of the upward tongue, and reading the claim as applied to the subject matter I cannot doubt that the addition of the tongue is the real substance of the invention. I come to that conclusion on a fair consideration of the evidence and the exhibits.

Now, the appellants have never touched the tongue. What they have done may not exhibit much advance in view of the state of knowledge in 1900. They have practically put in operation the flange as then understood and used. The grip in the share made by the Muirs exists also in the Y.O.H., Y.F.L., &c. If the upward tongue be left out, there is no essential difference in the grip between the respondents' share and any of the then known socket shares. Without the tongue I do not think they would have had an invention at all, so far as claims 2 and 3 are concerned. Now, if the respondents' view were accepted that the tongue is not of the substance of the invention they would be left, as to combination, in a position not much better than if they had claimed the combination of a share, having merely the then well known inward flange, with an ordinary bolt or other "suitable fastening" on the wing side, as they describe it. On the other hand, apart from combination they would be left in no better position than if they had claimed as a separate integer a share with the well known inward flange and no more, except that in either case the share would have to fit over and engage the rib at the end of the footpiece. I cannot but think, therefore, that by establishing that the tongue is not the substance of the invention the respondents would place themselves in a hopeless position.

If, on the other hand, the tongue is the substance of the invention, as I think it unmistakably is, how is it possible to say that the appellants have pirated the substance when they have not touched the tongue? There, again, the position seems to be hopeless. If they have not taken the new thing without which this was not an invention, how can they be said to infringe?

I cannot answer these questions so as to affirm the judgment under appeal. His Honor who tried the case thought the "pith and marrow" of the invention, looking at the specification as a whole, was "a rib capable of being gripped effectively by a share, and a share capable of effectively gripping the rib"; and he put it that the essential feature of the invention was a combination of these parts. As the subject matter is necessarily referable to the claim, it seems to me, with all respect, that there is no claim of any such combination. His Honor thought that the substance is to be found in the "downward and inward" flange. There is no question of credibility, and upon the oral evidence and exhibits we are in as good a position to judge of the questions of fact involved as was the Court below, and from what I have already said it can be gathered that I cannot agree that the substance of the invention is anywhere if not in the tongue. That has not been taken, and I cannot agree that the "downward and inward flange" was devised by the plaintiffs at all.

As to combination, I add a passage from Mr. Frost's well known work, which seems to me to put in clear terms the position which a defendant occupies in such a case as this. At p. 352 in the fourth edition he says: - "In order to answer a charge of infringing a patent for a combination of several parts by the omission of one of them, it is not necessary for a defendant to prove that the part omitted was an essential element in the combination in the sense that the machine would not work without it; but he must at least show that it is a material element and not a mere detail which may be varied or omitted altogether without serious detriment to the successful working of the combination."

I think that the appellants have more than discharged that onus, even if a primâ facie case of infringing the respondents' combination was made. I need add nothing as to the third claim. It is with hesitation and diffidence that I differ at any time from the opinion of the learned Judge who tried this case, and who is now the Chief Justice of Western Australia; but upon the best consideration at my command I cannot avoid coming to the conclusions expressed.

It becomes unnecessary to deal with the remaining defences.

The determination of this appeal involves the consideration of the following questions: - (1) What the patentees claim as their invention; (2) the validity of their claim; and (3) whether the appellants have in fact infringed the patentees' rights.

(1) The Patentees' Claims. - Claims 2 and 3 are the relevant claims. On the question of construction it is necessary, in view of the argument addressed to us, to remember in the first place that this is a question for the Court as a matter of law, and not for a jury as a matter of fact. Certain necessary and preliminary facts, as the meaning of terms of art, the state of knowledge, and surrounding circumstances, may be found as facts either by the jury or the Court in its capacity of jury; but after that the construction is a matter of law in the sense that it is the office of the Judge as such to construe the language of the instrument: See Neilson v. Harford[3], and Di Sora v. Phillipps[4]. Then, it is definitely laid down - as by Lord Blackburn in Dudgeon v. Thomson[5] - that the specification is not to be widened in the interest of the patentee so as to include an alleged infringement, however unhandsome the defendant's conduct may be, or in the same interest narrowed for the purpose of excluding an old thing fairly within it, in order to avoid invalidity. The Court must construe the document fairly and truly - without bias one way or the other, of course recollecting in case of real ambiguity the doctrine as to so construing a document ut res magis valeat quam pereat. These doctrines are really common to all written instruments.

