Sunbeam Corporation v Morphy-Richards

[1961] HCA 39

High Court of Australia|1953-12-02|Before: Windeyer J

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Court

High Court of Australia

Decision date

1953-12-02

Before

Windeyer J

Source

Original judgment source is linked above.

Judgment (53 paragraphs)

[1]

High Court of Australia Windeyer J. Sunbeam Corporation v Morphy-Richards (Australia) Pty Ltd [1961] HCA 39

[2]

J Windeyer delivered the following written judgment: -

[3]

This is an action for the infringement of a patent for an electric frying pan. The patent is Australian patent No. 202,159. The first plaintiff, Sunbeam Corporation, a company incorporated in the State of Illinois in the United States of America, is the patentee within the meaning of the Patents Act 1952 Cth. The second plaintiff, Sunbeam Corporation Ltd., a company incorporated in New South Wales, is an exclusive licensee. The patent is a convention patent, the basic application having been made in the United States by the inventor, Ivar Jepson, an officer of Sunbeam Corporation on 2 December 1953, and having issued in United States patent No. 2,744,995 of 8 May 1956. The Australian specification was published on 26 May 1955; but it was later amended and in these proceedings only the amended specification need be considered: the drawings attached to the original specification were unaltered; and the amended specification, including the claims, must be read by reference to them. The priority date is 2 December 1953. The defendant, Morphy-Richards (Aust.) Pty Ltd, is a company incorporated in New South Wales. The infringements alleged are sales by it of frying pans of its manufacture, alleged to be made in accordance with the plaintiffs' patent. The defendant did not dispute these sales, but it denied that its frying pan is an infringement; and it claimed that the plaintiffs' patent is invalid, and by a counterclaim applied for its revocation.

[4]

The evidence established that, as indeed is well known, electricity was commonly used to provide heat for cooking long before 1953. Electric stoves, and various electric appliances, such as hot-plates, toasters, kettles, urns and waffle-irons were known and were in common domestic use, both in the United States and in Australia. The heat was engendered by a resistance element. But electric frying pans were not known in Australia before 1953; neither, it seems, had they then come into use in America. They were first put on the market by the Sunbeam Corporation. Its article, known by the trade name of a Sunbeam "frypan", has become well known in America and in Australia. It has been a great commercial success and there has been an increasing demand for it in Australia. It is correctly described as a frying pan. But, partly because of its depth, which relatively to its area is somewhat greater than many frying pans of the ordinary kind, and partly because it is supplied with a lid or cover for use when needed, it can be employed not only for frying but for various other cooking operations that would not ordinarily be called frying, for example, stewing or even roasting. Among its features are the following: its heating element is built in, so that standing as it does on legs it can be used wherever it can be plugged into a domestic electric power point: a thermostatic control enables it to be kept at an even temperature: and this can be selected from a range of temperatures as that one suitable for the operation of cooking some particular foodstuff: the pan can be cleaned as a frying pan is ordinarily cleaned by washing; for the pan can be immersed in water, and with it portion of the handle adjacent to the pan. The pans sold by the defendant resemble the Sunbeam frypan in outward appearance and in essence their mechanism is the same. The comparison that has to be made is between the claims of the plaintiffs' specification and the defendant's article. And to fix attention on the particular article - alleged to be an embodiment of the invention - that the plaintiffs are making and selling is merely misleading.

