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High Court of New Zealand Decisions |
IN THE HIGH COURT OF NEW ZEALAND
CHRISTCHURCH REGISTRY
CIV 2006-409-000977
UNDER the Patents Act 1953 and the Copyright Act
1994
IN THE MATTER OF Alleged Infringement of New Zealand
Letters Patent No. 331591
BETWEEN HAMMAR MASKIN AB
First Plaintiff
AND
BENGT-OLOF HAMMAR
Second Plaintiff
AND
HAMMAR NEW ZEALAND LIMITED
Third Plaintiff
AND STEELBRO
NEW ZEALAND LIMITED
Defendant
Hearing: 28-30 April, 1 May and 6-9 May 2008
Counsel:
B W F Brown QC and A J Evans for Plaintiffs
J G Miles QC, G W Hall and S Pidgeon for Defendant
Judgment: 8 October
2008
JUDGMENT OF PANCKHURST J
Table of Contents
Para No
Hammar Maskin AB : Steelbro New Zealand Limited [1]
Sidelifters [7]
Models of sidelifters
[14]
Hammar [15]
Steelbro
[23]
The required approach to patent construction [26]
The patent in
suit [32]
HAMMAR MASKIN AB AND ORS V STEELBRO NEW ZEALAND LIMITED HC CHCH CIV
2006-409-
000977 8 October 2008
Para No
Construction of
the disputed elements
Two support parts which are "relatively offset in the
transverse direction"
[39]
A support sleeve "supported by a pivot pin connected
to the vehicle chassis"
[45]
"An extension part which is moveably arranged in a
bearing in the first support
part" [51]
"The support sleeve has a longitudinal extent which, in the
parked position
of the support, essentially corresponds to
the width of the vehicle" [58]
"The
ends of the support sleeve are bevelled to provide
end faces that extend substantially vertically when the support
is
in the parked position" [60]
Infringement of the patent
[62]
Revocation of the patent [65]
Obviousness and lack of inventive step
The relevant legal principles [67]
Particulars of objections to the validity of the
patent [72]
The arguments directed to the particulars [79]
Mr Eaton's evidence
[84]
Mr Stevens' and Dr Stark's evidence [89]
Evaluation of the evidence and arguments [97]
Inutility
[112]
Insufficiency of description / Failure to disclose best method [125]
The particulars re insufficiency
/ best method [126]
The relevant principles [128]
The relevant
evidence [133]
Evaluation of insufficiency / best method
[140]
Ambiguity/lack of fair basis [147]
Copyright [157]
A preliminary pleading point
[159]
The issues [162]
Objective
similarity of a substantial part? [166]
The expert evidence
[173]
Evaluation of the expert evidence [182]
Proof of copying
[191]
The relevant chronology [193]
The evidence
of David Jeffery [201]
The rival arguments
[203]
Evaluation [208]
Hammar Maskin AB : Steelbro New Zealand Limited
[1] Hammar Maskin AB is a Swedish company. It operates from a main plant in
Olsfors, Sweden. The second plaintiff Bengt-Olof
Hammar established the company
in July 1974. It designs, builds and sells sidelifters. The company is now a fully
owned subsidiary
of a parent company owned equally by Mr Hammar and his wife,
Berit Hammar. Hammar has subsidiaries in Australia, Malaysia, the United
States of
America and in New Zealand (the third plaintiff, Hammar New Zealand Limited), at
Auckland.
[2] Steelbro New Zealand
Limited is a New Zealand based competitor of the
plaintiff company. It too specialised in the design, building and sale of sidelifters.
Steelbro was founded in 1878 at Christchurch as a general engineering company.
However, since the early 1980s the company has specialised.
It likewise has an
international presence, exporting products to numerous countries.
[3] An integral part of modern sideloaders
are stabiliser legs. These are
extendable to the side of trucks, or trailers, fitted with hydraulic cranes for unloading
and loading shipping containers. As the name implies, the stabiliser leg, when
positioned to the side of a vehicle, provides stability
in the course of a lift.
[4] In 1997 Mr Hammar conceived what he believed to be a breakthrough
modification to stabiliser leg
technology. Subsequently, he filed a patent application
in Sweden in September of that year. A corresponding application was filed
in New
Zealand and a patent granted in July 2000.
[5] This proceeding involves claims against Steelbro for alleged infringement
of
the New Zealand patent and for alleged infringement of Hammar's copyright in four
support leg drawings produced by its employees
in 1998-99. The defendant denies
the infringement allegations. Moreover, it asserts an affirmative defence to the
patent claim by
seeking revocation of the patent on a number of grounds. These
include that the patent should not have been granted on account of
obviousness and
lack of inventive step, inutility, insufficient disclosure of best method and that the
patent description is ambiguous.
[6] After reference to some contextual aspects I shall first consider the
construction of the patent, whether infringement of
the patent occurred, then the
various grounds of invalidity alleged by Steelbro and, finally, whether copyright in
the design drawings
was infringed.
Sidelifters
[7] Vehicles, both trucks and trailers, having a sidelifting capacity have existed
for many years.
Such vehicles through the use of mounted cranes may lift loads onto
and off their carrying platform. To provide stability the vehicles
have two or more
extending stabiliser legs for deployment during the course of lifting operations.
[8] Because sidelifters (or
sideloaders as they are also known), are road-going
vehicles they must comply with road transport requirements of the countries within
which they operate. These invariably include a vehicle width limitation, typically
2.5 to 2.6 metres. This restriction is of particular
importance with reference to the
design of stabiliser legs. Efficiency requires that they are stowed (when not in use)
across the width of the
vehicle. Accordingly, the stowed length of a stabiliser leg is
a maximum of about 2.5 metres. This in turn restricts the extended
length of the leg
and the measure of stability which it can achieve in the deployed position.
[9] There is also a height restriction
of 4.25 metres. That is, stabiliser legs in the
course of being deployed must not exceed this maximum height. This requirement
poses
a further operational limitation. The length of stabiliser legs must likewise be
kept within bounds in order to comply with the height
restriction.
[10] The advent and exponential growth in the use of containers from about the
1970s led to a dramatic growth and
demand for sidelifters. Particularly in countries
with less developed rail systems, such as New Zealand, sidelifters enabled the
road
transportation of shipping containers. Flexibility of operation was demanded.
Sidelifters required the ability to load,
and unload, to ground level; but also onto
other vehicles parked adjacent to the sidelifter. There was also a requirement to
unload
in confined areas, whether on wharves, in railway yards or the like.
[11] These operational requirements created demands with
reference to the design
and construction of stabiliser legs. Where a container is to be offloaded onto the
ground the stabiliser
legs need to be positioned a distance out from the deck of the
sidelifter in order to provide adequate stability. But, in other situations
the legs may
need to be placed on, or beneath, the deck of another vehicle. In some situations the
stabiliser legs may need to be
deployed in a near vertical position, close to the side of
the sidelifter, on account of some adjacent obstacle.
[12] With
the growth in containerisation came an increase in the size and weight
of containers. Containers used to be 20 feet long. Today they
may be up to 40 feet
in length. The loaded weight of containers has increased, first up to 33 tonnes, and
today to 40 tonnes. Given
that the weight of a sidelifter itself is about 10 tonnes
(including the weight of the crane units and stabiliser legs), the vehicle
is an
inadequate counterweight to the weight of a container which is being offloaded.
Hence, increased sophistication in the containerisation
industry has had to be
matched by corresponding gains in sideloader development, particularly in relation
to the development of improved
stabiliser legs. Sidelifter cranes by contrast, apart
from an increase in lifting capacity, have not required redevelopment to the
same
extent.
[13] On account of the variable size of containers, sidelifters also need to be
adaptable. A sidelifting vehicle
should ideally be able to lift both 20 and 40 foot
containers. A mobile crane unit is required. Such units may be shifted along
decking
mounts, or the vehicle chassis, so as to match the length of the container to
be lifted. This means that stabiliser legs must also
be mobile. In some sidelifters
this is achieved by the stabiliser leg being attached to the crane unit so that the two
move in tandem.
Models of sidelifters
[14] The imperatives mentioned above required both Hammar and Steelbro to
develop new models in response
to market demands. Over the years both companies
developed sidelifters of increased capacity and sophistication. These were identified
by different series numbers.
Hammar
[15] The company built its first sidelifters in 1974. Subsequently the following
series
were launched:
1976 Hammar SL20
1987 SL150 series
1990 SL160 series
2003 SL180 series
Within each series there were also different model types.
[16]
This case concerns the SL190 series which was developed from 1998. All
previous series featured stabiliser legs which were stowed
in a horizontal position
across the width of the sidelifter.
[17] Mr Hammar explained in giving evidence that during the summer of 1997,
while working at his home one evening, the idea of a negatively inclined stabiliser
leg occurred to him. Conceptual drawings were
prepared. By inclining the stowed
leg in a negative position, away from the side of its intended deployment, a gain
could be made
in the length of the leg without exceeding the vehicle width. If each
end of the stowed leg was tapered, or bevelled, so as to fit
in vertical orientation to
the edges of the truck (or trailer) an additional gain in length could be made. Once
the leg was extended
into its deployed position, the gain in length achieved in the
stowed position could be approximately doubled. This was because stabiliser
legs
comprise an outer sleeve from which an inner sleeve is hydraulically extended. By
also improving the configuration and placement
of the heavy bracket by which the
stabiliser leg is affixed to the vehicle itself, a better range of extension of the leg
could be
achieved.
[18] Initially Mr Hammar intended that the new design of stabiliser leg would be
incorporated into the 180 series models.
However, the 180 series was planned to be
a lighter model of sidelifter. It was placed on hold, and development of the new
stabiliser
leg concept occurred in the context of the 190 series.
[19] A prototype of the new stabiliser leg was developed and tested.
In the
meantime, on 4 September 1997, Mr Hammar filed a patent application through his
Swedish patent attorney. In July of that
year Hammar employed Mr Benny
Gustavsson as a designer. He worked on the drawings for the Hammar 190 series.
This included involvement
with the new style stabiliser leg.
[20] Through the use of a negatively inclined stabiliser leg a gain of 100 mm
(from 2,500
mm to 2,600 mm) in the total length of the leg in its stowed position was
achieved. The bevelled end also produced a gain of about
200 mms, being the extent
to which the bevel protruded out from the side of the vehicle once the leg was moved
to a horizontal position.
The total gain achieved when the leg was fully extended
and placed in a deployed position was an increased reach approaching 300
mms.
This improvement in reach translated to increased stability.
[21] The sale of the 190 series began with the release of
three new units in late
1998. On 28 August of that year Mr Hammar filed the New Zealand patent
application with a 4 September 1997
priority date. By 2000 models from the
Hammar 190 series were sold in New Zealand. The New Zealand patent for the new
style
stabiliser leg was granted on 6 July 2000 as Patent No. 331591. By then Benny
Gustavsson was employed by Steelbro at Christchurch.
He was employed in April
2000. In 2000-2001 Mr Gustavsson was responsible for the preparation of a number
of engineering drawings.
I shall return to the significance of these later.
[22] In early May 2005 New Zealand patent attorneys acting on behalf of Hammar
wrote to Steelbro alleging that the company had infringed copyright in engineering
drawings and infringed the patent. Steelbro's
solicitors denied the infringement
allegations. Both with reference to the patent, and copyright, Steelbro stated that it
had been
producing sidelifters since the early 1980s and that the company's most
recent model, SB361, incorporated improvements which were
logical modifications
of previous sidelifter arrangements.
Steelbro
[23] The Steelbro model history is as follows:
May 1983 Mk III sidelifter
September 1984 Mk IV sidelifter
September 1988 Mk V sidelifter
June 1991 Mk VI (SB360) sidelifter
April 1993 SB120 sidelifter
July 1999 SB 300 sidelifter
March 2004 SB 361 sidelifter
The SB401 series was developed alongside the SB361.
[24] With the various models came an increase
in lifting capacity and in the ability
to carry containers of longer length. All models through to the SB330 in 1996
featured stabiliser
legs which were stowed in a horizontal position. The change to a
negatively inclined stow position occurred with the development
of the SB361/401
series.
