E Street Enterprises Inc v CPS Housewares Pty Ltd [1995] FCA 751

Original Word Document (58 KB)

IN THE FEDERAL COURT OF AUSTRALIA)

)

NEW SOUTH WALES DISTRICT REGISTRY) No. G126 of 1994

)

GENERAL DIVISION )

BETWEEN: E STREET ENTERPRISES INC

Applicant/Cross Respondent

AND: CPS HOUSEWARES PTY LIMITED

Respondent/Cross Claimant

20 September 1995

REASONS FOR JUDGMENT

LOCKHART J.

E Street Enterprises Inc (E Street) sues CPS Housewares Pty Limited (CPS) for alleged infringement of claims 1 and 2 of Australian Patent No 585736 (the patent) of which E Street is the registered proprietor. The complete specification is for an invention entitled "pump closure for carbonated beverage container". The priority date is 12 November 1986, being the date of the United States convention application. E Street is a United States corporation and CPS is incorporated in New South Wales.

E Street alleges that CPS has infringed the two claims by importing, selling and offering for sale pump closures for carbonated beverage containers. The allegedly infringing closure is known as the "Fizz Keep".

E Street alleged initially that CPS had infringed E Street's rights as patentee by importing, selling and offering for sale another pump closure known as the "Phizzkep Pressurizer", but this allegation was abandoned at the commencement of the hearing.

CPS denies infringement; and by its defence and cross-claim asserts that the patent is invalid on the grounds of (a) obviousness; (b) want of novelty at the priority date by reason of prior publication of various patents in the United States, the United Kingdom, France and Australia; and (c) want of novelty in the light of the availability in Australia before the priority date of a camp stove known as the Optimus Model IIIB. CPS seeks revocation of the patent on these grounds.

On the issue of infringement, CPS admits that it imports, sells and offers for sale the Fizz Keep device; but it says that the device does not involve all the integers claimed in claims 1 and 2 of the patent.

The invention is a pump closure for carbonated beverage containers and in particular for a screw cap closure, having a pump to pressurize a beverage container with ambient air, the purpose of which is to reseal the container and maintain the contents under pressure until the container is opened again to dispense the beverage. Carbonated beverages typically contain dissolved carbon dioxide gas which will escape into the atmosphere unless the container is pressurized and sealed. The flavour of such carbonated beverages turns flat in the absence of the dissolved carbon dioxide gas. The purpose of the closure is to reduce the loss of carbonation, and also of flavour, by sealing the beverage container after use.

The statement of the invention in the complete specification, so far as material, is in these terms:

"PUMP CLOSURE FOR CARBONATED BEVERAGE CONTAINER

This invention relates generally to closures for beverage containers, and in particular to a screw cap closure having a pump for pressurizing a beverage container with ambient air.

Carbonated beverages are sold in glass and plastic containers which are pressurized and then sealed by original factory closures. The purpose of the closure is to seal the container and maintain the contents under pressure until the container is opened for dispensing the beverage. Some beverage containers are relatively small, in the six-to-ten-ounce range, and are sealed by a disposable cap which is discarded after the beverage container is opened. Larger beverage containers, for example in the two-to-three-litre range, are provided with a reusable screw cap closure for resealing the container after a portion of the beverage has been served.

Carbonated beverages typically contain dissolved carbon dioxide gas which will escape into the atmosphere unless the container is pressurized and sealed. The flavor of such carbonated beverages turns flat in the absence of the dissolved carbon dioxide gas. The loss of carbonation can be reduced somewhat by sealing the beverage container after use. However, because of the relatively large volume of some beverage containers, the carbonization will be released into the sealed open space within the container, with the result that the flavor of the remaining beverage is impaired. Accordingly, the quality of the beverage in such larger containers will gradually deteriorate, with the result that a substantial portion of the beverage will become unpalatable, and will be discarded.

The practice of sealing the open volume within the beverage container to reduce the rate of loss of carbonation from the beverage is commonly accepted. Closure devices having a resilient sealing member for insertion into and engaging the neck of the container have provided a secure seal for the interior volume of the container. However, as the amount of beverage remaining is reduced, the open space grows larger, and more and more of the dissolved carbonation is released from the beverage and into the open space.

