The Issue of Infringement
27 Logically, the next issue in the case is one of the issues raised by the cross-appeal, that is, whether Ramset is liable for infringement of the patent. Ramset did not itself erect pre-cast concrete walls or panels. It supplied, for profit, face-lift anchors and ring clutches which conformed to the patent and were used by those to whom they were supplied in face-lift tilt-up construction in accordance with the method disclosed by the patent. That, Ramset argued, did not involve any infringement by it.
28 There are certain principles of law which it is convenient to set out before the evidence is examined in detail. In Walker v Alemite Corporation (1933) 49 CLR 643, Rich J referred (at 650) to "the authorities which establish that the sale of a component part of a combination claim for an entire machine is not an infringement of a combination". Starke J (with whom Evatt J agreed) said (at 654):
"[W]hen a patent is for a combination of various parts, the manufacture of the single parts is no infringement. Such a manufacture is in itself lawful, and knowledge, even on the part of the manufacturer, that the single parts will be used for the purposes of infringement is not enough to render him liable as an infringer".
Dixon J (with whom McTiernan J agreed) said (at 658):
"[I]t is settled law that the exclusive property in a combination invention is not infringed upon by the sale of the components (Townsend v Haworth [1875] 12 Ch. D. 831(n)); that selling articles to persons to be used for the purpose of infringing a patent is not an infringement of the patent (per Fry J, Sykes v Howarth (1879) 12 Ch. D., at p. 833); and that sale with a knowledge that the purchaser will use the articles for infringement is not itself an infringement although the vendor gives the purchaser an indemnity: the vendor must have made himself a party to the act of infringement (per Mellish LJ, Townsend v Haworth (1875) 48 L.J. Ch., at p. 773(n); Dunlop Pneumatic Tyre Co v David Moseley & Sons Ltd (1904) 1 Ch., at pp. 616, 620). Further, in the opinion of Vaughan Williams LJ, it is not enough that the article sold has no other use than a use in the course of what amounts to infringement ((1904) 1 Ch., at pp. 616, 618, 619). The basis upon which these rules rest is that whatever is not included in the monopoly granted is publici juris and may be freely used as of common right. Narrow as this view of what constitutes participation in infringement may appear, it requires us, in my opinion, to hold that the claims 4 to 11 of the specification were not infringed."
29 It will be observed that Dixon J based these rules on a proposition confining the patentee's monopoly to the precise area claimed. In the case of a combination patent, that area does not extend to each constituent element of the combination, or to several of them, provided the combination itself is not involved. It does not follow that the public right of which Dixon J spoke extends beyond a dealing in a mere part of the combination, as a separate item, so as to include a dealing that embraces participation in the assembly and use of the whole combination.
30 What is required, and will suffice, for the establishment of liability, according to the statement of principle by Dixon J, is that "the vendor must have made himself a party to the act of infringement". A party to an act is a "person who takes part or is implicated in" that act: The New Shorter Oxford English Dictionary (1993) Vol 2, "party". That Dixon J was using the expression (which he partially borrowed from Mellish LJ) in this sense is confirmed by his reference, later in the same paragraph, to "participation in infringement". Similarly, Pennycuick V-C in In re Maidstone Buildings Provisions Ltd [1971] 1 WLR 1085 at 1092 construed a company law provision referring to "any persons who were knowingly parties to the carrying on of the business [in a particular manner]" on the basis that "the expression 'party to' must on its natural meaning indicate no more than 'participates in,' 'takes part in' or 'concurs in.'" He added this "involves some positive steps of some nature". The propositions excluding a vendor from liability must therefore refer to a vendor who does not participate in the infringement.
31 As Dixon J pointed out (Gummow J has remarked that he "emphasised": Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205 at 243), the authorities to which reference was made in Walker v Alemite exemplify a narrow view of what participation in infringement requires. But the stringency of that view should not be exaggerated by a failure to appreciate how confined was the issue examined in the cases cited. Walker v Alemite itself involved, in the words of Dixon J (at 657), an asserted infringement of a patent relating to an "appliance considered as a whole" by the mere "manufacture and sale of the grease-cup or nipple" forming part of it, the infringement being alleged "because the grease-cup would or must inevitably be used with the other parts of the respondent's invention". This is a far cry from a case of participation in an infringement actually committed by the person who brought together the grease-cup and the other parts for sale or use. The first decision in the series to which reference was made (by Starke J at 654) in the judgments in the High Court, McCormick v Gray (1861) 7 H & N 25; 158 ER 377, raised a precisely similar question. As Bramwell B pointed out (at 38-39; 384), the patent related to an entire reaping machine, while the alleged infringement consisted of the making of a blade which could have been used either in the patented or in some other machine.
