FEDERAL COURT OF AUSTRALIA
Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd [1999] FCA 898
PATENTS – validity – novelty – whether information in several advertisements formed an allowable “mosaic” – whether pictures in advertisements revealed an anticipation of the invention – discussion of evidence of what the advertisements would have revealed to the skilled person – discussion of the test for novelty – the role of “mechanical equivalents” in the assessment of an alleged anticipation – discussion of the distinction between anticipating material from which the existence of an integer of a combination could be inferred and material from which it could be concluded the addition of an essential integer would clearly be a good idea – inventorship – infringement – discussion of the rule that sale of a component part of a combination claim for an entire machine is not an infringement – rule that in such a case the vendor must have made himself a party to the act of infringement to be liable – discussion of participation in infringement and of inducing or procuring an infringement – combination to infringe – discussion of evidence of the procurement of an infringement – discussion of the proposition that you cannot avoid infringement by making a patented machine work a little worse and then providing a remedy – whether the “substance” of an invention had been deliberately left outside the claim – discussion of damages for infringement of a patent – measure of damages by the attribution of a reasonable royalty – prima facie measure of damages of the profit the patentee could have earned – estimation where precision is impossible – whether sale of patented combination without warning to purchaser that use might involve infringement amounted to a contravention of s 52 of the Trade Practices Act 1974.
TRADE PRACTICES ACT, S 52 – whether sale of patented combination without warning to purchaser that use might involve infringement amounted to a contravention of s 52 of the Trade Practices Act 1974 - discussion of the proposition that misleading conduct need not be representational – circumstances where it was more realistic to see the conduct as misleading without resort to a representational analysis – inference from the engaging by a corporation in misleading conduct and the doing of the thing to which that conduct tended that it did have a causative effect.
Patents Act 1952 (Cwth), s 100
Trade Practices Act 1974 (Cwth), s 52
Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1993) 26 IPR 171 affirmed
Advanced Building Systems Pty Ltd v Ramset Fasteners (Australia) Pty Ltd (1995) AIPC 39,188 reversed in part
Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1996) 66 FCR 151 cited
Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 152 ALR 604 applied
Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited (1980) 144 CLR 253 applied
Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 referred to
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 followed
David Syme & Co Ltd v Lloyd [1984] 3 NSWLR 346 cited
Lloyd v David Syme & Co Ltd [1985] 3 NSWLR 728 cited
Graham Hart (1971) Proprietary Limited v S W Hart & Company Proprietary Limited (1978) 141 CLR 305 cited
Freeman v TJ & FL Pohlner Pty Ltd (1994) 30 IPR 377 applied
Meyers Taylor Pty Limited v Vicarr Industries Limited (1977) 137 CLR 228 applied
Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 25 IPR 119 applied
C. Van Der Lely N.V. v Bamfords Limited (1963) RPC 61 applied
Hills v Evans [1862] 4 De G, F & J 288 applied
Hoechst Celanese Corp v BP Chemicals Ltd [1998] FSR 586 applied
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 referred to
Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197 applied
Aktiebolaget Hässle v Alphapharm Pty Ltd [1999] FCA 628 applied
Sunbeam Corporation v Morphy-Richards (Aust.) Pty Ltd (1961) 180 CLR 98 referred to
Walker v Alemite Corporation (1933) 49 CLR 643 discussed
In re Maidstone Buildings Provisions Ltd [1971] 1 WLR 1085 referred to
Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 11 ALR 205 referred to
McCormick v Gray (1861) 7 H & N 25; 158 ER 377 referred to
Townsend v Haworth [1875] 12 Ch D 831(n) discussed
Dunlop Pneumatic Tyre Company, Limited v David Moseley & Sons, Limited (1904) 1 Ch. 612 discussed
Windsurfing International Inc v Petit [1984] 2 NSWLR 196 referred to
Innes v Short (1898) 15 RPC 449 followed
Adhesive Dry Mounting Company Ld v Trapp & Co (1910) 27 RPC 341 referred to
CBS Songs Ltd v Amstrad Consumer Electronics Plc [1988] AC 1013 referred to
Rotocrop International Limited v Genbourne Limited (1982) FSR 241 applied
Belegging-en Exploitatiemaatschappij Lavender BV v Whitten Industrial Diamonds Limited [1979] FSR 59 applied
Commonwealth of Australia v Riley (1984) 5 FCR 8 referred to
R v Griffiths [1966] 1 QB 589 referred to
The University of New South Wales v Moorhouse (1975) 133 CLR 1 referred to
Mölnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112 applied
Murex Diagnostics Australia Pty Ltd v Chiron Corporation (1995) 55 FCR 194 referred to
Dow Chemical AG v Spence Bryson & Co Ltd (1982) FSR 397 applied
Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 applied
Allsop Inc v Bintang Ltd (1989) 15 IPR 686 referred to
British Thomson-Houston Co Ld v Metropolitan-Vickers Electrical Co Ld (1928) 45 RPC 1 applied
Elconnex Pty Limited v Gerard Industries Pty Limited (1991) 32 FCR 491 referred to
Leonardis v Sartas (No 1) Pty Ltd (1996) 67 FCR 126 referred to
Meters Ltd v Metropolitan Gas Meters (1911) 28 RPC 157 applied
Martin Engineering Co v Nicaro Holdings Pty Ltd (1991) AIPC 37,578 referred to
Watson, Laidlaw & Co Ltd v Potts, Cassels & Williamson (1913) 30 RPC 285 referred to
Ungar v Sugg (1891) 8 RPC 385; (1892) 9 RPC 114 applied
Henjo Investments Pty Ltd v Collins Marrickville Pty Ltd (1988) 79 ALR 83 applied
Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553 applied
Demagogue Pty Ltd v Ramensky (1992) 39 FCR 31 applied
Como Investments Pty Ltd v Yenald Nominees Pty Ltd (1997) ATPR 43,617 applied
Gould v Vaggelas (1985) 157 CLR 215 applied
Commission for the New Towns v Cooper (Great Britain) Ltd [1995] Ch 259 applied
Sibley v Grosvenor (1916) 21 CLR 469 applied
Krakowski v Eurolynx Properties Limited (1995) 183 CLR 563 applied
Hanave Pty Ltd v LFOT Pty Ltd (1999) FCA 357 applied
RAMSET FASTENERS (AUST) PTY LIMITED v ADVANCED BUILDING SYSTEMS PTY LIMITED
NG 364 of 1995
Burchett, Sackville and Lehane JJ
5 July 1999
Sydney
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IN THE FEDERAL COURT OF AUSTRALIA |
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ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA
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BETWEEN: |
RAMSET FASTENERS (AUST) PTY LIMITED Appellant
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AND:
AND BETWEEN: |
ADVANCED BUILDING SYSTEMS PTY LIMITED First Respondent
THE BURKE COMPANY Second Respondent
ADVANCED BUILDING SYSTEMS PTY LIMITED First Cross-Appellant
THE BURKE COMPANY Second Cross-Appellant
RAMSET FASTENERS (AUST) PTY LIMITED Cross-Respondent
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DATE OF ORDER: |
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WHERE MADE: |
THE COURT ORDERS THAT:
The respondents and cross-appellants bring in, on a date to be fixed, short minutes of orders appropriate to be made in the light of these reasons.
Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
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IN THE FEDERAL COURT OF AUSTRALIA |
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ON APPEAL FROM A JUDGE OF THE FEDERAL COURT OF AUSTRALIA
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JUDGES: |
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DATE: |
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PLACE: |
REASONS FOR JUDGMENT
THE COURT
1 This matter has followed a lengthy and winding course. On 23 April 1993, Hill J delivered judgment dismissing a cross-claim for revocation of a patent which had been assigned on 22 November 1990 by The Burke Company (“Burke”) to Advanced Building Systems Pty Limited (“Advanced”): Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1993) 26 IPR 171. Then, on 13 April 1995 his Honour delivered judgment in respect of the claims made by Advanced and Burke against Ramset Fasteners (Aust) Pty Limited (“Ramset”) for infringement of patent and contravention of s 52 of the Trade Practices Act 1974 (Cwth), granting injunctive relief in relation to s 52, but denying Advanced and Burke any award of damages: Advanced Building Systems Pty Ltd v Ramset Fasteners (Australia) Pty Ltd (1995) AIPC 39,188. There followed an appeal and cross-appeal to a full court, which allowed the appeal, ordering the revocation of the patent, and dismissed the cross-appeal, by which damages had been sought for infringement of the patent and contravention of the Trade Practices Act: Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1996) 66 FCR 151. From the decision of the Full Court, Advanced and Burke appealed by special leave to the High Court of Australia, which allowed their appeal and remitted the matter to this Court for determination of outstanding grounds of appeal, re-determination of the cross-appeal, should that be required by the result of the appeal, and the making of appropriate orders with respect to costs: Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1998) 152 ALR 604. This Court has been reconstituted for the further hearing, with which these reasons are concerned. Along the way, the litigation has shed a number of issues, but three broad issues remain: the validity of the patent, challenged by the appellant’s (Ramset’s) cross-claim for revocation; the claim for infringement pursued by Advanced’s and Burke’s cross-appeal; and the claim for damages for infringement of patent and contravention of s 52 of the Trade Practices Act, also pursued by the cross-appeal.
2 The major question remaining to be decided in respect of the validity of the patent, the first issue, is whether the learned trial Judge erred in failing to find that the invention had been anticipated. Obviousness has dropped away as an issue, it being conceded at the trial that the body of common general knowledge necessary to provide a foundation for an attack on this ground could not be shown to have existed in Australia at the priority date.
3 The problems raised in argument can be most simply explained in the light of an understanding of the patent. So it is desirable to go straight to this document. The complete specification names Burke, a United States corporation, as the applicant and one Neil Lawrence Holt as the actual inventor. The invention is entitled “LIFT SYSTEM FOR TILT-UP WALLS”. Its field is stated to be “hoisting attachments and methods for erecting tilt-up concrete walls”, and it is said to relate to “hoisting attachments of this type which are very safe to use and are quickly releasable”. Under the heading “Description of the Prior Art”, the following appears:
“The type of hoisting attachment with which the present invention is concerned is shown in U.S. patent 3,883,170. The hoisting attachment and hoisting method aspects of the present invention are concerned with improving the hoisting attachment and method of said patent for safe and efficient use with tilt-up walls”.
Under the heading “Summary of the Invention”, the following appears:
“A principal object of the invention is to provide a method for using a quick release hoisting attachment of the type described for tilt-up walls characterized by the fact that release of the attachment is not possible until the hoisting shackle part of the attachment is lowered out of its normal upright position. …”
The specification contains the usual description by reference to drawings. The relevant drawings have been reproduced in each of the three reports cited above in relation to the earlier stages of the litigation in the Federal Court, before Hill J and before the previous Full Court. It is unnecessary to reproduce the drawings yet again, or to repeat the detail of the description the relevant parts of which will be found in the judgment of Hill J reported in 26 IPR at 177, as well as in the judgment of the earlier full court reported in 66 FCR at 159-162. It will be sufficient for the purposes of the present appeal to summarize. The system described involves the use of a combination of means for erecting tilt-up concrete walls. An anchor is incorporated in the casting, on the ground on site, of a concrete wall, to be tilted up and lifted into position. The anchor, set in a recess in the concrete, has a projecting lug of steel with a hole in it to take the bolt of a ring clutch forming part of a shackle by which the hoisting equipment will be attached to the anchor. The jaws of the shackle being dropped over the lug, the bolt, which is curved, is slid through the hole in the lug (by means of a lever arm attached to the other end of the bolt) and into a receiving channel in the other side of the ring clutch. When the crane begins to lift, the pressure on the bolt will tend to hold it firmly in position, but until then, it can slide along the channel.