It has also been recognized and demonstrated that if the open volume within the beverage container is repressurized with ambient air, the amount of dissolved carbon dioxide released from the beverage will be substantially reduced. Pumping devices have been proposed for pressurizing the open volume within the container with ambient air. It is also known to combine a closure cap and pressurizing pump for insertion into the neck of a beverage container. Such prior art pressurizing and closure devices have failed in some instances to develop and maintain the pressure within the open volume of the beverage container at a level greater than the pressure of dissolved gases within the beverage. In some instances, such pump closure devices have been unable to develop a sufficiently high enough pressure within the container open space because of leakage through or around the sealing components of the pump. In other instances, the prior art pumping devices have developed adequate pressure levels initially, but were unable to maintain the interior pressure at the desired level because of leakage."

The consistory clause follows in the same terms as claim 1 in the patent.

The specification then proceeds in these terms:-

"According to an important feature of the invention, the pump cylinder is provided with an improved check valve assembly in which an outlet port is sealed by a resilient, conformable member which engages a tapered sealing surface formed within the cylinder sidewall in an area which is coincident with the outlet port. As a result of resilient flexure of the sealing member against the tapered sealing surface, the forces directed onto the sealing member during an up-stroke operation and at rest are uniformly distributed across the face of the member, thereby avoiding the creation of wrinkles which could compromise the seal. Moreover, during a down-stroke operation in which air is forced out of the compression chamber and into the open space of the beverage container, the resilient member is easily displaced away from the tapered surface surrounding the discharge port to permit the container open space to be pressurized.

According to another aspect of the invention, the annular seal is received about a reduced diameter portion of the piston, and is axially movable along the reduced diameter portion to a first position in which a vent groove formed on the piston is open for the admission of air from the air supply annulus into the compression chamber during up-stroke retraction of the piston. The annular seal is axially movable along the reduced diameter portion from the first position to a second position in which the seal engages the piston and seals the air supply annulus with respect to the vent groove as the piston and seal move through the pump cylinder during down-stroke movement, thereby permitting high compression levels to be established."

This is followed by a detailed description of the invention with reference to five attached drawings (figures 1 to 5).

Five claims are made defining the invention. Only claims 1 and 2 are said to be infringed. They are in the following terms:

"1. A pressurizing and closure assembly for use in combination with a carbonated beverage container comprising:

a closure cap having a central opening;

a pump having a pump housing attached to said closure cap, said pump housing having a cylindrical bore aligned with said central opening and a piston mounted for reciprocal movement through said bore, said piston having a reduced diameter portion and a vent groove formed on said reduced diameter portion;

a seal mounted on said reduced diameter piston portion for axial displacement from a first position to a second position along said reduced diameter portion, said seal defining the boundary of a compression chamber within said bore on one side of the seal, and an air supply annulus being defined between the piston and the pump cylinder bore on the other side of the seal, said seal having a resilient, annular shoulder engaging said piston bore and said piston and sealing the air supply annulus with respect to said vent groove when said seal is in the first position, and said seal being movable to the second position on said reduced diameter piston portion wherein said vent groove is in communication with the air supply annulus and the compression chamber; and,

a check valve coupled to said pump housing in communication with said compression chamber, said check valve having a discharge port in communication with said compression chamber and a movable valve element for covering and uncovering the discharge port.

2. A pressurizing and closure assembly as defined in Claim 1, said pump housing having a compression chamber closure portion, a valve seat pocket formed in said closure portion, said discharge port intersecting said closure portion and said movable valve element comprising a flexible member disposed within said pocket in resilient engagement against said closure portion, said flexible member overlying said discharge port."

The various features of Claims 1 and 2 in the patent in suit were conveniently reduced by Dr Stark to a dissection of the features lettered (a) to (s) inclusive. It is a convenient course for me to take in this judgment, so I annexe the dissection to my reasons (the annexure).

The patent is a combination patent. The utility of the invention is said to arise from the combination of various integers.

There is no dispute between the parties about the material facts. The issues are narrow. They raise questions of construction of the patent and an analysis of the various integers in claims 1 and 2 when compared with the elements of the Fizz Keep device.

The case turns primarily on the construction of the expression "a vent groove" in Claim 1 and therefore Claim 2 which assumes that Claim 1 defines the relevant pressurizing and closure assembly. This question is central to the issue of infringement and important on questions relating to the validity of the patent. Elsewhere in the specification, reference is made, not only to the expression "vent groove", but to other expressions to similar effect and intended to describe the same function: "shallow groove", "inlet port", and "vent passage". E Street does not rely on these references to construe the expression "vent groove" in the claims because counsel for the applicant concedes that there is no ambiguity in the expression "vent groove", so that recourse may not be had to the body of the specification as an aid to construction of that expression. E Street submits that these expressions are indicative of the function which the "vent groove" performs.

