Martin v Scribal Pty Ltd

[4]

The subject of both patents is a ball-pointed fountain pen employing viscous ink fed from the reservoir to the ball-tip. Each patent is for an alleged invention for a pen of this type. Neither specification indicates the principles which, as is now ascertained, govern the operation of such a pen or precisely how they apply. Much of the attack on the two patents flows from this circumstance. It is therefore as well to begin with an abstract description of the working of an ordinary ball-point pen. The ball which transfers the ink to the paper revolves in a collar. The inner revolving face is in contact with a column of viscous ink and carries the ink out as it rolls round so as to become the outer face of the ball. The reservoir which contains the column of viscous ink is a capillary tube or duct the diameter of which should not exceed 4 mm. The capillary tube is open to the air at the end furthest from the ball, or at all events at that end there is an air vent. At that end a concave meniscus is formed at the interface of the viscous fluid and the air. It is formed because of the surface tension of the liquid and its adhesion to the walls of the tube. The ball is very small. At the place where the viscous fluid is in contact with the ball the diameter of the vein is smaller and accordingly the meniscus of the surface of the viscous ink is of less radius. When the pen is turned down to write the ball suffices to overcome the effect of gravity. But when it is inverted the greater strength of the smaller meniscus, or to state it more accurately, the decreased pressure at that surface and the atmospheric pressure operating over a greater surface at the other end, suffice to overcome gravity. The viscosity of the ink absorbs ordinary shocks which would break the meniscus of a more liquid ink. The result is to give a pen which will write until the vein of ink is exhausted and in which ordinary use will not interrupt or break the continuity of the vein. However if the pen is used to write vertically upwards or at a high angle the ball may lose contact with the ink and as the ball rotates draw in air causing a distortion of the meniscus and a consequent failure to sustain the weight of the column of ink. To restore the pen to its function it will be enough to point the pen downward again and write so as to rotate the ball. The ink will flow back to contact with the inner face of the ball and the pen will write again.

[5]

The first of the two patents put in suit (No. 122073) rests upon a specification which describes the invention it covers as relating to improvements in fountain pens of the ball-tip type and particularly to means for providing a regular ink feed to the ball constituting the active or writing element of such instrument. The specification in fact discloses, in the drawings and the text explaining them, a construction which on the foregoing principles would result in a workable pen. But no one reading the specification can escape the impression that the inventor had missed the more essential points of the construction and was relying on certain features which he introduced unnecessarily as forming an integral part of his invention. One of these features is the taking of the tube forming the reservoir through an extended path between the air vent and the ball. He insists on a tube or conduit that is extremely small but describes its size by saying that it must be "of so small a cross-section that a suitable ink cannot escape from the air intakes under the effects of gravity". To explain the drawings the specification says that the throat of the channel is relatively small for example of a section of less than 5 mm. It does not say that it must be of capillary size. The conduit is always described and depicted as in helical coils or in unclosed annular convolutions. Though these two forms are not given as essential, there is an insistence on the conduit following an extended path starting at the air intake and ending at the recess for the ball, and of course the two forms of construction shown do give it the required "extended path". Dense ink seems to be the only form of ink in contemplation but it is not definitely specified. A distinction is drawn at all events in some forms of construction between the conduit and a channel leading from the conduit to the ball. The specification says that, inasmuch as the conduit is of small section, when charged with ink it will contain an uninterrupted vein of liquid as if it constituted an extension of the channel. It proceeds to state that, due to this and other relatively adjusted arrangement of the ball in the setting for it whereby the tip of the instrument remains closed, the ink cannot be discharged by gravity. Notwithstanding this denial of the effects of gravity there follows a statement that, as the ink is used through the use of the instrument, the charge in the form of a vein of liquid will be displaced so as to occupy the space of the portion carried out by the ball. This is then explained on the ground that the vein of liquid remains uninterrupted and is displaced as a whole the rear terminal thereof being in contact with the atmosphere by means of the air intake and therefore the continuity thereof will subsist as the ink is used and there will be no risk of interruptions. It is not easy to suppose that the inventor thought that gravity had no part at all in this phenomenon. And yet he says later that, as the reservoir shown is formed by a coil of small section the instrument may be placed in any position and used in any manner without the vein of liquid being affected by gravity. It all reads as if the extension of the path of the tube by convolution or the like coupled with the exceedingly small diameter of the tube and the closure of the ball were relied upon to keep the vein of dense liquid within the pen when inverted and held with the ball upward.

[10]

The patent upon which the second action is based, No. 133163, was granted for an invention described and ascertained by a complete specification accepted on 14th June 1949, although the application was made on 31st December 1943. The latter of course is the date as of which the monopoly takes effect. The complete specification was in fact the result of many amendments made during the passage through the Patents Office. One defence which the defendant has set up to the action upon this patent depends upon the history of the specification as it developed in the office. But the defences upon which the defendant succeeded in the Supreme Court arise upon the specification including the claims in the form the specification finally took. In the first instance, therefore, it is desirable to put aside the history of the development of the complete specification and to deal with the case upon the footing that the validity and effect of the patent and the issue of infringement depend upon the specification in the form in which it was accepted and made the subject of the grant of letters patent. It is a specification which, unlike No. 122073, does describe the features it embodies which in reality govern the working of the pen to which it relates. The invention is described by the specification as one relating to writing instruments of a type which it proceeds to define by reference to the following characteristics: (1) A ball is mounted for rotation in a housing with part of the ball exposed. (2) It is supplied with ink from a suitable reservoir. (3) The ball is rotated by its contact with the writing surface, carries a quantity of ink through the housing and deposits the ink on the surface of the paper. This general description is followed by something like a definition of the invention. It makes the three points that the tube is of capillary size, that it is to be charged with viscous ink, and that the capillary tube is to be vented, that is to say the column of ink is to be in contact with the air at its upper extremity. But making, as it does, these three points, the specification proceeds to introduce two more which reappear in the claims and they provide a foundation for the two defences upon which the defendant has succeeded in the action. It is desirable to give the words in which these two features are described. After referring to the vented tube of capillary size the specification proceeds "in which when charged with viscous ink a continuous liquid vein is maintained extending from the ball and having a feed duct leading from the reservoir to the ball, the cross-sectional area of which duct, particularly that portion adjacent to the ball, being less than that of the reservoir." The two points lie in (1) the assertion that the pen maintains a continuous liquid vein extending from the ball, and (2) the reference to a feed duct and its characterization. As to the first the defendant denies that in all conditions of use the pen does maintain a continuous liquid vein extending from the ball. With reference to this it is hardly necessary to say that, unless during the process of writing the column of viscous ink is held in contact with the ball and in this sense extends from it, the pen will not mark the paper. As to the second the defendant contends that the description of the cross-sectional area of the duct is ambiguous and in respect of this feature does not disclose with sufficient precision what is the area of monopoly. As to the feature in question it is perhaps convenient before proceeding with the statement of the effect of the specification to recall that the meniscus at or in the vicinity of the ball-point must be of less radius than the meniscus of the tube formed at its other end if the charge of ink is to be held by both menisci against gravity when the pen is inverted and the point is uppermost.

[14]

These doubts or difficulties as to the intention of the patentee are said to make his claim ambiguous. If we were concerned only with a written instrument operating inter partes and not generally these difficulties would easily be overcome by construction. But the principles governing the definition of a monopoly operating over the public at large require a description which is not reasonably capable of misunderstanding. If an ambiguity is purposely introduced in order to produce a vagueness in the boundaries of a monopoly this purposeful introduction of an ambiguity destroys the patent, whether the ambiguity be great or small. Here there is no reason to suppose that there was any such design. The following passage, however, in the judgment of Lord Parker (Natural Colour Kinematograph Co. Ltd. (In liquidation) v. Bioschemes Ltd. [1] ) describes what is the duty of the court and provides the test of ambiguity: - "Further, though it may be true that in construing an instrument inter partes the Court is bound to make up its mind as to the true meaning, this is far from being the case with a Specification. It is open to the Court to conclude that the terms of a Specification are so ambiguous that its proper construction must always remain a matter of doubt, and in such a case, even if the Specification had been prepared in perfect good faith, the duty of the Court would be to declare the Patent void. Once again, though the Court may consider that the meaning of the Specification is reasonably clear, yet if the Specification contain statements calculated to mislead the persons to whom it is addressed, and render it difficult for them without trial and experiment to comprehend in what manner the patentee intends his invention to be performed, these statements may avoid the Patent. The above principles may be thought to bear somewhat hardly on patentees and their agents. A person may arrive at a valuable invention without adequately comprehending the particular point in which the invention is new or valuable, and a patent agent may be insufficiently instructed by his principal, and, however carefully he may consider the terms of the Specification he is employed to draw, he may quite easily fail to anticipate the points which may be raised, if and when the validity of the Patent comes in issue" [2] .