4 Of particular importance for the present case is the following part of the description of the preferred embodiment (from which references to the figures have been omitted):
“… an elongated lever arm attached to locking bolt, an aperture in the end of lever arm, a pull rope connected through aperture to lever and a generally central opening in the ring clutch whereby the shackle may have a universal pivot action relative to ring clutch. The ring clutch is essentially identical with the one shown and described in U.S. patent 3,883,170, differing therefrom in that the lever arm is made many times longer than the one in the reference and in that the aperture and pull rope are provided. … The lever arm is pre-positioned to extend in the direction of the ultimate top end of the wall slab. Once the lifting action begins, the binding force applied by the anchor through the locking bolt to the body of the ring clutch prevents any relative movement taking place between the lever arm and the ring clutch during tilt-up movement of the slab.”
The description continues by referring to the -
“vertical condition at the end of the tilt-up operation. A pulling force is no longer being applied by cable to shackle. The shackle nevertheless remains in blocking relation to the lever arm. Thus, premature release of the locking means, with possible damaging consequences, is prevented until such time as the hoist operator lowers the cable to drop the shackle to a non-blocking position relative to lever.
This safety feature of the release mechanism is made possible by making the lever arm long enough so that its unlocking movement can be blocked by shackle and the preorientation of lever in the direction of the upper end of the wall slab.”
5 The claims are as follows:
“1. Apparatus for putting up a tilt-up wall section comprising a hoisting cable, a shackle connected to the cable, a ring clutch interconnecting the shackle with an anchor emplaced in the wall section, the ring clutch comprising a ring having a split therein and an arcuate locking bolt rotatable relative to said ring between a locked condition extending across the split and a released condition removed from the split, said bolt having an elongated lever arm extending generally parallel to the wall section during lifting and in the direction of the upper end thereof, a release cable attached to the distal end of the lever arm to remotely operate the lever arm by rotating it outwardly and downwardly to a predetermined degree relative to the wall section to rotate the bolt to the released condition and disconnect the ring clutch from the anchor, and hoisting cable-controlled means to selectively block or allow rotation of the lever arm to said predetermined degree, said means being operated responsive to the application of lifting force to the hoisting cable to block rotation of the lever arm upon the application of lifting force to the hoisting cable and release the arm for rotation upon slacking off of the hoisting cable.
2. The apparatus of claim 1 wherein the shackle is pivotally secured to the ring clutch for movement to and from a position blocking rotation of the lever arm, the hoisting cable-controlled means comprising the shackle which is disposed in blocking relation to the lever arm when the shackle is supported in an upwardly directed position by the hoisting cable and which is disposed in non-blocking relation to the lever arm when it moves to a downwardly directed position in response to the slacking off of said hoisting cable.”
6 The United States patent referred to in the specification is registered in the name of Siegfried Fricker, and is related to a German patent application. The abstract reads:
“A hoisting shackle with quick release attachment means cooperating with non-recoverable anchoring elements in the load eg a prefab building component, the closed hollow shackle body having a slot across which a locking bolt can be engaged with the anchoring element. Retraction of the locking bolt for remote release can be accomplished by means of a Bowden cable.”
As is indicated by the Burke patent itself in passages we have quoted, the Fricker patent describes a hoisting shackle very similar to that involved in the Burke patent. There are some aspects of the description, however, which should be noted. It is stated:
“The semi-annular locking bolt, when not clamped in place by the forces acting on the anchoring element, tends to assume a position in the lower portion of the shackle body under the influence of gravity, thereby normally locking the shackle. …
A still further advantageous feature of the present invention relates to the possibility of remotely actuating the release movement of the locking bolt. This result is obtained in a very simple way by adding to the hoisting shackle of the invention a cable pull, for example a Bowden cable, which permits the release of the hoisting shackle from its anchoring element from a distance, for instance from the ground or from a safe place on the construction site. Accidental or premature release of the locking bolt is practically impossible, because the load acting on the anchoring element creates a clamping action between the locking bolt and the cavity wall of the shackle body.”
Again, it is stated:
“The safety advantages of the remote release feature are particularly advantageous in the case where large and heavy prefabricated wall panels are to be installed, and where it would be difficult for a worker to reach the hoisting attachments on the upper end of the installed panel with his hand. The hoisting shackle of the invention is suitable for application with the heaviest building components, including components weighing up to twelve Mp (twelve thousand tonnes). It should be understood that the remote-controlled release mechanism may include means other than the Bowden cable, such as, for example, release means which are operable through the movement of the hoisting harness itself, or which are operable by means of a long rod or the like. The latter may include a cocked release spring arranged inside the annular cavity of shackle body and a trigger mechanism which when actuated, allows the release spring to retract the locking bolt.”
7 It will be observed that these passages in the Fricker patent imply a contemplated use of the shackle in which it is so positioned that any gravitational pull on the locking bolt and its lever arm will lock it, not unlock it. The means of remote release mentioned, although this invention recognizes that others might be used, are means, such as a Bowden cable, rod, or cocked release spring, all of which are capable of operation against gravity. The very expression “remote-control release mechanism” shows that a degree of complexity was thought to be required, and that a simple downwards pull was not envisaged. A Bowden cable, as defined in the McGraw-Hill Dictionary of Scientific and Technical Terms is:
“A wire made of spring steel which is enclosed in a helical casing and used to transmit longitudinal motions over distances, particularly around corners”.
8 The reference to “the hoisting attachments on the upper end of the installed panel”, and to the difficulty of reaching them, is also revealing. Although there is nothing to negative the use of this invention in face-lift operations (that is, where the lifting is done by attaching the hoisting tackle to anchors set in the face of the wall or panel to be lifted, as illustrated by the drawings forming part of the Burke specification), it is plain the Fricker patent looks at least primarily to an end-lift (or edge-lift) procedure. In such a procedure, there could be no question of remote release by a simple downwards pull, and some more complicated mechanism would obviously be indispensable.
9 It is to be observed, too, that there is no suggestion, in the Fricker patent, of any safety device ensuring against premature release of the shackle, once it ceases to be load bearing, other than the gravitational force holding the bolt and its lever in the bottom of the shackle.
10 What these aspects of the Fricker patent plainly mean is that a method of use involving the “nose” of the locking bolt (as this patent calls the lever arm) pointing vertically upwards, so that the bolt could be released simply by pulling it down, would be the opposite of the kind of working procedure contemplated by the patent.
11 It will also be apparent that the claim of the Burke patent is to do something quite specialized. It claims to build on the Fricker patent, using it in the particular area of the erection of tilt-up concrete walls, to be lifted by face-lift operations. It claims to provide “a method for using a quick release hoisting attachment [of the Fricker type] for tilt-up walls characterized by the fact that release of the attachment is not possible until the hoisting shackle part of the attachment is lowered out of its normal upright position”. This is done by providing a longer lever arm, the movement of which can be blocked by the shackle unless it is lowered out of position, and by providing a simple pull rope or cable to release the shackle remotely by rotating the lever arm outwardly and downwardly. The method involves pre-positioning the lever arm, at the time of attaching the shackle, so that it will extend towards the top of the wall slab when it is erected. What distinguishes the apparatus and method of the invention from the device described in the Fricker patent, in addition to the provision of the pull rope, is the deliberate blocking of any releasing movement of the lever arm by the shackle, which enables the lever arm to be placed in an upright position, rather than a downwards position, so as to facilitate the use of a mere pull rope for release after erection, eliminating the need for complicated release mechanisms. In other words, the Burke patent involves a conjunction of two ideas – that if the lever arm could be pre-positioned to point vertically upwards when release was required, a simple pull rope would suffice for quick release; and that, despite the Fricker patent’s insistence on the safety of positioning the lever and bolt at the bottom of the gravitational pull, the opposite position would be safe if the arm were long enough to be blocked from moving into the position of release by the shackle itself.
12 Whether the realization of these two points, and of their advantages, was truly inventive is not in issue. For any attack on the Burke patent on the ground of obviousness was abandoned at the hearing at first instance. The questions which were pursued were Ramset’s claim that the alleged invention was not novel in Australia on the priority date; that it was not an “invention” within the meaning of the Patents Act 1952 (it is not in dispute that this case must be decided in accordance with the terms of that Act); and that the claimed inventor was not the actual inventor. The learned trial Judge dismissed these objections to validity. However, on appeal, the Full Court took the view, notwithstanding the abandonment of obviousness and its own decision to defer any resolution of the issue of novelty, that the patent was bad on the ground that it did not disclose an invention within the meaning of s 100(1)(d) of the Act. Having reached that conclusion, the Full Court found it unnecessary to decide the question of novelty or the question whether Mr Holt, who was named in the Burke patent as the inventor, was in fact the actual inventor. But the High Court has now reversed the decision applying s 100(1)(d), and remitted the appeal for determination of the remaining issues.
The Issue of Novelty
13 Although other matters were raised at the hearing at first instance, counsel for the appellant told us the “case for want of novelty depends upon three advertisements, taken separately of course.” The concession that the advertisements cannot be considered together derives from the doctrine forbidding the assembly of a “mosaic”: Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Limited (1980) 144 CLR 253 at 292-293, per Aickin J. In some circumstances, information or illustrations in several advertisements of the same thing might constitute an exception, it being manifest that these contain descriptions or depictions that are related because they are of the one object: Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 341-343; and, on appeal, Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 532-541, per Gummow J (with whom Jenkinson J agreed), and at 522, per Lockhart J; Blanco White, Patents for Inventions, 5th ed (1983), sec 4-107. But, in the absence of any reference in one advertisement directing attention to another, that would require evidence showing publication of more than one advertisement in such circumstances as to lead to their association in a way that could justify reading them together. In any case, it was the same gap in the disclosure made by each advertisement that led to the failure of the appellant’s case on novelty at trial.
14 The first of the advertisements was referred to as “the Burke advertisement”. It bore the name “Burke Concrete Accessories, Inc.”, and a Californian address, together with the following announcement:
“New from Burke:
a lift system for jobsite precast
that’s quick, safe, all-purpose.