Two witnesses gave evidence. They swore affidavits, made reports and gave oral evidence. They are Dr Hugh Lithgow Stark (previously mentioned), a chartered professional mechanical engineer, with extensive industrial and academic experience, called by E Street, and Mr John Joseph McCaffrey, a senior engineer, Research and Development, and part-time lecturer in the School of Mechanical Engineering at the University of Technology Sydney, called by CPS.

According to Dr Stark the purpose of the vent groove formed on the reduced diameter portion of the closure is to provide an aperture through which air can pass into the compression chamber when the seal slides to the distal end of the reduced diameter section of the piston on the up-stroke. He maintains that the same function is achieved by the intersecting hole arrangement of the pump cap on the Fizz Keep closure which, he says, is similarly lockable by the seal. He also maintains that the two arrangements, that is the arrangement of the vent groove in claim 1 and the arrangement on the Fizz Keep, are "simple mechanical equivalents". He says he cannot see any outstanding merits in the hole arrangement of the Fizz Keep over the vent groove arrangement disclosed in the patent.

Mr McCaffrey said that the matters in issue are concerned with the application of simple pumps, and that a bicycle tyre pump operates on the same principles as the beverage pressurizing pump claimed in the patent in suit. As to Claim 1 he said that the elements of the claim are well known to him and to a large number of maintenance people whom he had seen at work over the years. He said that there is nothing new involved in designing a simple plunger pump which can be screwed onto a container to pressurize the contents of the container.

The evidence of both experts was given in far greater detail than I have briefly described, but I have said sufficient to summarize certain main features of their evidence. Each of them gave evidence with respect to the detailed issues that arise in the case and I have taken their evidence into account. On the issues of obviousness and want of novelty I prefer the evidence of Dr Stark to that of Mr McCaffrey where they disagree, which they do to a large degree. Dr Stark's evidence impressed me as more accurate and considered, although I mean no disrespect to Mr McCaffrey. Also, Dr Stark's evidence accorded more with my own impressions of the relevant patents. On the question of infringement, I accept each expert's evidence in part, but as will be seen when I deal with that issue, its resolution turns to a large extent on other matters.

Prior Patents

I shall describe briefly the patents on which reliance was placed by CPS to support its case that the invention in suit was obvious and that it lacked novelty.

The Saxby Patent

This is a United States patent for a pressurizing and closure apparatus for carbonated beverage containers. The device described in the Saxby patent incorporates a plunger pump that can be mounted on a container, using ambient air as the pressurizing fluid. It differs from the patent in suit in a number of respects including the fact that it uses a fixed seal whereas air is admitted to the compression chamber solely via the edge of the seal. This is achieved partly by inward deformation of the seal on the upward induction stroke and partly by provision of an outwardly divergent taper at the top of the compression chamber that allows air to pass around the seal.

The Dubner Patent

This is also a United States patent. The invention described in this patent relates in general to tennis ball containers and in particular to a tennis ball container in which tennis balls are stored under pressure. The device described in the Dubner patent is a pressurizing and closure device incorporating a plunger pump that can be mounted on a container, using ambient air as the pressurizing fluid. The invention is directed to a different application to the application described in the patent in suit. The Dubner device differs from the structure defined in Claim 1 of the patent in suit with respect to the seal arrangement. The Dubner device incorporates a floating seal arrangement of a kind wherein the air is directed into the compression chamber through the inner diameter of the seal which provides a substantial clearance around the reduced diameter portion of the piston about which the seal is retained.

The Amadieu Patent

The device described in this patent - a French patent of which a translation is in evidence - is a device for a piston, particularly as applied to pumps for cycles, motor cycles and cars. This device is directed to a different field from the relevant field. The pump described in the Amadieu patent has a cylindrical bore, a reciprocating piston, a reduced diameter path for the seal to move along, and a vent groove; but it does not disclose a check valve in communication with the compression chamber. In my opinion this patent is not one which an engineer would ordinarily have cause to refer to during the design process. It is doubtful if any engineer in Australia would know of its existence and it could not be considered to form part of the common general knowledge of the engineer faced with the design problem to which the patent in suit is directed.

