Nicaro Holdings Pty Limited; Matflo Engineering Pty Limited and Richard Couper v Martin Engineering Company and ESS Engineering Services & Supplies Pty Limited [1990] FCA 40

Nicaro Holdings Pty Limited; Matflo Engineering Pty Limited and Richard Couper v Martin Engineering Company and ESS Engineering Services & Supplies Pty Limited [1990] FCA 40 - FCA 1990 case summary — Zoe

[158]

"It cannot be too carefully kept in mind

in patent law that, in order to render a

document a prior publication of an

invention, it must be shown that it

publishes to the world the whole

invention - i.e., all that is material to

instruct the public how to put the

invention in practice. It is not enough

that there should be suggestions which,

taken with suggestions derived from other

and independent documents, may be shown

to foreshadow the invention or important

steps in it. Since the date of the

vigorous protest of Lord Justice James in

Von Heyden v Neustadt (50 LJNS Ch

against such a 'mosaic' of prior

publications this has been a universally

accepted and most salutary principle. It

applies with exceptional force in cases

where the alleged prior publications are

the Specifications of unsuccessful

inventions which have accordingly never

passed into public general knowledge but

have rightly been forgotten.

All my past experience emphasizes in my

mind the justice of this rule. The

industrial and scientific problems, which

face mankind, are being attacked all over

the world by busy inventive minds from

the most varied points of view. When

some lucky inventor has been successful

in solving the problem and - whether for

the purposes of an action or otherwise -

the records of past failure or incomplete

success are searched, it is common to

find that suggestions or adumbrations of

each of the various steps, by which he

has achieved his result, are to be found

in some one or other of the works of

those who have gone before him, though in

different connection and forming part of

a different and probably unsuccessful

process. When such records are selected

from a mass of antecedent publications

and put in an isolated form before a

Court, there is a danger of their giving

rise to a suspicion of a general lack of

novelty in the successful invention. But

it must be remembered that these alleged

prior publications are the product of a

selection made with a knowledge of the

successful invention, and that probably

hundreds of proposals equally promising,

but which point in wholly different

directions, have been rejected in the

search by reason that they do so. It is

somewhat as though one were to decry the

merit of a prospector who had discovered

that sands were auriferous by showing

that after due rejection of most of the

non-metallic particles from a handful of

sand the gold may be made to appear

visible to the naked eye."

[164]

"Then the Plaintiffs' Counsel very

properly discussed separately the

question of novelty and subject-matter.

Their argument on novelty depends really

upon what I have said, that these bodies

are new and valuable. For that purpose

they cite the case of Hills v Evans.

Nobody is likely at this stage to

question anything in the classic judgment

of Lord Westbury in that case; but Hills

v Evans is a case which deals only with

anticipation; it has no bearing at all

upon subject-matter. A patent may be

hopelessly invalid for want of subject-matter,

although there is no disclosure

of its process or of its contents in any

prior document at all. If it be that,

having regard to what the world knows in

the art, the making of the body, if it be

a body in a patent, is a matter of

routine, is a matter which the ordinary

tools of the chemist will enable him to

obtain, or is a matter which will be

obtained in fact, if you follow the

anticipatory directions contained in an

earlier document, then there may be no

subject-matter in the patent, although

the contents of it do not appear in the

way of anticipation.

Then reliance is placed on Von Heyden v

Neustadt and it is attempted to be said

on the Plaintiffs' behalf in this case

that the Defendants rely upon a mosaic

within the meaning of that authority.

All I can say is that it does not seem to

me to be anywhere near what was laid down

in the decision in that case. Here these

papers, especially the more relevant

ones, are one consistent whole; they are

chapters in a series of disclosures on

the particular topics which they deal

with, which include those which are

relevant in this case. Anybody reading

one is referred by cross-references to

the others, and, so far as I can see, the

mosaic theory has no application at all.

It is not suggested on behalf of the

Plaintiffs that the law which applies to

anticipation has any relation to the law

applicable to subject-matter.

As to subject-matter, Sir Arthur Colefax

and Mr. Cripps have naturally had a good

deal to say. They submit very

confidently that in the case of a

chemical patent, if the invention is

novel and useful, subject-matter has

nothing to do with it. That, again, in

one sense is a truism. If there is

invention and if it is novel and if it is

useful, then it is not much use troubling

about subject-matter. But the question

here is whether there is any inventive

step at all. To be novel in this sense

the thing claimed must be new in the

sense that invention was required to

produce it, and in my opinion in this

case there is no inventive step in the

Plaintiff's Patent at all, having regard

to what had been published to the world

in the documents that I have read."