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RAPID-LIFT meets every criteria [sic] for a practical system to improve the handling of all precast shapes, at the plant or on the job. Unique design of its ring clutch meets the simultaneous need for fast, positive hook-ups and releases ... for 360° rotation flexibility to allow erection from any direction … and for standard all-purpose hardware that permits continuous operations. Safety standards, too, are materially improved by the |
Rapid-Lift remote control mechanism – allowing positive anchor release from positions up to 48 feet distant. Important advantages. But only part of the story of this unique new lift system discovered by Burke engineers in Europe, where it has been an industry standard for years. In stock now at 32 branches coast-to-coast …contact the one nearest you today, for better precasting tomorrow.” |
At the top were a picture showing the lifting of a slab, not by the face-lift method, but by its edge; a picture showing an anchor for such an operation; and a picture, partly super-imposed on the other two, appearing to be an enlargement of one of the shackles, attached and taking the strain. Whether the third picture involves an edge-lift or a face-lift procedure may be open to some argument, but if, indeed, as the juxtaposition of the three pictures suggests, it relates to the slab shown in the first, it must be intended to show an edge-lift. At all events, it does not show a positioning of the shackle for a face-lift in the manner described in the patent in suit. The lever arm, which is long enough to be blocked by the shackle, depending on the shackle’s position, has no attached rope, nor any visible means of attachment for a rope, and its locked position is at right-angles to the lifting orientation of the shackle, and horizontal. It could not be released from a distance, and below, by a simple pull on a rope, if one were provided, because it would have to be moved upwards. This is confirmed by the language of the advertisement, in its reference to “the Rapid-Lift remote control mechanism – allowing positive anchor release from positions up to 48 feet distant”. Both the word “mechanism” and the specific limitation to “48 feet” suggest some apparatus quite different from a simple rope to pull down a lever that was pointing upwards.
15 The second advertisement is entitled “Betonwerk Fertigteil-Technik”, and is largely in German, with some French and English. What is relied on is a group of nine pictures on one page, and a separate picture, on another page, of an anchor and a ring-clutch and shackle – the lever arm of the clutch being depicted as long enough for its movement to be blocked by the shackle, depending on the shackle’s position, but without any rope or visible means of attachment for a rope. Three of the nine pictures show the shackle being attached by hand to an anchor embedded in concrete. There is no sign of a rope. One picture is obscured by a printed notice, and one shows nothing relevant. What is depicted in the remaining four, as the trial judge noted, it is not easy to say with precision. The evidence, which is conflicting, does not make them plain. All are very small pictures, the details of which are hard to see. One appears to show the lifting of a column-shaped object by attachments at two sides. The second appears to show the tilting up of a column by four attachments in what will be the top when it is erect. The third was thought by his Honour to show a slab prepared, or partly prepared, for a face-lift tilt-up operation. But in none of these is there a clear indication of the method of release that will be utilized. The final picture does rather more plainly show an edge-lift attachment to a beam, with what looks like a pneumatic releasing device. Guided by that photograph and the technical evidence, it is possible to see what may be a similar device in the three preceding pictures. Certainly, none suggests a simple rope release.
16 The final advertisement bears the name RFA Systems Ltd, with an address in the United Kingdom. Relevantly, it shows a shackle with a ring clutch and an anchor, but in this depiction, the lever arm has a hole in the end of it, to which something could be attached. There is also a sketch of a beam being lifted by two attachments to its edge, while ropes are being held by a workman. However, in the absence of any indication of a Bowden cable connection, or any device to achieve a pull of the lever arm upwards, it is impossible to see in this sketch of an edge-lift – a lift to which no one says the patent in suit would be applicable, because in normal operation a simple downwards pull could not release the clutch – any suggestion of the idea of the Burke patent. The trial judge concluded that the ropes in the sketch were guide ropes, and, with respect, that conclusion seems right.
17 It is Hill J’s further conclusion which came under challenge – that an essential integer of the patent, the simple method of rope release for face-lift tilt-up operations, was not disclosed by any of the advertisements. Counsel for the appellant relied on the very simplicity of rope release as requiring little to reveal it, on the reference to remote release in the Burke advertisement, and on the depiction of a hole in the lever arm in the RFA Systems Ltd advertisement. But the Burke advertisement speaks of “remote control” in terms which show what is contemplated is nothing like a rope release; it is some “mechanism”. And the RFA Systems Ltd advertisement does not speak of remote control at all – it just shows a hole in the lever arm, while illustrating an edge-lift in relation to which a mere rope pull would be likely to prove useless. Simple though it may be, there is no doubt that the rope is essential to the apparatus and the method of using it described in the patent. It is not shown in the advertisements.
18 The appellant contended the rope release method would be inferred by the skilled reader of the advertisements. But, apart from their silence concerning this method, and the contra-indications in them, there is evidence pointing strongly in the opposite direction. That evidence is in a manual which was not relied on by the appellant as an anticipation, because not available in Australia at or before the priority date. For the respondent, it was argued that this manual showed what the author of the Burke advertisement actually intended to convey by the reference to release by remote control mechanism. It was said what a document does convey may be understood by the Court in the light of its author’s known intention: David Syme & Co Ltd v Lloyd [1984] 3 NSWLR 346 at 362, a passage approved by the Privy Council in Lloyd v David Syme & Co Ltd [1985] 3 NSWLR 728 at 734. However, the proposition relied on was formulated in the setting of defamation law, and to solve a particular problem raised by some defamation cases. In relation to the doctrine of anticipation in patent law, the question is what would have been revealed to the skilled reader at the priority date. But although, for relevant purposes, the author’s intent is not to the point (he may indeed have been blind to his own discovery), the manual is evidence of what the matters set out in the advertisements would have revealed to the skilled person: cf the remarks, made in the context of obviousness, of Aickin J citing Somervell LJ in Graham Hart (1971) Proprietary Limited v S W Hart & Company Proprietary Limited (1978) 141 CLR 305 at 330-331. Its author was certainly skilled, or in receipt of appropriately sourced information. Viewed in this way, counsel’s contention that light is to be obtained from it should be accepted. Indeed, the respondent’s argument is a fortiori. For if, in fact, the author of the manual did not appreciate what the patentee discovered, his failure to do so was in the context, not of merely seeing the pictures (some of them rather obscure) in the advertisements, but, it may be inferred, of actually seeing the equipment in operation. The Burke advertisement states that, in Europe, the “system … has been an industry standard for years”, and that the equipment is “[i]n stock now … coast-to-coast” in the United States. Any difference between the common general knowledge of skilled persons in Europe or the United States and such persons in Australia could hardly, in the circumstances, operate in the appellant’s favour.
19 The manual was not, on the evidence, in Australia at or before the priority date. A copy of it was annexed to an agreement dated 6 February 1980 between the German owner of the Fricker patent and Burke. It contains depictions of the shackle, ring clutch and anchor closely similar to those in each of the three advertisements. In particular, the manual contains the same nine pictures, of the same small sizes, and with the same one almost wholly obscured, to which reference has already been made. It has a section on release by remote control. It describes what it calls a “Ring clutch with manual remote-control release”, involving a Bowden cable the details of the attachment and use of which are discussed, with diagrams, over two full pages. The text includes the statement:
“The remote-control release disengages the ring clutch from the embedded anchor from a safe distance of up [to] 15 metres. …. The release mechanism consists basically of a Bowden cable connected to the clutch bolt.”
The reference to 15 metres, of course, equates, within about one foot, to the distance of 48 feet referred to in the Burke advertisement. The next two pages of the manual are devoted to what is described as “Ring clutch with pneumatic remote-control release”. Then there is a section, again taking up two pages, headed “Ring clutch with rope-operated remote-control release”. Under this heading, the manual states:
“To meet our many clients’ wishes, we have now developed a very simple rope-operated remote-control release in addition to our manual and pneumatic remote-control releases. The rope release is used for disengaging the ring clutch from the embeded [sic] anchor from the ground at a safe distance. … The remote-control release components are a hemp rope (length to requirements), rope pulley, counterweight, fire brigade safety hook, key ring and 3 rope clips.”
The description of the use of this device, illustrated by a diagram, relates to an edge lift in which the lever arm, in the locked position, is flat along the top of the load, that is, horizontal. The rope is attached to the end of the lever arm by means of the key ring being passed through a hole in the arm, and any risk of premature lifting of the arm is countered by the counterweight near that end of the rope. The rope is then passed over a pulley located fairly high in the crane tackle. Thus the idea is, not that the lever arm would be pulled down to release it, but that the lever arm would be pulled up in the direction of the pulley. It was pointed out, in the evidence, that this device might prove impractical on the job because the crane tackle would have to be lowered to take the strain off the ring clutch before it could be opened, but then pulling on the rope would re-apply pressure to the tackle via the pulley, thus impeding the opening of the ring clutch. The trial judge (at 26 IPR 192) described this system as “relatively complicated” and, after referring to the “clearly … rational grounds” on which it had been questioned “whether the system would work at all”, commented:
“Certainly, it is difficult to see from the drawing how the depiction would operate in practice.”
20 What, of importance for the present issue, emerges from all this is that the manual is entirely concerned, so far as it refers to remote release, with fairly complicated methods; and the reason for the complication, as appears from the counterweight and pulley required for what is intended to be the least complex of the methods, is the perceived necessity to have the lever arm in a position from which it must be lifted to release the clutch. This is emphasized by almost the final words of the text of the manual:
“For erecting columns, the procedure is exactly the same as described except that when the clutch is introduced into the recess in the concrete the clutch lever must point towards the base of the column” (emphasis added).
Since with an end-lift the lever could not point towards the base of the column, this injunction seems necessarily to relate to the face-lifting of a column, an operation analogous to the operations with which the patent in suit is concerned. The requirement that the lever arm point downwards, not upwards, is therefore very significant. Plainly, the manual does not contemplate the system of the Burke patent; the lever arm would not be in a position to be blocked by the shackle at any stage (unless, perhaps, undesirably, after the slackening of the tackle to enable the release of the ring clutch); and “remote-control release”, as discussed in the manual, does not and cannot involve a simple pull rope.
21 The pictures on which the appellant relies “must be looked at through the eyes of [such a person as] the typical addressee of the specification, namely the kind of person who would be expected to make an apparatus of this kind”: Freeman v TJ & FL Pohlner Pty Ltd (1994) 30 IPR 377 at 384, per Black CJ, Gummow and O’Loughlin JJ. On all the evidence, the proper conclusion is that such a person would not, at the priority date, have perceived a release by pull rope attached to the lever arm in any of the advertisements.
22 A fundamental proposition of patent law, which is not in dispute, is that a prior publication does not amount to an anticipation of an invention claimed as a combination if it discloses some, but not all, of the integers of that combination: Minnesota Mining and Manufacturing Co; Nicaro Holdings Pty Ltd v Martin Engineering Co at 527, per Gummow J; Meyers Taylor Pty Limited v Vicarr Industries Limited (1977) 137 CLR 228 at 235; Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 25 IPR 119 at 137-138. In the Nicaro Holdings case, Gummow J went on to expound the implications of this proposition, and certain elaborations and qualifications of it, over a number of pages, in a passage too long for quotation. In the course of that passage, his Honour cited (at 530-532) the speech of Lord Reid in C. Van Der Lely N.V. v Bamfords Limited (1963) RPC 61 at 71-72. Lord Reid there referred to the classical statement of Lord Westbury in Hills v Evans [1862] 4 De G, F & J 288; 45 ER 1195, in which an anticipation destructive of novelty was described as involving that “a person of ordinary knowledge of the subject would at once perceive and understand and be able practically to apply the discovery without the necessity of making further experiments”. Lord Reid commented that Lord Westbury “must have meant experiments with a view to discovering something not disclosed”. Gummow J, discussing Lord Reid’s comment, added:
“But his Lordship was not saying that an alleged anticipation of a combination claim, which did not include an integer thereof, nevertheless would constitute an effective disclosure if what was required of a skilled addressee to produce that claimed combination was the taking of an obvious and non-inventive step by way of workshop improvement.”