[16]

Notwithstanding the strictness and rigour with which these principles have repeatedly been applied, I find myself unable to concur with Sholl J. in the conclusion that they destroy the patentee's first claim for ambiguity. To begin with I do not think on a fair reading of the specification as a whole a man at all familiar with the subject of ball-point fountain pens could suppose that any part of the duct might consistently with the claim be of greater diameter than the main conduit forming the reservoir. The whole invention is clearly described as requiring a tube of a capillary size with a reduction towards the ball. The complaint that there is no precise way of differentiating between the conduit forming the main reservoir and the duct appears to me to overlook the fact that the duct is only the terminal of the reservoir and strictness of definition is incompatible alike with its purpose and character. The specification conveys two ideas with respect to the duct, and they appear to me to suffice. One is that as the reservoir approaches the ball, it gives place to a different formation of tube, designated the duct. The other is that the formation must include a lessened diameter at and near the ball, though the lessened diameter may begin earlier. Each of these ideas involves a matter of degree and for that reason any distinction that is precise must be but an arbitrary restriction on the inherent variability of the feature which the specification describes as the duct. The difference in formation may lie simply in the lessening of the diameter or it may lie in the commencement of a new member of the construction. The drawings make it clear that in some embodiments there is a physical distinction in the members forming the tube or conduit and the duct. Doubtless a manufacturing advantage may be obtained by having a detachable portion which embraces the ball and the duct. But this advantage is no part of the claim. In the operation of the pen the length of the duct is not material. It is a matter which would be determined by convenience in manufacture. The words "particularly that portion adjacent to the ball" appear to me to express sufficiently an intention to emphasize the necessity of the reduction of the diameter in proximity to the ball. In limiting the monopoly the claim seems fairly clearly to say that at the portion of the tube or conduit and duct which hold the column of ink there must be a reduced diameter in that part of the combined conduit and duct which feeds the ink to the ball. If this reduction of diameter occurs in a pen not manufactured in the exercise of the patent and if otherwise the pen exhibits the features enumerated in the first claim, it is difficult to see why it should not be an infringement. If the feature is absent the pen would not be an infringement except upon some doctrine of equivalence. The indefiniteness is more apparent than real. I am unable to agree that it is sufficient to invalidate the claim for ambiguity.

[17]

The defendant, however, denies that the claim has been, or indeed could be, infringed, a defence which depends on the manner in which the claim is constructed and expressed. Sholl J. adopted this view which forms the second ground for his decision in favour of the defendant in the second action, that putting in suit the patent No. 133163. The question depends upon the words in the claim which say that in the tube "when charged with viscous ink a continuous liquid vein is maintained extending from the ball." As was explained early in this judgment, the physical principles upon which ball-point pens of the type under consideration depend for their operation will not keep the column of ink in contact with the ball if the pen is used to write vertically upward or at a high angle. The defendant's pen which is alleged to infringe the claim is no exception. If the pen is so used contact between the ink and the ball is lost, the rotation of the clean ball draws in air and a distortion of the meniscus ensues and the weight of the column of ink is not sustained. It appears that by chance it may happen that this may not occur. The column of ink may be very short and by some accident of manufacture there may be a very small gap between the housing and the ball. The slightness of the weight of the column of ink combined with the minute gap may result in the ink being sustained while the pen writes at a high angle or vertically upwards. No one could ensure that these conditions were produced. Normally to invert the pen or hold it at a high angle and so to write must lead to the distortion of the meniscus round the ball with the result that the meniscus will be formed at a sufficient interval from the ball to deprive it of contact. Generally it may be said that this will take place if the writer holds the pen upwards at an angle of more than thirty-five degrees with the horizontal and in that position writes with it on a more or less vertical surface for a short time. Because, in common with the plaintiff's pen, the defendant's pen possessed this characteristic it was held not to fall within the claim. For its tube was not one "in which when charged with a viscous ink a continuous liquid vein is maintained extending from the ball" according to the true meaning and operation of those words. Consequently the pen produced by the defendant was no infringement. If the words quoted do cover the maintenance of a vein of ink extending from the ball although the writer holds the pen at an angle of more than thirty-five degrees with the horizontal point upward and writes in that position, it might perhaps be thought that the true defence is that the words amount to a false promise or representation on the part of the patentee invalidating the grant. The defendant, however, took the position that it was enough that if a claim made a particular result or operation of the invention an essential characteristic and that characteristic was not exhibited by the alleged infringement, it could be no infringement and it did not matter that the claim to the result or operation amounted to a false promise or representation. Perhaps this is logical, but it still remains necessary to ascertain what it is that the claim makes essential. Clearly enough the unqualified words do not mean that in all conditions which the pen may encounter a continuous vein will be maintained extending from the ball. It is not, for example, referring to ill-usage. What the specification and the claim are talking about is the way the pen writes. Sholl J. put out of account writing upwards on an inverted horizontal surface. But his Honour took the view that the normal use of a pen includes writing with the point of the pen substantially above the other end. He said: - "Almost everyone, I suppose, has seen on the vertical notice-boards of social or other clubs, or of sporting bodies, documents on which persons are invited or expected to write names or other particulars, and on which it is usual or preferable to write in ink, - e.g., entries for tournaments, results of matches, subscriptions for donations, and the like. Many persons have seen in the headquarters or other establishments of the armed forces, or in the laboratories or control rooms of many kinds of technical establishments, charts, lists, maps, or other documents on vertical walls or boards, on which it is the practice manually to write in ink entries from time to time of all kinds of particulars. Tradesmen and carriers are frequently seen to write in such a position against a wall." Perhaps it does not matter, but it is unlikely that the pen would cease to write before the purposes were accomplished that his Honour mentions. The process of severing the connection of the column of ink from the ball when the pen is used in such a position is by no means instantaneous. A number of words may be written before the pen fails. It is only necessary then to point the pen downwards and make a few strokes so as to revolve the ball and the pen will write again as before. In all this it behaves much as would an ordinary fountain pen having a nib and employing aqueous ink, if it were used to write on a paper against a wall. If the usages of those who employ fountain pens give the standard which governs the statement in the specification it can hardly be said to be anybody's usage to write extensively either on a vertical surface or an inverted horizontal surface. But in the end the question is really one of the scope and meaning of the material part of the claim. Is it speaking of exceptional uses occasionally made of some writing instruments? For it is exceptional to write against a vertical or almost vertical surface. Would the words be naturally understood as going beyond the ordinary commonplace way of writing? It is a general unqualified statement but it is evident that what logicians call a "universe of discourse" is presupposed. It is to be read secundum subjectam materiam. I think that it would be read simply as describing what occurs in the pen when it is used in an ordinary way. The claim and the specification should be construed as it would be ordinarily understood. So construed I do not think that it should be taken to intend to state that even when the pen is used to write on vertical or highly inclined surfaces the contact with the ball will be maintained any more than it should be construed as intending to cover cases of violence, accident or other ill-usage. I think this defence fails.

[19]

The circumstances which the defendant set up in order to establish these objections may be reduced to a compendious statement. Substantially what the defendant alleged was this. The plaintiff filed with his application on 31st December 1943 a complete specification which did not disclose or claim the invention that has already been discussed as that embodied in the specification in respect of which the patent was granted but related to a supposed invention depending upon the manner in which the tube or duct was constructed or arranged within the barrel of the pen. After some delays the examiner reported adversely to the specification and the plaintiff took advantage of his doing so to substitute, as a purported amendment under s. 45, another specification which in fact represented the complete specification for the United Kingdom patent No. 573747. It is the second of the two patents with which Harman J. dealt in Martin v. Selsdon Fountain Pen Co. Ltd. [1] and the material parts of it are set out in the report [2] . This purported amendment was tendered on 18th December 1946 and the United Kingdom specification had been published in Australia in the previous September. The examiner made another adverse report on the new or "amended" specification, leading to the tendering of amendments therein, and the final result is the complete specification already discussed in this judgment, which the defendant says is for a quite different invention from that to which the specification first filed related. The plaintiff denies that the difference is so great and finds in the specification as originally filed indications of the invention as finally ascertained and claimed which the plaintiff says are sufficient for any limitation that may be implied in s. 45. It is hardly necessary to say that the defendant, in the circumstances it alleges, puts forward additional aspects of what I have summarily stated under the foregoing first heading. But these aspects are rather alia enormia than independent legal reasons for avoiding the patent. For the reason invalidating the patent must be that the grant was made in respect of a purported specification which lacked legal authority because it was not warranted by s. 45 or any other provision. However the defendant says (a) that the invention the subject of the grant was not new when it was first placed before the Crown on 18th December 1946 because it had already been made public by the availability of the United Kingdom specification; (b) that pursuant to s. 38A, which came into force on 11th September 1946, the specification as first filed, viz. on 31st December 1943, was made open for public inspection on 19th February 1948 and thereby published and that under s. 54 as amended in 1946 the patentee gets protection retrospectively as from publication of a complete specification or a grant: as Sholl J. has held, it is in this case protection not for the invention then published but for that ascertained and claimed in the final specification in respect of which the patent was granted; (c) that from September 1946 and onwards the defendant was manufacturing ball-point pens with a straight capillary tube or reservoir for viscous ink and in doing so infringed no exclusive right of the plaintiff unless and until the plaintiff secured protection as from 19th February 1948 for the invention the subject of the purported amendments tendered to the Patents Office on 18th December 1946; (d) that the purported amendment of 18th December 1946 was not really to meet or respond to the examiner's report as s. 45 supposedly contemplates.