The Green Patent

This United States patent discloses a means for pressurizing liquids. It too describes a pressurizing and closure device incorporating a plunger pump that can be mounted on a container, using ambient air as the pressurizing fluid. It relates, however, to a means specifically developed for pressurizing liquids, which are inherently generally incompressible, and thus does not include the air supply annulus or compression chamber defined in Claim 1. I deal in more detail later with the differences between the device disclosed in the Green patent and the device disclosed in the patent in suit.

The Hanje patent

This is a further United States patent which relates to hand pumps of the type which are mounted in portable burners or torches for the purpose of maintaining the fuel in the tank or reservoir thereof under pressure. This device discloses a reduced piston portion about which a seal reciprocally slides to alternatively block or provide communication with a compression chamber. There is no vent groove or equivalent passage formed in the reduced portion. In this device the air passage is provided through the central hole of the seal and through passages provided in the lower disc.

The Herreshoff Patent

This too is a United States patent. The invention relates to pumps and, more particularly, to reciprocating pumps such as hand-operated bilge pumps for boats. It is concerned with improvements in the plunger or piston of such pumps. The device is specifically for pumping liquids. Liquid pumps operate essentially, as do vacuum pumps, to suck in the fluid. However, whilst the physical structure of liquid pumps may be similar to that of vacuum pumps, there is no "compression chamber" and the operation is in effect the reverse of that described in Claim 1 of the patent. There is no disclosure of an air supply annulus or of a check valve that is in communication with a compression chamber. There is no vent groove or equivalent passage formed in the reduced diameter portion of the piston, nor is there disclosure of a closure cap. I refer to this in more detail later.

Infringement

As I have said, the patent in suit is a combination patent, namely, a patent which consists of the combination of a number of known integers. The working relationship of the individual elements is said to produce a new or improved result. The parties accept that the integers of the combination in the patent in suit were known at the priority date.

Counsel for E Street submitted that the essence of feature (f) (the "vent groove") is that the device possesses a vent in the reduced diameter portion of the piston. Whether it is a vent groove or a vent hole is immaterial. Its purpose is to provide a passage for air. Nothing in the claim or in the specification suggests that the particular shape of the vent is essential. Counsel argued that the hole in the product of CPS is in essence the same as the vent groove. As the other integers of Claim 1 are present in the product of CPS, it was submitted that Claim 1 was infringed by CPS.

Counsel for CPS submitted that, as the patent in suit is a combination patent and the integers of the combination were known at the priority date, to establish infringement, E Street must show that CPS has taken each and every one of the patentee's integers. If on its true construction Claim 1 claims a particular combination of integers, and the alleged infringer of it omits one of them, he will escape liability. Claim 1 (on which Claim 2 is dependent) requires a "vent groove formed on [the] reduced diameter portion" of the piston. The product of CPS has a hole, not a "vent groove". The words of the patentee should be given their clear meaning and they do not include a hole of the kind that is inherent in the product of CPS.

It was argued by counsel for CPS with respect to Claim 2 that Claim 2 requires an assembly as defined in Claim 1 and certain additional features. Claim 2 is not infringed because the CPS product does not include the following integers, namely:

"said movable valve element comprising a flexible member disposed within said pocket in resilient engagement against said closure portion" [for convenience described by the parties and the witnesses as feature (r)] and

"said flexible member overlying said discharge port" [feature (s)]."

To establish infringement of a combination patent it is necessary that the alleged infringer takes each and every one of the essential integers of the relevant claims. The Full Court of this Court (Bowen C.J., Deane and Ellicott JJ.) said in Populin v H B Nominees Pty Limited (1982) 41 ALR 471 at 475:-

"For to establish infringement of a combination patent, the patentee must show that the defendant has taken each and every one of the essential integers of the patentee's claim. Therefore if, on its true construction, the claim in a patent claims a particular combination of integers and the alleged infringer of it omits one of them he will escape liability."

To similar effect see Nicaro Holdings Pty Limited v Martin Engineering Co (1990) 91 ALR 513 per Gummow J. at 528.

Claim 1 of the patent in suit (and therefore Claim 2 which is dependent upon Claim 1) requires "a vent groove formed on said reduced diameter portion" of the piston (feature (f) set out in the annexure to these reasons). It is accepted by E Street that the presence of the "vent groove" is an essential integer.