[25] In mid-2001 the project to develop the new models began in earnest. The
design process involved
evaluating the best features, and deficiencies of the SB360
and SB330 series. The latter was identified as having the best stabiliser
leg for ease
of manufacture. Because the new series had to lift a maximum of 40 tonnes (about a
10 per cent increase), a corresponding
increase in stabiliser performance was
required. A team of engineers undertook this work. The change to a negatively
inclined stabiliser
leg was but a refinement to existing designs in order to meet
increased lifting capacity. According to Steelbro the negative incline
represented an
obvious progression, which was developed through the use of sophisticated
computer-based design tools.
The required
approach to patent construction
[26] Both Mr Brown QC and Mr Miles QC referred to a number of cases with
reference to this aspect.
However, there did not seem to be any real disagreement as
to the relevant principles.
[27] The decision in Lucas v Peterson
Portable Sawing Systems Ltd [2006] 3
NZLR 721 (SC), given by Gault J on behalf of the Court, included this:
[22] As the Patents Act [1953] makes clear, the applicant for
the grant of a
patent defines the scope of the invention in respect of which the statutory
monopoly is claimed in a
claim or claims at the end of the specification
(s 10). The claims must be clear and succinct and fairly based on the
disclosure in the specification. Conventionally there is a series of claims
directed to aspects of the invention. They
reflect the skill of the drafter who
seeks to claim as widely as possible to encompass potential infringements
but
avoiding such width as may be invalid. Claims usually are drawn in
increasing detail, often (as here) ending with a narrow
claim to the specific
embodiment described in the specification and any drawings.
[28] Then followed reference to the claims
in the patent in suit, after which
Gault J said with reference to construction:
[25] The first and essential step, therefore,
is to construe the claim.
Construction is a matter of law for the Court.
[26] A patent specification is to be read
as a whole and given a purposive
construction. It must be construed as it would be understood by the
appropriate addressee
a person skilled in the relevant art.
[27] Each part of the specification is to be read objectively in its overall
context and in light of the function of that part. The claims are to be
interpreted by reference to the object and description
in the body of the
specification.
[28] The claims define the scope of the monopoly conferred by the patent.
They limit what others may do. They must clearly define the protected field
so others may fairly know where they cannot go.
The description in the
body of the specification may assist interpretation, but it cannot modify the
monopoly the inventor
has clearly marked out. If his claim is formulated too
narrowly so that imitators do not infringe, that cannot be rectified
by
reference to the description. If it is too wide, consequent invalidity cannot
be saved by reading in limitations
appearing in the description. The
description of a preferred embodiment of the invention is just that and
plainly will
not confine the scope of an invention claimed more broadly. All
of this is well established.
[29] It is also settled that
the construction of a claim is inelastic, in that the
construction remains the same whether the validity, or infringement, of the
patent is
being considered. In other words, the patentee is not entitled to the luxury of a
narrow meaning when assessing validity,
but a wide meaning when considering
infringement: Terrell on the Law of Patents (16th ed) at para 6-06.
[30] The words of Lord
Diplock in Catnic Components Ltd v Hill and Smith Ltd
[1982] RPC 183 (HL) at 243 bear repeating. He said that in giving a purposive
construction to a patent "the kind of meticulous verbal analysis in
which lawyers are
too often tempted by their training to indulge" was inappropriate, since it was what a
person skilled in the art
would understand from the use of a particular word or phrase
which mattered.
[31] Finally, in Kirin-Amgen Inc v Hoechst Marion
Roussel Ltd [2004] UKHL 46; [2005] RPC 9
(HL) Lord Hoffman said at para [34]:
... the language he [the patentee] has chosen is usually of critical
importance.
The conventions of word meaning and syntax enable us to
express our meanings with great accuracy and subtlety and the skilled
man
will ordinarily assume that the patentee has chosen his language accordingly.
As a number of judges have pointed
out, the specification is a unilateral
document in words of the patentee's own choosing. Furthermore, the words
will
usually have been chosen upon skilled advice. The specification is not a
document inter rusticos for which broad allowances
must be made. On the
other hand, it must be recognised that the patentee is trying to describe
something which, at
any rate in his opinion, is new; which has not existed
before and of which there may be no generally accepted definition.
There
will be occasions upon which it will be obvious to the skilled man that the
patentee must in some respect have
departed from conventional use of
language or included in his description of the invention some element which
he did
not mean to be essential. But one would not expect that to happen
very often.
The patent in suit
[32] The patent specification
is quite lengthy. I shall not refer to all its aspects.
Hammar alleges infringement of claims 1, 2, 4, 6 and 7 of the patent. Accordingly,
I
shall refer to aspects of the specification most relevant to this infringement
contention.
[33] The patentee defines the invention
as relating to a support structure for
wheel-mounted vehicles of the type comprising at least two support parts extendable
in the
transverse direction to the vehicle. The space in which such support structures
must be accommodated in a parked position corresponds
to the transverse dimension
of the vehicle. Previously, the specification continues, support structures had been
inclined downwards,
when stowed, to the operational side of the vehicle. Thereby
the support structure may be "somewhat longer" than would be the case
if parked in
a horizontal position. However, in this inclined position it proved difficult to use the
support structure when transferring
a load to another surface at a similar level to the
load surface of the subject vehicle.
[34] The object of the invention is
stated to be two-fold. The support structure
must be able to provide vertical support (close to the subject vehicle, in order to
avoid obstacles), and also "far away" support, whether onto the ground or onto an
adjacent elevated loading surface.
[35] These
objects are achieved by a support structure of the type described in the
characterising clause of claim 1. The sub-claims (2-7) contain
"further details and
advantages of the invention".
[36] An embodiment of the invention is described by reference to six drawings.
Figure 1 depicts the vehicle from the rear with the support structure in its parked
position. Figures 2, 3 and 4 depict the support
structure deployed onto a
neighbouring platform, the ground at a distance and the ground immediately beside
the subject vehicle,
respectively.
[37] Claim 1, as the characterising clause, can be conveniently divided into eight
integers:
(a) a structure
which is adapted to support a wheel-mounted vehicle,
(b) the structure consisting of at least two support parts which are
relatively offset in the transverse direction of the vehicle
(c) and of which a first part is a support
sleeve supported by a pivot pin
connected to the vehicle chassis
(d) and the second part is an extension
part which is movably arranged
in a bearing in the first support part, i.e. the support sleeve,
(e) characterised
in that the support, i.e. the two support parts, are
pivotable between a parking position in which they slope downwards
to the side of the vehicle which is furthest away from the pivot pin of
the support structure,
(f)
and at least one operative position with an opposite inclination,
(g) wherein the support sleeve has a longitudinal extent
which, in the
parking position of the support, essentially corresponds to the
width of the vehicle,
(h) and wherein the ends of the support sleeve are bevelled to provide
end faces that extend substantially
vertically when the support is in
the parking position. (emphasis added)
The phrases which have been highlighted
excited differences of view between the
expert witnesses as to their proper construction. I shall return to them shortly.
[38]
The sub-claims which are of present relevance provide:
2 A structure as claimed in claim 1, characterised in that the
pivot pin is
arranged far down in the vehicle chassis, i.e. at least below the platform
surface of the
vehicle, preferably in level with the vehicle chassis.
4 A structure as claimed in any one of the preceding claims, characterised
in that the support sleeve is connected to the pivot pin via a bracket
which is rigidly connected to the
support sleeve and which forms a
bearing arm, which is also engaged by a lifting jack which extends from
the bearing arm to the vehicle side opposite to the pivot pin and which
serves as a drive means for pivoting the support.
6 A structure as claimed in claim 4, characterised in that the bearing arm
has a length and shape adapted
such that the support is freely pivotable
to a vertical position outside the vehicle wheels.
7 A structure
according to claim 1 substantially as herein described or
exemplified.
Construction of the disputed elements
Two support
parts which are "relatively offset in the transverse direction"
[39] Mr Edward Stevens (a defence expert) considered the terminology
"relatively
offset in the transverse direction of the vehicle" meaningless. He presumed that "the
transverse direction of the vehicle"
was upon viewing the vehicle from behind. But,
"relatively offset" in relation to what? Did it mean that the two support parts
may be
relatively offset to each other in the transverse direction of the vehicle? And,
Mr Stevens asked, in what position
are the two support parts relatively offset? Not
in the stowed position, but perhaps it could be said they were offset in the operative
position. All in all, Mr Stevens considered the phrase unintelligible.
[40] Doctor Hugh Stark, another defence expert observed
that the two support
parts were only relatively offset in the transverse direction when deployed at an
inclination as depicted in
figures 2, 3 and 6, not when the support parts were stowed
or deployed vertically (as in figure 4). In cross-examination he said
that when the
stabiliser leg was in a vertical position its centre line is parallel to the centre line of
the vehicle and, hence,
the leg at that point is not in the transverse direction of the
vehicle. Therefore, he opined, in relation to infringement the SB361
would not
infringe the patent while the stabiliser leg was stowed, or deployed in a vertical
position.
[41] The expert for Hammar,
Graham Eaton, considered this wording somewhat
cumbersome, but said that in the context of the drawings it was immediately clear
"that the structure consists of at least two support parts which are relatively
offsetable, or moveable, and that these parts are
arranged in the transverse direction
of the vehicle".
[42] Mr Miles criticised this interpretation as strained. Counsel
noted that
Mr Eaton substituted "offsetable" for "offset", and added "moveable" in order to
improve the meaning of the phrase. This
was said to contradict the plain meaning of
the words, since "are relatively offset" had a plain and ordinary meaning other than
offsetable, or moveable.
[43]
Mr Eaton commented at the outset of his evidence that the Hammar patent
was sourced from the original Swedish equivalent. He thought
the patent used
terminology which an English-speaking engineer would not have chosen,
nonetheless he found no difficulty in understanding
the specification.
[44] I agree that the patent reads in a manner consistent with a translation from
Swedish. This, of course,
cannot influence its proper construction. The patent
remains to be construed according to its terms. In my view the phrase "relatively
offset in the transverse direction of the vehicle" is intelligible when read in the
context of the document as a whole and the figures
in particular. The subject-matter
of the phrase is the "two support parts". Such support parts are relatively offset in
the transverse
direction of the vehicle. In a context where the structure has both a
parked, and an operative, position, it is, I think, self-evident
that the subject phrase
aptly describes the direction of relative offset of the two parts.
A support sleeve "supported by a pivot
pin connected to the vehicle chassis"
[45] At p 3 of the specification the support structure is described as "pivotally
connected
to the platform of the vehicle or to the chassis thereof by means of a pivot
pin 6". Figure 1 identifies the chassis (by the number
2) and the moveable platform
(by the number 4) as distinct, if connected, components. Yet, the phrase used in
claim 1 is that pivot
pin 6 is connected to the vehicle chassis.
[46] Mr Eaton made two points with reference to this aspect. He agreed that the
figures
showed pivot pin 6 connected to the platform rather than the chassis.
However, he did not consider that "connected to" implied only
a direct connection.
Indirect connection to the chassis, via the moveable platform, occurs in operation,
because when the stabiliser
leg is deployed the moveable platform is locked to the
chassis and, thus, becomes part of it. Secondly, Mr Eaton considered that
the patent
read as a whole demonstrated that the words chassis and platform were each used in
a very general way and effectively
interchangeably.
[47] Mr Stevens took a more literal approach. He rightly observed that the
specification expressly
distinguished between the platform and the chassis, yet claim
1 required a connection to the vehicle chassis. Although he accepted
that "connected
to" was broad enough to include indirect connection, the figures plainly depicted
connection of pivot pin 6 to the
platform and, absent something to countenance
indirect connection, he construed the words in claim 1 at face value.
[48] In
general terms, Dr Stark agreed with Mr Stevens' approach. He regarded
the specification and the embodiments as in conflict with this
integer. In light of this
confusion he concluded that the integer should receive a literal interpretation, so that
connection to
the chassis is required.
[49] In closing Mr Brown relied upon Rescare Ltd v Anaesthetic Supplies Pty Ltd
(1993) 25 IPR 119 at 129, a judgment of Gummow J. Claim 1 of the patent in suit
used the phrase "connected to". These words, it was held, may be used
in two
senses. Objects A and B may be connected in the sense of an immediate physical
relationship, each being fastened to the other.