[234]

"The Reiter patent relates to a cleaner

the manufactured version of which was the

Stephens-Adamson cleaner, . . . and there

was evidence that a number (though

perhaps not many) of these had been sold

in Australia prior to the priority date.

Another U.S. patent, for the earliest

version of the Stephens-Adamson cleaner,

was referred to as the later Sinden

patent. The specification of that patent

became open to public inspection in the

Australian Patent Office, Canberra, on 27

February 1958. It was not suggested by

counsel for any party that, for present

purposes, a significant distinction

should be drawn between the two patents

relating to cleaners of the Stephens-Adamson

type. Each involves a supporting

pipe transverse to the conveyor belt,

held at either end by attachment to a

vertical support with a series of holes

drilled in it, so as to make provision

for raising and lowering the pipe.

Another support, of a length at least

equal to the width of the belt, rests on

the supporting pipe. That other support

is called, in various parts of the

specification of the Reiter patent, 'the

supporting frame', 'a support adapted to

be mounted transversely of the belt to be

cleaned', 'the support', 'an elongated

support member, holder or cross angle'.

It is of L-shaped cross-section, and has

fixed to it a number of C-clips

(catalogues with illustrations of the

Stephens-Adamson cleaner show two

C-clips), so that when it sits on the

pipe support the two surfaces presented

by its L-shaped cross-section encompass

about half of the circumference of the

pipe support, which the C-clips enable it

to grip by partially completing that

encompassment. As the specification says:

'The holder . . . is mounted to

rotate and to slide on the

supporting pipe . . . by a plurality

of C-clips . . . fixed to the holder

. . .'

At one end of the holder there is a

mechanism comprising a lever, arcuate

slot, and wing nut, by means of which the

scraper blade pressure may be regulated

by rotating the holder on the pipe

support. In the Reiter patent, the arms

bearing the scraper blades are 'fixedly

connected to the supporting frame', that

is to the holder. The specification

refers to a method for 'fixedly

connecting one end portion to the

support' by the use of mounting eyelets

by which it is bolted to the support.

The method of getting access to work on

the scraper blades of the Stephens-Adamson

cleaner for maintenance is

simple, but it obviously requires space

beside the conveyor belt comparable to

the width of the belt itself, for the

holder (with its attachments) has to be

slid off the pipe support, after removal

of the wing nut on the bolt in the

arcuate slot which fixes the whole

apparatus in position."

[238]

"The Stephens-Adamson cleaner also (i.e.

like that of the invention claimed in the

patent in suit) has a support member

which may be adjusted by rotating it to

achieve contact with the belt, but in

that case the method of removal for

maintenance is by removal of the entire

support member with its attachments

bearing the scraper blades. In the case

of the Stephens-Adamson cleaner, the pipe

support is really the means by which the

support member is held in position

beneath the conveyor belt.

If, indeed, the pipe support is regarded

. . . as the support member, on which the

holder is to be regarded as a sleeve,

then the Stephens-Adamson cleaner does

not have the (sixth) integer of claim 1

(of the patent in suit). For that

integer is 'an adjusting element operable

on the support member for bringing the

belt cleaning elements into engagement or

out of engagement with the conveyor

belt.'(His Honour's emphasis).

Although it is true that the Stephens-Adamson

cleaner involves a crude means of

adjustment of the position of the support

pipe by raising or lowering its

attachment to its vertical supports, this

is certainly not provided 'for bringing

the belt cleaning elements into

engagement or out of engagement with the

conveyor belt'. Given that the Stephens-Adamson

equipment is held in a suitable

position beneath the conveyor belt in the

way mentioned, the method by which the

belt cleaning elements are brought into

or out of engagement with the belt is the

rotation of the holder by means of the

lever arm, and the fixing of the rotated

position with the wing nut. (Emphasis

supplied.) If the holder is not the

support member, it is clear this is not

accomplished by an adjusting element

operable on the support member, but by an

adjusting element operable on the holder,

that is, on the (appellants' arguments),

on the sleeve member. As it is expressed

in the specification of the Reiter

patent, 'the pressure handle (i.e. the

lever) positions the wiper blade and

springarm assemblies for proper blade

pressure and other vertical adjustments'."

At a glance

Court

Decision date

Source

Judgment (251 paragraphs)

Nicaro Holdings Pty Limited; Matflo Engineering Pty Limited and Richard Couper v Martin Engineering Company and ESS Engineering Services & Supplies Pty Limited [1990] FCA 40 (19 February 1990)

Parties

Legislation Cited (16)

Cases Cited (15)