[24]

Section 45 gives an applicant a power of amending his complete specification after he has been informed that the examiner has reported adversely to the specification. The report may be under s. 39 and if so it will deal with the questions whether the title has been stated as prescribed, whether the invention has been described as prescribed and whether the application and specification are as prescribed. If the complete specification has been preceded by a provisional specification the report may be under s. 40 and deal with the question whether the invention fully described in the complete specification is substantially the same as the invention the nature of which is described in the provisional specification. Lastly the report may be under s. 41 which requires the examiner to ascertain and report whether to the best of his knowledge the invention is already patented in the Commonwealth or in any State (that is before the grant of patents passed to the Commonwealth) or is already the subject of prior application for a patent in the Commonwealth or the State. Section 41 also requires the examiner to report whether to the best of his knowledge the invention is or is not novel. If the report is under s. 39 or s. 40 the commissioner may under s. 42 give directions for amendment, but, even if he does not, the applicant may himself elect to amend under s. 45. The purpose of s. 45 is to enable the applicant to make what changes he thinks proper in his specification in view of the examiner's report. To say that its purpose is to enable him to obviate the examiner's objections is probably too narrow a statement. For the examiner's report about prior grants and applications may conceivably open up all sorts of difficulties or dangers which go beyond and outside his specific objections. Perhaps it is better to say that the purpose of s. 45 is to enable the applicant to make such changes in his complete specification by amendment as appear to him to arise out of the examiner's report.

[25]

Section 49 (1) of the Patents Act 1952 introduces the words "so as to remove the grounds of objection", but these words do not occur in s. 45 of the Act of 1903-1950 and in any case the new Act does not give rise to the same difficulties. There is no express limitation on the power to amend conferred by s. 45 and since it forms part of the statutory regulation of what shall be done in the Patents Office and, as the Act stood before the amendments made by Act No. 38 of 1946, done in that office before the specification was accepted or published and so before the applicant obtained any protection, it is not an unreasonable inference that the extent and propriety of the amendments was left as a matter with which the office would be competent to deal. If the amendments tendered by the applicant would if made lay the specification open to any lawful objection under the Act, the specification would not be accepted. The making of an amendment sets going again the machinery of s. 41. For s. 45 ends with a direction that the amended specification shall again be reported upon by the examiner under s. 41. In a general way it may be assumed that the draftsman of s. 45 would not expect that an amendment of a specification would be made thereunder which would substitute another invention for that disclosed by the original document accompanying the application. At the same time it must not be overlooked that if an examiner objected under s. 41 that the invention was already patented, the objection if well founded could only be overcome under s. 45 by amendments changing one or more essential elements of the invention. However, to say that the draftsman would not expect such an amendment is one thing and to imply a positive restriction resulting in the invalidity of the grant on that ground is another. Section 46 makes it necessary before the commissioner accepts an application and specification that he should be satisfied that no objection exists to it on the ground that the invention is already patented or is already the subject of a prior application and there must be no other lawful ground of objection. It would be a lawful ground of objection if the specification as amended did not conform with the provisions of the Act and it would be a lawful objection if a ground existed upon which a grant if made would be revoked or invalidated. That the applicant was not at the time of his application in possession of the invention would be such a ground. It may be said that conceivably he might be in possession of an invention at the time of his application which the original specification accompanying the application did not disclose but which was afterwards disclosed by amendment under s. 45. As the Act stood before 1946 the consequences would not be so dreadful. For the protection under s. 54 would begin as from publication of the acceptance and the amendments cannot alter the construction of s. 45 and s. 46. It is after all only a logical possibility and the antecedent likelihood of its occurrence is small and it might well escape notice. It is to be noticed that the impropriety of an amendment is not a matter that could be raised in opposition to a grant under Div. 2.

[32]

The original specification of No. 133163 refers, at the outset, to fountain pens more particularly to pens of the kind comprising an ink reservoir formed by an extension of the channel for supplying ink to the writing point, and says that the extension by a duct of small section allows of the establishing of a fluid vein of constant position, but that several difficulties are encountered owing to the necessity of arranging the duct in a winding or meandering form or otherwise arranging the same in such a way that it will occupy, to the largest possible extent, the capacity of the holder of the instrument. It will be seen that the tube reservoir and the small duct to the writing point are assumed, but the problem is stated to be in arranging the necessarily winding tube in the holder or barrel. In this conception of the problem it resembles No. 122073. The document then claims that in accordance with the invention these difficulties are overcome. It proceeds to describe how for the purpose a series or group of duct sections are arranged to form a feed channel fitted into the body of the holder. Ways of doing this are described and are illustrated by the drawings. At one point the words "capillary tube" are used, but not to state an element in what the applicant has invented: "The duct consisting of a plurality of sections for forming the reservoir may be constructed in several manners, as use may be made indifferently of a capillary tube folded into several lengths until forming a series or whole, or a group of channels or ducts may be bored in a block which may then be connected to, or form an integral part of the fountain pen, provided the several sections of the duct be connected in series, so that one will be a continuation of another." But additional object after object is enumerated, e.g. the length of the reservoir and the minimizing of the bends therein; the simplification of the construction of the reservoir; the possibility of boring the holder to form the reservoir; the use of the very material composing the holder to form the reservoir; the prevention of gravitation influencing the reversed position of the pen by placing the air intake to the writing point of the pen. In the statement of these various objects the words "stylographic ball or point" occur, and later it is expressly said that instead of a sphere the stylographic point may comprise a pen or other common or known writing means. This makes it even clearer that it is in the formation of the tube reservoir that the alleged invention lies: for a ball-point is an essential part of any pen in which a meniscus is to be maintained. At one place the reservoir is described as formed by a duct forming an extension of the feed channel but comprising several particular features which constitute the basis of the invention. These particular features are never precisely enumerated but it is clear enough that they relate to the folding convolution connection and construction within the barrel or holder. One figure in the drawings is described as having a reservoir formed by a duct or tube of the capillary type, but this is treated as accidental or incidental and the passage proceeds to deal with the folding of the tube and the communication of the parallel sections thereof one with another. The specification then mentions the use of dense ink to fill the reservoir which it says thus establishes a fluid vein extending from a point near the air inlet or air intake to the sphere which is thus maintained in contact with the ink in order that when causing the same to roll over the suitable surface the sphere held by the mounting will mark the strokes with ink supplied from the channel containing the liquid vein. This may sound as if the applicant was drawing close to the invention embodied in the ultimate specification. But in truth it is only a statement of what will happen in consequence, as he supposes, of his arrangements of the tube in the holder which forms the invention. He has no conception of the essentiality of the capillary dimension of the tube, of the ball and of the lessened diameter of the duct at the orifice to the ball, and so on. It is all in the arrangement of the tube and the construction within the holder, as applied to old elements variously assembled. This is again seen in the embodiment in which the air intake is directed towards the point but at a certain distance short of the point; "this arrangement" he says "has for its object the prevention of the ink when the pen is in reversed position from being discharged by gravitation". This of course it would not entirely do, if the reservoir were full. It is unnecessary to go through the claims of which there are eleven. It is enough to say that they take in turn various combinations which the body of the specification indicates. All of them make a particular construction folding or grouping of the tube and its sections a feature and one only makes a ball-point essential. It is the tenth. It adds to a series or group of duct sections connected together the feature that the stylographic point, to which the single channel thus formed extends, is "characterized by the fact that the channel or duct which forms the reservoir ends with a mounting provided with a small loose sphere which constitutes the writing point". It is obviously added as an additional feature to form a combination. But in that combination all the other elements essential to the invention ultimately specified are left out and the elements included are irrelevant to function and misconceived.