Equally, however, A and B may be
connected by the medium of C. The sense in which "connected to" has been used in
a particular context
is a matter of construction, to be answered in the context of the
document as a whole.
[50] Here the specification at page 3
refers to the support structure "pivotally
connected to the platform of the vehicle or to the chassis thereof by means of a pivot
pin 6". The figures identify the platform and the chassis as separate entities,
although directly connected to one another. Pivot
pin 6 is depicted in the platform
which part is described as moveable. The evidence established that sidelifters do not
have a platform,
or deck in the conventional sense. Rather, there is a minimal
structure, upon which containers may rest, and which is moveable but
hydraulically
fixed to the chassis while the crane and stabiliser leg are operational. Hence, I
accept the submission that the terms
platform and chassis are used in a general sense,
and because of their association in practice, are interchangeable. In
these
circumstances "connected to" the chassis is used in what Gummow J termed the
second sense ie a connection through the medium
of the platform.
"An extension part which is moveably arranged in a bearing in the first support
part"
[51] This wording occasioned
a keen difference of expert opinion concerning
whether a separate bearing element was required. The witnesses for Steelbro
emphasised the use of the indefinite article before bearing. They did not suggest that
the words "a bearing" required rolling bearings,
but more likely bearing strips that
would facilitate relative movement (sliding) of the extension part within the support
sleeve.
[52] Mr Eaton, however, in giving evidence for Hammar, said that the use of the
word "bearing" simply conveyed that the extension
part bears on the support sleeve
as it moves in and out as shown in figures 5 and 6. Mr Miles criticised this evidence,
in part because
it ignored the use of the indefinite article ("a bearing") in claim 1.
[53] In giving evidence Mr Hammar referred at some
length to the actual
construction of the SL190 sidelifter. He drew a diagram which showed reinforcing
steel affixed to portions of
the upper and lower outer surfaces of the support sleeve
in the area of greatest upwards and downwards force when the stabiliser
leg is
deployed (see the area identified as L in figure 6). His diagram also depicted,
affixed to the inner surfaces of the support
sleeve and in the same general area, what
he termed 3 mm stainless steel plates. These were to minimise movement between
the extension
and the support parts. After being referred to the Swedish terminology
used in relation to this element, Mr Hammar translated the
terminology by use of the
English words "wear" and "glide", being terms which captured the function of the
internal stainless steel
plates.
[54] Mr Miles embraced this evidence as confirmatory of the integer contained in
claim 1. He said Mr Hammar's drawing
depicted and his testimony confirmed, the
existence of what was essentially a stainless steel bearing.
[55] Mr Stevens and Dr
Stark considered that this integer was so described as to
refer to a distinct component present in the support sleeve and within
which the
extendable sleeve was movably arranged. They considered that the bearing
component would comprise rubbing strips
that would facilitate relative sliding of the
two components. Particularly given the use of the phrase "a bearing" both witnesses
disagreed with Mr Eaton's evidence that the words simply conveyed the meaning
that the extension part bears on the support sleeve
in the course of relative movement
of the two.
[56] In final submissions Mr Brown argued that the only question was whether the
wording of the claim demanded
a separate and additional bearing element to be
present within the support sleeve. He noted that there was no reference to a separate
or additional bearing component. Nor was the existence of a separate element
described in the specification or shown in the drawings.
[57] That is so, but the wording of the claim describes an extension part "movably
arranged in a bearing in the [support sleeve]".
This description, to my mind, may
only be read as referring to an additional element which performs the function of a
bearing. Mr
Eaton's contention that the words convey that one part bears on the
other when the stabiliser leg is extended, is strained. For these
reasons it is my view
that the evidence of Mr Stevens and Dr Stark is to be preferred.
"The support sleeve has a longitudinal extent
which, in the parking position of the
support, essentially corresponds to the width of the vehicle"
[58] Dr Stark expressed the
opinion that the meaning of this integer was unclear.
He said:
It appears to be equating the length of the support sleeve
in the parked
position to the width of the vehicle. However, this would only be possible
were the support sleeve horizontal
in its parked position, in contravention to
integer [(e)].
[59] I disagree. Firstly, it is noteworthy that neither Mr
Eaton nor Mr Stevens
found difficulty with this integer. Secondly, Dr Stark substitutes "length" for
"longitudinal extent". Longitude
is the distance in degrees east or west of a defined
point. The adjective "longitudinal" means relating to longitude, or length.
The use
of the two words, longitudinal extent, implies less exactitude than does the single
word length, and in the present context
plainly means the crosswise distance. But in
addition, and thirdly, the integer must be read as a whole and, once it is, the meaning
is apparent. In short the support sleeve, when stowed, has a crosswise extent which
essentially corresponds to the width of the vehicle.
"The ends of the support sleeve are bevelled to provide end faces that extend
substantially vertically when the support is in the
parking position"
[60] Mr Stevens and Dr Stark construed the word "bevelled" to mean a chamfer,
for example where a right-angled
timber edge has been bevelled or chamfered. On
this basis the integer was challenged as containing an incorrect usage.
[61] I
disagree. The word bevel is apt to describe a surface that meets another
surface at an angle other than 90 degrees. It is in this
sense of the word that the end
faces of the support sleeve are described as bevelled, so as to be at an angle which
renders them
substantially vertical in a parked position. If the wording of this
integer left any room for doubt, it would be removed when viewed
in the particular
light of figures 1 and 5.
Infringement of the patent
[62] In its statement of defence Steelbro denied infringement
in that there were
material points of difference between claims 1, 2, 4, 6 and 7 of the patent, and the
Steelbro models SB361/401
which were alleged to infringe the patent. However, in
closing submissions, the argument was confined to three of the agreed integers
of
claim 1 which Steelbro maintained were not infringed by its product. These were:
(a) the absence of a bearing component
within the support sleeve,
(b) the support sleeve was not supported by a pivot pin connected to
the vehicle
chassis, and
(c) a longitudinal extent which did not correspond to the width of
the vehicle.
The suggested
differences (b) and (c) are not sustainable. The interpretation I have
placed on the relevant integers means that Steelbro's SB361/401
models do infringe
the patent in relation to connection of the pivot pin to the vehicle chassis and in
relation to the longitudinal
extent of the support sleeve in the parked position.
[63] On the other hand, the interpretation reached in relation to (a) means that
infringement is not established with reference to this integer. Mr Eaton, in giving
evidence of infringement, said that he had examined
and taken photographs of a
Hammar SL195 sidelifter and a Steelbro SB361 sidelifter and that he was satisfied
the latter exhibited
all of the features described in the claims to the Hammar patent.
However, this conclusion was dependent upon acceptance of his opinion
that "a
bearing" in the support sleeve conveyed the function of one part bearing on the
other, not the requirement of a bearing component.
The Steelbro SB361/401 models
do not incorporate a separate bearing component in the support sleeve. It follows
that, given the absence
of this integer, infringement of the patent is not established.
[64] Regardless of this finding, I shall now consider Steelbro's
counterclaim
seeking revocation of the patent.
Revocation of the patent
[65] Steelbro invoked several of the grounds for revocation
contained in s41 of the
Act. In the end result the grounds of revocation can be reduced to four. The first
ground is two-dimensional
being that the claimed invention is obvious and does not
involve any inventive step having regard to what was known and used before
the
priority date (s41(f)) and that the subject of the claim is not an invention within the
meaning of the Act (s41(d)). The further
grounds are inutility, in that the invention
as claimed is not useful (s41(g)); insufficiency, in that the specification does not
sufficiently and fairly describe the invention and the method by which it is to be
performed, or does not disclose the best method
of performing it (s41(h)); and
ambiguity, in that the claims are not sufficiently and clearly defined or the claims are
not fairly
based on the matter disclosed in the specification (s41(i)).
[66] Of these four grounds the first received the most attention.
To some degree a
decision on the other grounds is dictated by the conclusions I have already formed
with reference to the construction
of the integers in claim 1. Before I can turn to the
individual grounds, however, it is necessary to consider some overarching questions
pertaining to the evidence of Messrs Muirsmeath and Stevens, and Dr Stark. These
concern the test relevant to obviousness and lack
of inventive step. Therefore, I shall
first refer to those principles.
Obviousness and lack of inventive step
The relevant legal
principles
[67] The test of obviousness was summarised in Ancare New Zealand Ltd v
Cyanamid of New Zealand Ltd [2000] 3 NZLR 299 (CA) at 309 by Gault J on behalf
of the Court, as follows:
[43] ... the test is well established. It postulates a person
(or, where
appropriate, a team) skilled in the field but not inventive, invested with the
common general knowledge
available in the field at the priority date,
presented with the prior knowledge or prior use relied upon. Prior
documents
may be looked at together if that is what the skilled person or
team would do. It asks whether to that person or team the
alleged inventive
step would be obvious and would be recognised, without bringing to bear
any inventiveness, as something
that could be done or is at least worth
trying. That is a question of fact. If any embodiment within the scope of the
claim is obvious the claim is invalid. These propositions are helpfully
expanded upon in the recent English cases which
are still applicable though
under the 1977 Act; see the Windsurfing International case, Hallen Co v
Brabantia (UK)
Ltd [1991] RPC 195 at p 211, and Mölnlycke AB v Procter
& Gamble Ltd [1994] RPC 49 at p 112.
The Supreme Court, in Lucas v Peterson Portable Sawing Systems Ltd affirmed this
statement from Ancare.
[68] In Windsurfing
International Inc v Tabur Marine (Great Britain) Ltd [1985]
RPC 59 (CA) the English Court of Appeal extensively considered the principles
governing obviousness. Oliver J at 73-4 said this:
There are, we think, four steps which require to be taken in answering the
jury question. The first is to identify the inventive
concept embodied in the
patent in suit. Thereafter, the court has to assume the mantle of the normally
skilled but
unimaginative addressee in the art at the priority date and to
impute to him what was, at that date, common general knowledge
in the art
in question. The third step is to identify what, if any, differences exist
between the matter cited as being
"known or used" and the alleged
invention. Finally, the court has to ask itself whether, viewed without any
knowledge
of the alleged invention, those differences constitute steps which
would have been obvious to the skilled man or whether they
require any
degree of invention.
[69] Some further observations are worth adding. As Oliver J stressed earlier at
p 71
obviousness is a kind of jury question which is not to be answered with the
benefit of hindsight. The approach is not to look at
what is known now, and what
was known at the priority date, and ask whether present knowledge flows naturally
and obviously from
the earlier knowledge. Rather, decision-makers must place
themselves in the shoes of the hypothetical skilled man as at the priority
date and
evaluate obviousness in a past context.
[70] The test of obviousness is an objective one, and also qualitative rather
than
quantitative. The focus is whether the inventive concept is obvious, not whether it
would have appeared commercially worthwhile
to exploit it.
[71] In Mölnlycke AB v Procter & Gamble Ltd [1994] RPC 49 (CA), Sir Donald
Nicholls observed at 113 that courts will invariably require the assistance of expert
evidence and all other evidence
is secondary to that primary evidence. Therefore,
evidence of the commercial success of the invention is likely to be no more than
an
aid in assessing the primary evidence.
Particulars of objections to the validity of the patent
[72] Contrary to the requirement
of the rules Steelbro did not provide particulars
of invalidity with its statement of defence. Particulars were provided,
upon
direction, on 9 August 2006.
[73] With reference to the challenge based on obviousness and lack of inventive
step Steelbro
relied upon the prior publication of four New Zealand patents (referred
to as AB Parator, Flowers, Ostermeyer and Haggar). In addition,
the prior use of
eight sidelifter crane models, being five Steelbro models and three Hiab cranes used
in New Zealand before the priority
date, was pleaded.
[74] Then, on 23 April 2008 amended particulars were served. These added eight
new patents, being another
Haggar International patent, a German Hammar Maskin
patent, a Swedish Hammar Maskin patent, a United States Hand patent, a European
Klaus patent, a Danish Leicher engineering patent, a German Murauer patent and a
United States Thompson patent. To the previous list
of cranes used in New Zealand
before the priority date three additions were made, being a further model of a
Steelbro sidelifter
crane and two Klaus model cranes.