In my opinion the words "a vent groove formed on said reduced diameter portion" of the piston have a clear meaning. They are not apt to describe a hole bored through the reduced diameter portion of the CPS product. That product has an intersecting hole arrangement at the reduced diameter portion as the means for communication of air from the air supply annulus, between the piston and the bore, to the compression
chamber.

The "groove" in the present context means a form of channel cut by artificial means in the substance from which the piston is made. The words of Claim 1 "a vent groove formed on said reduced diameter portion" of the piston are not apt to describe the hole in the CPS product which is bored through the material. The hole in the CPS product is not "formed on" the reduced diameter portion of the piston; it "goes into it", to use the words of Dr Stark in cross-examination. Thus in my view a hole is not a "vent groove". Even if it were, it would not be apt to describe the hole in the CPS product as being "formed on" the reduced diameter portion. The phrase "a vent groove formed on said reduced diameter portion" must be read as a whole; and on its proper construction it does not encompass an intersecting hole arrangement at the reduced diameter portion of the CPS product.

I have not, I hope, adopted an overly technical or narrow construction of the words in feature (f) of Claim 1. I have construed them according to their ordinary natural meaning in the context in which they appear.

Courts do not of course adopt an overly technical or narrow construction of claims. In Radiation Limited v Galliers and Klaerr Pty Limited (1938) 60 CLR 36 Dixon J. said at 51:

"But, on a question of infringement, the issue is not whether the words of the claim can be applied with verbal accuracy or felicity to the article or device alleged to infringe. It is whether the substantial idea disclosed by the specification and made the subject of a definite claim has been taken and embodied in the infringing thing."

See also Populin at 475.

As was observed by the Full Court in Populin at 475, it is in reliance on this approach that the Courts have held that a defendant will not escape infringement by adopting immaterial variations, for example, "by omitting an inessential part or step and substituting another part or step as its equivalent".

However, in this case the CPS product was not adopted an immaterial variation. There is, it seems to me an essential difference between "a vent groove formed on said reduced diameter portion of the piston" and a hole bored through the reduced diameter portion of the CPS product.

In drafting Claim 1 the words in feature (f) have been chosen carefully, intending to refer precisely to what the feature says, namely, "a vent groove". There were many other expressions that could have been used if the person who drafted the claim had chosen to do so. Furthermore, the words in feature (f) are clear in meaning. This is not a case where it is necessary to turn to the specification as an aid to the construction of the expression "vent groove" or "vent groove formed on said reduced diameter portion" as there is no ambiguity in that expression. In any event, as mentioned earlier, the words used in the body of the specification to describe the same function, namely, "shallow groove", "inlet port" and "vent passage" are indicative of the function which the "vent groove" is to perform. They do not assist the construction of feature (f) for which E Street contends. It is likely that the person who drafted the specification was aware of the prior art and common knowledge, carefully chose the words in feature (f), and was astute to avoid an unduly wide claim: see Walker v Alemite Corporation (1933) 49 CLR 643 at 656-7.

It follows that CPS has not taken feature (f) in Claim 1. This is an essential integer of the patent in suit. There has been no infringement of Claim 1.

As to Claim 2 it requires both an assembly as defined in Claim 1 and various features ((o) to (s) in the annexure). As the CPS product does not have feature (f), Claim 2 has not been infringed.

Revocation - Obviousness:

On the issue of obviousness, counsel for CPS argued that the device described in the patent in suit did not involve the taking of any inventive step and is therefore obvious. The device described in the patent is very simple and involves very low technology. The field is a simple hand pump design and includes the design and operation of such things as bicycle pumps and hand-primed stoves. The invention in suit is simply the application of well known and well understood things to an analogous use; hence there is no inventiveness. The Optimus Stove was available in Australia at a camping store over ten years before the priority date. It embodied known elements; all the elements in it are present in the patent in suit; and a hand pump on identical principles was employed in conjunction with a check valve.

The grounds of invalidity of the patent in suit are those available under the Patents Act 1952 (the 1952 Act). The 1952 Act was repealed by s. 230 of the Patents Act 1990 (the 1990 Act). Objection cannot be taken to a patent granted under the 1952 Act on any ground that would not have been available against the patent under the 1952 Act: s. 233(4).

Section 7(2) of the 1990 Act provides that an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim,

"whether that knowledge is considered separately or together with either of the kinds of information mentioned in subsection (3), each of which must be considered separately."