His Honour went on to point out that the concept of “workshop improvement” related to the doctrine of obviousness, although there might be some overlap between the application of the term to a particular feature of a combination and the application to the same feature of the term, proper to a consideration of novelty, “mechanical equivalent”. Having pointed that out, his Honour concluded his discussion of this matter by saying that “to add an essential integer otherwise missing from a claimed combination would not ordinarily be to supply a ‘mechanical equivalent’”.
23 The stringency of each of these statements bearing on the requirements for an anticipation is emphasized by the remark of Lord Reid in Van Der Lely at 72: “I would agree that the anticipating material must be as good for practical purposes as the material in the appellants’ specification”, a remark hardly qualified by his Lordship’s reminder that “material from which the skilled man would clearly infer” the existence of a feature is as good as a statement of that existence. It is important to appreciate that what Lord Reid was prepared to infer was the actual existence of a feature (referred to as “ground drive”) in the combination alleged to be an anticipation, although that feature was not visible in the photograph which was relied on as a publication. What is not permissible is to draw from a disclosure of one thing a conclusion that a different thing, different by the addition of an essential integer, would clearly be a good idea. That kind of reasoning belongs to obviousness, and should be tested by the principles of obviousness. Jacob J explained the distinction which must be faithfully preserved when he said in Hoechst Celanese Corp v BP Chemicals Ltd [1998] FSR 586 at 600-601:
“[I]f what is said to be implicit in a document is given too much scope you will be blurring the distinction between lack of novelty and obviousness. On the other hand it must be right to read the prior document with the eyes of the skilled man. So if he would find a teaching implicit, it is indeed taught. The prior document is novelty-destroying if it explicitly teaches something within the claim or, as a practical matter, that is what the skilled man would see it is teaching him. On that basis I do not see any difference between Judge Rogge/Lord Reid [referring to Lord Reid’s acceptance of inference in Van Der Lely and the similar approach of a German Supreme Court judge] and what is said in General Tire [General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 at 485-486].”
24 As regards any suggestion that the concept of mechanical equivalents might enable a publication relied on as an anticipation to be given a wider effect than it would otherwise have, it is important to remember that “the concept of mechanical equivalents, as understood in our law, is applicable not to all integers in patent claims, but only to what have been construed to be ‘inessential integers’”: Prestige Group (Australia) Pty Ltd v Dart Industries Inc (1990) 26 FCR 197 at 209, per Gummow J (with whom Northrop J agreed and Lockhart J relevantly agreed); Aktiebolaget Hässle v Alphapharm Pty Ltd [1999] FCA 628 at par 123. It follows that the point made by Windeyer J in Sunbeam Corporation v Morphy-Richards (Aust.) Pty Ltd (1961) 180 CLR 98 at 112 is a narrow one.
25 In the present case, it is clear that the “pull rope” is an essential integer of the combination described in the patent. It is claimed as such in the claims by the words “a release cable attached to the distal end of the lever arm to remotely operate the lever arm by rotating it outwardly and downwardly to a predetermined degree relative to the wall section to rotate the bolt to the released condition and disconnect the ring clutch from the anchor”. This aspect of the combination is fundamental to the invention claimed, which aims at speedy and safe release of the clutch. Whether or not a skilled worker might deduce the desirability of adding such a feature, it cannot be said that any of the pictures in the advertisements, or anything said in them, infers that the device to which they relate involved the presence of this feature. The appellant argued that the alleged invention makes no “difference in substance from that which was known”, presumably by virtue of these advertisements. But this way of putting the matter, which departs from an investigation as to whether the essential integers of the combination were revealed, risks a coalescence between considerations of novelty and obviousness so as to create an amorphous test on which the modern law of patents has turned its back. In a case in which any allegation of obviousness has been deliberately abandoned, both fairness and clarity of thought require the Court to concentrate on the doctrine of novelty as posing a distinct test. The appellant’s argument would reintroduce the confusion of the issues of novelty and obviousness which, earlier in this litigation, was introduced by the attack on the patent as not involving a new manner of manufacture. The sole question raised by the issue of novelty is whether the device to be seen by the skilled viewer as being depicted and in part described in the advertisements anticipated the Burke patent. That depends on whether all the essential integers were revealed in any one of those publications. It is not to be disposed of by a kind of confession and avoidance that acknowledges an integer is missing, but treats it as unimportant because, as the appellant asserts, it could easily have been worked out by a very small application of thought and experimentation. Any argument along those lines is inadmissible in principle, and betrays what seems to be the lingering influence of the approach the High Court has rejected. Considerations of the value, that is, of the magnitude or paucity, of the insight inherent in the advance made by the invention are considerations belonging to obviousness and not to novelty. So far as novelty is concerned, the attack on the patent must be rejected; whether or not the idea was brilliantly inventive, the respondents’ system did involve a new feature, claimed as such, which was essential to its safe and effective operation.
The Issue of the Inventor
26 The second ground of attack on his Honour’s conclusion that the patent is valid depends upon s 100(1)(a) of the Patents Act 1952. The issue raised is whether Mr Holt, the inventor named in the specification, was the actual inventor of the invention the subject of the patent. The appellant says he did not invent it, but merely copied the apparatus referred to in the manual annexed to the licence agreement between the German owner of the Fricker patent and Burke. This is a question of fact. It will be apparent from what has already been said in relation to the manual that the appellant’s submission cannot be accepted. The methods of remote release described in the manual were not copied in the Burke patent. It provided a new method, the inventiveness of which is not challenged, no claim of obviousness being pressed. Accordingly, this ground of appeal also must fail.
The Issue of Infringement
27 Logically, the next issue in the case is one of the issues raised by the cross-appeal, that is, whether Ramset is liable for infringement of the patent. Ramset did not itself erect pre-cast concrete walls or panels. It supplied, for profit, face-lift anchors and ring clutches which conformed to the patent and were used by those to whom they were supplied in face-lift tilt-up construction in accordance with the method disclosed by the patent. That, Ramset argued, did not involve any infringement by it.
28 There are certain principles of law which it is convenient to set out before the evidence is examined in detail. In Walker v Alemite Corporation (1933) 49 CLR 643, Rich J referred (at 650) to “the authorities which establish that the sale of a component part of a combination claim for an entire machine is not an infringement of a combination”. Starke J (with whom Evatt J agreed) said (at 654):
“[W]hen a patent is for a combination of various parts, the manufacture of the single parts is no infringement. Such a manufacture is in itself lawful, and knowledge, even on the part of the manufacturer, that the single parts will be used for the purposes of infringement is not enough to render him liable as an infringer”.
Dixon J (with whom McTiernan J agreed) said (at 658):
“[I]t is settled law that the exclusive property in a combination invention is not infringed upon by the sale of the components (Townsend v Haworth [1875] 12 Ch. D. 831(n)); that selling articles to persons to be used for the purpose of infringing a patent is not an infringement of the patent (per Fry J, Sykes v Howarth (1879) 12 Ch. D., at p. 833); and that sale with a knowledge that the purchaser will use the articles for infringement is not itself an infringement although the vendor gives the purchaser an indemnity: the vendor must have made himself a party to the act of infringement (per Mellish LJ, Townsend v Haworth (1875) 48 L.J. Ch., at p. 773(n); Dunlop Pneumatic Tyre Co v David Moseley & Sons Ltd (1904) 1 Ch., at pp. 616, 620). Further, in the opinion of Vaughan Williams LJ, it is not enough that the article sold has no other use than a use in the course of what amounts to infringement ((1904) 1 Ch., at pp. 616, 618, 619). The basis upon which these rules rest is that whatever is not included in the monopoly granted is publici juris and may be freely used as of common right. Narrow as this view of what constitutes participation in infringement may appear, it requires us, in my opinion, to hold that the claims 4 to 11 of the specification were not infringed.”
29 It will be observed that Dixon J based these rules on a proposition confining the patentee’s monopoly to the precise area claimed. In the case of a combination patent, that area does not extend to each constituent element of the combination, or to several of them, provided the combination itself is not involved. It does not follow that the public right of which Dixon J spoke extends beyond a dealing in a mere part of the combination, as a separate item, so as to include a dealing that embraces participation in the assembly and use of the whole combination.
30 What is required, and will suffice, for the establishment of liability, according to the statement of principle by Dixon J, is that “the vendor must have made himself a party to the act of infringement”. A party to an act is a “person who takes part or is implicated in” that act: The New Shorter Oxford English Dictionary (1993) Vol 2, “party”. That Dixon J was using the expression (which he partially borrowed from Mellish LJ) in this sense is confirmed by his reference, later in the same paragraph, to “participation in infringement”. Similarly, Pennycuick V-C in In re Maidstone Buildings Provisions Ltd [1971] 1 WLR 1085 at 1092 construed a company law provision referring to “any persons who were knowingly parties to the carrying on of the business [in a particular manner]” on the basis that “the expression ‘party to’ must on its natural meaning indicate no more than ‘participates in,’ ‘takes part in’ or ‘concurs in.’” He added this “involves some positive steps of some nature”. The propositions excluding a vendor from liability must therefore refer to a vendor who does not participate in the infringement.
31 As Dixon J pointed out (Gummow J has remarked that he “emphasised”: Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205 at 243), the authorities to which reference was made in Walker v Alemite exemplify a narrow view of what participation in infringement requires. But the stringency of that view should not be exaggerated by a failure to appreciate how confined was the issue examined in the cases cited. Walker v Alemite itself involved, in the words of Dixon J (at 657), an asserted infringement of a patent relating to an “appliance considered as a whole” by the mere “manufacture and sale of the grease-cup or nipple” forming part of it, the infringement being alleged “because the grease-cup would or must inevitably be used with the other parts of the respondent’s invention”. This is a far cry from a case of participation in an infringement actually committed by the person who brought together the grease-cup and the other parts for sale or use. The first decision in the series to which reference was made (by Starke J at 654) in the judgments in the High Court, McCormick v Gray (1861) 7 H & N 25; 158 ER 377, raised a precisely similar question. As Bramwell B pointed out (at 38-39; 384), the patent related to an entire reaping machine, while the alleged infringement consisted of the making of a blade which could have been used either in the patented or in some other machine.
32 The next decision, Townsend v Haworth, involved a demurrer to the plaintiff’s bill. As it was a demurrer, the question was whether the particular allegations made in that bill showed a good cause of action for infringement of a patent. The patent was concerned with the preservation of cotton from mildew by treating it with a solution made up from well-known chemical compounds. The action was brought against the supplier of some of the chemicals. Jessel MR said (at 772) “that the mere making, using or vending of the elements …. which afterwards enter into the combination, is not prohibited by the patent”. He concluded:
“This bill treats the company as proper defendants solely and simply on the ground of their bona fides in endeavouring to sell for their own profit, but as selling to a person who would not have bought of them without an indemnity, and therefore would not have infringed in that way without they had given him an indemnity.”
On appeal, Mellish LJ said (at 773):
“Selling materials for the purpose of infringing a patent to the man who is going to infringe it, even although the party who sells it knows that he is going to infringe it and indemnifies him, does not by itself make the person who so sells an infringer. He must be a party with the man who so infringes, and actually infringe.”