[75] Finally, on 28 April, the morning the trial commenced, Steelbro sought to
further amend
the particulars. Only four patents were still relied upon, being the
New Zealand AB Parator patent and the New Zealand Haggar patent
(which
appeared in the 2006 particulars), and the German Hammar Maskin patent and the
European Klaus patent (which first appeared
in the amended particulars). Hence,
eight patents (two from the original particulars and six from the first amended
particulars)
were no longer relied upon. With reference to sidelifter machinery said
to have been used before the priority date, three cranes
(a Hiab and two Klaus
models) were deleted, but a different Klaus model and a Lees Annihilator crane were
added. However, in the
course of trial reliance upon these additions was abandoned.
[76] As to proof that the four patents ultimately relied upon had
been published in
New Zealand before the priority date, affidavit evidence was provided from
Elizabeth Veber, the library manager
of a patent attorney firm, who had checked the
availability of patent specifications in New Zealand with IPONZ (Intellectual
Property
Office of New Zealand) and also the Derwent World Patents Index. The
AB Parator, Haggar and Klaus patents were available in New Zealand
before
September 1997, but the German registered Hammar Maskin patent was only
available as an abstract from an online database.
Mr Brown disputed that this
constituted prior publication of the entire specification in New Zealand.
[77] The abstract
is an annexure to Ms Veber's affidavit. I accept that while the
abstract was available online in 1996, it did not contain anything
approaching the
detail of a full patent specification.
[78] Issue was also taken as to whether it was proved that the Hiab 090
AW crane
and the Hiab 250 crane were available in New Zealand before the priority date. In
the end result Mr Muirsmeath was recalled
immediately before Mr Miles made
submissions in reply in order to give supplementary evidence directed to this aspect.
He confirmed
that Steelbro had sold these models of Hiab crane from 1991 and
1996, respectively.
The arguments directed to the particulars
[79] Against this background of ongoing additions and deletions to the particulars
of invalidity, Mr Brown submitted that an
overarching problem remained. Although
I granted leave to receive the final amended particulars, which specified eight
models of
cranes and four patents, the fact remained that Steelbro's experts had been
briefed with reference to all of the patents referred to in the earlier iterations of the
particulars,
not just the four patents ultimately relied upon. This was demonstrated
to be the case in relation to Mr Stevens who referred to
various of the patents by
name in his witness statement. His opinion evidence included reference to five
patents and two cranes which
were not ultimately relied upon as part of the prior art.
Dr Stark referred to three patents which were not ultimately relied upon.
In addition
both witnesses had access to a translation of the specification to the German
Hammar Maskin patent, whereas only the
abstract was available online in New
Zealand at the relevant date.
[80] On this basis Mr Brown submitted that I was in a difficult
position in
assessing the evidence of these witnesses generally. It was not apparent what impact
the information no longer relevant
as part of the prior art carried in relation to the
opinions of these witnesses.
[81] Mr Miles, however, resisted the criticism.
By reference to the evidence of
the two experts he argued that their opinion evidence was shown to be based very
largely upon the
model history of the Steelbro models. These, he suggested,
comprised the substance of the prior art upon which Mr Stevens'
and Dr Stark's
views were ultimately based.
[82] I shall return to the resolution of this difference shortly. Clearly, there
is a
basis for concern that the witnesses' opinions may be tainted. Whether this is so, or
not, will depend upon an assessment of
the terms of the evidence itself.
[83] Mr Brown also argued that the evidence of Mr Stevens and Dr Stark was
compromised because
they did not appreciate the attributes of the notional skilled
addressee, as explained in Windsurfing International (see para [68]).
By contrast,
Mr Eaton's approach was described as careful and considered.
Mr Eaton's evidence
[84] Mr Eaton quoted the test
from Windsurfing International in his evidence in
chief. He then contrasted the unimaginative addressee in the art at the priority
date
with the persons comprising the audience to whom the patent in suit was addressed.
Mr Eaton considered that the latter audience
comprised mechanical engineers and
draughtsmen involved in the steel fabrication and the trailer sideloader
manufacturing industries.
He did not think that an experienced mechanical engineer
was necessarily a university graduate. It was just as likely the addressee
began on
the workshop floor (possibly as an apprentice) and progressed to the design office,
where, through experience and training,
he became familiar with the computer-aided
design of fabricated structures and acquired skills in the optimisation of machinery
performance.
[85] Mr Eaton saw this addressee as quite different to the person comprising the
legal construct required in terms of Windsurfer
International. This notional person
spots the obvious, but although skilled in the field is not inventive. He considered
that the
requirement to postulate such a person as at the priority date, who was also
devoid of knowledge of the claimed invention, was a
difficult exercise.
[86] With reference to the first step, identification of the inventive concept in the
Hammar patent, Mr Eaton
concluded that the characterising clause of claim 1
captured the essence of the invention. Upon turning to the prior knowledge and
prior
use at the priority date, Mr Eaton concluded that the inventive concept of the
Hammar patent was not replicated in prior publications
or prior usages, not at least in
relation to the inventive concept.
[87] This, Mr Eaton considered, was identified by the differences
between the
prior art and the claimed invention, namely:
(a) the negative incline of the support parts in the parked position,
being downwards to the side away from the pivot pin, and
(b) with the support sleeve corresponding to the
width of the
vehicle, including bevelled end faces sitting substantially
vertically in the parked position.
[88] Mr
Eaton was of the opinion that a person skilled in the field and cognisant of
the prior art, but not inventive, would not have designed
a stabiliser leg with these
features. He said:
... such a [stabiliser leg], as at September 1997, was significantly different
in
concept from the practices which had been followed for close on 20 years. I
would not expect it to occur to the
non-inventive person to position the leg,
in its parking position, in an orientation of inclined oppositely to that in
which the leg is to be deployed. I am fortified in my view given the fact that
there is evidence that both the plaintiffs
and the defendant had apparently
tried for some time, but without success, to devise an improved stabiliser leg.
The
reason why I refer to this fact is that those persons working for both the
plaintiffs and the defendant must have had an inventive
capacity greatly
superior to the notional skilled addressee as I understand him to be defined.
Mr Stevens' and Dr Stark's
evidence
[89] Mr Stevens began his consideration of obviousness and lack of inventive step
by saying that he had already discussed
the concept of the "notional skilled
addressee". This was a reference back to his discussion of the person, or audience,
to whom
the patent specification was addressed. That discussion was detailed and
closely reasoned, but contained no reference to the requirement
that the relevant
person, or team, although skilled in the field was not inventive. Mr Stevens' earlier
description of the addressee
identified engineers of the kind employed by Steelbro
who are, of course, expected to be inventive. At least to this extent his analysis
was
questionable.
[90] Nor did Mr Stevens initially approach this aspect on the basis of a four step
analysis. In his third brief
of evidence he did so, in order to respond to Mr Eaton's
assessment. Mr Stevens found no inventive concept described in claim 1 of
the
subject patent. That said, he agreed with Mr Eaton that "no prior art or publication
in New Zealand contains all of the elements
of the Hammar patent". The Steelbro
sidelifters, Mk 3, Mk 4, Mk 5, Mk 6 and SB 30 were closest in that all these models
employed a stabiliser leg stowed horizontally across the full width of the vehicle,
with the ends of the leg trimmed vertically to match the 2.5 metre width of the
vehicle. Mr Stevens considered that it was quite
"common practice" to trim the ends
of a member such as a stabiliser, so that the support sleeve in the stowed position
was the same
width as the vehicle. Moreover, he would expect this practice to
continue once the leg was parked in a sloped position. Hence, Mr
Stevens saw
nothing inventive in relation to trimmed, or bevelled, ends to the structure.
[91] That left the question whether
stowing the stabiliser leg on a negative incline
was obvious, or inventive. Mr Stevens said this:
In my opinion, while the
use of an inverse incline may not have been
immediately obvious to the university trained skilled addressee that I
envisage, the discovery that the determination of the optimum geometry led
to such an arrangement would have been an inevitable
consequence of the
application of their skills and training to what was known of established
mechanisms.
He then referred
to some relevant mathematical tools (Mathcad, MathLab and
Mathematica) having been available since before 1980. The systematic application
of any of these tools would, Mr Stevens considered, have led to a solution which
entailed the stabiliser leg being stowed with a
negative incline. This solution,
Mr Stevens saw as "a job well done", not as inventive.
[92] The first task asked of Dr
Stark was for him to consider how to maximise the
outreach of a stabiliser leg. He was supplied with a diagram depicting a Steelbro
sidelifter with the stabiliser leg stowed in a horizontal position. The diagram
specified the legislative dimensional limitations
(a maximum width of 2.5 metres
and a maximum height of 4.250 metres). Further diagramatic representations
identified what
was meant by outreach and identified as additional requirements that
the stabiliser leg must be able to be positioned on an adjacent
trailer platform slightly
higher than the sidelifter platform, and also be positioned close to the sidelifter in a
near to vertical
orientation. These requirements reflected the commonplace working
situations where sidelifter cranes may need to transfer a container
onto an adjacent
vehicle, with the stabiliser leg positioned on that vehicle; or a similar transfer, but
with the stabiliser leg
positioned on the ground in between the sidelifter and the other
vehicle.
[93] In order to increase the outreach of the stabiliser
leg Dr Stark made two
changes to the design of the stabiliser leg. He significantly increased the height of
the bracket by which
the leg was attached to the sidelifter chassis on its operational
side. Indeed, the suggested bracket extended the height of the
stabiliser leg in its
stowed position to the maximum of 4.250 metres. The second change was that the
stabiliser was stowed on a significant
negative incline (approaching 40-45 degrees).
Thereby the lengths of the sleeve and the inner extendable part were maximised, as
was the outreach capacity of the stabiliser leg in operation.
[94] With regard to these modifications Dr Stark said that he was
immediately and
without difficulty able to achieve them, because:
both of these solutions rely on nothing more than an appreciation
of the
simple geometrical considerations that a diagonal of a rectangle is longer
than its width, and that the length
along a given angle of circular arc
increases with this radius, and as such would, in my view, be obvious to the
typical
technical draughtsman in the steel fabrication/trailer manufacturing
business.
[95] Aside from the issues that a stabiliser
leg stowed at a height of 4.250 metres
would create wind and instability problems when the sidelifter was in motion,
Mr Brown challenged
Dr Stark's thesis on other grounds. He had not been asked to
assess obviousness from the perspective of a skilled but non-inventive person.
Nor
was a requirement imposed to approach the task on the basis of what was known and
used as at 1997; although Dr Stark rightly
observed that the principles of geometry
he applied were no different then, to now.
[96] Mr Miles submitted that the solutions
so easily reached by Dr Stark belied the
existence of any inventive step in the patent in suit, and demonstrated just how
obvious
was a negative inclination solution.
Evaluation of the evidence and arguments
[97] At most, two elements comprise the inventive
concept. These are that the
support sleeve and extension part are stowed "with an opposite inclination", that is in
a negatively
inclined position, and that the ends of the support sleeve are bevelled so
as to be substantially vertical and aligned to the width
of the sidelifter. Most
emphasis, I think, was placed upon the concept of negative inclination, although the
aspect of bevelled
ends also excited a difference of expert opinion. I shall return to
that aspect later.
[98] I am required to place myself in
the shoes of the skilled but unimaginative
addressee in the art at the priority date. To this person one must impute the common
general
knowledge available in the field as at 1997. Mr Eaton did this. However, I
do not think Mr Stevens did, in that he omitted the non-inventive
requirement. And,
on account of the manner in which he was briefed, Dr Stark personally acted as the
notional addressee. Yet, Dr
Stark is a mechanical engineer of great experience, in
practice as an academic and, now, as a consultant. I doubt that he is uninventive
or
unimaginative. Moreover, Dr Stark was freed from the shackles which most
probably would have hindered the notional addressee.
Those skilled in the field
would not, I think, have designed a stabiliser leg stowed at such an acute angle as
Dr Stark suggested,
nor would they have affixed it using a bracket of the dimensions
he prescribed. Put another way, the task he was given invited immediate
attention to
the geometrical principles which he applied, because normal operational constraints
were ignored. In my view, therefore,
Dr Stark's opinion evidence must be assessed
with these aspects firmly in mind.