32 The next decision, Townsend v Haworth, involved a demurrer to the plaintiff's bill. As it was a demurrer, the question was whether the particular allegations made in that bill showed a good cause of action for infringement of a patent. The patent was concerned with the preservation of cotton from mildew by treating it with a solution made up from well-known chemical compounds. The action was brought against the supplier of some of the chemicals. Jessel MR said (at 772) "that the mere making, using or vending of the elements …. which afterwards enter into the combination, is not prohibited by the patent". He concluded:
"This bill treats the company as proper defendants solely and simply on the ground of their bona fides in endeavouring to sell for their own profit, but as selling to a person who would not have bought of them without an indemnity, and therefore would not have infringed in that way without they had given him an indemnity."
On appeal, Mellish LJ said (at 773):
"Selling materials for the purpose of infringing a patent to the man who is going to infringe it, even although the party who sells it knows that he is going to infringe it and indemnifies him, does not by itself make the person who so sells an infringer. He must be a party with the man who so infringes, and actually infringe."
(The words "by itself" were later emphasized in decisions of the Court of Appeal to which reference will be made: see Dow Chemical AG v Spence Bryson & Co Ltd (infra) at 403-404.)
33 These principles were applied in the later case Dunlop Pneumatic Tyre Company, Limited v David Moseley & Sons, Limited (1904) 1 Ch. 612. There, infringement was alleged of two patents, each for a combination, relating to tyres and rims for cycles and vehicles. The defendants did not put the components of the combination together, but dealt (as appears at 615-616) in "an outer detachable cover", capable of being used in the manner described in the patents. Even if it was capable of no other use, Vaughan Williams LJ considered there would be no infringement. As was pointed out by Buckley LJ (with whom Goff and Eveleigh LJJ agreed) in the later case Belegging-en (infra) at 65, this must be right because "goods which cannot be used otherwise than in an infringing manner may nevertheless be disposed of without any infringement. They may, for example, be exported." Vaughan Williams LJ, in his judgment in Dunlop Pneumatic Tyre Company, also said (at 616):
"Now it is plain that what the plaintiffs allege is that there has been an infringement by the defendants, and that the infringement consists in the sale of these covers, which are constituent parts of one or other of the methods the subject of the combination patents … . In my opinion the sale of these covers does not amount to nor is evidence of an infringement of either of those patents. In truth and in fact, veil it as you like, the plaintiffs do not complain of any infringement in which the defendants have taken part as actors. All that they complain of is the sale of these covers to persons who the defendants must have known intended to commit an infringement of one or other of the patents."
The Lord Justice added (at 618):
"It cannot be said on these facts that [the defendants] have aided or abetted any one in the commission of an act of infringement."
He also added (at 619) an important clarification:
"If you are in substance selling the whole of a patented machine, I do not think that you can save yourself from liability for infringement, because you sell it in parts which are so manufactured as to be adapted to be easily put together. But that is not the present case. What is complained of here is merely the sale of one or other of the parts of the tyres patented by the plaintiffs."
This observation accords with a number of other decisions: in particular, it was followed by Waddell J in Windsurfing International Inc v Petit [1984] 2 NSWLR 196 at 204-207 in respect of a kit sale of a windsurfer to be assembled by the buyer.
34 A case analogous to the example given by Vaughan Williams LJ, and cases of that kind, where in substance what is sold is the whole of a patented machine, although it is not actually put together, is Innes v Short (1898) 15 RPC 449. That case involved a patent for an "improved method of preventing corrosion and encrustation in steam boilers" by the introduction into the boilers of zinc in a powdered state, so that it would be held in suspension by the boiling water. The defendants sold ordinary zinc powder, sending to each customer a copy of a circular containing directions for the use of the powder in a manner which would infringe the patent. Bigham J held (at 451-452):
"I come to the conclusion, as a matter of fact, that Short has invited and requested many people to use the powder in such a way as to infringe the patent rights which I find the Plaintiff has, and I think for that reason that this case is distinguishable from [Townsend v Haworth]. … That case, in my opinion, is quite different from this one. It would be nonsense to say that a person is to be restrained from perfectly legitimate trade, namely, selling an article of commerce, because he happens to know when the buyer buys it from him that the buyer intends to put it to some improper purpose. The seller has nothing to do with the purpose to which the buyer is going to put it, and he cannot be said to infringe any patent because he simply knows that the buyer is going to use it - that is to say, he expects it. … But I think it is a different case where the vendor himself asks and invites the purchaser to use the article so as to infringe somebody's patent, and I think, as a matter of fact, that Mr Short did invite the persons who bought this article of commerce, powdered zinc, from him, and hereby led them to infringe this patent at the time that he was selling the powdered zinc to them. That, I think, is a violation of the Plaintiff's rights. There is no reason whatever why Mr Short should not sell powdered zinc, and he will not be in the wrong, though he may know or expect that the people who buy it from him are going to use it in such a way as will amount to an infringement of Mr Innes' patent rights. But he must not ask the people to use it in that way, and he must not ask the people to use it in that way in order to induce them to buy his powdered zinc from him."