(The words “by itself” were later emphasized in decisions of the Court of Appeal to which reference will be made: see Dow Chemical AG v Spence Bryson & Co Ltd (infra) at 403-404.)
33 These principles were applied in the later case Dunlop Pneumatic Tyre Company, Limited v David Moseley & Sons, Limited (1904) 1 Ch. 612. There, infringement was alleged of two patents, each for a combination, relating to tyres and rims for cycles and vehicles. The defendants did not put the components of the combination together, but dealt (as appears at 615-616) in “an outer detachable cover”, capable of being used in the manner described in the patents. Even if it was capable of no other use, Vaughan Williams LJ considered there would be no infringement. As was pointed out by Buckley LJ (with whom Goff and Eveleigh LJJ agreed) in the later case Belegging-en (infra) at 65, this must be right because “goods which cannot be used otherwise than in an infringing manner may nevertheless be disposed of without any infringement. They may, for example, be exported.” Vaughan Williams LJ, in his judgment in Dunlop Pneumatic Tyre Company, also said (at 616):
“Now it is plain that what the plaintiffs allege is that there has been an infringement by the defendants, and that the infringement consists in the sale of these covers, which are constituent parts of one or other of the methods the subject of the combination patents … . In my opinion the sale of these covers does not amount to nor is evidence of an infringement of either of those patents. In truth and in fact, veil it as you like, the plaintiffs do not complain of any infringement in which the defendants have taken part as actors. All that they complain of is the sale of these covers to persons who the defendants must have known intended to commit an infringement of one or other of the patents.”
The Lord Justice added (at 618):
“It cannot be said on these facts that [the defendants] have aided or abetted any one in the commission of an act of infringement.”
He also added (at 619) an important clarification:
“If you are in substance selling the whole of a patented machine, I do not think that you can save yourself from liability for infringement, because you sell it in parts which are so manufactured as to be adapted to be easily put together. But that is not the present case. What is complained of here is merely the sale of one or other of the parts of the tyres patented by the plaintiffs.”
This observation accords with a number of other decisions: in particular, it was followed by Waddell J in Windsurfing International Inc v Petit [1984] 2 NSWLR 196 at 204-207 in respect of a kit sale of a windsurfer to be assembled by the buyer.
34 A case analogous to the example given by Vaughan Williams LJ, and cases of that kind, where in substance what is sold is the whole of a patented machine, although it is not actually put together, is Innes v Short (1898) 15 RPC 449. That case involved a patent for an “improved method of preventing corrosion and encrustation in steam boilers” by the introduction into the boilers of zinc in a powdered state, so that it would be held in suspension by the boiling water. The defendants sold ordinary zinc powder, sending to each customer a copy of a circular containing directions for the use of the powder in a manner which would infringe the patent. Bigham J held (at 451-452):
“I come to the conclusion, as a matter of fact, that Short has invited and requested many people to use the powder in such a way as to infringe the patent rights which I find the Plaintiff has, and I think for that reason that this case is distinguishable from [Townsend v Haworth]. … That case, in my opinion, is quite different from this one. It would be nonsense to say that a person is to be restrained from perfectly legitimate trade, namely, selling an article of commerce, because he happens to know when the buyer buys it from him that the buyer intends to put it to some improper purpose. The seller has nothing to do with the purpose to which the buyer is going to put it, and he cannot be said to infringe any patent because he simply knows that the buyer is going to use it – that is to say, he expects it. … But I think it is a different case where the vendor himself asks and invites the purchaser to use the article so as to infringe somebody’s patent, and I think, as a matter of fact, that Mr Short did invite the persons who bought this article of commerce, powdered zinc, from him, and hereby led them to infringe this patent at the time that he was selling the powdered zinc to them. That, I think, is a violation of the Plaintiff’s rights. There is no reason whatever why Mr Short should not sell powdered zinc, and he will not be in the wrong, though he may know or expect that the people who buy it from him are going to use it in such a way as will amount to an infringement of Mr Innes’ patent rights. But he must not ask the people to use it in that way, and he must not ask the people to use it in that way in order to induce them to buy his powdered zinc from him.”
This case was described as being “of somewhat doubtful authority” in Adhesive Dry Mounting Company Ld v Trapp & Co (1910) 27 RPC 341 at 353, a decision of Parker J. However, in CBS Songs Ltd v Amstrad Consumer Electronics Plc [1988] AC 1013 at 1056, it was cited by Lord Templeman, whose speech received the assent of the House. His Lordship there accepted it, in a passage to which we shall have occasion to refer again, as a case where “the vendor and the purchaser had a common design to carry out an infringing act”.
35 Innes v Short is discussed by Blanco White, in his Patents for Inventions, 4th ed (1974) in para 3-210. He suggests:
“[I]t would seem on general principles that it should not be very difficult, in cases of the sale of materials or apparatus accompanied by instructions to use what is sold in what the seller knows to be an infringing way, to persuade a court that the seller had caused the infringement to take place; and it would further seem, again on general principles, that the patentee should in such a case have a cause of action against the seller. The authorities on this point, however, are in an extremely unsatisfactory state. In one case, Innes v Short, the court did intervene to stop the sale of materials, with an instruction to infringe (and no warning that following the instructions would lead to infringement). Taken by itself, the decision seems unexceptionable as a simple application of general principles.”
Despite this statement of his own opinion, the learned author referred to the doubt expressed by Parker J as that of “a very eminent Judge”, and to the decision in Townsend v Haworth. He put forward the view that in Innes v Short the “real question was whether [the seller] was inducing numerous innocent purchasers of his materials to infringe”, and that it was rightly decided. As to Townsend v Haworth, Blanco White points out a conspiracy to infringe may well have been involved, since there the purchaser knew of the patent and intended to act on the assumption that it was invalid, but no such case was pleaded.
36 In Rotocrop International Limited v Genbourne Limited (1982) FSR 241, Graham J dealt with an allegation of infringement of a patent claims 6 and 14 of which were concerned, respectively, with a “method of producing compost from decomposing vegetable matter” and a “compost bin” of a particular description. His Lordship said (at 258-259) that the defendants sold –
“kits of parts for their customers to build into bins. They issue full instructions … with every kit to enable the customer to do so. By virtue of these actions, in my judgment, the defendants are joint tortfeasors with their customers who erect and use their bins in accordance with the defendants’ instructions. When a customer does so and makes compost, as he is told to do, he is in my judgment a joint tortfeasor with the defendants and they are similarly joint tortfeasors with him. Both have a common design … [I]t is quite clear from their advertisements that the defendants invited their customers to make bins from the kits they sold and to use them for making compost. It is a fair inference that at least some of them did so and the defendants knew quite well that they would do so as alleged in the particulars of infringement. … That being so I find the defendants to be joint tortfeasors with their customers … in infringing claim 6.”
His Lordship went on to hold also (at 260):
“[T]here is certainly infringement of claims 6 and 14 by the defendants who have procured their customers to infringe as alleged, knowing quite well that the customer would assemble the bin and use it in accordance with the defendants’ instructions and thereby would infringe at least those claims. In any event therefore, even if joint tortfeasance [on the basis of a common design] ought not to be inferred, there is infringement by the defendants by way of procuring customers to infringe and I so hold.”
37 This case, as well as Innes v Short, was referred to by Lord Templeman in CBS Songs Ltd (ubi supra) in terms suggesting approval of the proposition that “the vendor and the purchaser had a common design to carry out an infringing act”. Lord Templeman went on to refer (at 1056-1057) to the decision of the Court of Appeal in Belegging-en Exploitatiemaatschappij Lavender BV v Whitten Industrial Diamonds Limited [1979] FSR 59, where the defendants were alleged to have sold diamond grit for the sole purpose of making grinding tools, in which it was to be embedded in a resin bond as part of a patented material. Lord Templeman said:
“Buckley LJ held, at p. 66, that the defendants could not be infringers unless they
‘sold the grits in circumstances which in some way made them participants in their subsequent embodiment in resin bonded grinding wheels, or that they induced someone so to embody them …’”.
Later, Lord Templeman added (at 1058):
“My Lords, I accept that a defendant who procures a breach of copyright is liable jointly and severally with the infringer for the damages suffered by the plaintiff as a result of the infringement. The defendant is a joint infringer; he intends and procures and shares a common design that infringement shall take place. A defendant may procure an infringement by inducement, incitement or persuasion.”
In reading this passage, which refers to a breach of copyright, it is necessary to bear in mind that his Lordship treated the patent cases as involving the same principle.
38 In further remarks, Lord Templeman made a statement on which the cross-respondent Ramset strongly relies:
“Sales and advertisements to the public generally of a machine which may be used for lawful or unlawful purposes, including infringement of copyright, cannot be said to ‘procure’ all breaches of copyright thereafter by members of the public who use the machine. Generally speaking, inducement, incitement or persuasion to infringe must be by a defendant to an individual infringer and must identifiably procure a particular infringement in order to make the defendant liable as a joint infringer.”
Counsel appeared to suggest that this proposition was based on a legal necessity that there be a meeting of the minds of the parties to a common design in such a way as would involve some direct contact between them. But this is not true of the paradigm example of a common design in the law – the crime of conspiracy. In Commonwealth of Australia v Riley (1984) 5 FCR 8 at 27, the joint judgment of the Full Court (Smithers, Sheppard and Wilcox JJ) accepts the statement of principle of the English Court of Criminal Appeal in R v Griffiths [1966] 1 QB 589 at 597:
“[A]ll must join in the one agreement, each with the others, in order to constitute one conspiracy. They may join in at various times, each attaching himself to that agreement; any one of them may not know all the other parties, but only that there are other parties; any one of them may not know the full extent of the scheme to which he attaches himself. But what each must know is that there is coming into existence, or is in existence, a scheme which goes beyond the illegal act or acts which he agrees to do.”
In Smith and Hogan on Criminal Law, 4th ed (1978) at 237, the rule is put tersely:
“Provided that the result is that they have a common design – for example, to rob a particular bank – [several parties] may properly be indicted for conspiring together though they have never been in touch with one another until they meet in the dock.”
But, in any case, the law as declared by Lord Templeman is concerned with more than what is involved in a common design; it extends to procurement through inducement or persuasion. His Lordship’s remarks must be understood in the context of the case he was considering. The impugned transactions involved the sale of tape recorders which could be used for recording generally. Unless appropriate individual circumstances were proved, the mere advertising of their capabilities could not amount to a general invitation, inducement or persuasion to the carrying out of acts in breach of copyright. If, on the other hand, as in Innes v Short, purchasers or would-be purchasers of goods are not merely told their properties or capabilities, but are told how to use them to infringe a specific right, then, depending on the circumstances, there seems no reason why inducement should not be found. It is to be observed that Lord Templeman lays down no rule for all cases; he says “Generally speaking …”. In the context of authorization of breach of copyright, Jacobs J (with whom McTiernan ACJ agreed) said in The University of New South Wales v Moorhouse (1975) 133 CLR 1 at 21:
“Where a general permission or invitation may be implied it is clearly unnecessary that the authorizing party have knowledge that a particular act comprised in the copyright will be done.”
