Welch Perrin & Co Pty Ltd v Worrel

Welch Perrin & Co Pty Ltd v Worrel - [1961] HCA 91 - HCA 1961 case summary — Zoe

[11]

The statement just quoted is followed by an elaborate description of what is described as the "preferred" and "modified" embodiments for "floatably mounting the raking wheels". The preferred embodiment is illustrated in figures 1, 2 and 3 in which the wheels are suspended upon springs, and the "modified" embodiment in figures 5 and 6 where a hinged arm to which the wheel is fixed is supported by a spring. Next there is a statement of the advantages of using raking teeth "resilient to drag imposed thereon by forward operation of the rake". The operation of the rake is then described which is, in short, that after the raking wheels have been adjusted so that the teeth will "merely skim the top of the ground", the rake is pulled by a tractor and the raking wheels "are caused to rotate by the drag imposed upon the teeth" by encounter with the hay or the ground and "rise and fall individually in response to terrain encountered" with springs carrying the bulk of the weight; the rotation of the raking wheels set at an angle to the line of movement of the rake carries the raked material to the side. It is in this description of the operation of the rake that I find the clearest indication of the invention. After reference to the advantages of the capacity of the rake to turn in either direction and to be transported with the raking wheels elevated, the following statement appears: "The present invention provides a tractable, rugged, efficient, mobile, ground driven combined hay rake and cultivator with a material reduction in moving parts subject to wear and maladjustment, a rake providing a minimum of resistance to forward movement during operation and conducive to the speedy raking of hay. Although I have herein shown and described my invention in what I have conceived to be the most practical and preferred embodiments, it is recognized that departures may be made therefrom within the scope of my invention, which is not to be limited to the details disclosed herein, but is to be accorded the full scope of the claims so as to embrace any and all equivalent devices and systems". The specification ends with twenty-three claims which do not seem to me to follow one another in any orderly sequence and involve so much repetition and overlapping that I think it would be unwise to treat the language of any one claim as a reliable guide to the meaning of another claim. The claims relied upon and the validity of which is in question are as follows:

[13]

In a side delivery hay rake having a forwardly movable draft frame having a direction control means operably associated therewith, a plurality of rotary raking wheels arranged in echelon in substantially erect, parallel planes angularly related to the normal direction of movement of the frame, the rearward portion of each rotary raking wheel except the rearwardmost of said wheels overlapping the forward portion of its rearwardly adjacent raking wheel, means borne by the frame mounting the raking wheels for rotation in their respective planes and for individual elevational movement, and resilient means individually connected to the mounting means and resistive to weight imposed thereon whereby the raking wheels lightly engage terrain over which the rake is drawn and independently rise and fall in response to depressions and elevations in the terrain traversed. 3. In a side delivery hay rake having a forwardly movable draft frame and a direction control means operably associated therewith, a plurality of substantially uniform rotary raking wheels arranged in echelon in substantially parallel planes angularly related to the normal direction of movement of the frame, each of said wheels including a substantially cylindrical rim concentrically disposed the wheel adapted to ride over encountered hay and the like and slightly to compress the same downwardly against the earth and outwardly extended raking teeth borne by the rim for hay engagement, the rearward portion of each rotary raking wheel except the rearwardmost of said wheels overlapping the forward portion of its rearwardly adjacent raking wheel a distance approximately the radius of said wheels, means borne by the frame mounting said raking wheels for rotation and independent elevational movement in their respective planes, and resilient means interconnecting the frame and the individual mounting means and urging the individual raking wheels upwardly with a force less than the weight of said wheel. 22. A side delivery rake comprising a mobile frame, means for connecting said frame to a prime-mover, means attached to said frame supporting said frame for ground traversing movement, direction control means on said frame for resisting forces tending to shift said frame angularly from the line of travel of said prime-mover, rotary raking means mounted on said frame in echelon arrangement, said raking means comprising wheels each including a flat treaded rim and teeth extending a fixed distance radially from said rim, and a hub and axle vertically shiftable relative to said frame, the axis of said hub and axle being disposed at an angle to the said line of travel, and a counter balance element operatively associated with the hub and axle partially reducing the effective weight of said wheel on ground encountered by said wheel. 23. A side delivery rake comprising a mobile frame, means attached to said frame supporting the frame for ground traversing operation and maintaining the frame in a substantially constant attitude relative to the ground traversed, said means including directional control means, and a plurality of peripherally overlapping freely rotatable raking wheels mounted on said frame in echelon arrangement with their peripheries normally in tangential proximity to but free of the ground traversed, and each raking wheel being rotatable in a plane at an angle to the normal direction of travel of said frame, said raking wheels being adapted to engage with a rakable substance on the ground.