[35]

By an order made on 25th November 1952 a question of law was framed and set down for argument before the trial. It dealt not only with the fourth particular of objection but also in part with the fifth and sixth. The question begins by requiring that the truth be assumed of all the allegations set out in the fourth particular, and in certain further particulars thereunder, so far as the same are allegations of fact and having regard to the various documents referred to in the fourth particular and the further particulars or so much of them as are relevant. On that assumption the question propounded was whether (a) those allegations or any of them; or (b) pars. 5 and 6 of the particulars of objection so far as the last-mentioned paragraphs depend exclusively upon the allegations set out in par. 4 of the particulars and in the further particulars so far as the said allegations are allegations of fact constitute a good defence in law to the particulars claimed. The difficulty about this order is that in a logical and in a legal point of view pars. 5 and 6 of the particulars of objection do not at all depend, and certainly do not exclusively depend, upon the allegations set out in par. 4 of the particulars. The only common ground between them is in the evidence which the defendant intended to adduce in order to prove them. That evidence, one may be sure, would have been supported by any further evidence which the defendant was able to obtain, and any such further evidence would not likely be common to the proof of the three particulars. However this might not have appeared at the time to matter, because on 17th March 1953 an order for directions was made which provided for the various events which might arise according to the answer given to the question of law propounded in the previous order. In one event, that of the question being answered that the matters referred to or any of them did constitute a good defence of law, the court, according to the order for directions, was to proceed to determine whether the allegations of such matters were established to the satisfaction of the court or not so established. If, to put it shortly, the particular defence dealt with in this manner failed either in fact or in law, then, said the order for directions, "in either of such events this honourable Court will proceed to hear and determine such issues and matters arising upon the pleadings as are required to be determined in order that the action be disposed of and judgment given herein". This should have covered all residual matters pleaded by way of defence not entirely covered by the order setting down a preliminary point of law and of fact for determination.

[36]

On 15th June 1953 a decision was given on the question of law. It was decided that par. 5 of the particulars of objection, so far as it depends exclusively upon the allegations of fact in par. 4, did not constitute a good defence, and it was so ordered. The reason for this decision was that the fourth and fifth sub-paragraphs of the fourth particular stated that the invention was the same invention as No. 122073. Sholl J. said: "That presumably amounts to an allegation admitted for the purpose of the present question that the plaintiff was then in possession of the invention the subject of the earlier patent and if that is so the facts alleged and taken to be admitted are inconsistent with the contention that the plaintiff was not on 31st December 1943 in possession of the invention for which No. 133163 was ultimately granted". As the question before him as propounded was whether par. 5, so far as it exclusively depended on the allegations in par. 4 of the particulars, was good in law, the rejection was inevitable of particular 5 as bad so far as it depended exclusively upon those allegations. But, as I have already said, except for the evidence by which it was to be supported, it does not depend in point of law or logic on par. 4 of the objections at all. It therefore remained a plea to validity which should have been dealt with as a matter of fact in pursuance of the order for directions remitting for trial all other issues, if the particular defence raised for prior determination failed. As to pars. 4 and 6 of the particulars of objection, an order was made determining that the allegations made in par. 4, so far as allegations of fact, and par. 6 so far as it depended exclusively upon such allegations of fact, constituted a good defence in law to the plaintiff's claim to the following extent only and not otherwise, viz. so far as they alleged that the effect of the amendments therein referred to or either of them was that the complete specification in its final form claimed an invention (a) substantially different from the invention described and disclosed by the complete specification originally lodged with the application of 31st December 1943; or (and this is no longer material) (b) identical with the invention described and claimed respectively in the complete specification of letters patent No. 122073. It is no longer material because the allegation that it is so identical has been abandoned. This decision departs in what might have been a material respect from the allegation. The allegation in the first place was that the specification of 18th December 1946 described and claimed (not disclosed) an invention which was not the invention described and claimed (not disclosed) in the specification lodged on 31st December 1943 but something substantially different therefrom, that is from the invention described and claimed by the last-mentioned specification.

[40]

On the hearing of the appeals before this Court the argument took a strange turn. In supporting the defendant's "cross-appeal" against the orders of 15th June 1953 and 26th June 1953 counsel for the defendant, in the course of explaining what Sholl J. had done, remarked that his Honour had decided that particulars 5 and 6 were not good defences and that he, counsel, was not attacking that part of the judgment. On being questioned as to whether the issue propounded by the order under particular 4 was the same as the issue tendered by particular 4, having regard to the substitution in the order of the words "described and disclosed" for "described and claimed" in the particular, counsel said that if what Sholl J. found was really something more limited than the defence pleaded he was entitled to assert before this Court that the defence as pleaded was the correct defence. So far as the order of 15th June 1953 limited the legal area of his defence he complained of it under his notice of "cross-appeal". In dealing with the power of amendment, however, he observed that the whole system of patent law depends on this, namely that the person should have his invention at the time that he makes his application. In the course of his argument for the plaintiff as respondent to the "cross-appeal" by the defendant from the orders of 15th June and 26th June 1953, counsel for the plaintiff was asked by Taylor J. whether pars. 5 and 6 were not independent objections, to which counsel answered in the affirmative and added that he would say that they were the real defences. He acquiesced in the view that Sholl J. must really have meant that the objection alleged in particular 5 was not made out by the facts specified elsewhere and added that there were no other facts. Particular 5, he submitted, was the real defence in the case if there were any defence. At one stage the defendant's counsel made an interjection to the effect that he had no further facts to support particulars 5 and 6 than appeared under par. 4. In response to a question from me to learned counsel for the plaintiff as to the course he took about particulars 5 and 6 he said that he understood that particular 5 was out of the case. I remarked that the difficulty was that much of his argument had driven the case back on to particular 5 and that a question for our consideration was whether the defendant could go back to particulars 5 and 6. Counsel for the plaintiff urged in addition that the fact, if it were a fact, that the plaintiff had not set the invention out in the initial specification of 31st December 1943 did not show that he did not possess the invention for which the letters patent were granted at the date of the application and that some extrinsic evidence would be necessary beyond the matters set out under the fourth particular in order to establish the fifth particular. The amendments were irrelevant. In his reply the defendant's counsel put the view first that if s. 45 was limited in the manner for which he contended, that was enough; but if s. 45 was not so limited then he turned to the defence raised by particulars 5 and 6 and said that on the facts it appeared that the applicant was not in possession of the invention described in the specification in its final form at the date when he made his application, namely 31st December 1943, and that it was common ground that it was a good defence if made out on the facts.

[41]

The foregoing account of the proceedings in the Supreme Court and here suggests that not a little confusion arose almost from the outset as to the place the issues raised by the fifth and the sixth particulars took. Having regard to what has occurred it is not altogether easy to say what is the right course for this Court now to take. Left without other evidence I think that it might be difficult to resist the prima facie inference of fact which arises from the manner in which the initial specification is compiled, considered, as it should be, with the specification filed twenty-three days earlier in No. 122073. It is enough to justify the conclusion that at the time of the application of 31st December 1943 the plaintiff was not in possession of the invention described and claimed in the specification No. 133163. But it is but a prima facie inference and the ultimate fact is that the applicant had not possession of the invention in its final form. Owing to the peculiar course which the action took this issue seems never squarely to have been faced and determined, and yet it is the issue on which the defendant's case in the end depends. At one stage of this appeal as an independent defence it was for the moment disavowed for the defendant but for the plaintiff it was insisted that it was the only true defence in law if the facts would support it. On the whole the course which justice seems to demand is that the issues raised by the fifth and sixth particulars be sent down for trial, unless the plaintiff does not desire that course. It would not be satisfactory to determine the issue on the present material if the plaintiff is in a position to offer any material evidence. A proper order to make in the appeal relating to action No. 58 of 1951 would be that if within two months the plaintiff notifies the defendant and the Principal Registrar that he desires these issues to be tried there be a further trial of the action limited to those issues, and that otherwise the plaintiff's appeal be dismissed. In any case it seems unsatisfactory to leave the two orders of 15th June 1953 and 26th June 1953 standing. They should be discharged. The order in the appeal relating to action No. 314 of 1947 should be appeal dismissed.

[47]

The essence of a ball-point pen is that the actual writing element consists of a ball of very small size which protrudes a minute distance from a spherical housing, within which it is rotatable. The ink used is of a "viscous" type, as distinct from the "aqueous" type used with an ordinary pen. The act of writing causes the ball to revolve in its housing, and the ultimate object to be attained is that, as the ink is transferred from the ball to the paper in the process of writing, the ball shall be continuously re-coated with a thin surface of ink from a reservoir within the barrel of the pen. The problem which was found troublesome for a long time is explained by Harman J. [1] as follows: - "The merits of a ball point instead of a nib of the conventional type for fountain pens have long been canvassed, and many attempts have been made to produce a workable instrument of this kind. I was told that ball-pointed pens were proposed as far back as 1890. A ball point, it has been found, will not work with the ordinary type of ink, called in this case aqueous ink. In order that a continuous trace may be made a dense or sticky ink, called in the present case viscous ink, is required. The use of viscous ink, of course, makes a ball point of no use except with a reservoir behind it, but, if a satisfactory reservoir of viscous ink can be provided, such a pen will write for a very long time, because the amount of ink used by the ball is very small. A further advantage is that the trace when made is absorbed immediately by the writing material and no blotting paper is required. These advantages had long been recognised, but before the Plaintiffs' pen appeared on the market no practical ball-pointed instrument had ever been sold, at least in England, and the reason was that no one had solved the problem of the reservoir and the manner in which the ink should be fed to the ball. The essential problem is one of ventilation. Air must be allowed to enter the pen as ink is used up, because otherwise a vacuum is caused and the ink ceases to flow to the nib. This difficulty was not present in fountain pens of the ordinary type, owing to the fact that with an aqueous ink air is able to penetrate into the pen past the nib and so up into the air cavity at the base. With viscous ink, however, it was found that the air could not, or at any rate did not, at sufficient speed pass by the nib through the viscous ink behind it, and some other method of ventilation had to be discovered. Attempts were made to provide a piston or other device which would force the ink down as it was used and thus keep it in contact with the ball, but these were too elaborate and never successful. The alternative was to have an air vent at the base of the reservoir, but the trouble always was that the ink, though viscous and therefore slow flowing, would, when the pen was inverted, sooner or later flow back through the air vent and the pen would leak. Moreover, if the ink did not remain in contact with the ball, air would enter and thus form a bubble which produced an air lock between the ball and the ink" [1] .