Gibbs J took a similar view at 13, and, having regard to R v Griffiths, the equivalent proposition must be true also of the law of combinations.
39 The principle was expounded by Dillon LJ (with whom Woolf and Leggatt LJJ relevantly agreed) in Mölnlycke AB v Procter & Gamble Ltd [1992] 1 WLR 1112 (a case the authority of which has been accepted in Australia: see Murex Diagnostics Australia Pty Ltd v Chiron Corporation (1995) 55 FCR 194 at 207) at 1118, where his Lordship said:
“For a very long time there has been a dichotomy applied between ‘procuring’ and ‘facilitating’ an infringement of a patent: see Townsend v Haworth; Dunlop Pneumatic Tyre Co Ltd v David Moseley & Sons Ltd and Belegging-en Exploitatiemaatschappij Lavender BV v Whitten Industrial Diamonds Limited [at] 65, where Buckley LJ said: ‘Facilitating the doing of an act is obviously different from procuring the doing of the act.’ A person who merely facilitated, but did not procure, the infringement was not a joint tortfeasor with the infringer and so was not liable if, for instance, he sold articles which could be used for infringing or non-infringing purposes even though he knew that they would probably be used and were intended to be used for the infringing purposes.
More recently, however, a new concept has been developed. Parties will be regarded as joint tortfeasors if on the facts they have a common design to market in the United Kingdom articles which in truth infringe a United Kingdom patent.”
40 The Belegging-en case had been the subject of some elaboration in a unanimous decision of the Court of Appeal in Dow Chemical AG v Spence Bryson & Co Ltd (1982) FSR 397. The question related to an amendment of the plaintiff’s pleading in an infringement action, which had been refused by reference to the principle of Townsend v Haworth and Dunlop Pneumatic Tyre Co Limited v David Moseley & Sons Limited. Lawton LJ (with whom Brightman and Fox LJJ agreed) referred to the judgment of Buckley LJ in the Belegging-en case, and continued (at 404):
“Had the pleading merely alleged that the second defendants knew that the first defendants were going to use their latex for the purposes of infringing the second plaintiffs’ patent, there would have been no difficulty about this case and Falconer J’s decision, in my opinion, would have been right. But more was alleged, because the pleading avers that not only did they know but they procured the first defendants to infringe the second plaintiffs’ patent. It is that allegation of procuring which is the material allegation for the purposes of founding a case against the second defendants. That becomes clear when one reads the rest of Buckley LJ’s judgment in [the Belegging-en case], because he pointed out that it is persuading someone to do something which is a very important factor in the tort of procuring someone else to do an unlawful act. It may well be that at the trial the plaintiffs will not succeed in showing that there was any procuring in the sense of persuading, but that is a matter not of allegation but of evidence.”
41 These authorities show that liability for infringement may be established, in some circumstances, against a defendant who has not supplied a whole combination (in the case of a combination patent) or performed the relevant operation (in the case of a method patent). The necessary circumstances have been variously described: the defendant may “have made himself a party to the act of infringement”; or participated in it; or procured it; or persuaded another to infringe; or joined in a common design to do acts which in truth infringe. All these go beyond mere facilitation. They involve the taking of some step designed to produce the infringement, although further action by another or others is also required. Where a vendor sets out to make a profit by the supply of that which is patented, but omitting some link the customer can easily furnish, particularly if the customer is actually told how to furnish it and how to use the product in accordance with the patent, the court may find the vendor has “made himself a party to the [ultimate] act of infringement”. He has indeed procured it. So to hold is not in any way to trespass against the established line of authority which, as Dixon J made clear in Walker v Alemite, is based upon the need to confine a monopoly to the precise area in which it operates. That protects the mere vendor of an old product, though selling with knowledge of the purchaser’s intention to infringe a combination patent; but it affords no excuse to the person who sets out to induce customers to do what falls fairly within the area of the monopoly.
42 In the present matter, the evidence establishes, Ramset determined to enter into competition with Advanced, which was supplying ring clutches and face-lift anchors conforming to the patent for use in the manner described in the patent. Ramset, which, the trial judge found, was aware of the patent by August 1987, did not produce a different ring clutch or anchor, or propose a different manner of use. It is a large corporation, employing technical staff to advise on the use of its products. The relevant products were promoted through its sales staff and advisers to building contractors and those who direct their activities, such as engineers. The nature of the product supplied by Ramset, the nature of the work in connection with which it was to be used, and the circumstances of the sales, all pointed to the probability that it would be so used as to infringe the patent. At about the time Ramset commenced marketing these products, it produced six thousand copies of a brochure, for distribution to contractors and engineers, copies also being held available over a period of several years to be handed out on request or utilized in marketing efforts. The trial judge found:
“The Ramset brochure demonstrated use of clutches with extended lever arms in a way which infringed the patent.”
His Honour also found, with reference to the cardinal feature of the invention, “that the use of rope releases was promoted by Mr Finlay [Ramset’s Manager of Research and Development] in seminars given by him to potential users as part of Ramset’s marketing programme”.
43 The brochure, printed approximately in 1988 (the evidence is a little vague), is an attractively produced booklet a little over twenty pages in length, with numerous colour illustrations. The cover page features a picture of a face-lift operation in progress, with the caption: “Ramset Frimeda Rapid-Lift System”. Although counsel for Ramset argued that the system in accordance with the patent was already well known in Australia before Ramset began to sell its products, so that the brochure’s advocacy of that system would have had no effect, the brochure actually begins by suggesting quite the contrary. In fact, of course, it is likely some contractors were entirely familiar with the products of Advanced and Burke, and with their system, while others employed completely different systems. One of the consequences of a large company, such as Ramset, entering the market may well have been a greater expansion than would otherwise have occurred of the number of contractors learning about and using the system it espoused. That is relevant to damages, as a factor tending to show that not all the sales effected by Ramset would, in any event, have been effected by Advanced; but it plainly does not mean that the brochure failed to influence the customers attracted, including those who might otherwise have continued to be or might have become customers of Advanced. The brochure begins:
“At last the complete lifting system for the handling of precast concrete units is available in Australia. Ramset, a leading supplier of fastening systems to the Australian construction industry and Frimeda, a leading supplier of concrete lifting anchors and clutches, have combined to offer you a range of anchors specifically designed to meet the gruelling demands required by lifting system users. The Ramset Frimeda ‘rapid lift system’ provides the same level of product quality, expertise and service to the Australian tilt panel and pre-cast concrete industry that other segments of the construction industry have come to expect from Ramset.
For some time now contractors have required a range of lifting systems that are versatile, safe, speedy and of the highest standard. The Ramset Frimeda system is all that and more
….
(b) Quick
Time is money, and the Ramset Frimeda lifting system engagement and disengagement is achieved in a matter of seconds.
(c) Safe
When using the Ramset Frimeda system, once the clutch has been properly engaged, it is impossible for accidental release to occur while the panel is being lifted.
…
(f) Tested
They have been tested by a NATA test laboratory and are certified as conforming to the standards specified in the Department of Labour ‘Code of Practice’ for tilt up construction. [A significant aspect of this point is that the code so designated, in Victoria, where Ramset is based, requires the remote release of the clutch in face-lift tilt-up operations. It provides: “lifting inserts should allow automatic release from ground level.” It also provides that the “complete lifting gear, insert, clutch etc should be of the same type and from the same supplier.”]
(g) Expertise
Our Ramset Frimeda technical consultants are trained specifically to meet the needs of the tilt-up construction industry and can assist you with all your lifting system requirements.
(h) Service
The Ramset success story is based on service and the service provided to lifting system users is no exception. Our trained representatives are happy to satisfy any on-site requirements you may have.”
44 On the next page, the brochure contains brief illustrated instructions for the use of the ring clutch in a face-lift operation. One of these illustrations clearly shows a concrete panel to which lifting cables have been attached by ring clutches of the relevant type, with elongated lever arms pointing in what, the reader could infer, will be the upwards direction, and having release ropes attached to the ends of them. The final instruction, illustrated by a picture of a large panel in the erect position, the lift having obviously been completed, reads:
“To release, pull the release rope which will slide the clutch lever out of the anchor and pull the clutch ring free.”
45 Under the heading “Face-Lift Anchor”, there is a page of details of this item concluding with the words:
“Please consult our Engineering Services Department for advice on your particular application.”
46 Mr Finlay personally drafted a product bulletin in about mid-1990 (two years after he had joined Ramset), to be handed out to persons who might be interested in using the Ramset ring clutch. He thought it important to convey the fact that the clutch could be released in a face-lift tilt-up operation by means of a ground release rope. The bulletin contained, in point form, a series of instructions for the use of the ring clutch in such an operation, culminating in the following, which, it will be seen, is identical with a direction in the brochure:
“To release, pull the release rope which will slide the clutch lever out of the anchor and pull the clutch ring free.”
This, Mr Finlay agreed, only made sense if one attached a release rope to the end of the lever arm, and was engaged in a face-lift tilt-up operation. Because, of course, with an edge-lift operation, simply pulling on a rope could never release the clutch – that would require some means, not of pulling the lever down, but of pushing it up. Equally, it follows that the method envisaged by Mr Finlay involved the lever arm pointing to the top of the panel, so that it could be pulled downwards for release, as specified in the patent.
47 Mr Lasker, a senior technical representative in the New South Wales branch of Ramset, commenced working for the company on 1 July 1989. He distributed the brochure for about a year. Prior to June 1993, he said, the Ramset Sydney office always supplied ring clutches with extended lever arms. He made sure they had the extension arm on them. During a period he described as “[i]n the early days”, he sent out the ring clutches with ropes on them, and if he did not, he expected the contractors would supply ropes. Mr Henry, the Technical Services Manager of the New South Wales branch of Ramset from a date in 1991, accepted that Ramset had supplied clutches with an extended handle and a chain or rope. When he arrived there was a stock of clutches with extensions to their lever arms bolted on. The “invariable practice of operators in the market place in New South Wales to [his] observation in face-lifting operations used rope release”. He made it plain that his intention, in the period up to June 1993, was to fulfil the requirements of that system in the supply of ring clutches and anchors by Ramset. Of course, the supply, in “the early days”, of the entire combination including the release cable (apart from the hoist by which the load was to be lifted) would have developed, amongst the contractors who became Ramset’s customers, a practice of using the equipment in the intended way, that is, in an infringing way. The result was that this method of use continued when ropes were not attached at delivery of the equipment, but had to be supplied by the contractors, as they were intended to supply them.
48 Mr Cavalliotis, State Manager for Ramset in Queensland from 1990, described receiving from the Sydney branch ring clutches with added extension arms in April 1993. The arms also had chains to which he understood ropes were to be attached in use.
