Olin Corporation v Super Cartridge Co Pty Ltd

Olin Corporation v Super Cartridge Co Pty Ltd - [1977] HCA 23 - HCA 1977 case summary — Zoe

[11]

Now, it seems to me that the appellant made two inventions. He found and, in my opinion, disclosed what I shall, perhaps insufficiently, call a plastic structure which, exhibiting certain physical features the result of manufacture, would be effective for its intended purpose and be reusable. This was not mere discovery without invention. He also found a method of producing those physical features. The specification, in my opinion, discloses both inventions, each of which exhibits all the traditional features of a new method of manufacture as the time-honoured expression has been interpreted and explained [2] . No one had ascertained and made public those physical characteristics of a plastic structure which would make it effective and reusable. The claim does describe those physical features. It may well be that these physical features had not been ascertained and disclosed because no one had devised a process which resulted in a shell case possessing those physical attributes. But that does not mean there was not invention in the ascertainment of the necessity for, and of the effectiveness and utility of, those induced physical properties or characteristics. The essential physical attributes are a combination of the temperature at which the structure is produced from the particular polymer and the relationship of the tensile strength at two separated points of its thin wall. It is the combination of these elements that provides the effectiveness and particular utility as well as the novelty of the structure. This combination itself involved invention. Further, the significance of that combination is, in my opinion, disclosed in the specification. After relating the state of the prior art and exposing the insufficiencies of its products, the objects of the invention are stated as two-fold: (1) a product and (2) a process. In describing the object, the specification speaks of it as "an article composed of a crystalline polymer of a thermo-plastic synthetic resin formed in such a way that exceptionally high strength is obtained adapting the article for use as a container under pressure". It is said that

[27]

It was contended on behalf of the respondents that even if the three elements essential to claim 1 were found in the respondents' process (which was denied) they occurred simultaneously, and that it is an essential feature of the claim that the process must be carried out in successive and distinct steps, in the order in which they are described in the claim. The claim states that the process comprises "steps", but although that word may connotate action taken as a part of a series, it does not necessarily do so. According to the definitions contained in the Shorter Oxford English Dictionary, "step", in its figurative sense, means "an action or movement which leads towards a result; one of a series of proceedings or measures". In the ordinary usage of the word, "steps" may be taken simultaneously or in no particular order. The claim does not state that the steps should be taken in the order in which they are mentioned and there is nothing in the body of the specification that suggests that the order in which the steps are taken has any importance or is intended to be significant. On the contrary the description of the preferred embodiments of the invention is inconsistent with the view that the claim involves successive steps. It may be arguable whether the first step - confining the pre-formed blank in the die cavity - is completed when the blank is placed in the open die, or only when the second step is commenced, that is when the die cavity is closed by the punch. The use in the specification of the words "confining the plastic between at least two juxtaposed surfaces" would quite strongly favour the latter view, for the surfaces referred to appear to be those of the punch and the die. However that may be, it is clear that in the preferred embodiments described in the specification the second and third steps - closing the die cavity with a punch, and applying pressure to the blank with the punch to compressively deform it into the confined space - are taken together. The punch is rammed into the die assembly, and at one stroke closes the die cavity and applies pressure to the blank. Since the second and third steps may be taken simultaneously, the word "steps" cannot have a meaning that requires the three steps to be taken separately and in order, or that requires the first step to be completed before the others are commenced. What is described is a continuing process, and the word "steps" merely means "actions" or "measures", which can be carried out all at once. If therefore the respondents' process involves taking the steps described in claim 1, it will infringe the patent even if the steps are not taken in the order in which they are mentioned in the claim.