[58]

The defendant's article does, in my opinion, infringe claim 1 of No. 133. All the elements mentioned in claim 1 are present in combination. Sholl J. held that there was no infringement, but on what seems to me, speaking with all respect, to be a curious and somewhat unrealistic ground. It turned on the reference in the claim to a tube "in which, when charged with viscous ink, a continuous liquid vein is maintained extending from the ball". It may be said, as the witness Hopper in effect said, that these words really describe the result which is achieved by the other factors mentioned. But, be this as it may, the maintenance of the continuous liquid vein depends, of course, on gravity. If, therefore, an attempt is made to write with the defendant's pen upside down or with the ball-point substantially lower than the top of the pen, the liquid vein will not be maintained, and the pen either will not write at all, or will write only for a short time, the time depending on the size of the angle at which the pen is held relatively to the plane of the material to be written on. Therefore, it was argued, it could not be said of the defendant's pen that, when charged with viscous ink, it would maintain a continuous liquid vein extending from the ball. It was conceded that the words in the specification must be read as referring only to normal uses of the instrument. Sholl J. put out of consideration the possible case of an eccentric poet who might wish to write immortal verse on the ceiling of his bedroom, but he considered that normal uses of the pen would include its use for the purpose of writing on a vertical surface - for example, on a paper affixed to a notice-board in a club inviting entries for a sporting competition. It may be admitted that such a use is a normal use, but the pen would only be employed for such a purpose for a very short period at a time, and even in a completely inverted position the vein will be maintained for a brief period - more than long enough to write one's name. If a person really wishes for some outlandish reason to write on a vertical surface for any length of time, there is no difficulty in holding the pen at such an angle that the vein of ink will be maintained indefinitely. The words in the specification must be read in a commonsense way and in the light of normal human needs and normal intelligence. I think that the defendant's pen maintains a continuous vein of ink within any fair and reasonable reading of claim 1, and that it infringes claim 1.

[63]

On 31st December 1943 the application which led to the grant of No. 133 was lodged, with a complete specification, in the Patents Office. The specification is a long document, and it will suffice to quote the introductory part of it, to mention one or two other passages, and then to refer to the claims. Where italics occur, they are, of course, mine. The introductory part is as follows: - "This invention relates to fountain pens and refers more particularly to fountain pens of the kind which comprise an ink reservoir formed by an extension of the channel for supplying the writing point with ink, a system which by itself has yielded convenient results, although under certain conditions of arrangement only In fact, the extension of the feed channel constituting the reservoir by means of a duct of small section allows of establishing a fluid vein of constant position, after the manner of an automatically replaceable lead rod in a pencil, but, in the provision of a duct of a certain length adapted to be fed with a relatively ample amount, several difficulties are encountered, owing to the necessity of arranging the duct in a winding or meandering form, or of otherwise arranging the same in such a way that it will occupy to the largest possible extent the capacity of the holder of the instrument For this purpose, a feed channel consisting of several sections is provided, so arranged that the whole of the sections will form a series or group of duct sections, conveniently fitted in the body of the holder, thereby using the space to the best advantage. To this end, the duct sections, which form the ink reservoir, are connected together and communicate in series by means of passages leading from one section into the other, and, as said sections are longitudinal and preferably parallel to the axis of the pen, the whole of the sections will be of a length several times that of the holder." The applicant goes on to say that "the duct consisting of a plurality of sections" may be constructed in several ways, including that of a "capillary tube folded into several lengths." A further object of the invention, he says, is to have "a reservoir in the shape of a vein of great length with a minimum number of bends and occupying most of the body part of the holder of the pen". He then refers to the accompanying drawings. The drawings comprise eight figures, every one of which shows a reservoir consisting of a tube or duct longitudinally folded so as to form a "series or group of tubular sections" communicating with each other, the whole forming a continuous but winding passage from an air inlet to a feed duct which leads to the writing point. The " features which constitute the basis of the invention " are thus described with reference to the drawings: - "In fact, said reservoir b is formed by a linear duct, constituted by a plurality of lengths or duct sections 5, preferably arranged as a whole and parallel to the body of the holder a, thus forming a series or group of duct sections which together occupy the greater part of the body a; said sections 5 are connected together and communicate in series, one in continuation of the other, so as to form, as a whole, one single channel commencing at the inlet or air intake 6 and ending at the feed duct 4 of the sphere 3." After a description of the drawings comes this passage: - "From the foregoing description, it will be seen that the invention substantially consists in the provision of sectional ducts, arranged as a whole to form a series or group, by means of bends or passages, said duct sections communicating in series, one in continuation of another, so that the whole of duct sections will form one single duct, commencing at an inlet hole and ending at a feed duct, connected to the mounting of the sphere, said duct constituting the reservoir b, to be filled with a dense or semi-fluid ink and to form therewith an uninterrupted liquid vein, extending to the mounting of the sphere." Then follow the claims. Claim 1 is for: "Fountain pen, of the type in which the ink reservoir is an extension duct of the feed channel for the stylographic point, characterized by the fact that the duct which forms the ink reservoir consists of a series or group of duct sections, provided with means for communicating in series one section with another, so as to form one single linear duct or channel, extending from an inlet open to the air, to the feed channel of said stylographic point." It is unnecessary to quote the other ten claims. It is sufficient to say that every one of them is for some specific form of a "series or group of duct sections", connected together so as to form a continuous line of communication from an air inlet to a stylographic point. General comment on this specification may be postponed, but it is to be observed at this stage that the defendant's pen could not possibly be said to infringe any claim contained in it.

[79]

It is next said that the process of metamorphosis, by which the specification originally lodged became the specification finally accepted, was not a process of amendment such as is authorized by ss. 42 et seq. of the Patents Act 1903-1950. The result is said to be that the grant is void. I have indicated my opinion that the accepted specification claimed a different invention from that claimed by the specification originally lodged, and I think that the substitution of the specification of English No. 573 for the specification as it stood before represented a departure from anything really contemplated either by s. 42 or by s. 45. And it is not an impossible view that a valid grant based on that substitution could not be made. On the whole, however, I am of opinion that it does not follow that the grant of No. 133 is void. Such a conclusion might follow if it could be said that that substitution was not really an "amendment" at all, and that it was actually unlawful for the commissioner to allow it. But I do not think that this can be said. I am unable to avoid the conclusion that the effect of s. 46 is to give to the commissioner a discretion, and to place his acceptance of the specification beyond challenge as such. Considerable difficulty attaches to reading Div. 4 of Pt. IV of the Act with those provisions of Div. 1 of Pt. IV which authorize the amendment of a complete specification. But s. 45 - unlike s. 71 - does not impose on the making of any amendment the condition, imposed by s. 78, that the amendment shall not have the effect of claiming an invention "substantially larger than or substantially different from" the invention for which protection was originally claimed. That it does claim such an invention may very well be a good ground for a refusal to accept a specification amended under s. 45. But I do not think that an acceptance under s. 46 can be challenged as such. And to say that the patent is void by reason of what happened in the Patents Office between application and acceptance is, in effect, to challenge the acceptance as such.

[86]

No. 122: As has already been said this invention purports to relate to "Improvements in writing instruments". More particularly the specification declares that the invention "relates to improvements in fountain pens of the ball-tip type, and particularly to means for providing a regular ink feed to the ball constituting the active or writing element of said instrument". The most suitable ink for pens of this type is said to be "so-called "dense" ink, which is very adhesive", and the ball, it is said, will, in rotating, "transfer to the exterior a regular and sufficient quantity to make neat and normal strokes". One of the objects of the invention is described by reference to a difficulty experienced in the use of "barrel-shaped reservoirs" in such writing instruments. The specification states that in the case of such a reservoir "the mass of ink will change its position as the instrument is moved about, so that when the tip of the pen is raised contact between the ink and the ball is lost, with the result that normal working of the instrument may be interrupted or impaired; another object of the invention is to overcome this difficulty". A further object is declared to be "to provide an ink reservoir wherein gravity does not alter the position of the ink and wherein the charge is kept in a satisfactory condition and forms a continuous vein of liquid to provide a continuous feed as and when required without delay or interruption". Thereafter the specification declares "According to the present invention an instrument of the ball-tip type is provided in which the ink reservoir is formed by one or more conduits starting at an air intake, and after following an extended path, communicating with the recess for said ball, the said conduit or conduits being of so small a cross-section that a suitable ink cannot escape from the air intakes under the effect of gravity. According to one method of carrying the invention into effect the ink reservoir is constituted by one or more conduits arranged in the form of a helical coil." The specification then proceeds to indicate that the above and other objects and advantages of the invention will become apparent from the ensuing descriptive matter when read in conjunction with the attached drawings which purport to illustrate by way of example some of the preferred embodiments of the invention.