49 Although Ramset’s counsel argued, as has been said, that its brochure would have had no influence on the conduct of contractors, in using the clutches with extended lever arms and release ropes in the manner described in the patent, a number of its witnesses plainly spoke to the contrary. Mr Birmingham, State Manager for South Australia, gave evidence of the continuous availability of the brochure at Adelaide, of its distribution from time to time to customers, and that “in so far as that brochure contained instructions or suggestions how to use the products … [he] just operated upon the assumption that people who purchased the products would act in accordance with those suggestions or instructions”. Mr Davies, Branch Manager at Canberra, supplied the brochure in the early stages to customers and potential customers. Later, he had updated sheets, probably including Mr Finlay’s product bulletin. He assumed “that people would act in accordance with any instructions or suggestions as to the use of Ramset products contained in that brochure”. On the other side, Mr Nightingale, an engineering manager employed by Brambles Cranes who has been involved in over 300 face-lift tilt-up operations, called by Advanced, gave evidence of receiving and reading the brochure in 1988 or 1989, a period when approximately 60% of the panel lift operations in which he was involved were carried out using Burke clutches (after the introduction of the Ramset clutch he said that this percentage fell by at least 50%). Mr Nightingale, although as an engineer and from experience he knew the system, read the brochure to see “how to put the whole thing together” because, as he pointed out, the operation is a dangerous one.
50 The trial judge found that, “at least prior to June 1993, in New South Wales, [it] was frequently, perhaps normally, the case” that “Ramset supplied …. clutches to which extended lever arms had been added”. After June 1993, he held, Ramset supplied only clutches with a short arm and chain, to which further reference will be made, although it is probable some contractors or builders would have added an extension to the arms of these clutches. His Honour accepted the evidence called by Advanced of the use of clutches supplied by Ramset in face-lift tilt-up operations in which that use infringed the patent. His Honour also accepted evidence that the operations manager of Ramset’s Building Products Division for Australia had, in 1988, instructed the New South Wales Sales Manager “to fit extension handles to five tonne clutches to be hired to contractors for use in face-lift tilt-up operations”. The purpose was “to facilitate the removal of the clutches from the anchors cast into the panels once the panels were in the vertical plane”. His Honour accepted that Mr Nightingale “was … introduced to the Ramset face-lift tilt-up method of operation through perusing a Ramset brochure”. He also accepted evidence concerning the employment of a Mr Wilson, by architects and project managers, as a consultant for a project involving the use of clutches in tilt-up construction. For that purpose, his Honour found, he had been provided by the architects with promotional material from Ramset, including the brochure “which contained photographs which made it clear how the clutches could be used in the way which was described in the patent.” Mr Wilson gave evidence, and his Honour appears to have accepted his evidence, that when Ramset clutches were delivered to the site, the site foreman consulted him on 3 June 1990 and the clutches were rejected on safety grounds because they lacked the extended lever arms of the Burke clutches. They were returned on the morning of 4 June 1990, when Mr Wilson observed they had extended lever arms with chains and rope attached. His Honour referred, too, to evidence that a Ramset representative had said, at a trade show in Geelong, that clutches would be supplied with extended lever arms and ropes attached. As to Queensland, his Honour recorded Ramset’s own evidence as being:
“It was standard practice for rope release to be used in Queensland. Clutches supplied from Sydney for use in Queensland often had extended lever arms and ropes attached. The Ramset brochure which contained illustrations of how the clutch would be used with the extended lever arm and rope in a face-lift tilt-up operation was available through representatives in Queensland.”
On the other hand, in South Australia Ramset’s witnesses asserted its products were little used, and the clutches supplied by it there were without release cable chains or ropes attached.
51 In general terms, the trial judge concluded:
“It is clear that clutches supplied by Ramset have been used in New South Wales, Victoria, Australian Capital Territory, Queensland and South Australia by persons who have used those clutches in a way which breaches the patent. Advanced has established that clutches were supplied by Ramset with extended lever arms and ropes, particularly in and from New South Wales. Where clutches were not supplied with extended lever arms and ropes attached, those who used the clutches often affixed their own extended arm and attached a rope.”
52 The trial Judge referred to Walker v Alemite and some of the other cases which have been cited, and to the acceptance by Advanced and Burke of the proposition that they had to show “a common design on the part of Ramset with another to do acts which amount to infringement, [or] a procuring or inducing the other to infringe”. (Counsel for the appellant agreed that the word “or” should be supplied where we have inserted it.) His Honour said the evidence fell “far short of this. It shows, at the most, that on an unknown number of occasions, more numerous in New South Wales than elsewhere, Ramset supplied clutches with extended lever arms. Where clutches without extended lever arms were sold, they were capable of having attached to them extended lever arms. The persons to whom clutches were sold might, but not necessarily would, use them with ropes attached. Although this seems to have been the general manner of use, clearly a significant number of users preferred manual detachment of clutches from anchor inserts.” His Honour pointed out that Ramset did not retain control over the use of components in a particular manner, once they were sold. That was a matter for the building contractor or crane operator. On this aspect of the case, he concluded:
“The Ramset brochure demonstrated use of clutches with extended lever arms in a way which infringed the patent. That brochure was available, at least for inspection, to intended users of Ramset products. Although the brochure demonstrates the method of use in a way which would infringe the patent, in my view that does not involve Ramset in the necessary common design to constitute an infringement.”
That way of putting the matter leaves some aspects of it out of account. It overlooks the evidence, evidence which his Honour accepted in the general finding set out earlier, and the admissions by some of Ramset’s witnesses, that clutches were supplied, on a number of occasions, not only with extended lever arms, but also with release ropes attached. In those cases, Ramset was not just supplying a part of a combination the subject of a patent, but virtually the whole of it. All that remained to be done by the contractor was to provide a crane so as to make use of the combination, as the evidence showed happened on numerous occasions, in the manner directed by Ramset’s brochure, which was an infringing use.
53 The other issue which, with respect, is overlooked in the final conclusion of the trial judge (when he referred to “the necessary common design”) is that Advanced and Burke were not relying only on common design, but in the alternative on Ramset’s conduct as amounting to a procuring or inducing of infringement.
54 On the evidence and the findings of the trial judge, the conclusion is inescapable that when Ramset supplied the equipment complete with release ropes and instructions for use, it procured the infringements which followed. The position was not materially different when it left to the contractor the mere attachment of a rope (or when it left to the contractor, as well, the attachment of an extension to the lever arm) in accordance with the instructions for use it had given (through the brochure, through Mr Finlay’s product bulletin and seminars, and through its technical advisers), and in accordance with the operating practice it had established. Accordingly, a finding of infringement should have been made.
55 The trial judge found that, from June 1993, Ramset supplied a clutch with a smaller lever arm, to which a length of chain was attached. The chain, of course, made a convenient connection for a release cable or rope. On this model, the lever arm was just short enough to pass through the centre of the bail of the shackle, so that if it were held in that central position it would not be blocked by the shackle from moving downwards to release the ring clutch. (The bail of the shackle is the steel hoop by which the main part of it is attached to the ring clutch.) However, the fit between the lever arm and the body of the ring clutch was a loose one, and if the chain passed to the side of the shackle (the way it was used in practice) it would pull the arm over into a blocked position, holding it there by virtue of the weight of the chain. His Honour noted:
“It was said that the smaller lever arm and chain were deliberately designed to ensure that the chain would pass back through the shackle. Far from simplifying the operation of the clutch, demonstrations made it clear that so to position the chain indeed complicated the use of the clutch and, so far as it is relevant, I do not accept the evidence that this was a design feature of the Ramset clutch.”
It is, in fact, quite obvious that passing the chain through the bail of the shackle would obstruct the smooth release of the ring clutch at the end of the operation. For it will be recalled that at that stage it is necessary to lower the lifting tackle a little in order to free the ring clutch of frictional forces that would otherwise prevent it opening. If this resulted in the shackle dropping away only a little too far, it would obstruct the release chain, whereas, with the ordinary use of the extended lever arm, the shackle could first be allowed to fall out of the way completely.
56 The appellant’s argument relies on the words of the specification, describing the preferred embodiment, in which it is said:
“This safety feature of the release mechanism is made possible by making the lever arm long enough so that its unlocking movement can be blocked by [the] shackle”.
But this is the
preferred embodiment. Claim 1 refers, it
is true, to “an elongated lever arm”.
However, it goes on to state the safety feature in broader
terms toas achieved by
“hoisting cable-controlled means to selectively block or allow rotation of the
lever arm”; while claim 2 refers to “a position [of the shackle] blocking
rotation of the lever arm” and to “the shackle which is disposed in blocking
relation to the lever arm when the shackle is supported in an upwardly directed
position by the hoisting cable and which is disposed in non-blocking relation
to the lever arm when it moves to a downwardly directed position in response to
the slacking off of said hoisting cable”.
It can be said that the shackle is quite literally disposed in blocking
relation to the lever arm of the later Ramset ring clutch when the arm is
pulled to the side by the weight of the chain as previously described. That effect is the result of the lever arm
being sufficiently elongated to come into contact with the side of the bail of
the shackle. A patent, like other
documents, must be read in the light of its own context. In this patent, the word “elongated” is to be
understood by comparison with the earlier patent referred to in the
specification, in which the drawings illustrate a very short “nose”,
much shorter than Ramset’s reduced arm. It is also to be understood by reference to
the purpose which, in accordance with the complete specification, the lever arm
is to serve: if it is long enough to
permit the “blocking relation” to arise and to make practically possible remote
release by means of a rope or cable, it is “elongated”.
57 The appellant, of course, relies on the well known proposition that a combination patent will not be infringed unless all the integers of the patent are taken by the alleged infringement: Meyers Taylor Pty Limited v Vicarr Industries Limited at 235; Olin Corporation v Super Cartridge Co Pty Ltd (1977) 180 CLR 236 at 246; Allsop Inc v Bintang Ltd (1989) 15 IPR 686 at 698. Counsel claim an elongated lever arm, long enough to be blocked by the shackle, is an essential integer of the patent. However, it is necessary to bear in mind the words of Viscount Dunedin in British Thomson-Houston Co Ld v Metropolitan-Vickers Electrical Co Ld (1928) 45 RPC 1 at 25:
“[I]t is, I think, clear that you cannot avoid infringement by taking a patented machine and then making it work a little worse than it naturally would and then remedying that worseness by another device, and that is just what the Defendants have done.”
Aickin J took up the same point in the course of his well known judgment in Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd at 286, when he said:
“[T]he question would remain whether the respondent’s product nonetheless takes the ‘substance’ of the invention by substituting that which has all the qualities of a backing tape unified by a hydrophobic polymer sizing, because it has been made hydrophobic by the respondent prior to the application of the adhesive. Thus the respondent’s tape may be not unfairly described as the result of a choice of a sizing unsuitable for the purpose, and subjecting it to further process to make it suitable. Such an exercise however does not necessarily result in the absence of infringement.”
See also Elconnex Pty Limited v Gerard Industries Pty
Limited (1991) 32 FCR 491 at 515.
What Ramset has done, without eliminating an elongated lever arm,
has made the ring clutch a little worse, in so far as the reduction in the
length of the shorter lever arm has lost
a degree of mechanical advantage in the rope release operation (there was
evidence that contractors inserted extensions to overcome this), and in so far
as safety was affected by the possibility of the arm passing through the bail
of the shackle. However, Ramset could be
confident that previous experience would enable contractors to remedy the
former defect by the insertion of the extensions, and Ramset remedied the
latter by the attachment of the chain, which would be heavy enough to drag the
lever arm into a blocking relationship with the shackle, for practical
purposes, even if it were not extended by the user.