[20]

The defendant's contention is that the words " completely sealed " state an absolute requirement, that the meaning is: "a completely sealed chamber, thereby enabling the vessel to be completely immersed." The plaintiffs, on the other hand, would read the words as if they were "a chamber so completely sealed that the vessel may be completely immersed". The question is one of construction. And, as is pointed out in the judgment of Dixon J. and McTiernan J. in Kauzal v Lee [7] , a difficulty of verbal construction is not a matter which, once it has been resolved, makes the ambit of the monopoly uncertain. In my opinion the question of construction here is to be resolved by adopting the construction for which the plaintiffs contended. What is demanded is, I think, that the chamber containing the thermoresponsive means should be so completely sealed against the entry of moisture that the vessel, that is the pan, as distinct from the handle, can be completely immersed. This construction, I think, is supported by reading the claim in the light of the specification as a whole, so far as it is legitimate to do so. Neglecting particular sentences and considering only the general description of the invention in the body of the specification when read in connexion with the diagrams, what is described emerges as a sealing so complete as is necessary for the stipulated purpose. It was suggested that the diagrams showed a complete sealing of the chamber, because they indicated that, what I may call the passageway to the chamber from the end of the handle was sealed by the elements indicated in the diagram by the figs 52 and 53. These, however, are described as "insulating pressure plates" "formed of fibre glass or the like". The specification does not, I think, indicate that they are intended as seals against the entry of water: and I accept the evidence that, in fact, they would not effectually prevent water entering, for reasons given by Mr. Davy. I therefore do not read the claim as stipulating that the entrance to every passage-way leading to the chamber from the end of the handle should be completely sealed.

[30]

The question then is does the defendant's frying pan infringe this claim? In my opinion it does. It has, I think, all the integers that in the claim are said to make up the invention and they fulfil the required functions. It is true that it differs in several ways from the form of the appliance shown in the diagrams in the specification. But this is not, in itself, vital if the claim be infringed. Moreover, the differences are the result of the substitution of known electrical and mechanical equivalents for those shown in the diagrams; and the substituted things are all comprehended by the descriptions in the claims. Only in one respect is there any significant discrepancy between the defendant's article and that shown in the drawings. In the defendant's article the chamber that contains the thermostat apparatus is less distinct from the other recesses inside the handle than it is in the drawings in the specification. In the defendant's article the compartment housing the thermostat device is largely in the handle rather than in the casting of the pan. Moreover, in general appearance it is not so much a chamber to which conduit ways for the wiring lead from the end of the handle; in appearance there is rather one hollow in the handle enlarged at the end near the pan to house the thermostat device. This, however, is a matter of appearance not of substance. If the whole of the handle of one of the defendant's frying pans were immersed, water, entering from the end of the handle, would run down into the thermostat chamber. This would also happen to the plaintiffs' Sunbeam pan. It might not happen so quickly or so easily, for the plaintiffs' frying pan, both as illustrated in the diagram and as made is not quite so open to the entry of water as is the defendant's. But the evidence satisfies me that if the handle of the plaintiffs' article as illustrated in the drawings were wholly immersed water would, generally speaking, enter; for the conduit way through the handle is, as I have said above, not completely sealed at its outer end. In both the plaintiffs' and the defendant's frying pans as sold this risk is recognized, for both have a mark on the handle and a warning against immersion of the handle beyond that mark. If this instruction be obeyed the vessel itself can be fully immersed for cleaning yet no water can enter the chamber containing the thermoresponsive device. On the construction of the words "completely sealed" that I have adopted the defendant does not escape infringement by having the chamber more obviously open to the entry of water than is that shown in the diagram to the specification.

[39]