[99] It was common ground that the prior art
as at the priority date did not include
a stabiliser leg stowed in a negatively inclined position. Until the patent in suit the
industry
norm was for stabiliser legs to be stowed in an horizontal position. Nor,
therefore, did the prior art contain an example of bevelled
end faces. There was no
need for them. Horizontal stowage of the stabiliser leg meant that square end faces
were preferable, since
they enabled the length of the leg to equate with the width of
the sidelifter vehicle.
[100] Negative inclination and bevelled
end faces are the essential differences
between the patent in suit and what was previously known or used at the relevant
date. I
turn, then, to the last question, whether these differences would have been
obvious to the skilled addressee, or whether they were
to a degree inventive. I do not
find this an easy question. The competing expert evidence seemed to me to reflect a
difference in
both approach and emphasis.
[101] On the one hand Mr Eaton focused on the prior art and particularly the
circumstance that no-one
prior to Mr Hammar had designed a stabiliser leg with a
negative incline, despite a demand for increased stability on account of
the increased
size and weight of containers. What he saw as the breakthrough nature of Mr
Hammar's idea and design persuaded Mr Eaton
that the solution was inventive and
anything but obvious.
[102] On the other hand, the evidence of Mr Stevens and Dr Stark focused
more
upon the incremental nature of the solution and the extent to which it was based
upon perfectly obvious geometrical principles,
dating back to Pythagoras. Building
on the knowledge that the diagonal through a rectangle is longer than its sides, and
that the throw of a circular arc
increases with its radius, they concluded that it was
only logical to incline the stabiliser leg in its stowed position in order
to increase its
length, improve its arc of operation, hence its scope of outreach, and thereby gain
increased stability. Mr Stevens
expressed the further opinion that the established
availability of geometric optimisation tools further removed the Hammar solution
from the realm of the inventive. Mr Gregory Muirsmeath, Steebro's engineering
manager, also stressed throughout his evidence the
extent to which the move to a
negatively inclined stabiliser leg was an incremental change, which was inevitable,
particularly once
geometrical optimisation was applied.
[103] I think that the decision of Laddie J in Haberman v Jackel International
Limited [1999] FSR 683 is of assistance in resolving this conflict. Haberman
concerned a patent for an infant's trainer cup. The inventive concept
was said to be
a flexible mouthpiece, incorporating a slit valve opened by a pre-determined level of
suction, which automatically
closed as suction ceased. The invention was intended
to address a long-standing problem of leakage which had bedevilled previous
trainer
cups. The defendant company sought revocation of the patent, including upon the
grounds of obviousness and absence of inventive
step. A number of similar products
were on the market at the priority date. In particular, there were examples of teats of
baby bottles
which employed slit valves in order to render them self-sealing.
Seeking revocation, the defendant said that the solution was blindingly
obvious and
had been for some time.
[104] Laddie J observed at [29]:
In all cases where obviousness is in issue the court
is trying to look back at
what paths would have been seriously considered by a notional skilled but
uninventive person
in the relevant art at the priority date. The task is made
more difficult because the patentee's development is already known
to the
parties and the court. Therefore inevitably the court will know not only that
a solution is possible but what
it is. Many patented inventions operate in
accordance with simple principles of physics, chemistry or other sciences. It
is normally easy to understand why they work. From this it is but a short
step to thinking that a competent technician
in the art would have realised,
starting from the same simple principles, why the solution proposed by the
patentee
should have worked. So, working from those principles, the
solution must be obvious. In such cases it is also easy to take
the relevant
expert witnesses under cross-examination through a series of logical steps
which lead to the solution.
The simpler the solution, the easier it is to
explain. The easier it is to explain, the more obvious it can appear. This is
not always fair to inventors. [emphasis added]
[105] One of the experts for Jackel International was provided with a Jackel
trainer
cup and asked if he could render it spill-proof. Within half an hour he suggested a
slit valve design. The expert gave evidence
that the solution was obvious.
[106] The argument that a negatively inclined stabiliser leg represented a small
design change,
based on simple principles of geometry, has a seductive attraction.
Yet, the fact remains that over a period of about 20 years stabiliser
leg design was
modified and improved in response to the increased size and weight of containers.
But no-one, until 1997, developed
the negative inclination solution.
[107] Mr David Walters, a consulting engineer who was previously employed by
Steelbro, gave
evidence of a "brainstorming" exercise in which he was involved in
mid-April 1997. Hand-written notes taken at a meeting of three
or four engineers
recorded a number of ideas to improve the reach of a stabiliser leg. One was to
"incline [the] telescopic leg in
parked position". A calculation followed in which the
gain in length of the leg, if positioned at angles of 15°, 30° and 45° and
stowed
within a width of 2.5 metres, was calculated. Another suggestion was to "optimise
pivot geometry".
[108] The notes were
referred to another engineer, Andrew Ashby, for his reaction.
He produced a geometric sketch based on the design of a Steelbro stabiliser
leg. He
questioned the accuracy of certain of Mr Walters' calculations, and added the
comment "in fact, I believe putting on [a]
20° slope actually reduces ground reach in
this case...". Mr Walters' evidence ended on the note that investigations into the
feasibility
of an inclined leg ceased at this point. He remained in the employ of
Steelbro, working in part on stabiliser leg design for almost
two years, without
further consideration of the negative inclination option.
[109] I regard this evidence as revealing. It shows that while inventive minds
broached
the idea of negative inclination, nothing came of it. To the contrary, the
utility of the idea was expressly doubted. Other design
solutions were pursued, at
least until an example of the Hammar stabiliser leg surfaced.
[110] I am not persuaded that a negative
inclination of the stabiliser leg was
obvious. I regard it as inventive. The use of bevelled ends in the stabiliser structure
was,
I think, in the nature of a follow-on or collateral modification. With negative
inclination of the leg, squared ends did not work.
Either the stabiliser leg would jut
out to either side of the vehicle, or the potential maximum length of the structure
would be
compromised to achieve stowage within the 2.5 metre limit. Bevilled ends
ensured statutory compliance and at the same time maximised
the length of the
stabiliser structure. Thereby both the reach of the extendable part was increased and
the support provided by the
outer sleeve was maximised.
[111] I see this aspect as most relevant in the sense that the commonplace use of
squared ends militated
against negative inclination. It was an impediment to seeing
that solution. But once a breakthrough was achieved in relation to
negative
inclination, the design of bevilled ends followed. This design change was not
necessarily imaginative, but the essence
of the invention lay in negative inclination.
Inutility
[112] Section 41(1)(g) defines this grounds of revocation as follows:
That the invention, so far as claimed in any claim of the complete
specification, is not useful.
[113] Claim 6 of
the patent provides:
A structure as claimed in claim 4, characterised in that the bearing arm has a
length and shape
adapted such that the support is freely pivotable to a
vertical position outside the vehicle wheels.
[114] Claim 4 makes
it clear that the "bearing arm" is the large bracket which
connects the pivot pin on the sidelifter to the stabiliser leg itself,
the bracket being of
a shape to facilitate the functioning of the leg (particularly in a vertical position).
This can be best seen
in figure 4 (wherein the number 20 denotes "an obstacle").
[115] The patent specification described the object of the invention
as:
... to provide a support structure, which at low design and production cost
makes it possible to use the support
for both vertical support close to the
outside of the vehicle wheels, above all in narrow spaces, ie when the
vehicle
at the side concerned is standing in the vicinity of an obstacle which
can be, for instance, another vehicle, a loading bridge
or some other
elevation, and support far away from the vehicle both on the ground and on
some other loading surface
located beside the vehicle.
[116] In closing submissions Steelbro accepted that the Hammar stabiliser leg
achieved support far away
from the sidelifter, and support on another loading
surface. The submission continued, however, that the objective of providing vertical
support was not achieved, notably because the specification required "verticality". A
contrast was drawn between the reference to
"vertical" position in claim 6 and the
description in claim 1 of the bevilled ends to the stabiliser structure, described as
"substantially
vertically" positioned when the stabiliser was parked.
[117] The promise contained in the patent was said to be that the stabiliser
leg was
pivotable to a vertical position beside the sidelifter. In fact, the Hammar stabiliser
leg cannot be pivoted to a true vertical
position. Therefore, the promise was not met.
The patent failed for inutility.
[118] The evidence relevant to this aspect was brief.
In cross-examination
Mr Hammar said that the SL190 and 195 models could be deployed with the
stabiliser leg in a position
one or two degrees, plus or minus, from vertical.
Subsequent to hearing that evidence Mr Stevens gave supplementary oral evidence
that during the
intervening weekend he had examined a Hammar sidelifter and found
that the stabiliser leg fell short of achieving verticality by
12 or possibly 13°. In
cross-examination it emerged that the test was conducted on a sidelifter which was at
a workshop for servicing.
A foreman from the workshop operated the vehicle. A
"rather battered" spirit level which incorporated a protractor measuring device
was
used. With reference to the spirit level and the measurement, Mr Stevens said:
I wouldn't like to assign a high degree
of accuracy to it, but it certainly
indicated an inclination of more than 10 degrees. Some of this may have
been due
to the fact that the sideloader rocked back a small amount when its
foot was put on the floor, but that would only have been
one or two degrees
at the most.
[119] The sidelifter was not loaded with a container at the relevant time, and only
the
rear leg was extended for the inclination to be measured. One extension
occurred, and only one measurement was taken.
[120] Although the evidence is somewhat imprecise, there can be no doubt that the
Hammar stabiliser leg cannot attain a true vertical
position. Mr Hammar conceded
as much. On the evidence it is probable that an inclination several degrees short of
vertical is the
most that it can achieve.
[121] Does this evidence establish inutility? In the course of closing submissions I
was referred to
Horville Engineering Company Limited v Clares (Engineering)
Limited [1976] RPC 411. The case concerned a wheeled pellet to which detachable
sides could be fixed to prevent movement of the load. The specification to
the patent
identified as a problem with existing load carrying devices that side walls could not
be fitted once the load was in place.
The specification conveyed, by implication if
not expressly, that the invented device could have its side walls fitted after loading.
Claim 3 spoke of sides fitted outside the confines of the deck and without
encroachment onto the load supporting surface.
[122]
At first instance a finding of fact was made that the invention covered load
handling devices to which sides could not be affixed
after loading. The issue was
whether an implied promise of this capability was sufficient to found a finding of
inutility, when in
fact the promise was not capable of fulfilment. The Court of
Appeal found the patent void for inutility.
[123] To my mind the case
provides a useful example of inutility in an industrial
setting. The actual words used in the specification were not determinative.
Rather, a
promise as to the usefulness of the claimed invention was implied by the wording.
Since that promise was not met, the patent
failed for inutility.
[124] I consider that a similar proposive approach is required here. An object of
the invention is that the
stabiliser leg may be used for support in various situations,
including in a vertical support position close to the sidelifter when
only a limited
operational space is available. In claim 6 this is characterised as "pivotable to a
vertical position outside the
vehicle wheels". I am in no doubt that "vertical" is not
to be construed literally. The express object described in the specification
is that the
stabiliser leg can function in a confined space alongside the sidelifter. This object, or
promise, is achieved so long
as the leg can be placed in a near to vertical position.
Importantly, there is no evidence to suggest that the utility of a Hammar
sidelifter is
in any way compromised by the inability to place the stabiliser leg at a true vertical
inclination. It follows, I find,
that inutility is not demonstrated.
Insufficiency of description / Failure to disclose best method
[125] Section 41(1)(h) of
the Act defines this ground of revocation as follows:
That the complete specification does not sufficiently and fairly describe
the
invention and the method by which it is to be performed, or does not disclose
the best method of performing it
which was known to the applicant for the
patent and for which he was entitled to claim protection
The rationale is that the
patentee, in exchange for the monopoly secured under the
invention, must fairly disclose to others how it works.
The particulars
re insufficiency / best method
[126] The defendant's particulars state that how the support structure of the alleged
invention
achieves the stated object of the invention, namely providing "both vertical
support close to the outside of the vehicle wheels...
and support far away from the
vehicle, both on the ground and on some other loading surface..." is not sufficiently
and fairly described
in the specification. The particular asserts that especially the
vertical support aspect is not properly described.