This case was described as being "of somewhat doubtful authority" in Adhesive Dry Mounting Company Ld v Trapp & Co (1910) 27 RPC 341 at 353, a decision of Parker J. However, in CBS Songs Ltd v Amstrad Consumer Electronics Plc [1988] AC 1013 at 1056, it was cited by Lord Templeman, whose speech received the assent of the House. His Lordship there accepted it, in a passage to which we shall have occasion to refer again, as a case where "the vendor and the purchaser had a common design to carry out an infringing act".
35 Innes v Short is discussed by Blanco White, in his Patents for Inventions, 4th ed (1974) in para 3-210. He suggests:
"[I]t would seem on general principles that it should not be very difficult, in cases of the sale of materials or apparatus accompanied by instructions to use what is sold in what the seller knows to be an infringing way, to persuade a court that the seller had caused the infringement to take place; and it would further seem, again on general principles, that the patentee should in such a case have a cause of action against the seller. The authorities on this point, however, are in an extremely unsatisfactory state. In one case, Innes v Short, the court did intervene to stop the sale of materials, with an instruction to infringe (and no warning that following the instructions would lead to infringement). Taken by itself, the decision seems unexceptionable as a simple application of general principles."
Despite this statement of his own opinion, the learned author referred to the doubt expressed by Parker J as that of "a very eminent Judge", and to the decision in Townsend v Haworth. He put forward the view that in Innes v Short the "real question was whether [the seller] was inducing numerous innocent purchasers of his materials to infringe", and that it was rightly decided. As to Townsend v Haworth, Blanco White points out a conspiracy to infringe may well have been involved, since there the purchaser knew of the patent and intended to act on the assumption that it was invalid, but no such case was pleaded.
36 In Rotocrop International Limited v Genbourne Limited (1982) FSR 241, Graham J dealt with an allegation of infringement of a patent claims 6 and 14 of which were concerned, respectively, with a "method of producing compost from decomposing vegetable matter" and a "compost bin" of a particular description. His Lordship said (at 258-259) that the defendants sold -
"kits of parts for their customers to build into bins. They issue full instructions … with every kit to enable the customer to do so. By virtue of these actions, in my judgment, the defendants are joint tortfeasors with their customers who erect and use their bins in accordance with the defendants' instructions. When a customer does so and makes compost, as he is told to do, he is in my judgment a joint tortfeasor with the defendants and they are similarly joint tortfeasors with him. Both have a common design … [I]t is quite clear from their advertisements that the defendants invited their customers to make bins from the kits they sold and to use them for making compost. It is a fair inference that at least some of them did so and the defendants knew quite well that they would do so as alleged in the particulars of infringement. … That being so I find the defendants to be joint tortfeasors with their customers … in infringing claim 6."
His Lordship went on to hold also (at 260):
"[T]here is certainly infringement of claims 6 and 14 by the defendants who have procured their customers to infringe as alleged, knowing quite well that the customer would assemble the bin and use it in accordance with the defendants' instructions and thereby would infringe at least those claims. In any event therefore, even if joint tortfeasance [on the basis of a common design] ought not to be inferred, there is infringement by the defendants by way of procuring customers to infringe and I so hold."
37 This case, as well as Innes v Short, was referred to by Lord Templeman in CBS Songs Ltd (ubi supra) in terms suggesting approval of the proposition that "the vendor and the purchaser had a common design to carry out an infringing act". Lord Templeman went on to refer (at 1056-1057) to the decision of the Court of Appeal in Belegging-en Exploitatiemaatschappij Lavender BV v Whitten Industrial Diamonds Limited [1979] FSR 59, where the defendants were alleged to have sold diamond grit for the sole purpose of making grinding tools, in which it was to be embedded in a resin bond as part of a patented material. Lord Templeman said:
"Buckley LJ held, at p. 66, that the defendants could not be infringers unless they
'sold the grits in circumstances which in some way made them participants in their subsequent embodiment in resin bonded grinding wheels, or that they induced someone so to embody them …'".
Later, Lord Templeman added (at 1058):
"My Lords, I accept that a defendant who procures a breach of copyright is liable jointly and severally with the infringer for the damages suffered by the plaintiff as a result of the infringement. The defendant is a joint infringer; he intends and procures and shares a common design that infringement shall take place. A defendant may procure an infringement by inducement, incitement or persuasion."
In reading this passage, which refers to a breach of copyright, it is necessary to bear in mind that his Lordship treated the patent cases as involving the same principle.
38 In further remarks, Lord Templeman made a statement on which the cross-respondent Ramset strongly relies:
"Sales and advertisements to the public generally of a machine which may be used for lawful or unlawful purposes, including infringement of copyright, cannot be said to 'procure' all breaches of copyright thereafter by members of the public who use the machine. Generally speaking, inducement, incitement or persuasion to infringe must be by a defendant to an individual infringer and must identifiably procure a particular infringement in order to make the defendant liable as a joint infringer."