There are, I think, some still unresolved difficulties concerning s. 100(1)(e). It has been said that it obliterates the distinction, formally well established in patent law, between want of novelty and want of subject matter or lack of inventiveness. These were separate grounds of attack on the validity of a patent. And the distinction was logically precise. When want of novelty was asserted, the thing or process claimed as an invention was assumed to be an invention that is the product of the inventive faculties; but it was said that it was not now at the date of the patent, having been earlier invented and disclosed to the public. When want of subject matter, or lack of inventiveness, was asserted the thing or process claimed as an invention was assumed to be a new thing or process not previously disclosed to the public; but it was said that it was not really an invention and thus not a proper subject matter for the grant of a patent. One important result of the distinction was that, when want of novelty was relied upon, particulars had to be given of the earlier disclosure alleged to destroy the novelty of the patent, whether that earlier disclosure was by prior user of the thing or process or by a documentary publication. Since the question was, "is it new or has it been earlier disclosed?", it was immaterial whether or not it had become known to many people or to few people. A description in an obscure publication would suffice to destroy novelty, provided that it was a publication, that is to say that the document whether or not it was read generally by the public, had been available to the public: and similar considerations applied to publication by user. On the other hand, when want of inventiveness was relied upon, the question was whether the new thing or process was obvious, or whether it had required an exercise of the inventive faculties to produce it. And, as that question was to be taken as relating to a person skilled in the art to which the invention related, it had to be determined in the light of the common general knowledge in that art. What matters were common general knowledge could be proved by competent witnesses: and particulars did not have to be furnished of publications whether documentary or by user the contents or results of which had at the relevant date become part of the stock of common general knowledge of the art.

[42]

I entirely agree in his Honour's view of par. (g). I find some difficulty, however, in the proposition that par. (e) has made all information which was available in Australia, however recondite and esoteric, of the same importance as matters of common general knowledge when judging of the obviousness of an alleged invention. I am aware that the court in John McIlwraith Industries Ltd. v. Phillips [19] proceeded "upon the assumption that the view adopted by his Honour that the scope of the objection (of want of subject matter) has been enlarged is correct". I proceed in this case on the same assumption. I would, however, merely observe that there is one notable distinction between pars. (e) and (g) of s. 100(1) of the Australian Act and pars. (f) and (e), the corresponding sections, in the English Act. Mr. Franki pointed out to me that in par. (e) of the English Patents Act 1949 UK, s. 32(1), which deals with want of novelty, the words are "not new having regard to what was known or used". In the Australian Act the words of the corresponding objection are simply "not novel". In England, par. (f) corresponds with our par. (e). The fact that in England the words "having regard to what was known or used before the priority date of the claim" appear in both paragraphs suggests that there has been more of a merger there than here of the two objections of want of subject matter and want of novelty, because the words "known or used" must, one assumes, have the same meaning in each paragraph where they appear. But in Australia they appear only in par. (e). And, as that paragraph is directed to whether or not an inventive step was involved, the old objection of want of subject matter, it may be that the intention of the Australian Act was to preserve the distinction between novelty and subject matter; and that therefore the words "known or used in Australia" were intended to refer to common knowledge, the correlative of inventiveness or subject matter, as distinct from available knowledge, the correlative of novelty. I propose, however, in considering the issue under par. (e), to assume that the hypothetical person skilled in the art was possessed of the stock of common knowledge in the art and also acquainted with the particular prior specifications and articles mentioned.

[46]