Subsection (3) of s. 7 provides that for the purposes of subsection (2):

"the kinds of information are:-

(a) prior art information made publicly available in a single document or through doing a single act; and

(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;

being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area."

The precise significance of s. 7(2) and (3) for patents granted under the 1952 Act is yet to be determined; but this question need not be considered in this case as it is common ground, correctly in my view, that the validity of the patent
in suit falls to be determined with reference to the grounds of invalidity available under the 1952 Act.

The test of obviousness is laid down by the High Court in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 293-295; and in Wellcome Foundation Limited v V R Laboratories (Aust) Pty Limited (1981) 148 CLR 262 at 270. Obviousness of an invention must be determined by reference to a non-inventive skilled worker in the field, equipped with the common general knowledge in that particular field as at the priority date; and without regard to documents in existence but not part of common general knowledge.

An inventive step requires that there be "some difficulty overcome, some barrier crossed": R D Werner & Co Inc v Bailey Aluminium Products Pty Limited (1989) 25 FCR 565 at 574. There will be no inventiveness if the invention in suit is merely the application of well known and well understood things to an analogous use.

I am satisfied that the following matters were part of the common general knowledge in the relevant field at the priority date of the patent in suit:-

(a) floating seals in pumps with annular passages through the seals and various passages between seals and bottom flanges;

(b) check valves in pumps generally;

(d) certain other basic elements of pump design; for example, bores, pistons and compression chambers;

(e) bicycle pumps with fixed seals;

I am satisfied that the following matters did not form part of the common general knowledge in the relevant field at the priority date:-

(a) floating seals with vents or ports through in or on the reduced diameter portion;

(b) carbonated beverage container pumps of any kind;

(d) the matters referred to in the specification at p. 2 line 24 and p. 3 line 16;

(e) (a) to (d) above in any combination;

(f) any of the prior specifications.

The following steps were necessary to move from common general knowledge to the invention claimed in Claims 1 and 2:-

(a) the idea of the check valve in the one unit;

(b) the choice of fixed or floating seals (although known themselves they were not known in pumps of the kind involved in the patent in suit);

(d) the idea of the desirability of a beverage container pump;

(e) the choice or idea of details of the check valve;

(f) the combination of all of the above elements.

Although the invention in suit is simple technology, the steps mentioned above, which are combined in the patent in suit, constitute a sufficient "difficulty overcome, some barrier crossed": Werner at 574. It cannot be said that the combination "would naturally suggest itself to anyone using" any of the prior art: Werner at 575. More than a "scintilla" of invention is present.

I agree with the submission of counsel for E Street that the question of inventiveness must be limited to a hypothetical and skilled, but not inventive, addressee starting with the common general knowledge of the simplest bicycle pump without a floating seal. The use of a floating seal as at 1986 in pumps of this kind has not been established. Floating seals and check valves certainly were known per se, but the present combination embodied in the patent in suit is only obvious with the benefit of hindsight, thus requiring the Court to exercise considerable care: Minnesota Mining at 293-294; British Westinghouse Electric and Manufacturing Co Limited v Braulik (1910) 27 RPC 209 per Fletcher-Moulton L.J. at 230; Palmer v Dunlop Perdriau Rubber Co Limited (1937) 59 CLR 30 per Latham C.J. at 60-61.

It was not established that the Saxby, Dubner or Amadieu patents, or any of the other patents on which CPS relies, were common general knowledge at the priority date of 12 November 1986. Nor has it been shown that the Optimus Stove was part of the store of common general knowledge.

Claims 1 and 2 are not obvious.

Validity - Novelty

As to novelty, counsel for CPS argued that the invention was anticipated by the Amadieu patent, the Saxby patent, the Dubner patent and by the Optimus Stove. It was also said that the Amadieu patent was published in Australia before the priority date and has all the integers of the patent in suit except the check valve.

The argument continued that the Saxby patent was also published in Australia before the priority date and has all the integers of the patent in suit other than the floating seal mechanism and is put to the same use exactly as the patent in suit. The check valve is identical.

A similar submission was made with respect to the Dubner patent. Reliance was also placed, albeit faintly, on the Green, Hanje and Herreshoff patents.

Counsel for CPS submitted that the Optimus Stove was publicly available in Australia before the priority date; its workings include all the integers of the patent in suit. The use of the stove pump and check valve mechanism for pressurizing a beverage container is the use of a mechanical equivalent. The combined pump and check valve mechanism on the stove itself was for pressurizing air on liquid in a container.