Counsel appeared to suggest that this proposition was based on a legal necessity that there be a meeting of the minds of the parties to a common design in such a way as would involve some direct contact between them. But this is not true of the paradigm example of a common design in the law - the crime of conspiracy. In Commonwealth of Australia v Riley (1984) 5 FCR 8 at 27, the joint judgment of the Full Court (Smithers, Sheppard and Wilcox JJ) accepts the statement of principle of the English Court of Criminal Appeal in R v Griffiths [1966] 1 QB 589 at 597:
"[A]ll must join in the one agreement, each with the others, in order to constitute one conspiracy. They may join in at various times, each attaching himself to that agreement; any one of them may not know all the other parties, but only that there are other parties; any one of them may not know the full extent of the scheme to which he attaches himself. But what each must know is that there is coming into existence, or is in existence, a scheme which goes beyond the illegal act or acts which he agrees to do."
In Smith and Hogan on Criminal Law, 4th ed (1978) at 237, the rule is put tersely:
"Provided that the result is that they have a common design - for example, to rob a particular bank - [several parties] may properly be indicted for conspiring together though they have never been in touch with one another until they meet in the dock."
But, in any case, the law as declared by Lord Templeman is concerned with more than what is involved in a common design; it extends to procurement through inducement or persuasion. His Lordship's remarks must be understood in the context of the case he was considering. The impugned transactions involved the sale of tape recorders which could be used for recording generally. Unless appropriate individual circumstances were proved, the mere advertising of their capabilities could not amount to a general invitation, inducement or persuasion to the carrying out of acts in breach of copyright. If, on the other hand, as in Innes v Short, purchasers or would-be purchasers of goods are not merely told their properties or capabilities, but are told how to use them to infringe a specific right, then, depending on the circumstances, there seems no reason why inducement should not be found. It is to be observed that Lord Templeman lays down no rule for all cases; he says "Generally speaking …". In the context of authorization of breach of copyright, Jacobs J (with whom McTiernan ACJ agreed) said in The University of New South Wales v Moorhouse (1975) 133 CLR 1 at 21:
"Where a general permission or invitation may be implied it is clearly unnecessary that the authorizing party have knowledge that a particular act comprised in the copyright will be done."
Gibbs J took a similar view at 13, and, having regard to R v Griffiths, the equivalent proposition must be true also of the law of combinations.
39 The principle was expounded by Dillon LJ (with whom Woolf and Leggatt LJJ relevantly agreed) in Mölnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112 (a case the authority of which has been accepted in Australia: see Murex Diagnostics Australia Pty Ltd v Chiron Corporation (1995) 55 FCR 194 at 207) at 1118, where his Lordship said:
"For a very long time there has been a dichotomy applied between 'procuring' and 'facilitating' an infringement of a patent: see Townsend v Haworth; Dunlop Pneumatic Tyre Co Ltd v David Moseley & Sons Ltd and Belegging-en Exploitatiemaatschappij Lavender BV v Whitten Industrial Diamonds Limited [at] 65, where Buckley LJ said: 'Facilitating the doing of an act is obviously different from procuring the doing of the act.' A person who merely facilitated, but did not procure, the infringement was not a joint tortfeasor with the infringer and so was not liable if, for instance, he sold articles which could be used for infringing or non-infringing purposes even though he knew that they would probably be used and were intended to be used for the infringing purposes.
More recently, however, a new concept has been developed. Parties will be regarded as joint tortfeasors if on the facts they have a common design to market in the United Kingdom articles which in truth infringe a United Kingdom patent."
40 The Belegging-en case had been the subject of some elaboration in a unanimous decision of the Court of Appeal in Dow Chemical AG v Spence Bryson & Co Ltd (1982) FSR 397. The question related to an amendment of the plaintiff's pleading in an infringement action, which had been refused by reference to the principle of Townsend v Haworth and Dunlop Pneumatic Tyre Co Limited v David Moseley & Sons Limited. Lawton LJ (with whom Brightman and Fox LJJ agreed) referred to the judgment of Buckley LJ in the Belegging-en case, and continued (at 404):
"Had the pleading merely alleged that the second defendants knew that the first defendants were going to use their latex for the purposes of infringing the second plaintiffs' patent, there would have been no difficulty about this case and Falconer J's decision, in my opinion, would have been right. But more was alleged, because the pleading avers that not only did they know but they procured the first defendants to infringe the second plaintiffs' patent. It is that allegation of procuring which is the material allegation for the purposes of founding a case against the second defendants. That becomes clear when one reads the rest of Buckley LJ's judgment in [the Belegging-en case], because he pointed out that it is persuading someone to do something which is a very important factor in the tort of procuring someone else to do an unlawful act. It may well be that at the trial the plaintiffs will not succeed in showing that there was any procuring in the sense of persuading, but that is a matter not of allegation but of evidence."