[127] In closing,
Mr Brown submitted that the case run by Steelbro at trial did not
match the particulars. The defendant's case was advanced by reference
to an alleged
failure to disclose how the support structure and its jacking mechanism should be
arranged so that verticality could
be effectively obtained, to use the words of
Mr Stevens. His particular concern was with the arrangement of the pivot pins for
the
attachment of the jacking mechanism and, more particularly, the position of the
pivot pin by which the main bracket is affixed
to the sidelifter itself. I shall return to
the issue of the adequacy of the particulars shortly.
The relevant principles
[128]
Some, at least, of the relevant principles were not in dispute. The notional
addressee is a person skilled in the relevant art. However, such person is
not
considered to be inventive. Indeed, enabling disclosure requires that no element of
inventiveness is necessary on the part of
the addressee. The description must enable
the invention to be performed across the full width of the claims. The relevant date
for
assessing sufficiency is the date when the complete specification is filed, not the
priority date.
[129] The extent of disclosure
required in order to fairly describe the invention, and
disclose the best method of performing it, proved to be a more contentious
legal
principle. Mr Brown submitted that Mr Stevens misunderstood the statutory
requirement, in that he expected the patent specification
to embody design details as
opposed to the overarching inventive concepts or ideas. Counsel adopted a
statement of
Romer LJ in No-Fume Limited v Frank Pitchford & Co Limited (1935)
52 RPC 231, at 243:
Be it observed from the very words I have used, that the Patentee fulfils his
duty if in his complete specification
he describes and ascertains the nature of
the invention, and the manner in which the invention is to be performed,
sufficiently and fairly. It is not necessary that he should describe in his
specification the manner in which the invention
is to be performed, with that
wealth of detail with which the specification of the manufacturer of
something is usually
put before the workman who is engaged to manufacture
it. [emphasis added]
The Judge then observed that specifications frequently
contain mistakes or have
omissions. Even these are not fatal, if the skilled addressee can correct/remedy the
defects without the
exercise of any inventive faculty.
[130] Whether the invention is sufficiently and fairly described is highly dependent
upon the
nature of the invention. Hence, the first step is to identify the invention and
what claims are made in relation to it. With these
aspects in mind the question
becomes whether a skilled addressee can replicate the invention from the
specification.
[131] But
as Aldous J said in Mentor Corp v Hollister Inc [1991] FSR 557 at 561:
The [English] section contemplates that patent specifications need not set out
every detail necessary for
performance, but can leave the skilled man to use
his skill to perform the invention. In so doing he must seek success. He
should not be required to carry out any prolonged research, enquiry or
experiment. He may need to carry out the ordinary
methods of trial and
error, which involve no inventive step and generally are necessary in
applying the particular
discovery to produce a practical result. In each case,
it is a question of fact, depending on the nature of the invention,
whether the
steps needed to perform the invention are ordinary steps of trial and error
which a skilled man would
realise would be necessary and normal to
produce a practical result.
[132] To similar effect is Terrell on the Law of Patents
(16th ed 2006) at 7-102:
... in modern engineering practice no one would think of treating the
drawings of a machine
in a specification as working drawings: a certain
amount of designing and calculation has to be carried out before a machine
can be built, and the degree of knowledge requisite to perform such
operations must be presumed in the person to
whom the specification is
addressed.
To my mind these observations are relevant to the conflict which emerged in relation
to this aspect.
The relevant evidence
[133] To support its case for revocation Steelbro relied on cross-examination of
Mr Hammar
and the evidence of Mr Stevens. The full specification was filed in
New Zealand on 28 August 1998, almost a year after the priority
date. As at
September 1997 the plaintiff had only sketches of the stabiliser leg. Over the
ensuing months a prototype
was built and production drawings were completed in
the first half of 1998. By about May 1998 the essential details for production
of the
stabiliser leg were complete. These milestones were confirmed by Mr Hammar in
the course of cross-examination.
[134] He
also accepted that to build the most efficient stabiliser leg two groups of
calculations were essential. These were the dimensions
for the main components
and the five key pivot points by which these components were interlinked. He also
agreed that the patent
specification showed no dimensions and contained drawings
which were only conceptual in nature. Yet, by 28 August 1998,
when the
specification was filed, development of the invention was at an advanced stage.
[135] Mr Stevens closely analysed the
sufficiency of the description contained in
the specification. He particularly focused upon the geometry of the support structure
and the arrangement of the jacking mechanism. He said this:
5.11 The success of the support structure in service depends
on how well
the geometry of the support structure and jacking mechanism is
arranged. Of crucial significance
to this is the optimal placement of
pivot pins. The optimisation of the geometry is the task of the
designer
- the skilled addressee. The Patent gives no guide as to the
optimum geometry of the support structure but instead appears
to
generally refer to all possible geometries of the described mechanism.
I refer particularly to the arrangement
of the pivot pins for the
attachment of the jacking mechanism and especially to the
determination of the
position for pivot pin 6 about which the support
structure pivots.
[136] Mr Stevens then noted this extract from the
specification:
In the embodiment shown, the pivot pin 6 is positioned in the vicinity of the
external boundary 13
of the vehicle, but it may also be arranged further
inwards, possibly quite close to centrally extended frame side members
in
the vehicle chassis. It is also possible for the pivot pin 6 to be arranged in
the vicinity of the centre of the vehicle even between these frame side
members.
Owing to the direction of inclination, selected according to the
invention, of the support, the pivot pin 6 will be located
at a relatively great
distance A from the centre 14 of the support, said distance being further
increased if the pivot
pin is arranged further down in relation to the vehicle
chassis.
Mr Stevens found the various suggested positions for pivot
pin 6 "misleading and
confusing".
[137] He considered that the position of pivot pin 6 must be as depicted in figure 4
(as opposed
to "further inwards", even possibly "in the vicinity of the centre of the
vehicle ..."). By reference to diagrams which he produced,
Mr Stevens expressed
the opinion that the only practical position of pivot pin 6 was towards the edge of the
sidelifter (as in figure
4), because otherwise the angular movement of the main
bracket would not permit the rotation of the stabiliser leg to a vertical
position.
[138] The witness also observed that the jacking mechanism was required to move
the stabiliser leg through a wide range
of angles and extensions. He considered it
was not a straight-forward matter to optimise the design of the hydraulic jacking
system
to achieve this, particularly as its geometry interacts with the geometry of the
stabiliser leg itself via the main pivot pin. Mr
Stevens concluded that the description
contained in the specification did not enable a skilled addressee to know how the
stabiliser
leg would achieve a vertical position.
[139] Mr Brown was critical of this evidence. He maintained that it was not the
function
of a specification to illustrate the invention to the level of working
drawings. The drawings must disclose the concept and the patent
as a whole the best
method of performing the invention. But geometrical optimisation was not required.
These aspects were the lot
of the skilled addressee, who must by trial and error
produce a practical result based on the enabling disclosure contained in the
specification.
Evaluation of insufficiency / best method
[140] In my view there are two aspects to the question of sufficiency
and
disclosure of best method in this instance. I do not accept Mr Stevens' view that the
specification should have provided guidance
as to the optimum geometry of the
support structure, particularly with reference to the pivot pins for the jacking
mechanism and
for pivot pin 6 which affixes the main bracket to the vehicle itself.
These details, to my mind, fall within the trial and error
field, which the skilled
addressee must work through in order to use the inventive concept in a given
application. Apart from anything
else, it is evident from the respective model
histories of the Hammar and the Steelbro products that there are some differences of
design approach. As might be expected, there is a basic design similarity, but in
terms of component sizes, configurations and exact
placements, there are
differences. These indicate that individualised geometrical optimisation would be
essential on the part of
each competitor.
[141] The evidence of Mr Muirsmeath and Mr Stevens as to geometrical
optimisation given with reference to obviousness,
seemed to me to be of some
relevance in the present context as well. Both men stressed the themes that
geometric tools were
readily available and that with their assistance the solution of a
negatively inclined stabiliser leg was an obvious and inevitable
engineering
modification. The thrust of this evidence indicated that geometrical optimisation
was very much the stock in trade of
engineers in the field and, therefore, part and
parcel of the trial and error process required in order to incorporate and optimise
any
inventive step. For these reasons, I reject this aspect of the defendant's challenge.
[142] Equally I do not accept the contention
that working drawings (it seemed),
rather than concept drawings, were required to be disclosed. The role of patent
drawings is to illustrate the concept so
that, with the description contained in the
specification, a skilled addressee can put the invention into practice. Generally, the
requirement of sufficiency is met if the addressee can perform the invention without
the exercise of any inventive faculty: No-Fume
Ltd v Frank Pitchford & Co Ltd at
243 and 248.
[143] Mr Stevens also focused, however, upon whether the best method of using
the
invention was disclosed, particularly given the suggestion that it was possible to
arrange pivot pin 6 "in the vicinity of the centre
of the vehicle even between [the]
frame side members". The specification added that wherever placed, pivot pin 6
needed to be "at
a relatively great distance" from the centreline of the stabiliser leg,
this "distance being further increased" if the pin was further
down in relation to the
vehicle chassis. These references disclosed the need for the major bracket to be of a
size and configuration
sufficient to establish a distance from the main pivot pin to the
centreline of the stabiliser leg, which would enable the bracket
to pivot the leg to a
vertical position beside the sidelifter.
[144] However, Mr Stevens concluded that the best method was undoubtedly
for
pivot pin 6 to be positioned close to the operational side of the vehicle. Indeed, he
was sceptical whether a negatively inclined
stabiliser leg could function from a pivot
pin towards the centre of the vehicle and further down in relation to the chassis.
Through
the use of diagrammatic representations he demonstrated the problems
arising from such a placement of the pivot pin. This led him
to the opinion that there
was really only one practical position for pivot pin 6 and that was in the general
location in which
it was shown in figures 1-4 of the patent. The references in the
text of the specification to placement of the pin more towards the
centre of the
vehicle and further down in relation to the chassis only served to obfuscate.
[145] Mr Hammar in his second brief
of evidence sought to counter this point. He
referred to a drawing dated April 2008 (at CB 3/649) which depicted a configuration
in which pivot pin 6 was towards the centreline of the vehicle, although at much the
same level in relation to the chassis. To my
mind the drawing is most notable for the
fact that the main bracket is of such an extended size that, if used, the stabiliser leg
would be very considerably elevated above the deck of the sidelifter when in a
stowed position. Interestingly, this very feature
led Mr Hammar to be critical of
Dr Stark's first impression diagrams, by which he contended that the negative
inclination solution
was obvious and non-inventive.
[146] In my view Mr Stevens' evidence does not so much establish that the best
method was not disclosed
(it clearly was), but rather that the water was muddied by
reference to other possible methods. Does this indicate a failure to disclose
the best
method? The disclosure of best method is a good faith requirement. The quid pro
quo for enjoyment of the monopoly is fair
disclosure of the invention. Here, it seems
to me, there was proper disclosure of the best method. The specification identifies
the
embodiment which Mr Stevens strongly favoured, and figures 1-4 depict pivot
pin 6 in the position which he concluded was optimal.
I find that the references in
the specification to other possibilities for the placement of pivot pin 6, do not detract
from the
disclosure of the best method, albeit they are probably unhelpful.
Ambiguity/lack of fair basis
[147] Section 41(1)(i) of the
Act defines this ground of revocation as follows:
(i) That the scope of any claim of the complete specification is not
sufficiently and clearly defined or that any claim of the complete
specification is not fairly based on the
matter disclosed in the
specification:
Mr Miles adopted a statement from Procter & Gamble Co v Peaudouce [1989] FSR
180 at 198 from the judgment of Fox LJ:
A claim must be sufficient and clear so as to define the monopoly upon
which there
can be no intrusion. If there is no clarity, intrusion cannot arise.
It is fundamental to the law that a producer of a product
must know where he
cannot intrude.
[148] The final amended particulars of objections identified nine references from
the
patent which were alleged to be "indeterminate and speculative". However, only
four of these were relied upon in final argument.
I shall refer to each in turn.
[149] Mr Brown submitted in closing that the various allegations of ambiguity fell
away once a proper
construction of the patent was arrived at. He relied upon earlier
arguments addressed with reference to construction of the disputed
phrases/sentences
contained in the specification.
[150] The first allegation of ambiguity related to the phrase "relatively offset
in the
transverse direction of the vehicle". The evidence, arguments and my conclusion as
to the interpretation of this phrase already
appear at paras [39]-[44] of the judgment.