Counsel for E Street responded by submitting that the question is whether each item of prior art taken alone possesses each integer of the respective claims in combination.

In Nicaro at 517 Lockhart J. said:

"It is well established that the prior art must disclose all features of the invention embodied in the patent in suit and must do so in clear, unequivocal and unmistakable terms. The prior art must enable the notional skilled addressee at once to perceive and understand and be able practically to apply the discovery without the necessity of making further experiments. Whatever is essential to the invention must be read out of or gleaned from the prior publication: see Hill v Evans (1862) 31 LJ Ch 457 at 466; General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, supra, at 486; Washex Machinery Corp v Roy Burton & Co Pty Ltd (1974) 49 ALJR 12 at 18; and Van der Lely NV v Bamfords Ltd [1963] RPC 61 at 72-3.

...

The essential point is that it is the combination which must be disclosed in the case of a combination patent: Blanco White, para 4.107."

Thus for the ground of invalidity based on novelty to be established it is necessary that each item of prior art taken alone possesses each integer of the relevant claim in combination.

The invention was not anticipated by the Saxby patent which lacks a vent groove formed on "said reduced diameter portion" (integer (f)). The Saxby patent also lacks "a seal
mounted on said reduced diameter piston portion for axial displacement from a first position to a second position along said reduced diameter portion" (integer (g)); nor is there a "said seal having a resilient, annular shoulder engaging the said piston bore and said piston and sealing the air supply annulus with respect to said vent groove when said seal is in the first position" (integer (j)); and finally the Saxby patent lacks integer (k) in so much as it lacks a "said seal being movable to the second position or said reduced diameter piston portion wherein said vent groove is in communication with the air supply annulus and the compression chamber".

The Dubner patent is without the pressurizing and closure assembly as described by integer (a). This patent also lacks the vent groove (integer (f)); the seal with a resilient, annular shoulder engaging the piston and sealing the air supply (integer (j)); and the seal lacks the characteristic of being moveable to the second position on "said reduced diameter portion wherein the said vent groove is in communication with the air supply annulus and the compression chamber".

I turn next to the Green patent, which also does not anticipate the invention. The Green patent lacks integer (a) (the pressurizing and closure assembly for use in combination with a carbonated beverage container); integer (b) (the closure cap with a central opening); integer (c) (a pump having a pump housing attached to the closure cap); integer (f) (the vent groove); integer (i) (a seal having a resilient, annular shoulder "engaging said piston and sealing the air supply annulus with respect to the said vent groove when said seal is in the first position"; integer (k) ("the said seal being moveable to the second position on said reduced diameter piston portion wherein said vent groove is in communication with the air supply annulus and the compression chamber"); integer (l) (a check valve coupled to said pump housing in communication with said compression chamber; and, integer (m) ("the said check valve having a discharge port in communication with said compression chamber and a movable valve element for covering and uncovering the discharge port").

The Hanje patent lacks the pressurizing and closure assembly (integer (a)); the closure cap with the central opening (integer (b)); the vent groove on the reduced diameter (integer (f)); the seal with a resilient, annular shoulder engaging the piston bore and the piston and sealing the air supply annulus with the vent groove when the seal is in the first position (integer (j)); and, the movable seal described by integer (k).

The Herreshoff patent lacks the pressurizing and closure assembly being integer (a); the closure cap having a central opening (integer (b)); the pump having a pump housing attached to the closure cap (integer (c)); the reduced diameter portion of the piston (integer (e)); and the vent groove formed on the reduced diameter portion (integer (f)). The Herreshoff patent also lacks integer (g) (a seal mounted on the reduced diameter piston portion for axial displacement from a first position to a second position along the reduced diameter portion); integer (i) (an air supply annulus being defined between the piston and the pump cylinder bore on the other side of the seal; integer (j) (the seal having a resilient, annular shoulder engaging the piston bore and the piston and sealing the air supply annulus with respect to the vent groove when the seal is in the first position; integer (k) (the seal being moveable to the second position on the reduced diameter piston portion wherein the vent groove is in communication with the air supply annulus and the compression chamber); integer (l) (a check valve coupled to said pump housing in communication with the compression chamber; and, integer (m) (the check valve having a discharge port in communication with the compression chamber and a moveable valve element for covering and uncovering the discharge port). Accordingly, the invention cannot be said to have been anticipated by the Herreshoff patent.