41 These authorities show that liability for infringement may be established, in some circumstances, against a defendant who has not supplied a whole combination (in the case of a combination patent) or performed the relevant operation (in the case of a method patent). The necessary circumstances have been variously described: the defendant may "have made himself a party to the act of infringement"; or participated in it; or procured it; or persuaded another to infringe; or joined in a common design to do acts which in truth infringe. All these go beyond mere facilitation. They involve the taking of some step designed to produce the infringement, although further action by another or others is also required. Where a vendor sets out to make a profit by the supply of that which is patented, but omitting some link the customer can easily furnish, particularly if the customer is actually told how to furnish it and how to use the product in accordance with the patent, the court may find the vendor has "made himself a party to the [ultimate] act of infringement". He has indeed procured it. So to hold is not in any way to trespass against the established line of authority which, as Dixon J made clear in Walker v Alemite, is based upon the need to confine a monopoly to the precise area in which it operates. That protects the mere vendor of an old product, though selling with knowledge of the purchaser's intention to infringe a combination patent; but it affords no excuse to the person who sets out to induce customers to do what falls fairly within the area of the monopoly.
42 In the present matter, the evidence establishes, Ramset determined to enter into competition with Advanced, which was supplying ring clutches and face-lift anchors conforming to the patent for use in the manner described in the patent. Ramset, which, the trial judge found, was aware of the patent by August 1987, did not produce a different ring clutch or anchor, or propose a different manner of use. It is a large corporation, employing technical staff to advise on the use of its products. The relevant products were promoted through its sales staff and advisers to building contractors and those who direct their activities, such as engineers. The nature of the product supplied by Ramset, the nature of the work in connection with which it was to be used, and the circumstances of the sales, all pointed to the probability that it would be so used as to infringe the patent. At about the time Ramset commenced marketing these products, it produced six thousand copies of a brochure, for distribution to contractors and engineers, copies also being held available over a period of several years to be handed out on request or utilized in marketing efforts. The trial judge found:
"The Ramset brochure demonstrated use of clutches with extended lever arms in a way which infringed the patent."
His Honour also found, with reference to the cardinal feature of the invention, "that the use of rope releases was promoted by Mr Finlay [Ramset's Manager of Research and Development] in seminars given by him to potential users as part of Ramset's marketing programme".
43 The brochure, printed approximately in 1988 (the evidence is a little vague), is an attractively produced booklet a little over twenty pages in length, with numerous colour illustrations. The cover page features a picture of a face-lift operation in progress, with the caption: "Ramset Frimeda Rapid-Lift System". Although counsel for Ramset argued that the system in accordance with the patent was already well known in Australia before Ramset began to sell its products, so that the brochure's advocacy of that system would have had no effect, the brochure actually begins by suggesting quite the contrary. In fact, of course, it is likely some contractors were entirely familiar with the products of Advanced and Burke, and with their system, while others employed completely different systems. One of the consequences of a large company, such as Ramset, entering the market may well have been a greater expansion than would otherwise have occurred of the number of contractors learning about and using the system it espoused. That is relevant to damages, as a factor tending to show that not all the sales effected by Ramset would, in any event, have been effected by Advanced; but it plainly does not mean that the brochure failed to influence the customers attracted, including those who might otherwise have continued to be or might have become customers of Advanced. The brochure begins:
"At last the complete lifting system for the handling of precast concrete units is available in Australia. Ramset, a leading supplier of fastening systems to the Australian construction industry and Frimeda, a leading supplier of concrete lifting anchors and clutches, have combined to offer you a range of anchors specifically designed to meet the gruelling demands required by lifting system users. The Ramset Frimeda 'rapid lift system' provides the same level of product quality, expertise and service to the Australian tilt panel and pre-cast concrete industry that other segments of the construction industry have come to expect from Ramset.
For some time now contractors have required a range of lifting systems that are versatile, safe, speedy and of the highest standard. The Ramset Frimeda system is all that and more
….
(b) Quick
Time is money, and the Ramset Frimeda lifting system engagement and disengagement is achieved in a matter of seconds.
(c) Safe
When using the Ramset Frimeda system, once the clutch has been properly engaged, it is impossible for accidental release to occur while the panel is being lifted.
…
(f) Tested
They have been tested by a NATA test laboratory and are certified as conforming to the standards specified in the Department of Labour 'Code of Practice' for tilt up construction. [A significant aspect of this point is that the code so designated, in Victoria, where Ramset is based, requires the remote release of the clutch in face-lift tilt-up operations. It provides: "lifting inserts should allow automatic release from ground level." It also provides that the "complete lifting gear, insert, clutch etc should be of the same type and from the same supplier."]
(g) Expertise
Our Ramset Frimeda technical consultants are trained specifically to meet the needs of the tilt-up construction industry and can assist you with all your lifting system requirements.
(h) Service
The Ramset success story is based on service and the service provided to lifting system users is no exception. Our trained representatives are happy to satisfy any on-site requirements you may have."
44 On the next page, the brochure contains brief illustrated instructions for the use of the ring clutch in a face-lift operation. One of these illustrations clearly shows a concrete panel to which lifting cables have been attached by ring clutches of the relevant type, with elongated lever arms pointing in what, the reader could infer, will be the upwards direction, and having release ropes attached to the ends of them. The final instruction, illustrated by a picture of a large panel in the erect position, the lift having obviously been completed, reads:
"To release, pull the release rope which will slide the clutch lever out of the anchor and pull the clutch ring free."