Approaching the question in this way then, there were, as I have said, before 1953 many forms of electrically heated appliances - some of them, such as kettles, used in cooking; and the use of thermostats to control heat generated by electricity was well known. In one sense, all that was done by Mr. Jepson, the inventor of the patented article, was to heat a frying pan standing on legs by electricity and provide it with a thermostat, and to do so he had only to arrange a number of well-known things - that, it may be said, was a matter of design not of invention. That there was a stage at which the final form of the appliance was evolved by work on the drawing board in the design office of the Sunbeam Corporation was proved. This did not, of itself, impress me as evidence of inventiveness. What was being done at that stage was not so much experimenting to solve a problem as designing to get a commercial product. But in cases of this kind inventiveness consists in conceiving an idea and giving it a practical embodiment. It is not a question simply of the degree of mechanical ingenuity needed to produce an article, but rather of the exercise together of imagination and ingenuity. This is not a case of solving an old problem or satisfying a long felt want. It is rather a case of conceiving that an electric frying pan would be a useful article, envisaging the features that it must have to make it practically useful, and by ingenuity in the combination of known devices producing a new and useful thing, a frying pan having the desired features. In my view the invention does not lack subject matter, having regard to the electric cooking appliances that were in actual use in Australia before the priority date. But it is necessary to add now the particular publications referred to in the objections and to consider in relation to subject matter what they collectively reveal. Do they, added to the common knowledge, show that the patented invention was obvious? Much evidence was given about each of them. Some of it was directed to whether or not they answered to the descriptions in claims 1 and 17 of the specification. That question is, of course, directly relevant in relation to novelty. Other evidence was directed to showing how they worked or were intended to work, whether they would work, and what defects and disadvantages they had. Some of this evidence seemed to me only remotely relevant. It is not said that the inventive step here consisted in overcoming defects or disadvantages of earlier appliances. I need not go in detail through all these alleged anticipations. Taken collectively they show that the idea of making a cooking vessel having a thermostat in various forms had occurred to various inventors. They show too that various well-known devices had been used in varying arrangements to achieve that end. Two only are frying pans - the Abtmeyer patent and the Dennis patent. They show that the idea of making an electric frying pan had occurred to these inventors. But their devices had no thermostats; and not much, I think, would be suggested by them to anyone who was seeking to make a practicable, thermostatically controlled, immersible frying pan. There are, however, two of the particularized articles that I must deal with separately. They are the menu-master, an article that was actually used, and the Swenson patent, a paper anticipation.

[47]

The menu-master came into commercial production in Australia after the priority date; and Mr. Bowen, having got leave to amend the particulars of objections to include it, was at first in some difficulty to prove that it was made public before that date. He did, however, prove that very shortly before that date what appears to have been a pilot model was sent by the manufacturer for testing and approval by the New South Wales Electricity Authority as required by law; and that, also before the priority date, two or three articles of the same kind were sent to certain officers of the manufacturing company for trial by use in their own households. I need not determine how far the sending of an appliance for testing by a statutory authority as required by law makes it "known or used in Australia" for the purposes of par. (e) or affects its novelty for the purposes of par. (g); for I think it is proper to infer from this evidence as a whole that there was some knowledge and use of menu-masters very shortly before the priority date. The menu-master is, however, not a frying-pan. It is a griller or a hot plate. No doubt it could be used for frying, for it has a very low rim that would probably contain enough fat to fry some foods. But it cannot among culinary articles be called a "cooking vessel, frying pan or the like". It is thermostatically controlled. But the thermostatic device is not in a chamber sealed against water. It could not be immersed for washing without affecting it. It is clearly not an anticipation of any of the claims; and, in my view, a knowledge of it would not contribute much to the general stock of knowledge that would aid anyone in conceiving or devising an electric frying pan. It would teach no more to anyone who had already conceived the idea of an electric frying pan than any electric stove would teach. It does not seem to me that it would either suggest an immersible electric frying pan or, in itself or with other knowledge, make obvious a satisfactory manner of constructing one.

[48]