[33]

In my opinion the respondents' process does involve the step of confining the blank in the die cavity. The blank is caught between the tapered surfaces of the punch and the die cavity so that deformation may occur. It is kept in place there, although only momentarily, so that it may become subject to pressure. The word "confine" does not felicitously describe what occurs in the respondents' process, but in substance this element of the appellant's claim is taken in the respondents' process. The claim does not require that the blank should remain stationary or that it should be confined for any particular period of time. Not all of the blank is confined at once, but that also is not required by the claim. As to the second integer, the die cavity is in my opinion certainly closed with a punch member. The words "dimensioned so as to define a space" appear to be descriptive of the punch member. If so, they are satisfied. If it is necessary, however, I hold that the closing is done so as to define a space between the punch and the die cavity - indeed, two spaces, one to the left and one to the right of line 18. A space may be defined although one side of it is unenclosed; the other sides which are closed may mark its limits, and they do so here, for the space does not extend beyond the die cavity. The crucial question then is whether the respondents' process involves the step of applying sufficient pressure to the blank with the punch to compressively deform the blank into the defined space. The respondents submitted that their process does not involve this step for a variety of reasons: that the pressure which causes the deformation is not applied with the punch, that the deformation that results is not "compressive" within the meaning of the claim, and that there is no deformation "into" the defined space. They submitted further that if the claim is so construed as to include the respondents' process it is not fairly based on the matter described in the specification.

[35]

With all respect I am unable to agree that the words of the claim refer only to "a simple compressive force", that is, to a process in which no tensile stresses are at work. The patent speaks of forming the articles "by compression", but does not qualify that expression, or the words "compressively" or "compress" which are also used, by words that suggest that the nature of the force used shall be solely or simply compressive. The verb "compress" in its relevant ordinary meaning simply means "to press together, to squeeze" (Shorter Oxford English Dictionary). The claim in its ordinary meaning refers to a deformation caused by pressing or squeezing the preformed blank. If the claim is ambiguous, so that it is permissible to refer to the body of the specification as an aid to its construction, it will be seen that compression is contrasted with stretching. Nothing is said to indicate that the compression must be done in such a way as to create no tensile stresses. Further, evidence given by witnesses for the respondents as well as by witnesses for the appellant establishes that in the process described in the preferred embodiments in the appellant's specification there are tensile as well as compressive stresses, even if the latter may be described as dominant. It would seem to me to be incorrect to construe the claim by reading into it a limitation which does not appear there and which would have the effect that the preferred embodiments would fall outside the words of the claim. In reaching this conclusion I do not need to rely on the reference in the specification to articles "formed at least in part by compression", and need not decide whether those words are intended to refer to the case where part only of the object is formed by compression from plastic materials (in which event they throw no light on the present question) or to the case where the whole object is formed from plastic materials but only partly by compression (in which event they support the view I have just expressed).

[89]

The respondents' case of want of novelty is based on the existence of two earlier patents, the Core patent and the Covington patent to which we referred earlier. The Core patent was published in Paris on 20 January 1959, and lodged in the Australian Patents Office in June of that year. According to his Honour, the patent was designed to achieve a cold working of thermoplastic material by shaping the material in a die below the crystalline melt point so as to secure additional strength in the material. Use of the process for the making of a shot shell case was envisaged and the process described involved a punch and a die each so dimensioned that a space was defined between the punch and the die cavity and the application of sufficient pressure to force thermoplastic material into the space so defined from a solid slug placed in the bottom of the die cavity. His Honour found that there was a similarity between the Core process and that described in the appellant's specification but he concluded that the Core process "would not necessarily achieve the result claimed for it". His Honour pointed out that tremendous pressures are needed to cause thermoplastic material to flow under compression when the material is below the crystalline melt point. The need for these pressures was stated in the appellant's specification and the effect of applying them to a solid slug of material by an untapered die punch at a speed within any practical limits would be to cause the temperature of the material to be raised in parts above the crystalline melt point with consequential uneven loss of orientation and irregular formation of the walls. These difficulties were not recognized in the Core patent and it provided no solution to the problems which they created. Moreover, the Core patent made no mention of highly crystalline polyolefin polymer. Even if such materials were comprehended by the language of the patent it does not arithmetically express the increase of strength which will be obtained, whereas claim 10 asserts a twofold increase in strength.

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Judgment (110 paragraphs)

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