[89]

The article manufactured and sold by the respondent is a ball-pointed writing instrument constituted by an outer casing which contains a reservoir in the form of a very narrow gauge or capillary tube with an air intake at the end remote from that adjacent to the ball. In many respects it is similar to that described and for which claims are made in the specification of No. 122. The tube is of such small cross-section that "a suitable ink cannot escape from the air intake under the effect of gravity" and "gravity does not alter the position of the ink" which "forms a continuous vein of liquid to provide a continuous feed as and when required without delay or interruption". The reservoir feeds, as in the invention described in the specification, to a rotatable ball which, in rotating, transfers a sufficient quantity of ink to the exterior of the ball to enable the user to write. The distinguishing feature of the instrument which is said to infringe the appellant's patent - if, indeed it be a distinguishing feature - is that the reservoir is constituted by a straight capillary tube. The evidence shows that if what is called a capillary tube is used as a reservoir in association with ball-pointed instruments of this type the column or vein of ink contained in a fully charged reservoir will not be displaced by the force of gravity when the pen is moved or even inverted and that it is unnecessary in order to obtain this result that the tube should take the form of a spiral or should in any way diverge from a straight course within the holder. The case of the respondent was that this feature of its instrument clearly distinguished it from the appellant's invention. It was, it was contended, of the essence of that invention that the reservoir of the instrument described and disclosed should consist of a helical coil or annular convolutions or take some other form of "extended path". Whilst conceding that the drawings of the "preferred embodiments" disclosed in each instance reservoirs of that type counsel for the appellant contended that there was nothing in the description of these embodiments - which were only preferred embodiments - to suggest that a bent tube was essential to or of the essence of the invention. Helical or spiral tubes might have been preferred, it was said, but they were not considered to be essential. Sholl J., however, was of the contrary opinion though no doubt he was greatly influenced in coming to his conclusion by the decision of Harman J. in Martin v. Selsdon Fountain Pen Co. Ltd. [1] when he was called upon to consider precisely the problem which arises on this aspect of the appeal. The terms of the specifications of United Kingdom patent No. 571698, which were then under consideration, are identical with those of No. 122 and on this point Harman J. said: - "Now like canons of construction apply to specifications as to any other written instrument. (See Lord Esher's speech in Nobel's Explosives Coy. v. Anderson [2] ). Plain language must be given its plain meaning, and clear words in a claim must not be tortured into an unnatural meaning by importing passages from the body of the specification. (See Lord Russell's speech in Electrical & Musical Industries, Ltd. v. Lissen, Ltd. [3] ). The claims also must be construed without an eye on the alleged infringer's acts. (So said Greene L.J. in R.C.A. Photophone Ltd. v. Gaumont British Picture Corporation [4] ). On the other hand, it is right to construe a claim with an eye benevolent to the inventor and with a view to making the invention work - this is an application of the old doctrine ut res magis valeat quam pereat - and it is illustrated in Nobel's Case [5] ; and, where the language of a claim is obscure or doubtful, the doubt may sometimes be resolved by referring to words in the body of the document to explain it. This is known as the dictionary principle. (See Lord Haldane's speech in British Thomson-Houston Coy., Ltd. v. Corona Lamp Works, Ltd. [6] ). All these observations are indeed truisms. Turning then to 571, the argument on construction concerned chiefly the words in Claim 1, repeated by reference in Claim 9, "after following an extended path". It is said by the Plaintiffs that these merely mean that the path which the vein of ink follows constitutes the extension of the feed channel from its start at the ball till it reaches the air intake, and they point to the words at 1. 126 on p. 2 which I have already read and which speak of an extension of the feed channel. The Defendants, on the other hand, say that, in order to give these words any, or any adequate, meaning, they must be a reference to the fact that in all the embodiments of the invention the conduits are shown as either coiled or helical or twisted in some spiral, and that the meaning of these words is that the conduits must not be straight, but must follow a path longer than that which they would take if they passed direct from the ball to the air intake. They point to the fact that at 1.30 on p. 3 the reservoir is described in so many words as being "a coil of small section" and argue that on a fair reading of the document it is clear that the inventor supposed, whether rightly or wrongly, that there was some virtue, beyond mere added area of the contents, in twisting the reservoir; for instance, that the force of gravity would have less effect upon it, and there would be more resistance to the shock caused to the column of ink by dropping the pen. I have carefully considered these rival views and have come to the conclusion that the Defendants' construction is the right one. The words are no doubt capable of either meaning and I am, in my judgment, entitled, in order to interpret them, to look at "571" before its amendment. In doing so, I find these passages at 1. 60 of p. 1 and, again, at 1. 72: "According to the present invention an instrument of the said type is provided in which the ink reservoir is formed by one or more conduits starting at an air intake and, after following an extended path, leading into the feed channel or cavity for said ball"; and (1. 72) "To this end, the conduit constituting the reservoir is of helical or other similar shape or arrangement following an extended path from a corresponding air intake to said feeder". These have been struck out of the amended specification, but seem to me to show that the author used the words in the sense attributed to them by the Defendants. The words appear in the first and primary claim and seem to me to signify something more than an indication that the conduit begins at the ball and ends at the air intake. Whether the inventor was right or wrong in supposing that there was any virtue in twisting or turning the conduit seems to me to matter not at all. It is the direction he gave which matters and that, as it seems to me, is a direction to follow a twisting path of some sort, though not necessarily exactly as his various figures show" [1] . As will be observed his Lordship's decision was influenced by the consideration of words which appeared in the specification before it assumed its final form and which at that time had been struck out. Whether or not this represented a permissible approach to the question of construction involved is in this case immaterial for the complete specification for No. 122 lodged on 8th December 1943 was accepted in its original form on 5th September 1946. Accordingly its true construction depends upon a consideration of its terms alone. Nevertheless unaided by the extraneous matter to which Harman J. thought it proper to refer I am of the opinion that the respondent's instrument is not within the relevant claim made in No. 122. Claim 1, which, it is alleged, the respondent's instrument infringes lays stress upon the feature that the reservoir follows an extended path "starting at an air intake and communicating with the recess for the said ball". It was, of course, contended that an "extended path" need not follow a helical or spiral course and with this I entirely agree. There is no doubt that, in the abstract, extension may take place along a straight path; but the expression "extended" is a word of wide and elastic meaning and the sense in which it is used in any particular context must necessarily depend to some extent upon that context. In the present case it is used to describe the course which a narrow tube, with an air intake at one end, should pursue in its course inside a confined space to connect with the recess in which a rotatable ball is housed. In these circumstances if the word "extended" is to be given any significance at all surely it must be understood as an antonym of "direct" or "straight". The holder, though of undefined is yet of finite size and within it the tube is to pursue an extended path. In my view this expression must be taken to connote something other than direct and in my opinion this feature of the invention was described and claimed as vital. It may be, as Sholl J. observed, that in 1943 the applicant for these letters patent "initially did not fully comprehend the nature and application of the principle of capillary forces in relation to his instrument, but became more clearly aware thereof as time went on". But no claim was made founded simply upon the use or characteristics of a simple capillary tube. On the contrary the continuous vein of ink was to be maintained by a combination of features, i.e. a tube of small cross-section following an extended path within a fountain pen casing. If it be thought that the words of the first claim are equivocal - and I do not think they are - ample support for the view which I have expressed may be found in the description of the various preferred embodiments and on this point particular reference might be made to the passage in column 6 commencing at line 34 where it is said: "Inasmuch as the reservoir is formed by a coil of small section the instrument may be placed in any position and used in any manner without the vein of liquid being affected by gravity".