In particular, the conclusion that the phrase, although cumbersome, is intelligible in
the context of the patent as a whole, effectively disposes of this allegation.
[151] The second allegation of ambiguity pertained
to the phrase "longitudinal
extent which in the parking position of the support, essentially corresponds to the
width of the vehicle".
The same situation obtains. I have already considered, and
rejected, an argument that the meaning of this integer was unclear. That
reasoning
(at paras [58]-[59]) is necessarily determinative in the present context, as well.
[152] Next is the phrase "wherein
the ends of the support sleeve are bevelled to
provide end faces that extend substantially vertically". Again, I briefly dealt with
the
interpretation of this phrase at paras [60]-[61]. I am satisfied that its meaning is clear
and, therefore, unambiguous.
[153]
Finally, it was argued that the patent reference to "the pivot pin is arranged
far down in the vehicle chassis i.e. at least below
the platform surface of the vehicle,
preferably in level with the vehicle chassis" was ambiguous. The descriptions "far
down" in
the chassis and "in level" with it, were particularly contrasted by counsel.
Although I have already considered a related issue,
being the reference to a support
sleeve "supported by a pivot pin connected to the vehicle chassis" in claim 1 (refer
paras [45]-[50]),
the present challenge is directed to claim 2 which provides:
A structure as claimed in claim 1, characterised in that the
pivot pin is
arranged far down in the vehicle chassis, i.e. at least below the platform
surface of the vehicle, preferably
in level with the vehicle chassis.
[154] Mr Eaton expressed this opinion:
Claim 2 relates to the position of the pivot pin
[pivot 6] far down in the
vehicle chassis and this is explained to mean at least below the platform
surface of the
vehicle. The arrangement can clearly be seen in figures 1 to 4
of the patent.
Mr Miles argued that this was to ignore the
uncertainty, because the witness focused
upon the characterisation that the pivot pin be far down in the vehicle chassis, at least
below the platform surface, which took no account of the concluding phrase
"preferably in level with the vehicle chassis". It was
this additional reference which
led to confusion and uncertainty, therefore the claim was ambiguous.
[155] I disagree. Figure 1
(see para [36]) depicts the position of the pivot pin as 6,
while the platform is 4 and the chassis 2. Once claim two is read alongside
the
drawing it is evident that the claim emphasises the need for the pivot pin to be far
enough down in the chassis to at least be
below the platform surface of the vehicle
and, preferably, level with the chassis. This accurately describes what is depicted in
figure 1, in that the pin is down in the chassis to a point below the platform, but still
level with the top of the chassis. While I accept that more felicitous wording could
have been employed, the scope of the claim is sufficiently and clearly defined.
[156] It follows that each of the grounds upon
which revocation was sought is
rejected. However, the finding of non-infringement remains and is fatal to the
plaintiffs' claim for
breach of patent.
Copyright
[157] Hammar is the owner of copyright in four drawings prepared in 1998-99
relating to the design
of the stabiliser leg for the SL190 series. It alleges that the
diagrams are graphic works, and therefore artistic works: s2 of the
Copyright Act
1994. Each of the drawings is said to be an original artistic work and, therefore, to
enjoy protection pursuant to
s14(1) of the Act. As Sweden is a convention country
in terms of the Patents, Designs and Trademarks Convention Order 2000
(SR 2000/236),
Hammar alleges infringement of its copyright in the drawings
contrary to the New Zealand Act.
[158] The amended statement of claim
alleges that Steelbro:
copied a substantial part of the copyright works by the making of the
working drawings for
and the manufacture of the support structure
comprised in [its] self-loading trailers model numbers SB361 and SB401.
Steelbro
denies infringement. In particular, it maintains that in producing working
drawings for, and manufacturing, stabiliser legs for its
SB361/401 models, it has
"not copied a substantial part of the works in which the first plaintiff claims it owns
copyright". Hammar's
copyright in the four relevant drawings was not challenged,
rather the defence is that copying has not occurred and that there is
no objective
similarity between the copyright drawings and Steelbro's drawings, or products.
A preliminary pleading point
[159]
Mr Miles in opening the defendant's case was roundly critical of the
plaintiffs' reliance upon Steelbro's working drawings for an
ankle stabiliser, which
were produced around December 2000. The ankle stabiliser was the subject of a
provisional patent specification
in December 2000 and of a complete specification
filed in December 2001, in which the stabiliser leg was depicted stowed in a negative
inclination. Some at least of the working drawings pertaining to the development of
this patent were prepared by Mr Benny Gustavsson.
The plaintiff focused on these
drawings on account of the negative inclination feature and because Mr Gustavsson
was a former employee
of Hammar in Sweden.
[160] Hence, the gist of Mr Miles' complaint was that although the statement of
claim alleged copying in the
context of the SB361/401 working drawings, the
plaintiffs' case at trial involved a focus upon the earlier ankle stabiliser drawings.
Mr Brown disputed that the plaintiffs' case had changed. He submitted that "the
significance of the Gustavsson drawings is that they
were the conduit for and
provided the road to proof of the later infringements".
[161] I do not regard this dispute as of defining
significance. The plaintiffs' case
remains that infringement occurred with reference to working drawings for, and the
manufacture
of, the SB361/401 models; albeit that the origin of the infringement is
said to lie in earlier drawings. I shall need to refer to
this history of events in more
detail, shortly.
The issues
[162] As in Henkel KGaA v Holdfast New Zealand Ltd [2006] 1 NZLR 577 (SC) I
think this is a case which can be considered under two headings: proof of copying
and whether a substantial part of the copyright
work was copied.
[163] There was a marked difference of approach to the aspects of copying and
substantiality. The plaintiffs'
case focused most on the question of copying. It was
contended that there was ample evidence to establish both access to Hammar's
working drawings and that they were probably copied. With reference to
substantiality, the plaintiff emphasised that
it was the inclined orientation of the
stabiliser leg in the parked position, and the bevelled ends to the structure, which
were
the subject of the infringement claim. These features in themselves were said
to constitute a substantial part of the artistic work.
Differences identified by Steelbro
in relation to other aspects of the working drawings were of no moment.
[164] Steelbro both
denied that copying had occurred and that its working
drawings, or products, exhibited a substantial objective similarity to the
copyright
works. With reference to the former its case was that there was no causal connection
between Hammar's copyright works and
Steelbro's development of the SB361/401
models. And, even if the idea to stow the stabiliser leg on these models in a negative
inclination was similar to the approach adopted by Hammar, there were a "myriad of
differences" between the Steelbro products and
those of its competitor. These were
pointed out in the evidence of Steelbro's expert witnesses. They found and
described
numerous differences in the expression of a common solution. Mr Miles
was critical that the experts were not cross-examined concerning
these differences.
Mr Brown, however, maintained that cross-examination was largely unnecessary,
since the differences fell outside
the substantial part of the copyright work which
Hammar alleged had been infringed.
[165] To my mind this marked difference of
focus exemplified the nature of the
respective cases. And, a decision concerning which focus and approach is correct
will also be
determinative of the copyright cause of action.
Objective similarity of a substantial part?
[166] I shall deal with this aspect
first, and then consider whether there is proof of
copying. Section 30 of the Copyright Act provides that "the copying of a work
is a
restricted act in relation to every description of copyright work". In terms of s29(2):
References in this act to the
doing of a restricted act are to the doing of that
act
(a) in relation to the work as a whole or any substantial
part of it; and
(b) either directly or indirectly;
and it is immaterial whether any intervening acts themselves infringe
copyright. (emphasis added)
[167] As to substantiality the Supreme Court in Henkel said this at [44]:
It is not necessary
for the plaintiff to show that the defendant copied the
whole of the copyright work or that the copying was exact. It is enough
if
the plaintiff demonstrates that the defendant copied a substantial part of the
copyright work. This can sometimes
be a difficult matter of evaluation and
is usually the most difficult question which arises in copyright cases. What
amounts to a substantial part in an artistic work case depends more on
qualitative visual impression rather than on quantitative
analysis. As it has
helpfully been put, what must have been copied is the essence of the
copyright work. This is a
subject upon which, in borderline cases, minds can
reasonably differ, and it is appropriate for appellate Courts to give to
the trial
Judge's assessment the degree of latitude that conventionally applies to
appellate review of a discretion.
[168] In evaluating whether there has been copying of a substantial part of a
copyright work the distinction between an inventive
idea on the one hand, and its
expression on the other, must be borne in mind. Copyright does not protect ideas,
but rather the actual form(s) in which ideas are expressed.
[169] And so in UPL Group Limited v Dux Engineers Limited [1989] 3 NZLR 135
(CA) the Court said at 144:
Although we have little doubt that Dux has filched the idea of a connector
piece from
[the plaintiff], that which it has produced is in our opinion not
substantially the same as [the plaintiff's product].
In
other words, copyright protects the expression of a work (provided the form of
expression is original), as opposed to the idea (even
if inventive) which underpins
the work. Hence, at least in a copyright context, Dux was at liberty to filch the idea
of a competitor,
so long as it did not copy the expression of that idea, whether from
working drawings or the product itself.
[170] It follows that
the law of copyright protects the input of the copyright owner
into the original work, as opposed to any inventive idea which may
have preceded
that input. Hence, in Bleiman v News Media (Auckland) Limited [1994] 2 NZLR
673 (CA) Gault J said at 678:
It is perhaps more helpful to consider whether the effort, skill and judgment
of the copyright
owner in the making of his original work has been taken
[appropriated] in the making of what appears, on a realistic assessment,
to be
a reproduction of a substantial part.
[171] The thrust of Hammar's case was confirmed in correspondence between
solicitors
in October 2007, being an infringement in relation to those parts of the
stabiliser leg structure which enabled it to be positioned
in an inclined orientation in
the parked position including the bevelled ends. This was confirmed through the
supply of copies of
the four drawings, dated 15 and 27 January 1998, 14 May 1998
and 14 March 1999 (the copyright works), with the asserted substantial
part
highlighted.
[172] A part of one of the drawings dated 24 March 1999, as highlighted and
supplied to Steelbro's solicitors,
illustrates the plaintiffs' contention.
The expert evidence
[173] As with patent construction, whether there is visual objective
similarity
between a copyright work and the alleged infringement is to be assessed through the
eyes of the kind of person to whom
the relevant drawings are addressed. Visual
similarity and significance to a layman is not the test. Accordingly, I turn to the
expert
evidence.
[174] Mr Eaton described seven aspects embodied in the Hammar design of the 190
series. In order to describe these I
think it is helpful to refer to comparison drawings
assembled by Dr Stark as appendix 3 to his evidence. The drawings show the
respective
stabiliser legs in a stowed position. Helpfully, the drawings are aligned in
order to aid comparison.
11º inclination
B
C
A
D
Chassis
13º inclination
(lift cylinder
mount pin)
B
C
(extension cylinder pivot)
A
(lift cylinder pivot) D
Chassis (Bracket pivot)
The letters (A D) and the word descriptions have been added.
[175]
The seven aspects identified by Mr Eaton (which can be seen in the bottom
drawing) were:
(i) The lift cylinder
pivot (A) is outside the extension cylinder
pivot (C) i.e. closer to the outer edge of the vehicle.
(ii) The lift cylinder mount pin (B) is marginally above the
extension cylinder pivot (C).
(iii) The lift cylinder pivot (A) is above the bracket pivot (D).
(iv) The bracket pivot (D) is below
the top of the trailer chassis.
(v) The lift cylinder pivot (A) is above the top of the trailer chassis.
(vi) Both the lift cylinder, and the extendable leg are inclined at
about 13º away from the bracket
pivot (D).
(vii) The bevelled ends of the extendable stabiliser leg keep the
structure within the width of
the vehicle and reduce the loads
within the structure due to the greater contact area (presumably
of the
foot, while the leg is in operation).
[176] Mr Eaton then referred to the various side lifters manufactured by Steelbro
prior to
the SB361/401 series. He particularly noted that in all of these models the
support leg was parked in a horizontal position. With
reference to the SB361/401
models he noted "a very similar arrangement to the Hammar design". The angle of
incline was described as "clearly not very different from the Hammar angle",
while
points (i) (v) in the previous paragraph were also present. That said, Mr Eaton
accepted that there were differences in relation
to the frame structure and appearance
of the respective designs, but these he attributed to refinement of the design to fit
within
Steelbro's manufacturing capability and reflective of the type of materials
historically used by the company.