I come now to the Swenson specification. It is a United States patent dated 16 October 1951; the inventor is A. G. Swenson; the owner of the patent is the General Electric Co. of New York. A copy of the specification was in the Commonwealth Patent Office and available for public inspection before the priority date. Mr. Jepson, the inventor of the Sunbeam frying pan, gave evidence. It was suggested to him in cross-examination that he or others in his organization knew of the Swenson patent before his own application was made. He said, however, that he had first heard of it when it was cited by the United States Patent Office when his own application was going through that office. He gave evidence of having himself made a preliminary model of an electric frying pan before the United States entered the war but having then abandoned any further development of it. Work on the project began again, he said, in 1952. It was, as I understood what was put to me, suggested by the defendant that this resumption of activity which led in December 1953 to Jepson's application in the United States for a patent for the subject invention was the result of a knowledge by him or his company that the General Electric Co. were at work on a similar idea - the result of its work being the Swenson specification. There is nothing but some coincidence in dates to support this suggestion. And, supposing it to be so, what of it? Trade competition can, I imagine, stimulate the exertion of the inventive faculty. It would not follow that Jepson did not invent something because he had a spur to do so. I do not think that Swenson's patent, either in itself or added to all other knowledge existing in Australia before 1953, makes the subject invention obvious. The actual embodiment as illustrated does show features that are the same as, or equivalent of, those of the subject invention. But it is really of a different order. Swenson's article is a pressure-cooker. And a pressure-cooker is a different kind of cooking vessel from a frying pan. It is intended for a different form of cooking altogether. Swenson's appliance, as illustrated, has a bimetallic spiral housed in a recess along the side of the vessel. The pot and its contents are by means of it kept at a more or less uniform temperature as set on the indicator. But, since cooking in a pressure pot is different from cooking in a frying pan, the temperature control need not respond so immediately to the temperature of the bottom of the vessel. It would, I think, take more than a scintilla of inventive ingenuity for a skilled person to adapt the elements in the apparatus shown in the illustration to the Swenson - whether or not it be a good or safe pressure-cooker I do not have to determine - so as to produce a frying pan like the Sunbeam. This, of course, is not the whole test to be applied. But on the question of obviousness it is a useful inquiry when the Swenson is put forward as of prime importance on that question.

[50]

I turn now to the objection based on s. 100(1)(g), that is want of novelty. Making full allowance for well settled doctrines concerning the substitution of mechanical equivalents to perform analogous purposes, I still do not think that anything put forward in the particulars of objection was an anticipation of the Sunbeam frying pan as it is illustrated in the plaintiffs' specification and as infringed by the defendant. But that is not the critical question. The inventor may have invented a new thing, yet his claim may be so framed that it claims a monopoly wider than his invention [22] . And, as Lord Evershed M.R. expressed it in the Court of Appeal in Birmingham Sound Reproducers Ltd. v. Collaro Ltd. [23] , "it is a well-settled principle that the scope of the invention as claimed cannot be limited or expounded by language in the body of the specification appropriate to a subject matter narrower or broader than that comprehended by the claim" [24] . What the defendant says is that claim 1 is formulated in such wide terms that it has been anticipated. In support of this, reliance was placed mainly on the Swenson specification and on a British specification, the Rodriguez-Leal patent published in the United Kingdom in 1952 and available in the Commonwealth Patents Office before December 1953. It was argued that each of the appliances described and illustrated in the Swenson and Rodriguez-Leal specifications fell exactly within the terms of claim 1 of the subject specification. If that were so, they would be anticipations. But I do not think it is so. Taking first Rodriguez-Leal: The apparatus there described is an electrically heated container, intended primarily to be used as a cooking pot. It has a thermostatic arrangement in which the bimetallic strip does not directly switch the main circuit off and on, but operates by an auxiliary relay. This, of itself, would not put it outside claim 1. It is a "thermoresponsive means". But what does, I think, make claim 1 inapplicable to the Rodriguez-Leal article is that it is not a frying pan, nor I think anything that within the ordinary nomenclature of pots and pans would be said to be like a frying pan. It is a kind of saucepan, having associated with it a separate base that houses the electrical control mechanism. This base is not sealed against the entry of water, and could not be immersed without affecting its contents. The appliance as illustrated has some elements which, if one were making a mosaic of bits from prior specifications, might well find a place in such a mosaic. But it is not an anticipation of any claims in the plaintiffs' patent. As to the Swenson. It does not seem to me to be within claim 1. This is principally because it is not a frying pan, nor I think would anyone classifying cooking vessels put it with frying pans or describe it as the like of a frying pan. Furthermore, it is at least doubtful whether it can be said that in the sense of the plaintiffs' specification, it has "thermoresponsive means responsive to the temperature of the bottom of the vessel". The existence of the Swenson specification, therefore, does not, I think, destroy the novelty of the plaintiffs' invention as claimed in claim 1. And certainly claim 17 is not anticipated.