[94]

The complete specification for letters patent No. 133 in the amended form in which it was ultimately accepted purported to relate to "writing instruments of the type in which a ball is mounted for rotation in a housing with part of the ball exposed and is supplied with ink from a suitable reservoir, the arrangement being such that as the ball is rotated such as by being moved relatively to and in contact with a writing surface the ball carries a quantity of ink through the housing, which ink is deposited on said surface and a trace is made." An object of the invention was said to be to improve the construction of instruments of that type. According to the applicant he provided "an instrument of the type specified, having the ink reservoir constituted by a vented tube of capillary size in which when charged with viscous ink a continuous liquid vein is maintained extending from the ball, and having a feed duct leading from the reservoir to the ball, the cross-sectional area of which duct, particularly that portion adjacent the ball, being less than that of the reservoir". The italics again are mine and draw attention to two expressions concerning which there was considerable discussion. The expression "vented tube of capillary size" is employed in the specification "in relation to the reservoir of a writing instrument of the type specified to mean a tube having an internal bore of between 1 and 4 mm. (subject to a manufacturing tolerance of the order of +, -, 5%) so that when charged with a viscous ink the meniscus formed at the end of the ink column remote from the ball (at the interface between the ink, the air and the interior surface of the tube) is stable and will not break under shocks to which the instrument is subjected in normal use." Claim 1, which it is alleged the respondent's instrument infringes, is in the following terms: - "An instrument of the type specified, having the ink reservoir constituted by a vented tube of capillary size in which when charged with viscous ink a continuous liquid vein is maintained extending from the ball, and having a feed duct leading from the reservoir to the ball, the cross-sectional area of which duct, particularly that portion adjacent the ball, being less than that of the reservoir." The references which I have made to the specification are brief but they are sufficient, at least, to enable the two points made by the respondent concerning vagueness and ambiguity to be appreciated. In the first place it was said that the words of the claim "the cross-sectional area of which duct, particularly that portion adjacent the ball, being less than that of the reservoir" make it quite impossible to determine whether the claim was intended to cover any instrument in which the cross-sectional area of the feed duct or any part thereof is the same as or greater than that of the reservoir. Concerning this submission Sholl J. said: - "It was next said that the expression, "the cross-sectional area of which duct, particularly that portion adjacent the ball, being less than that of the reservoir", was ambiguous, in that it was impossible to be certain whether an instrument having the feed duct so constructed that the portion of it adjoining the reservoir was of the same cross-section as the reservoir, or of larger cross-section, while the portion of it adjacent to the ball was of smaller cross-section than the reservoir, did or did not infringe the claim. It was said by Mr. Shelley on the other hand that the word "particularly" merely provided emphasis, and that if any portion of the feed duct were of the same cross-section as or greater cross-section than the reservoir, there would be no infringement, except possibly in the case of a mere "colorable departure" within the doctrine of Clark v. Adie [1] . In the end, I have come to the conclusion that there is here an invalidating ambiguity. I am rather disposed to think the draftsman of claim 1 wanted to have the best of both worlds, and that he may have thought he was saying, in effect, - "I claim a monopoly in all instruments in which, in addition to the other three characteristics earlier mentioned, there is a feed duct leading from the reservoir to the ball, and having a lesser cross-section than the reservoir; but I go further than that, and I also claim all those with the same three previously mentioned characteristics, and a feed duct leading from the reservoir to the ball, if the portion of the feed duct adjacent to the ball has a lesser cross-section than the reservoir, whatever be the cross-section of the rest of the duct". Now that is just the opposite of the construction which Mr. Shelley sought to give the claim, although, as a matter of literal interpretation, there is much to be said for his reading of it. I simply do not know with any reasonable certainty which meaning the draftsman really intended, and there is no evidence on which I can say that the ordinary person skilled in the art of making pens, to whom the specification is addressed, could be reasonably certain. The matter is perhaps made more rather than less difficult by the fact that, as Mr. Shelley stated early in the hearing, and as the technical evidence made clear, the element of the feed duct and its cross-sectional area is not technically essential at all to the operation of the capillary tube as a non-leaking reservoir, but is merely a convenient feature for the purpose of feeding an appropriately small amount of ink to the ball point of a practical pen. The patentee has chosen, for reasons associated (as will later appear) with the objections of the examiner, to claim a combination including this fifth element, but it cannot be said with certainty what the element is, and accordingly I think the first claim, and therefore all the claims, are invalid for ambiguity and uncertainty." I confess that I do not experience the same degree of difficulty which his Honour experienced. It is true, of course, that the language of the claim is by no means clear but this does not conclude the matter. Imperfections of expression constantly give rise to difficulties in construction but only occasionally is a court driven to the necessity of saying that no reasonable meaning can be found for the words used. In the present case it is clear that the reservoir, consisting of a vented capillary tube as described is not to exceed 4 mm. + 5% for manufacturing tolerance. From one end of this reservoir - if indeed no part of the feed duct itself should properly be regarded as part of the reservoir - a feed duct provides access for ink to the internal side of the rotatable ball. Now claim 1 stipulates that the cross-sectional area of the feed duct shall be less than that of the reservoir and if the language of the claim stopped there the present contention could not have been advanced. The difficulty, if there be one, arises from the interpolation of the words "particularly that portion adjacent the ball". The interpolation of these words does not make for clarity and literally does not make sense. But while it is clear that "the function of the claims is to define clearly and with precision the monopoly claimed, so that others may know the exact boundaries of the area within which they will be trespassers" (per Lord Russell of Killowen in Electrical & Musical Industries Ltd. v. Lissen Ltd. [1] ), it is equally clear that it is the duty of the court to endeavour to ascertain from the language used the true meaning of any claim or claims. It is not the function of the court lightly to discard the claims in a specification on the ground that the language used is vague and uncertain. Now, in the present case do the words used, bearing in mind the interpolation, bear any reasonable meaning? I think they do. It is clear that the cross-sectional area of the reservoir may vary from 1 mm. to 4 mm. so that in concerning oneself with the feed duct - if it be entirely separate and distinct from the reservoir - it is necessary to visualize a duct leading from a vented tube which may have a cross-sectional area of 1 mm. or 4 mm. or somewhere between those specifications. It would be quite foreign to the conception of a feed duct that the cross-sectional area of any part of it should exceed that of the reservoir from which it leads and the terms of claim 1 read without the interpolated words make it clear that no such thing was intended. Nor, in my opinion, is the effect of the interpolated words to indicate otherwise. Their purpose, it seems to me, is to indicate that particular attention must be devoted to that portion of the feed duct adjacent to the ball. The degree to which the cross-sectional area of the feed duct must be diminished below that of the reservoir will depend primarily upon the cross-sectional area of the latter. The ball is described as having a diameter "in the order of 1 mm." so that it is apparent that where the cross-sectional area of the reservoir is of the maximum specified the degree to which the cross-sectional area of the feed duct must ultimately be diminished may be relatively great. In other cases it may be very little. In my view the purpose of the expression "particularly that portion adjacent the ball" must be taken to have been used with this circumstance in mind, and it was intended to indicate that, notwithstanding some general narrowing of the feed duct at or after its junction with the reservoir, a particular diminution was required at the point adjacent to the ball. This being so, I am of the opinion that the respondent's first submission on this aspect of the case should be rejected.

[97]

The matter remaining for consideration on the main appeal is the question of infringement and this question is in a considerable measure related to the question of construction to which I have just referred. For the respondent contends that, even conceding the narrower construction of the relevant words of clause 1 to be correct, the pen which is alleged to infringe the appellant's letters patent is not a pen in which a vein of ink extending to the ball is maintained in the relevant circumstances. It was shown that such a vein was not maintained "when an attempt was made to write on a horizontal surface above the writer's head, or on a vertical or inclined surface in a position where the ball-point of the instrument was raised substantially above the end remote from the ball." On this point Sholl J. said: - "Now I leave out of account altogether the case of attempting to write on a horizontal surface above one's head. There might be some extraordinary case in which someone might want to write on a ceiling or in some similar position, but it would certainly not be a normal method of use. But the question of writing on a vertical or inclined surface with the point above the opposite end is quite a different matter." After reviewing the evidence his Honour proceeded: - "Now can it be said that the defendant's pen is one in which "when charged with viscous ink a continuous liquid vein is maintained extending from the ball", in what I shall, for brevity, describe as all conditions of normal use? I have come to the conclusion that it cannot. To begin with, Dr. Fehling, at p. 198, when considering whether any conditions of "normal use" could arise resulting in a risk of leakage, described one case by saying, "The only condition I know and the user of the ballpoint pen is familiar with, - if I write upwards " But in the next place, I cannot say, viewing the matter as a jury would, and using my own general knowledge of everyday affairs and events, that it is not one perfectly normal method of using a writing instrument in general, or a fountain-pen or ballpoint pen in particular, to write on a vertical or inclined surface with the point of the instrument above the horizontal. Nor can I say, looking at exhibit 8, that it would be quite abnormal to seek to write in such a position more than there appears. Almost everyone, I suppose, has seen on the vertical notice-boards of social or other clubs, or of sporting bodies, documents on which persons are invited or expected to write names or other particulars, and on which it is usual or preferable to write in ink, - e.g., entries for tournaments, results of matches, subscriptions for donations, and the like. Many persons have seen in the headquarters or other establishments of the armed forces, or in the laboratories or control rooms of many kinds of technical establishments, charts, lists, maps, or other documents on vertical walls or boards, on which it is the practice manually to write in ink entries from time to time of all kinds of particulars. Tradesmen and carriers are frequently seen to write in such a position against a wall. Viewing the matter again as a judge of fact, I entirely disagree with Mr. Phillips' suggestion that in such cases people attempt to write with the point below the horizontal; that would be most unusual. It is hardly a matter on which one can expect evidence to establish any more than one's observation and commonsense tell one. Accordingly I am of opinion that the defendant's pen, exhibit E, and any similar pen relied on by the plaintiff as an infringement, has not been shown to infringe claim 1, nor, therefore, any other claim of the patent, if one construes claim 1 as I have construed it (and as the plaintiff's counsel construed it) in relation to the first four elements referred to in it, and assumes it not to be invalid for ambiguity as to the last element mentioned in that claim".