58 Furthermore, as Aickin J made clear in the passage just cited, the “substance” of the invention may be taken, in respect of a particular integer, by the substitution of something that has the same qualities. Aickin J went on to say:
“[I]t remains the law that a defendant may not take the substance of an invention unless the wording of the claims makes it clear that the relevant area has been deliberately left outside the claim.”
Far from deliberately leaving outside the claims any device, other than one depending solely on the length of the lever bare of all attachments, the drafting of the patent uses the wider language which has been quoted. See also Sunbeam Corporation v Morphy-Richards (Aust.) Pty Ltd (1961) 180 CLR 98 at 109-110; Leonardis v Sartas No 1 Pty Ltd (1996) 67 FCR 126 at 148; Olin Corporation v Super Cartridge Co Pty Ltd (ubi supra). Having regard to all these considerations, the modifications to the Ramset shackle and ring clutch did not avoid infringement.
The Issue of Damages
59 Since the trial judge did not find Ramset liable for infringement of the patent on any basis, no question arose in his view of assessing damages for infringement. However, his Honour did find Ramset had contravened s 52 of the Trade Practices Act 1974 by its promotion and sale of equipment, the intended use of which would be likely to involve infringement, without providing to its customers any kind of warning. Having so found, he granted injunctive relief to restrain that manner of doing business, but denied Advanced and Burke any award of damages. The primary ground on which this denial rested, was a finding that no loss had been shown to have been caused by Ramset’s misleading and deceptive conduct. The trial judge said:
“The evidence does not enable me to reach any such conclusion on the balance of probabilities. There is no direct evidence that any particular purchaser, had that purchaser been told of the potentiality of breach of Advanced’s patent, would have purchased from Advanced anchors or other items for use in a face-lift operation. Nor is this a matter of necessary inference.
A prospective purchaser advised of the potentiality of breach of Advanced’s patent would have had a number of options. The purchaser might have then approached Advanced and purchased some or all of the supplies required from Advanced. The purchaser might, on the other hand, have decided to take his or her chance and continued purchasing from Ramset. After all, the chances of Advanced taking proceedings against those who were in fact potential customers of Advanced was practically not high. The fact that Advanced took no such action against any person for infringement perhaps demonstrates the magnitude of the risk. Further, a purchaser may have received advice that the patent was not valid. That issue was, after all, quite arguable.
Alternatively, some purchasers might well have accepted that they should use the clutches without remote release or without an extended lever arm. Finally, some customers might well have decided to use a quite different system – there were other systems on the market.
All one can say on the evidence is that it is possible that an unquantifiable number of purchasers would have switched to purchase some, at least, of their supplies from Ramset. However, I am wholly unable on the evidence before me to make any finding as to how many would, on the balance of probability, have done so, or indeed if any would more probably than not have done so.”
His Honour thought these problems were insuperable, and that the calculation of the damages, if any were sustained, was “just impossible”. As to this, he reiterated the difficulty of knowing what customers would have done had they not been deceived by Ramset’s actions. Even if they would have purchased some items from Advanced, there was the puzzle of determining the extent to which they would have done so. So far as concerned those customers who had received a circular from Advanced itself, claiming that it held patent rights, they would not have been deceived.
60 The trial judge then referred to calculations which, he said, depended on the unacceptable thesis “that every purchaser of anchors would have purchased from Advanced, if full disclosure had been made, all of its requirements and thus a calculable number of [items of the various kinds required for face-lift tilt-up operations]”. A witness relied on to provide evidence of the quantities of such items involved had given evidence which was held to be in conflict with available records. His evidence was accordingly rejected.
61 His Honour referred to the fact that counsel for Advanced ultimately proffered submissions to support an alternative method of calculating damages from the company’s records. As to this, he said:
“These figures were not available at the time of the trial, they were not the subject of any cross-examination and counsel for Ramset properly protested an attempt at a late stage to make a totally new case on damages.
In any event, there still remained the initial difficulties of causation, to which reference has already been made, which the figures gloss over altogether.”
62 Counsel for the cross-appellant urged, before us, that his Honour had mischaracterized the recalculated figures. They could not fairly be described as constituting “a totally new case on damages”, since they merely presented a different way of arriving at the same result, an estimate of the sales lost. But the true ground of the cross-appellant’s failure at trial on the issue of damages was stated in the second of the two paragraphs we have just quoted from the judgment. If the damages could not be attributed, as a matter of causation, to the contravention of the Trade Practices Act, arguments about the manner of their calculation did not matter. Having commented that Ramset’s counsel had “properly protested”, his Honour did not rule, because he did not need to, on the question whether there should have been leave to re-open, and on what terms. He did not need to, because, on the view he took of the issue of causation, any such leave would have been futile.
63 The trial judge added a comment on a claim for damages for loss of goodwill, to which we should refer. He said that “to allow both loss of profit on sales and loss of goodwill seems to me to involve a double counting”. We respectfully disagree. Each individual sale may generate its own profit or loss, but, in addition, the effecting of a number of sales may have consequences for goodwill. Where compensation is awarded only in respect of profits lost on the aggregate of the individual sales, an applicant may be left uncompensated for adverse consequences relating to goodwill.
64 In the last sentence of this portion of his judgment, the trial judge reiterated that the difficulty in the claim was “that causation has not been proved”. The same difficulty cannot be seen in relation to damages for infringement of the patent. The fundamental problem of the effect of the misleading of customers by not informing them of the existence of the patent does not arise. Damages sustained by the infringement itself may be approached directly. At the least, they may be measured by the attribution of a reasonable royalty: Meters Ltd v Metropolitan Gas Meters (1911) 28 RPC 157 at 164-165, per Fletcher Moulton LJ; Terrell on The Law of Patents 14th ed (1994) section 12.228. But Advanced is not limited to this method of assessing damages. Advanced is “entitled, as damages, to the loss suffered by it as a result of the infringement”: Martin Engineering Co v Nicaro Holdings Pty Ltd (1991) AIPC 37,578 at 37,583. It has been said in a Scottish case that “the measure of damage is prima facie the amount of profit which the Pursuers could have made if they had effected these sales themselves”: Watson, Laidlaw & Co Ltd v Potts, Cassels & Williamson (1913) 30 RPC 285 at 290, per Lord Dundas. As has been pointed out, there are countervailing considerations to such a prima facie inference in the present matter. The measurement of the loss suffered may not be easy. But in Ungar v Sugg (1891) 8 RPC 385 at 388, cited by Terrell at s 12.229, Wright J said:
“No one can doubt that in this case there was substantial damage, and the difficulty and impossibility of stating the precise ground for assessing it at any particular figure does not seem to be a sufficient reason for giving only a nominal sum.”
When the matter went to the Court of Appeal, Lord Esher MR said ((1892) 9 RPC 114 at 117):
“They were problematical damages, and had to be what is called guessed at: that is, not a mere guess, as if you were tossing up for the thing, but it must come to a mere question of what, in the mind of the person who has to estimate them, was a fair sum.”
65 Because the trial judge did not find infringement, and did not consider the hurdle of causation had been overcome in respect of the misleading conduct he held to have been established against Ramset, there has been no attempt in this matter to make any assessment of damages on any basis. Unfortunate though it always is, when it is necessary to order a new trial, the only satisfactory remedy appears to be to order a new trial limited to the question of damages.
The Issue of Contravention of s 52 of the Trade Practices Act
66 Having regard to the conclusions reached earlier in these reasons, it is unnecessary to say much about this issue. Even if damages should have been awarded under s 82 of the Trade Practices Act 1974, in respect of the contravention of s 52, it would have involved a doubling up to have awarded such damages in addition to the larger damages for infringement of the patent. But his Honour did make a finding that s 52 had been contravened, and the appellant challenges that finding. His Honour said:
“I am of the view that the failure of Ramset to warn its customers that use of clutches or components in a particular way might constitute an infringement of Advanced’s patent, does constitute conduct in trade or commerce which is misleading or deceptive or likely to mislead or deceive users.”
We agree with the reasons his Honour gave for this conclusion, and accordingly shall confine ourselves to some brief remarks.
67 Section 52 requires that a “corporation shall not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive”. Attention has been drawn, in a number of cases, to the fact that the section is not limited to “representations”, a word that does not appear in it, although contravening conduct is generally apt to involve representations: Henjo Investments Pty Ltd v Collins Marrickville Pty Ltd (1988) 79 ALR 83 at 93; Pacific Dunlop Ltd v Hogan (1989) 23 FCR 553 at 585-586; Demagogue Pty Ltd v Ramensky (1992) 39 FCR 31 at 32, 40-41. Whether or not Ramset’s conduct should be analysed as conveying an implicit misrepresentation, it acted misleadingly when it promoted and sold face-lift tilt-up equipment in the way that it did, without informing its customers of the liability it was inducing them to incur. This was conduct calculated to cause a mistaken impression about a significant consequence of the transaction proposed to those customers. In our opinion, in such a case, it is unnecessary, and may be artificial, to speak of a representation. The orthodox theory would find one, but it is more realistic to see the conduct as misleading, without resorting to a sophisticated analysis in which no one would have engaged at the time.
68 It is plain, on the evidence and the findings of the trial judge, that Ramset’s conduct was engaged in for the purpose of persuading customers to purchase the various forms of equipment it supplied for face-lift tilt-up operations. Many persons did so. For example, Mr Nightingale gave evidence, to which reference has been made, of a big change in the source of supply upon which Brambles Cranes drew to obtain ring clutches. In Como Investments Pty Ltd v Yenald Nominees Pty Ltd (1997) ATPR 43,617 at 43,619-43,620, a full court jointly stated:
“Where a representation is relevant to the decision in question, and in its nature persuasive to induce the making of that decision, it accords with legal notions of causation to hold that it has a causative effect. And where a respondent, who may be taken to know his own business, has thought it was in his interests to misrepresent the situation in a particular respect, the Court may infer that the misrepresentation was persuasive. These inferences arise from the making of the representation followed by the respondent doing the thing it was calculated to induce him to do.”
Those observations may be applied equally to the effect of the misleading conduct of Ramset upon its customers. See also Gould v Vaggelas (1985) 157 CLR 215 at 236; Commission for the New Towns v Cooper (Great Britain) Ltd [1995] Ch 259 at 282; Sibley v Grosvenor (1916) 21 CLR 469 at 473, 478, 481; Krakowski v Eurolynx Properties Limited (1995) 183 CLR 563 at 578; Hanave Pty Ltd v LFOT Pty Ltd (1999) FCA 357 at paras 37, 45. In the present case, the inference should be drawn that Ramset’s misleading conduct did cause damage to Advanced, but it is unnecessary to pursue this point further.
Orders
69 At this stage, the Court should direct the respondents to bring in, on a date to be fixed, short minutes of orders appropriate to be made in the light of these reasons.
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I certify that the preceding sixty-nine (69) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Court. |
Associate:
Dated: 5 July 1999
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Counsel for the Appellant: |
Mr R C Macaw SC with Mr D M Yates SC |
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Solicitors for the Appellant: |
Sprusons |
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Counsel for the Respondents: |
Mr A J L Bannon SC with Dr H Sorensen |
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Solicitors for the Respondents: |
Astridge & Murray |
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Dates of Hearing: |
16, 17, 18 November 1998 |
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Date of Judgment: |
5 July 1999 |