But there is one further consideration specially applicable to patents, because the grant of a patent is a grant of a monopoly, and is upon certain well known conditions affecting the public generally. This further consideration is clearly stated in the judgment of Fletcher Moulton L.J. in Vidal Dyes Syndicate Ltd. v. Levinstein Ltd.[6] in the following words: - "By his specification, and the claim with which it concludes, the patentee delimits the area of his monopoly. If the validity of his patent is challenged, he has to show that all within that area is novel and useful, and if he does so his patent is valid, assuming, of course, that he has duly performed his other obligations. But, on the other hand, he cannot complain of the public doing anything which is outside of the area so limited. What they thus do is not within his monopoly. If, then, he has made a step an essential step, he cannot be required to prove that the invention without that step is either novel or useful. It is not within the area of his monopoly. It follows, of course, that he cannot complain of the public doing anything in which that step is not used. But if he has described that step as merely optional (however advantageous it may be) he has extended the area claimed by him to cases where it is not used, and the public do not get outside the area of his monopoly by non-user of that step. But the patentee must then show that the invention is novel and useful without it."

That passage has an intimate bearing on both the questions of construction and infringement.

Bearing all those principles in view, we have no doubt that what the patentees have delimited as their area of monopoly is the ploughshare with the inward flange and the upward tongue as a united characteristic. They have, to quote the expression of the learned Lord Justice, made the step of upward tongue "an essential step," with the consequence that, so far as the claims in question are concerned, they cannot complain of the public doing anything in which that step is not used.

That delimitation sets up what Wills J. in the Incandescent Gas Light Co.'s Case[7] calls the "standard" which the patentee has set up as the thing invented, and which that learned Judge there says "must be gathered from the specification alone."

We would add that though we do not refer to the evidence to lead us to the construction of the specification it is satisfactory to note that John Shearer in his evidence says that the invention which is useful as regards the share is the portions marked 2 and 3 in figure 5 in the plan and figure 6 - that is, the inward flange and the upward tongue. On further being asked the question, "Is your invention, the portion 2" (the flange) "without the 3" (the tongue)? he finally answers, "I should say it is the portion 2 combined with the portion 3."

(2) The Validity of the Claims. - If construed as we have construed them, we are not by any means prepared to hold the upward tongue non-inventive. It is not necessary, however, to decide that point. But if construed so as to make them apply to the inward flange without the upward tongue, we should say, upon the patentee's own evidence already quoted, that the claims included matter that was old and not patentable in 1900. We say nothing about the footpiece in this connection, because it is not sold by the appellants, and because the reference to the rib in the claims is one of descriptive limitation, and not of combination.

(3) As to Infringement. - Here the second part of the judgment of Wills J. comes into play, and we have to examine the alleged infringement by the side of the "standard" already ascertained from the specification. Clearly, there is no upward tongue, and, as that is "an essential step," the appellants have not infringed. The case is thus clearly within the latter part of the quotation from the judgment of Fletcher Moulton L.J. in the Vidal Dyes Syndicate Case[8]. We should add that the contention that in fact there was an upward tendency given to the flange in the alleged infringements, equivalent to an upward tongue, is not sustained. Inspection discloses nothing appreciable of that nature, and, as inward flanges were old in 1900, it is a proper deduction from Mr. Fry's evidence, if evidence indeed were necessary, that as long as such flanges were made, exactitude of angle could never be attained with certainty. Of course, if it were seen that advantage was being taken to manufacture a real bend so as to be in effect and substance an equivalent for the upward tongue, including in one curved piece the substantial equivalent of the flange combined with the tongue, nothing in this decision would protect it. The tribunal - Judge or jury - would be ready to detect an act of that nature, and prevent it. But that has not so far occurred. Something was said about the purpose for which the ploughshares were intended, namely, to be used by purchasers from the appellants as fittings to their patent footpiece. Assuming, but certainly without deciding, that the mere use of the share upon the footpiece would constitute an infringement, it is clear that the sale of an article, not in itself an infringement, does not constitute an infringement, even if sold with the knowledge that the purchaser intends to use it for the purpose of infringement (Dunlop Pneumatic Tyre Co. Ltd. v. David Moseley & Sons Ltd.[9]). We are strongly persuaded that failure to bear this point in mind has led to much of the misconception in the present case, because all that has been said about the purpose of the share, and the object of using it in combination with the rib of the respondents' footpiece, appears to be referable to the idea negatived by the case mentioned.

Appeal allowed. Order appealed from discharged. Action dismissed with costs, including any reserved costs. Respondents to be at liberty to apply within three weeks for a variation of this order as to reserved costs, they undertaking to pay the costs of such application in any event. Respondents to pay costs of appeal.

Solicitors, for the appellants, Parker & Parker, Perth, by Varley & Evan.

Solicitors, for the respondents, James & Darbyshire, Perth, by Bakewell, Stow & Piper.

[4] [1863] EngR 875; 10 H.L.C., 624, at p. 639.

[6] 29 R.P.C., 245, at pp. 268, 269.