[20]

Coming now to claims 1 and 2, I propose to consider first whether these claims can have any application to the defendant's rake in view of the limitation that what is claimed are raking wheels mounted as described in a side delivery rake, with a movable draft frame having a direction control means operably associated therewith. The defendant's rake has such a frame, but has it such direction control means operably associated with it? It was argued with some force that having regard to the description in the complete specification of the fixed rear wheel and the use in other claims of phrases such as "a ground engaging directional control means" (claim 15) and "a rudder wheel fixedly mounted" (claim 18), as a matter of construction, the direction control means referred to in claims 1 and 2 must be, or at least must include, a fixed rear wheel and because the defendant's rake has no such wheel there can be no infringement. I am not prepared to accept this argument. As I said earlier, this is not a specification where one claim affords much assistance in the construction of another and I have not found sufficient elsewhere in the specification to require such a narrow construction to be put upon the general language with which claims 1 and 2 begin. In the opening words of these claims the draftsman is not describing the invention; he is doing no more than referring in a general way to the frame upon which the raking wheels are to be mounted and all he stipulates is that it should be a forwardly movable draft frame and that it should have direction control means that will work in association with it. The defendant's rake has a forwardly movable draft frame and there is upon that frame adjustable means for attaching the frame to a tractor so that the attitude of the rake to the tractor will be determined and that the rake will follow the tractor held in that attitude. This means for attachment falls within the description of control means operably associated with the frame. The frame of the defendant's rake is therefore as described in the opening words of claims 1 and 2.

[26]

Of the three objections to their validity that remain to be considered, I will deal first with the ground that the invention is not useful (s. 100 (1) (h)). The lack of utility alleged did not go beyond the suggestion that the claims were so general that an unworkable machine could be made in conformity therewith. It was not suggested that a most useful rake could not be made within the limits of what was claimed. The principle that all within the scope of the claim must be useful if the claim is not to fail for inutility was invoked and reference was made to Norton and Gregory Ltd. v. Jacobs [1] and other cases which show that a claim is bad if it covers means that will not produce the desired result even if a skilful person would know which means to avoid. In the case cited, which concerned a chemical patent relating to reducing agents, Lord Greene M.R. (for the Court) said: "The fact that a skilled chemist desiring to use the invention would reject certain reducing agents as being unsuitable is one thing; it is quite a different thing to say that a claim must in point of construction be cut down so as to exclude those reducing agents because a skilled chemist would not use them. To adopt the latter proposition would not be to construe the specification but to amend it" [1] . Here the principal argument was that although it is stipulated that the raking wheels should be "angularly displaced from the normal direction of movement of the frame" (claim 1) or "angularly related to the normal direction of movement of the frame" (claim 2), this would in either case permit the wheel to be mounted at an angle so near to a right angle that the forward movement of the rake would not turn the raking wheels. I consider, however, that no one reading the specification would so understand it and that a very ordinary person would know what was a workable angle. What I have quoted from the Master of the Rolls does not mean that a specification should be construed in a way that any sensible person would appreciate would lead to unworkability when by construction it could be given a more limited meaning. The same sort of argument was based upon the words "in echelon" on the footing that the only requirement was that there should be wheels each further back than the one next in front, but this is disposed of by the way in which I have already construed the phrase.