The Amadieu patent has certain of the integers of the patent in suit but lacks integer (a) (the pressurizing and closure assembly); integer (b) (the closure cap having a central opening); integer (c) (a pump having a pump housing attached to the closure cap); and integer (f) (a vent groove formed on the reduced diameter portion). The Amadieu patent has a vent groove but not on the "said reduced diameter portion" of the piston.

Integers (a), (c) and (d) are also lacking in the Optimus Stove; that is, it too is without a pressurizing and closure assembly; a pump having a pump housing attached to the closure cap and the pump housing having a cylindrical bore aligned with the central opening and a piston mounted for reciprocal movement through the bore. Accordingly, the invention is not anticipated by the Optimus Stove.

Thus, the case of CPS that there is an absence of novelty fails.

Costs

Questions of costs were argued briefly before the Court, especially with reference to s. 220 of the 1990 Act which reads as follows:

"220. Where, at the hearing of proceedings under this Act, a patent attorney attends in court for the purpose of assisting a party in the conduct of the hearing and an order is made for payment of the costs of that party, those costs may include an allowance for that attendance."

Section 220 is in the same terms as its predecessor, s. 171 of the 1952 Act.

In my opinion s. 220 is an empowering provision, but one that is inserted for more abundant caution. It is not to be read as a section which requires a party, who seeks an order that costs include an allowance for attendance at Court of a patent attorney, to ask the trial Judge for such an order, otherwise no such allowance can be included. Judges rarely enter into questions of details of costs; these are more appropriate for determination by taxing officers on taxation of a bill of costs. The section is intended primarily as a guide to taxing officers to ensure that, if it is appropriate in a given case for the attendance of a patent attorney in court to be included in the costs allowed by the Court to a successful party, the taxing officer may include that allowance.

Certainly the trial Judge (or other Judge) may make an order of this kind; but generally it should be left to taxing officers. In short, it is not necessary that parties, who wish to obtain an order for costs of patent attorneys who attend Court, ask the trial Judge for such an order. It is a matter appropriately dealt with at the taxation stage.

Counsel for CPS did not make any different submissions with respect to s. 220 to those made by counsel for E Street, other than to say that if an order was made for E Street's patent attorney, then CPS would want one for their patent attorney.

Conclusion

CPS wins on infringement but loses on its cross-claim. As much of the evidence in the case was common to both issues, the proper order for costs is that there be no order as to costs.

The orders of the Court are that:-

1. The application is dismissed.

2. The cross-claim is dismissed.

3. There shall be no order for costs.

I certify that this and the preceding thirty-two (32) pages are a true copy of the reasons for judgment herein of the Honourable Justice Lockhart.

Associate

Dated: 20 September 1995

Counsel for the Applicant/

Cross Respondent : Mr D K Catterns QC

Solicitors for the Applicant/

Cross Respondent : Peter Cornelius & Partners

Counsel for the Respondent/

Cross Claimant : Mr R Cobden

Solicitors for the Respondent/

Cross Claimant : Blake Dawson Waldron

Date of Hearing : 26, 27, 28 June 1995

Date of Judgment : 20 September 1995

CATCHWORDS

PATENT - combination patent - requirements for infringement - requirements for invalidity: Patents Act 1952, Patents Act 1990 - revocation - test for obviousness - test for novelty - costs: Patents Act 1990: s. 220.

Patents Act 1952

Patents Act 1990

E STREET ENTERPRISES INC v CPS HOUSEWARES PTY LIMITED

G126 of 1994

LOCKHART J.

20 SEPTEMBER 1995

SYDNEY

IN THE FEDERAL COURT OF AUSTRALIA)

)

NEW SOUTH WALES DISTRICT REGISTRY) No. G126 of 1994

)

GENERAL DIVISION )

BETWEEN: E STREET ENTERPRISES INC

Applicant/Cross Respondent

AND: CPS HOUSEWARES PTY LIMITED

Respondent/Cross Claimant

JUDGE MAKING ORDER: LOCKHART J.

WHERE ORDER MADE: SYDNEY

DATE ORDER MADE: 20 SEPTEMBER 1995

MINUTE OF ORDER

THE COURT ORDERS THAT:

1. The application is dismissed.

2. The cross-claim is dismissed.

3. There be no order for costs.

NOTE: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.

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