[98]

In one sense it may, I think, be quite fairly stated that a pen is not normally used to write at a height on vertical surfaces. At all events pens ordinarily serve their purpose in less awkard circumstances. But, however, this may be there was abundant evidence which was not in dispute that both the patented instrument and the defendant's pen would for a short period write, not only when the end remote from the ball was some distance below the latter, but even when held vertically with the ball-point uppermost. It was only after use in this position for some short period that the possibility of air entering the ball-point end occurred and made possible the displacement of the otherwise constant vein of ink. There was evidence, apparently acceptable to his Honour, that the defendant's pen, and indeed other pens of the same type, will continue to write and that the vein of ink extending to the ball will otherwise be maintained indefinitely not only during the ordinary vicissitudes of the normal life of a pen, but also if used with the end remote from the ball poised below the level of the writing end to the extent of about one inch. It is only when the remote end if lowered further and the pen is used in that position for some little time that possibility of disturbance of the vein of ink occurs. Now, whatever may be thought of the learned trial judge's view of what may be considered to be the normal use of a pen, I am firmly of opinion that it is no part of the normal function of a pen and that a pen is not normally used to write for long periods upon highly placed vertical surfaces. Nor can I believe that the relevant words of the claim would be so understood by "a reader ordinarily intelligent and versed in the subject-matter" (per Lord Shaw of Dunfermline in British Thomson-Houston Co. Ltd. v. Corona Lamp Works Ltd. [1] ). The use of a pen for the purposes indicated in the illustrations given by his Honour may be thought to constitute normal use, but none of such purposes require the use of a pen for long periods or, necessarily, in a position in which the infringing instrument or the patented instrument would not continue to function indefinitely. On the contrary, the evidence seems clear that the vein of ink would be maintained for considerably longer than it would take to complete entries or notations of the nature indicated by his Honour even if the pen were held in a vertical position with the writing end uppermost.

[102]

It is possible, however, to concede that the power to allow the amendment of a specification is not unlimited without producing the result contended for by the respondent. A mere perusal of the provisions of Div. 4 make it appear clearly that amendments should not be made in pursuance of that division which "would make the specification as amended claim an invention substantially larger than or substantially different from the invention claimed by the specification before amendment" (s. 78) but it appears equally clearly that "leave to amend shall, notwithstanding the last preceding section, be conclusive as to the right of the party to make the amendment allowed except in the case of fraud" (s. 79). Again, the question whether "all directions for amendment are complied with" under s. 44 is a matter for the consideration of the commissioner alone. It would be strange if, these matters having been left to the decision of the commissioner, the legislature, in enacting ss. 45 and 46, intended to pursue the entirely different course of allowing the question of the validity of a patent to depend upon a subsequent judicial inquiry whether some particular amendment to the specification as originally lodged should have been permitted under s. 45. During the discussion concerning this problem counsel for the respondent emphasized the difficulties created by s. 38A and s. 54 if the contrary view should be taken. After publication of a complete specification of an invention the applicant has, by virtue of the provisions of s. 54, "the like privileges and rights as if a patent for the invention had been sealed on the date of the publication of the complete specification". But what happens if, after publication and before acceptance, the specification is amended in such a way as to claim a different invention? Is the later invention protected as from the date of the publication of the original specification? Or does protection for the invention as originally claimed exist until amendment and thereafter protection accrue to the new invention? But these and other like questions which may be asked concerning the effect of s. 54 in such cases do not serve to indicate that it was intended that the question of the propriety of amendments under s. 45 should be removed from the bona fide discretion of the commissioner. At the most they go to show that it was not intended that the commissioner should permit amendments, so to speak, at large and that it was intended that the power should be exercised within limits not wider than those specified for the operation of Div. 4 by s. 78 thereof. Moreover, it should be noted, the difficulties - which to me seem rather apparent than real - may present themselves fairly and squarely in relation to amendments allowed in the discretion of the commissioner under that division.

[103]

The question whether the propriety of amendments under s. 45 is a matter for the bona fide discretion of the commissioner is, I think, best solved by an examination of that section and s. 46. Clearly s. 45 contemplates amendments to meet the adverse report of an examiner and the amendments contemplated are amendments to the specification of an invention already disclosed. This alone is sufficient to enable one to say that the section does not contemplate that by amendment the specification of one invention may become the specification of a new and different invention. But whether any proposed amendment would produce this result is, in my opinion, a matter for the commissioner to determine. Under s. 46 " If the Commissioner is satisfied that no objection exists to the specification on the ground that the invention is already patented in the Commonwealth or in any State or is already the subject of any prior application for a patent in the Commonwealth or in any State he shall in the absence of any other lawful ground of objection accept the application and specification without any condition". The commissioner's opinion as to the particular matters specified is the condition upon which the application and specification may be accepted. But it is contended that the "absence of any other lawful ground of objection" refers to an existing state of fact and, further, that this state of fact does not exist when an amendment outside the scope and contemplation of s. 45 has been allowed. But what happens when the commissioner is not satisfied of some one or more of the matters referred to in the section? He may refuse to accept the application and specification or he may accept them "on condition that a reference to such prior specifications as he thinks fit be made thereon by way of notice to the public." Either course may be taken if he is not satisfied, not only of the particular matters specified in the section but also as to the absence of "any other lawful ground of objection." From his adverse decision on such a question an appeal lies to the High Court or the Supreme Court. But he can refuse to accept an application and specification only if he is not satisfied. Accordingly he is bound to accept them if he is satisfied not only of the particular matters specified but also of the absence of any other lawful ground of objection. Surely in these circumstances it may well be said that the condition precedent to such acceptance is not that amendments which have been made are within the scope of s. 45 but that the commissioner is satisfied that they are. There is in the present case no ground for any suggestion, and no suggestion is made, that the commissioner's discretion was not exercised bona fide and this being so it is unnecessary to consider whether our own view as to the propriety of the amendments which were made coincides with that of the commissioner.

[104]

It appears to me that the solution of this problem must also assist materially in the solution of the remaining questions which were debated on the respondent's appeal. Based on the proposition that the invention claimed in the finally amended specification for No. 133 was substantially different from that described and claimed or described and disclosed in the specification as originally lodged, the respondent alleged that the appellant was not in possession of the former invention when the specification in its original form was lodged. In its particulars of objections the respondent by par. 6 alleged quite unequivocally that the appellant "as applicant for the grant of the said letters patent was not on 31st December 1943 in possession of the invention the subject matter of the letters patent ultimately granted as at that date and that by reason thereof the grant thereof is and at all material times has been invalid void and of no effect." The question whether this allegation, among others, constituted a good defence in law was argued as a preliminary matter of law and by the order then made it was declared that par. 6, "so far as it depends exclusively upon the aforesaid allegations of fact (i.e. allegations appearing in par. 4 of the particulars) constitutes a good defence in law to the plaintiff's claim herein to the following extent and not otherwise, viz., so far as they allege that the effect of the amendments therein referred to or either of them was that the complete specification of the letters patent No. 133163 in its final form claimed an invention substantially different from the invention described and disclosed by the complete specification originally lodged with the application dated 31st December 1943." But par. 6 did not, and did not purport, to depend in any way at all upon allegations of fact previously made in the particulars of objection, nor did the allegations previously made, so far as, apparently, they were thought to be material, go further than allege that "on or about 18th December 1946 the plaintiff lodged in the Patent Office what purported to be but was not an amended complete specification as the complete specification accompanying the said application of 31st December 1943, but the said specification so lodged on or about 18th December 1946 described and claimed then as the invention something which was not the invention described and claimed in the complete specification lodged on 31st December 1943 as aforesaid but something substantially different therefrom." I fail to see how par. 6 of the particulars of objection depended substantially on this or any similar allegation for, if the truth of this objection be assumed all that can be taken as established is that the plaintiff first described one invention and at a later stage described another. These circumstances alone cannot give rise to the inference that the plaintiff was not in possession of the second invention when he described the first. Nevertheless, the matter proceeded to trial without any amendment of the pleadings or any further definition of this or any other issue.

Martin v Scribal Pty Ltd - [1954] HCA 48 - HCA 1954 case summary — Zoe

At a glance

Court

Decision date

Before

Source

Judgment (106 paragraphs)

Parties

Cited By (2)