[28]

The objections of obviousness and lack of novelty were argued together, principally by reference to earlier specifications. There was, however, some oral evidence. It was sought by the evidence of an expert witness, a Mr. Reid, to prove that what is claimed as the invention was obvious in 1947. Mr. Reid's evidence was, in short, that having been made aware of the problem facing the inventor and having been provided with an illustration of a machine known as the Bamford SC4 Combined Side-Delivery Rake, Swath Turner and Windrower (exhibit 3, to which reference will be made later), and Great Britain complete specification No. 16,403 of an invention by Collyer (one of the specifications constituting exhibit 1, to which reference will be made later), he in the course of an hour or two had no difficulty in solving the inventor's problem by designing a machine similar, as it turns out, to the defendant's own side delivery rake. Mr. Reid having sworn that he used nothing more on 27th October 1960 - when he was confronted with the problem and solved it - than he knew in 1947, the conclusion that I was invited to draw was that the invention claimed by the plaintiff was obvious. The difficulty inherent in such a line of reasoning as this becomes insuperable once there is doubt about the witness's professed ignorance of implements such as the defendant's side delivery rake. I have such a doubt, and as I indicated at the trial I am not prepared to place any reliance upon Mr. Reid's evidence. A farmer, Mr. Michael Joseph Ryan, who for many years had been a hay-making contractor, gave evidence about his unfortunate experiences with a Bamford SC4 Combined Side-Delivery Rake, Swath Turner and Windrower which he purchased from Gippsland & Northern Co-operative Co. Ltd. in August 1944, which he attempted to use and soon returned to the supplier as useless. He identified exhibit 3 as an illustration of the machine he had bought, used and returned. Had this machine revealed the plaintiffs' invention, there is no doubt that the patent would be invalid for, in addition to those in the Penshurst district who saw Mr. Ryan trying to get the machine to work, it was proved that between 17th March 1939 and 7th August 1944 fifteen SC4 machines were sold in Australia (see exhibit 4). The SC4 machine is, however, quite different from the invention claimed. Although it had two rotary raking devices, they were mounted side by side, they were not substantially erect, they were rotated from the axle of the machine, they did not move up and down automatically to respond to the rise and fall of the ground surface and when their elevation was adjusted by means of a manually operated lever, they moved up and down together. Moreover, it did not work. There were other differences, but these suffice to show that the SC4 machine was nothing like the invention in the plaintiffs' specification. Mr. Ryan's evidence emphasizes the extent to which the plaintiffs' invention is an advance upon the hay rakes available in 1944.

[29]

I come now to the earlier specifications relied upon by the defendant, whose contention was not so much that there can be gathered from the earlier specifications the various elements of the plaintiffs' invention which could then be brought together without inventive skill, but that the claims relied upon by the plaintiffs are so widely stated that they cover what was old, including what is described in the earlier specifications, with consequent invalidity. H.P.M. Industries Pty. Ltd. v. Gerard Industries Ltd. [1] ; Woodrow v. Long Humphreys & Co. Ltd. [1] and Non-Drip Measure Co. Ltd. v. Strangers Ltd. [2] were cited to show that if, in one embodiment, the claim covered something that was made in accordance with public general knowledge, the whole claim would be bad. To put it in another way, it was argued that if the machines or any of them described in the earlier specifications would, if made now, infringe the invention claimed in the claims now relied upon, the claims would be invalid either for want of subject matter or want of novelty. With this contention in mind, I now turn to the earlier specifications which together make up exhibit 1. The first is Ransome's Great Britain Specification No. 17,636 of 1900. This is a grass turner in which two serrated discs, one in advance of the other at the rear of the wheeled machine, are each mounted upon an arm carried by a wheel and are rotated from the axle of the machine in a plane at right angles to the line of advance of the machine. This has little in common with the invention, and without going into detail, I am satisfied that a machine such as this would not be an infringement of the plaintiffs' invention. Next there were two Bamford machines, one described in Great Britain Specification 16,135 of 1901 and the other in Great Britain Specification 26,246 of 1902. Here again, two raking devices rotated by means of the axle of the machine at right angles to its line of progress are each mounted upon an arm to the rear of the machine carried by a wheel. The illustrations reveal that the arms can be set so that the raking means are set diagonally to the line of movement of the machine but overlap is in no way a feature. Again, as in the Ransome machine, the raking means do not independently move up and down in response to their contact with unevennesses in the ground, and apart from anything else this difference shows that machines made in accordance with these specifications would not infringe the plaintiffs' invention. The next specification is No. 740,911 of the United States of an invention by Samuel Arthur Peto patented on 6th October 1903. The drawings illustrate a swath turning implement with turning drums carried upon rearward arms supported by wheels and rotated from the axle of the machine across the line of draft, one drum being located in advance of the other, the arms being adjustable along the axle of the machine so that the drums could be arranged to overlap. Again, I regard this invention as being something quite different from the invention under consideration. The elevation of the drums is not automatically adjusted by virtue of contact with the ground surface; such rise and fall as there is results from the ups and downs of the supporting wheels; the drums normally rotate at right angles by reason of drive from the axle and do not rotate by reason of contact with the surface. The next specification is Great Britain No. 16,403 of 1911 by Collyer, which relates to improvements in swath turning machines and illustrates a machine where hooked raking tines are mounted upon a rotary disc set at an angle so that the raking tines touch the ground on one side; by virtue of ground contact the tines rotate and gather the crop as the machine travels forward, then carry the crop around and drop it, as they clear the ground on the other side. Here the raking means are turned by ground contact, but they are not mounted erectly; they are not mounted one behind the other so that the one on the rear rakes the crop raked by the one in front to form one windrow; and their elevation is not adjusted automatically in response to surface pressure. The next specification, Blackstone and Watts' Great Britain Specification 153,125 of 1920, shows a machine very much like the SC4 machine already described, and what I have said about it in relation to Mr. Ryan's evidence is sufficient to show that this specification does not anticipate the invention claimed. The last specification relied upon relates to a two-row potato digger. It is United States Specification 2,371,076 of 1945. According to this invention, there are two lines of three wheels set diagonally to the direction of travel, the two leading wheels in each line being of heavy construction to push away the mounds covering the rows of potatoes and the third or spider wheel cutting into the soft ground underneath to force the potatoes out. The six wheels all turn because of ground contact as the machine is drawn along. This description indicates sufficiently how far this potato digger is from the invention with which I am concerned, and I say no more about it.