45 Under the heading "Face-Lift Anchor", there is a page of details of this item concluding with the words:
"Please consult our Engineering Services Department for advice on your particular application."
46 Mr Finlay personally drafted a product bulletin in about mid-1990 (two years after he had joined Ramset), to be handed out to persons who might be interested in using the Ramset ring clutch. He thought it important to convey the fact that the clutch could be released in a face-lift tilt-up operation by means of a ground release rope. The bulletin contained, in point form, a series of instructions for the use of the ring clutch in such an operation, culminating in the following, which, it will be seen, is identical with a direction in the brochure:
"To release, pull the release rope which will slide the clutch lever out of the anchor and pull the clutch ring free."
This, Mr Finlay agreed, only made sense if one attached a release rope to the end of the lever arm, and was engaged in a face-lift tilt-up operation. Because, of course, with an edge-lift operation, simply pulling on a rope could never release the clutch - that would require some means, not of pulling the lever down, but of pushing it up. Equally, it follows that the method envisaged by Mr Finlay involved the lever arm pointing to the top of the panel, so that it could be pulled downwards for release, as specified in the patent.
47 Mr Lasker, a senior technical representative in the New South Wales branch of Ramset, commenced working for the company on 1 July 1989. He distributed the brochure for about a year. Prior to June 1993, he said, the Ramset Sydney office always supplied ring clutches with extended lever arms. He made sure they had the extension arm on them. During a period he described as "[i]n the early days", he sent out the ring clutches with ropes on them, and if he did not, he expected the contractors would supply ropes. Mr Henry, the Technical Services Manager of the New South Wales branch of Ramset from a date in 1991, accepted that Ramset had supplied clutches with an extended handle and a chain or rope. When he arrived there was a stock of clutches with extensions to their lever arms bolted on. The "invariable practice of operators in the market place in New South Wales to [his] observation in face-lifting operations used rope release". He made it plain that his intention, in the period up to June 1993, was to fulfil the requirements of that system in the supply of ring clutches and anchors by Ramset. Of course, the supply, in "the early days", of the entire combination including the release cable (apart from the hoist by which the load was to be lifted) would have developed, amongst the contractors who became Ramset's customers, a practice of using the equipment in the intended way, that is, in an infringing way. The result was that this method of use continued when ropes were not attached at delivery of the equipment, but had to be supplied by the contractors, as they were intended to supply them.
48 Mr Cavalliotis, State Manager for Ramset in Queensland from 1990, described receiving from the Sydney branch ring clutches with added extension arms in April 1993. The arms also had chains to which he understood ropes were to be attached in use.
49 Although Ramset's counsel argued, as has been said, that its brochure would have had no influence on the conduct of contractors, in using the clutches with extended lever arms and release ropes in the manner described in the patent, a number of its witnesses plainly spoke to the contrary. Mr Birmingham, State Manager for South Australia, gave evidence of the continuous availability of the brochure at Adelaide, of its distribution from time to time to customers, and that "in so far as that brochure contained instructions or suggestions how to use the products … [he] just operated upon the assumption that people who purchased the products would act in accordance with those suggestions or instructions". Mr Davies, Branch Manager at Canberra, supplied the brochure in the early stages to customers and potential customers. Later, he had updated sheets, probably including Mr Finlay's product bulletin. He assumed "that people would act in accordance with any instructions or suggestions as to the use of Ramset products contained in that brochure". On the other side, Mr Nightingale, an engineering manager employed by Brambles Cranes who has been involved in over 300 face-lift tilt-up operations, called by Advanced, gave evidence of receiving and reading the brochure in 1988 or 1989, a period when approximately 60% of the panel lift operations in which he was involved were carried out using Burke clutches (after the introduction of the Ramset clutch he said that this percentage fell by at least 50%). Mr Nightingale, although as an engineer and from experience he knew the system, read the brochure to see "how to put the whole thing together" because, as he pointed out, the operation is a dangerous one.