[41]

Mechanical hay rakes are now commonly drawn by tractors. They were formerly usually drawn by horses. A well known early type of mechanical rake is the dump rake. This is a machine that can be set to gather up mown hay from the ground, and when a quantity is gathered to release it as required. Release is effected by the operation of a lever, so that, by thus successively gathering and dumping, windrows can be formed. These dump rakes simply gather hay that lies in their path and dump it where the operator chooses. They do not deliver it to the side, and they require continuous manual operation. Side rakes were a big improvement. They seem to have first come into use in or about 1935. The first side rakes were bar rakes. That is to say the tines of the rake were mounted on bars. These were operated mechanically by a geared mechanism, which was either actuated by the rotation of the wheels of the machine as it was drawn forward over the ground, or driven by power transmitted from a power driven tractor or prime-mover. There were several types of bar rakes. In all of them the hay was carried to one side by the movement of the raking bars as the machine was drawn forward. It appears from the evidence that in such a machine the bars are not at a right angle to the axis of advance but, it was said, at about thirty degrees thereto. The next development of importance after bar rakes was the introduction of finger wheel rakes. These seem to have first come on the market in Australia in about 1954 or 1955 - certainly after the date of the patent. What is, in effect, claimed by the respondents is that their patent is for a finger wheel rake; that it is their invention. At this point it is enough to say that, according to both a witness called for the plaintiffs and a witness called for the defendant, the characteristics of a finger wheel rake as distinct from a bar rake are that: in a finger wheel rake the tines are mounted on wheels, from the rims of which they project; and these wheels are not driven by power, but revolve merely as a result of the machine being pulled forward while the tines on the wheels are in contact with the ground, or with hay lying on the ground. The result of having a series of wheels following one another - the diameter of each wheel being at an angle other than a right angle to the axis of advance, and all the wheels revolving as the machine goes forward - is that the hay is affected simultaneously by two directions of motion and thus moved out to the side of the rake as the rake progresses.

[42]