50 The trial judge found that, "at least prior to June 1993, in New South Wales, [it] was frequently, perhaps normally, the case" that "Ramset supplied …. clutches to which extended lever arms had been added". After June 1993, he held, Ramset supplied only clutches with a short arm and chain, to which further reference will be made, although it is probable some contractors or builders would have added an extension to the arms of these clutches. His Honour accepted the evidence called by Advanced of the use of clutches supplied by Ramset in face-lift tilt-up operations in which that use infringed the patent. His Honour also accepted evidence that the operations manager of Ramset's Building Products Division for Australia had, in 1988, instructed the New South Wales Sales Manager "to fit extension handles to five tonne clutches to be hired to contractors for use in face-lift tilt-up operations". The purpose was "to facilitate the removal of the clutches from the anchors cast into the panels once the panels were in the vertical plane". His Honour accepted that Mr Nightingale "was … introduced to the Ramset face-lift tilt-up method of operation through perusing a Ramset brochure". He also accepted evidence concerning the employment of a Mr Wilson, by architects and project managers, as a consultant for a project involving the use of clutches in tilt-up construction. For that purpose, his Honour found, he had been provided by the architects with promotional material from Ramset, including the brochure "which contained photographs which made it clear how the clutches could be used in the way which was described in the patent." Mr Wilson gave evidence, and his Honour appears to have accepted his evidence, that when Ramset clutches were delivered to the site, the site foreman consulted him on 3 June 1990 and the clutches were rejected on safety grounds because they lacked the extended lever arms of the Burke clutches. They were returned on the morning of 4 June 1990, when Mr Wilson observed they had extended lever arms with chains and rope attached. His Honour referred, too, to evidence that a Ramset representative had said, at a trade show in Geelong, that clutches would be supplied with extended lever arms and ropes attached. As to Queensland, his Honour recorded Ramset's own evidence as being:
"It was standard practice for rope release to be used in Queensland. Clutches supplied from Sydney for use in Queensland often had extended lever arms and ropes attached. The Ramset brochure which contained illustrations of how the clutch would be used with the extended lever arm and rope in a face-lift tilt-up operation was available through representatives in Queensland."
On the other hand, in South Australia Ramset's witnesses asserted its products were little used, and the clutches supplied by it there were without release cable chains or ropes attached.
51 In general terms, the trial judge concluded:
"It is clear that clutches supplied by Ramset have been used in New South Wales, Victoria, Australian Capital Territory, Queensland and South Australia by persons who have used those clutches in a way which breaches the patent. Advanced has established that clutches were supplied by Ramset with extended lever arms and ropes, particularly in and from New South Wales. Where clutches were not supplied with extended lever arms and ropes attached, those who used the clutches often affixed their own extended arm and attached a rope."
52 The trial Judge referred to Walker v Alemite and some of the other cases which have been cited, and to the acceptance by Advanced and Burke of the proposition that they had to show "a common design on the part of Ramset with another to do acts which amount to infringement, [or] a procuring or inducing the other to infringe". (Counsel for the appellant agreed that the word "or" should be supplied where we have inserted it.) His Honour said the evidence fell "far short of this. It shows, at the most, that on an unknown number of occasions, more numerous in New South Wales than elsewhere, Ramset supplied clutches with extended lever arms. Where clutches without extended lever arms were sold, they were capable of having attached to them extended lever arms. The persons to whom clutches were sold might, but not necessarily would, use them with ropes attached. Although this seems to have been the general manner of use, clearly a significant number of users preferred manual detachment of clutches from anchor inserts." His Honour pointed out that Ramset did not retain control over the use of components in a particular manner, once they were sold. That was a matter for the building contractor or crane operator. On this aspect of the case, he concluded:
"The Ramset brochure demonstrated use of clutches with extended lever arms in a way which infringed the patent. That brochure was available, at least for inspection, to intended users of Ramset products. Although the brochure demonstrates the method of use in a way which would infringe the patent, in my view that does not involve Ramset in the necessary common design to constitute an infringement."
That way of putting the matter leaves some aspects of it out of account. It overlooks the evidence, evidence which his Honour accepted in the general finding set out earlier, and the admissions by some of Ramset's witnesses, that clutches were supplied, on a number of occasions, not only with extended lever arms, but also with release ropes attached. In those cases, Ramset was not just supplying a part of a combination the subject of a patent, but virtually the whole of it. All that remained to be done by the contractor was to provide a crane so as to make use of the combination, as the evidence showed happened on numerous occasions, in the manner directed by Ramset's brochure, which was an infringing use.
53 The other issue which, with respect, is overlooked in the final conclusion of the trial judge (when he referred to "the necessary common design") is that Advanced and Burke were not relying only on common design, but in the alternative on Ramset's conduct as amounting to a procuring or inducing of infringement.
54 On the evidence and the findings of the trial judge, the conclusion is inescapable that when Ramset supplied the equipment complete with release ropes and instructions for use, it procured the infringements which followed. The position was not materially different when it left to the contractor the mere attachment of a rope (or when it left to the contractor, as well, the attachment of an extension to the lever arm) in accordance with the instructions for use it had given (through the brochure, through Mr Finlay's product bulletin and seminars, and through its technical advisers), and in accordance with the operating practice it had established. Accordingly, a finding of infringement should have been made.
55 The trial judge found that, from June 1993, Ramset supplied a clutch with a smaller lever arm, to which a length of chain was attached. The chain, of course, made a convenient connection for a release cable or rope. On this model, the lever arm was just short enough to pass through the centre of the bail of the shackle, so that if it were held in that central position it would not be blocked by the shackle from moving downwards to release the ring clutch. (The bail of the shackle is the steel hoop by which the main part of it is attached to the ring clutch.) However, the fit between the lever arm and the body of the ring clutch was a loose one, and if the chain passed to the side of the shackle (the way it was used in practice) it would pull the arm over into a blocked position, holding it there by virtue of the weight of the chain. His Honour noted:
"It was said that the smaller lever arm and chain were deliberately designed to ensure that the chain would pass back through the shackle. Far from simplifying the operation of the clutch, demonstrations made it clear that so to position the chain indeed complicated the use of the clutch and, so far as it is relevant, I do not accept the evidence that this was a design feature of the Ramset clutch."
It is, in fact, quite obvious that passing the chain through the bail of the shackle would obstruct the smooth release of the ring clutch at the end of the operation. For it will be recalled that at that stage it is necessary to lower the lifting tackle a little in order to free the ring clutch of frictional forces that would otherwise prevent it opening. If this resulted in the shackle dropping away only a little too far, it would obstruct the release chain, whereas, with the ordinary use of the extended lever arm, the shackle could first be allowed to fall out of the way completely.
56 The appellant's argument relies on the words of the specification, describing the preferred embodiment, in which it is said:
"This safety feature of the release mechanism is made possible by making the lever arm long enough so that its unlocking movement can be blocked by [the] shackle".
But this is the preferred embodiment. Claim 1 refers, it is true, to "an elongated lever arm". However, it goes on to state the safety feature in broader terms toas achieved by "hoisting cable-controlled means to selectively block or allow rotation of the lever arm"; while claim 2 refers to "a position [of the shackle] blocking rotation of the lever arm" and to "the shackle which is disposed in blocking relation to the lever arm when the shackle is supported in an upwardly directed position by the hoisting cable and which is disposed in non-blocking relation to the lever arm when it moves to a downwardly directed position in response to the slacking off of said hoisting cable". It can be said that the shackle is quite literally disposed in blocking relation to the lever arm of the later Ramset ring clutch when the arm is pulled to the side by the weight of the chain as previously described. That effect is the result of the lever arm being sufficiently elongated to come into contact with the side of the bail of the shackle. A patent, like other documents, must be read in the light of its own context. In this patent, the word "elongated" is to be understood by comparison with the earlier patent referred to in the specification, in which the drawings illustrate a very short "nose", much shorter than Ramset's reduced arm. It is also to be understood by reference to the purpose which, in accordance with the complete specification, the lever arm is to serve: if it is long enough to permit the "blocking relation" to arise and to make practically possible remote release by means of a rope or cable, it is "elongated".
57 The appellant, of course, relies on the well known proposition that a combination patent will not be infringed unless all the integers of the patent are taken by the alleged infringement: Meyers Taylor Pty Limited v Vicarr Industries Limited at 235; Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 246; Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 698. Counsel claim an elongated lever arm, long enough to be blocked by the shackle, is an essential integer of the patent. However, it is necessary to bear in mind the words of Viscount Dunedin in British Thomson-Houston Co Ld v Metropolitan-Vickers Electrical Co Ld (1928) 45 RPC 1 at 25:
"[I]t is, I think, clear that you cannot avoid infringement by taking a patented machine and then making it work a little worse than it naturally would and then remedying that worseness by another device, and that is just what the Defendants have done."
Aickin J took up the same point in the course of his well known judgment in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd at 286, when he said:
"[T]he question would remain whether the respondent's product nonetheless takes the 'substance' of the invention by substituting that which has all the qualities of a backing tape unified by a hydrophobic polymer sizing, because it has been made hydrophobic by the respondent prior to the application of the adhesive. Thus the respondent's tape may be not unfairly described as the result of a choice of a sizing unsuitable for the purpose, and subjecting it to further process to make it suitable. Such an exercise however does not necessarily result in the absence of infringement."
See also Elconnex Pty Limited v Gerard Industries Pty Limited (1991) 32 FCR 491 at 515. What Ramset has done, without eliminating an elongated lever arm, has made the ring clutch a little worse, in so far as the reduction in the length of the shorter lever arm has lost a degree of mechanical advantage in the rope release operation (there was evidence that contractors inserted extensions to overcome this), and in so far as safety was affected by the possibility of the arm passing through the bail of the shackle. However, Ramset could be confident that previous experience would enable contractors to remedy the former defect by the insertion of the extensions, and Ramset remedied the latter by the attachment of the chain, which would be heavy enough to drag the lever arm into a blocking relationship with the shackle, for practical purposes, even if it were not extended by the user.
58 Furthermore, as Aickin J made clear in the passage just cited, the "substance" of the invention may be taken, in respect of a particular integer, by the substitution of something that has the same qualities. Aickin J went on to say:
"[I]t remains the law that a defendant may not take the substance of an invention unless the wording of the claims makes it clear that the relevant area has been deliberately left outside the claim."
Far from deliberately leaving outside the claims any device, other than one depending solely on the length of the lever bare of all attachments, the drafting of the patent uses the wider language which has been quoted. See also Sunbeam Corporation v Morphy-Richards (Aust.) Pty Ltd (1961) 180 CLR 98 at 109-110; Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 148; Olin Corporation v Super Cartridge Co Pty Ltd (ubi supra). Having regard to all these considerations, the modifications to the Ramset shackle and ring clutch did not avoid infringement.