Most of the argument before us centred upon the construction of the specification and, as in every patent case, it is necessary to determine from it what exactly is the invention it describes and for which a monopoly is claimed, before proceeding to consider objections to the validity of particular claims: Electrical and Musical Industries Ltd. v. Lissen Ltd. [1] . The appellant's counsel in a forceful argument insisted that when the matter is thus approached the specification emerges as muddled and ambiguous and as failing altogether to make clear what it is that the inventor says he has invented. The Act provides in s. 40 that: "(1) A complete specification - (a) shall fully describe the invention, including the best method of performing the invention which is known to the applicant; and (b) shall end with a claim or claims defining the invention. (2) The claim or claims shall be clear and succinct and shall be fairly based on the matter described in the specification". These requirements of the present Act, that is the Act of 1952, differ in terms from the corresponding provisions in the present English Act, the Patents Act 1949, s. 4, and from the corresponding provisions of the former Australian Act, the Patents Act 1903-1950, s. 36. This patent was granted in 1947 under the Act now repealed. But the present Act is by s. 5 (2) made to apply to and in relation to patents granted under the repealed Acts. What differences there may be between s. 40 of the present Act and s. 36 of the repealed Act are probably of no importance. At all events so far as the present case is concerned, the differences in language may be disregarded. The main requirements are that the specification shall fully describe the invention and the manner in which it is to be performed and shall end with a claim or claims. The function of the claims of a specification has long been well established in patent law; and the appellant's objection based on non-compliance with s. 40 may be considered as if the relevant parts of s. 40 have the same effect as the corresponding requirements of the former law.

[59]

At this point in a modern specification one might expect to find a general description of what the inventor asserts his invention consists of, commonly called a "consistory clause". This, however, is not an essential part of the body of a specification. It is not required by the Act. Its purpose may be quite well met by the claims themselves: United Shoe Machinery Corporation's Application [1] . Indeed, the usual practice in England is now to use in the consistory clause the wording of the broadest of the claims: see Mr. Blanco White's book, Patents for Inventions 2nd ed. (1955) p. 34n. The present Australian Act expressly requires the claim or claims to define the invention: s. 40. In a patent for a combination, such as this is, the most important function of the body of the specification is to show what are the mechanical means which, operating together, produce the result claimed; and how they so operate. This specification does this by referring at once to the drawings, and by describing in elaborate detail the machine depicted in them and the way in which its various parts work to attain this result. But it also emphasizes that this reference to a particular embodiment is by way of illustration and explanation of the invention and is not a definition of it. It refers, among other matters, to what is called "a plurality of floating raking means individually elevated or depressed in response to uneven terrain over which it (scil. the rake) may be drawn". This element - and it is an important element in the machine - is designed to achieve the first of the stated objects of the invention, namely "to provide an improved side delivery rake adapted to adjust itself to uneven terrain". The specification describes and illustrates a method of mounting the raking wheels to that end. It also depicts, and under the heading "Raking Wheel Mounting Modification" describes, an alternative method. And similarly, under the heading "Raking Teeth Modification" there is a description, again by reference to the diagrams, of an alternative form of tines (called "raking teeth" or "spikes"), with a suggestion that, for some purposes, such as cultivating, the teeth should be more robust, and for other purposes, such as raking, more resilient.

[61]

The appellant put much emphasis on one sentence that precedes the claims. It is as follows: "Although I have herein shown and described my invention in what I have conceived to be the most practical and preferred embodiments, it is recognized that departures may be made therefrom with the scope of my invention, which is not to be limited to the details disclosed herein, but is to be accorded the full scope of the claims so as to embrace any and all equivalent devices and systems". This seems to mean no more than that the invention is not to be regarded as restricted to machines made exactly as described, but that any machine covered by the words of the claims is to be considered as within the scope of the invention. This is little more than a cautiously introduced assertion of the doctrine that a mere substitution of known mechanical equivalents will not suffice to avoid infringement. But the appellant put forward a different view of this sentence and based on it an argument that, briefly stated, ran as follows: it is not possible to spell out from the body of the specification what is the invention as distinct from the particular embodiment of it described: an incomplete description of an invention may sometimes be completed by filling in gaps in the body of the specification by reference to the claims: but that can only be done if the gap which has to be filled is filled by some feature appearing in all the claims. For this proposition the decision of Morton J., as he then was, in United Shoe Machinery Corporation's Application [1] , was relied upon. It was said that here the claims are so diverse that they could not be treated as by reference completing an incomplete description. This argument was not accepted by Menzies J. He said that in this case "it is possible upon a consideration of the specification as a whole, including the claims, to find a description of the invention; and that, in so far as any claim does not claim that invention, it is itself invalid, but its inconsistency with the general description of the invention does not totally destroy the specification" [1] . His Honour was, we think, perfectly right in this. The words on which the appellant relies do not really operate to incorporate into the description of the invention in the body of the specification matter which appears for the first time in the claims, and Lord Morton's propositions referred to above are therefore not applicable.

At a glance

Court

Decision date

Before

Source

Judgment (83 paragraphs)

Parties