[177] In cross-examination,
however, Mr Eaton resiled to a degree. With regard to
points (i) and (ii) he accepted he was mistaken. That is the lift cylinder
pivot (A) is
not outside the extension cylinder pivot (C) in the Steelbro models. And, the lift
cylinder mount pin (B) is not above
the extension cylinder pivot (C). Then, with
reference to the lift cylinder pivot (A) being above the bracket pivot (D) and A also
being above the height of the chassis; and the bracket pivot (D) being below the
surface of the chassis, Mr Eaton accepted that these
features were found in most of
the earlier Steelbro models. In the end result features (vi) and (vii) remained and he
described these
as the critical aspects with reference to whether a substantial part of
the Hammar drawings were copied.
[178] Mr Stevens gave
detailed evidence in support of his conclusion that there was
no substantial objective similarity between the SB361/401 models and
the copyright
drawings. He drew attention to a number of design differences, which may be
captured in a table comparison.
Hammar SL190 Steelbro SB361/401
Stabiliser leg constructed of two Outer box section
not enclosed;
enclosed box sections. rather open as to 55% of upper
surface and 15% of lower surface.
Dimensions of outer box section Dimensions of 200 x 380 x 2.6.
200
mm (wide) x 300 mm (deep)
x 2.6 m (long).
Support bracket a separately Bracket not a separate component;
constructed
component, being rather fabricated as part of the outer
matching steel plates which box side plates
(with some local
"sandwich", and are affixed to, reinforcement plates affixed).
the outer box section.
Distance
of approximately 465 mm Distance from pivot D to the
from the bracket pivot (D) to the vehicle edge just over
200 mm.
vehicle edge.
Extension cylinder pivot (C) lower Pivot C higher and as close to the
and as close to the chassis
as possible. vehicle edge as possible.
[179] Dr Stark's evidence as to copyright was largely founded on a comparison of
Hammar
and Steelbro drawings of the stabiliser leg in various positions. His
comparison of the respective stabiliser legs in the
stowed position is reproduced at
para [174]. Further comparison drawings showing "vertical" and furthest extension
deployment, respectively,
are figures A3.3 and A3.5:
[180] With reference to the difference of about 265 millimetres in the distance from
the bracket pivot
(D) to the vehicle edge, Dr Stark said:
This enables the Hammar design [of the bracket] to have a large concave
curve
facilitating vertical deployment over the wheel .... . By comparison
the Steelbro pivot (D) is substantially closer to the
side of the vehicle with
the outboard face of the stabiliser angularly convex rather than concave.
As to this difference,
see Dr Stark's figure A3.1 (para [174]). By way of conclusion
Dr Stark expressed the opinion that the differences between the respective
structures
were such that the SB361/401 models required their own set of drawings, geometric
calculations and structural strength
calculations. Therefore, in his view, the Steelbro
models were not a copy of the relevant Hammar model.
[181] Given Steelbro's
approach to the construction and fabrication of the support
bracket, both its experts also pointed out that the lift cylinder mount pin (B) was
effectively
connected to the outer box section, not to a separate support bracket as in
the Hammar configuration. Attention was also drawn
to the different inclinations of
the structures in the stowed position, being 13º (Hammar) and 11º (Steelbro).
Evaluation of the
expert evidence
[182] The focus is necessarily upon the similarities evident in the respective
designs. I have already made the
point that in comparing engineering drawings it is
the impact upon an engineering eye which is important. Matters of detail, which
may not attract the eye of a layman, may nonetheless be important. Equally, the
originality, or distinctiveness, of the copyright
work will be relevant to the
assessment of substantiality. Conversely, manufacturing and engineering constraints
may dictate that
product design is necessarily similar. In such cases even lesser
differences of design may be of significance.
[183] As to these
aspects the judgment of Hoffmann J in Billhofer Maschinenfabrik
GmbH v T H Dixon and Co Limited [1990] FSR 105 is instructive. Copyright
infringement was alleged in relation to design drawings for a laminating machine,
which gave a glossy finish
to sheets of paper by covering them with a thin
transparent layer. Billhofer, a German engineering company, launched a new design
of a film laminating machine, which it alleged was copied by Dixon, an English
engineering company. The laminating process essentially
involved affixing a thin
transparent film (using a water-based adhesive) to a roll of paper, which was then cut
into sheets of the
desired size. Integral to the process was a revolving drying drum,
around which the thin film passed immediately after the water-based
adhesive was
applied. The copyright claim centred upon Billhofer's design of the drying drum,
about which were mounted numerous tubes
supplying jets of air onto the surface of
the film in order to optimise adhesion to the paper at the next point in the process.
The
copyright claim in part concerned the dimensions of the drying drum and the
positioning, number and size of the adjacent tubes supplying
the jets of air.
[184] In the context of arguments concerning the assessment of engineering
drawings and whether the defendant
had taken a substantial part of the plaintiff's
design, Hoffmann J said at 121:
It follows that the substantiality of part
of an artistic work depends upon the
importance of the particular dimensions and spatial arrangements depicted
and
not merely upon the importance of the underlying idea which they
express.
Later at 121-2 he added:
... the question
of whether the actual dimensions and relationships visually
depicted on the drawings are sufficiently important to be a substantial
part
must in my judgment depend upon their significance to the kind of person to
whom the drawings addressed. To regard
"visually significant" as meaning
significant to the layman is in my view illegitimate.
[185] Later still at 122 the Judge
said:
... the question in this case is whether the particular dimensions and spatial
arrangements taken by Mr Hardcastle
from the Billhofer design would to an
engineer have been of sufficient importance to constitute a substantial part of
the overall drawing. This is a question of fact and degree.
Mr Howe, who appeared for Billhofer, warned me against deciding
this
question by over-dissecting his client's design. There was, he said, a
sufficient overall resemblance in the drum
assembly to amount to
reproduction of a substantial part. In my judgment, however, the overall
resemblance lies principally
in the fact that both machines have drum dryers
with air tubes. This is not a consequence of the reproduction of visually
significant information but because of Dixon's legitimate adoption of the
underlying concept.
Then followed reference
to points of detail, which comprised considerable
differences, in relation to the embodiments of the drying drum in the respective
designs.
[186] I regard the subject-matter of this copyright claim as broadly similar to that in
Billhofer. For reasons which will
emerge shortly, I consider it is likely that Steelbro
filched the idea of a negatively inclined stabiliser leg from the example provided
by
the Hammar SL190 model. But, I am not persuaded that the visual features of the
SB361/401 models are quantitatively sufficient
to render them reproductions of a
substantial part of the Hammar copyright drawings. Certainly there is a degree of
visual similarity
between the two. But, as in Billhofer, I think this is the product of
adoption of the underlying concept of negative inclination
and bevelled ends. And
whether an engineer would consider there to be sufficient similarity in terms of the
dimensions and spatial
arrangements as to constitute a substantial part of the
copyright drawings, is another matter.
[187] Generally, I accept the evidence
of the defence experts that, while the
respective designs demonstrate the adoption of a common idea, the embodiments are
significantly different.
In particular I regard the positioning of the bracket pivot (D)
as a marked distinguishing feature. In the Hammar embodiment this
critical pivot
point is about 465 millimetres from the side of the vehicle, whereas the comparable
distance in the Steelbro embodiment
is just over 200 millimetres. This difference
was described by Mr Stevens as having "a major impact on the relative capabilities
of the two mechanisms and is not trivial". He added that if the Steelbro design was a
copy he would not have expected a difference
of this magnitude. Later he noted that
the difference affected the swing of the respective support structures and the extent
of the
articulation required in relation to each stabiliser leg.
[188] Probably unsurprisingly, given the difference in the positioning
of the bracket
pivot (D), the geometric arrangement of the other pivot points (A, B and C) are at
least subtly different as well.
In particular, the extension cylinder pivot (C) in the
Steelbro embodiment is higher and closer to the far edge of the vehicle; while
the
lift cylinder mount pin (B) is lower than (C). By comparison the Hammar
embodiment depicts the extension cylinder
pivot (C) closer to the chassis level and
marginally below the level of the lift cylinder mount pin (B). Consistent, I infer,
with
these geometrical differences, the negative inclination of the two support legs
differs to some extent, a difference of about 2º.
[189] In addition there are other obvious visual differences in the two
embodiments. These reflect differences in the manufacture
of the respective support
structures. The construction of the outer and the inner hydraulically extendable box
sections are markedly
different, as is the configuration of the support bracket by
which the leg is pivoted from the vehicle chassis. While
these may be less
significant than the other differences to which I have referred, they further erode the
contention of copying,
rather than support it.
[190] This conclusion is necessarily fatal to the case of copyright infringement.
However, in case I am
wrong in concluding that there is insufficient objective
similarity between the Steelbro embodiments and a substantial part of the
copyright
work, I shall consider the further issue, whether there is proof of copying.
Proof of copying
[191] In closing argument
Mr Brown observed that in most copyright cases proof
of copying was a matter of inference. This case, however, he characterised as
one
where the causal connection was clear and direct. Commencing not later than 2000
there was a trail of drawings, culminating in
those for the SB361/401 models, which
established copying of the Hammar designs.
[192] While this was not initially obvious to
the plaintiff, following eventual
discovery of highly relevant documents, and the administration of interrogatories,
more of the
picture emerged. A trail extending back to 2000 prompted an
amendment to the statement of claim to include the cause of action
for copyright
infringement.
The relevant chronology
[193] In April 2000 Benny Gustavsson commenced employment with Steelbro in
Christchurch as a design draughtsman. Previously, from 1997, Mr Gustavsson was
employed by Hammar. He worked on the development
of the SL190 series,
including drawing at least one of the copyright works.
[194] In May 2000 the first Hammar side lifter from
the 190 series was sold in New
Zealand.
[195] In August 2000 Steelbro commenced work on an improved stabiliser leg,
incorporating
in particular an ankle which was pivotable relative to the stabiliser leg
extension member, so that the ankle (or foot) could be
stowed in a substantially
perpendicular position and could also be deployed in a fixed position at the end of
the leg when in use.
Mr Alan Swarbrick, a Steelbro engineer, commenced work on
the design of the improved stabiliser leg in August 2000. The following month
Mr Gustavsson produced a drawing of the structure
in a closed (stowed) position.
The embodiment showed the leg in a negative inclination, with bevelled ends
matched to the overall
width of the structure.
[196] On 19 December 2000 Steelbro filed a provisional specification for the
improved stabiliser leg, including
further similar drawings produced by Mr
Gustavsson. The answers to interrogatories dated these drawings in November 2001,
but at
trial it was accepted that the correct date was about a year earlier. This was a
significant concession.
[197] Further iterations
of the drawings for Steelbro's improved stabiliser leg were
drawn during 2001, culminating in the filing of a complete specification
on
19 December of that year. The final embodiment incorporated the features of
negative inclination and bevelled ends.
[198]
With reference to the development of the SB361/401 models Gregory
Muirsmeath outlined the development history on behalf of Steelbro.
He joined the
company in August 2001. He described a process of: obtaining feedback from
interested parties, development of performance
criteria specifications (three
versions), establishment of design parameters, a geometry optimisation process,
detailed design work,
development and testing of a prototype and the launch of the
new product. These steps occurred between about September 2001 and late
2004,
although work on the new series was not continuous.
[199] With regard to the change to a negative inclination of the stabiliser
leg in a
stowed position, Mr Muirsmeath described this as "no earth shattering decision",
rather a design change which was "obvious
and of modest consequence". It was, he
said, a direct product of a geometry optimisation process undertaken using
sophisticated computer
programmes. This process, through trial and error, enabled
the optimum positions for the five main pivot points to be identified
given the
change to stowage of the structure at a negative inclination. This optimisation work,
however, was undertaken by Mr Swarbrick.
He did not give evidence.
[200] Mr Muirsmeath said the optimisation process occurred in November-
December 2001. He referred to
working drawings (CB4/714 and 4/727) as examples
of product from the optimisation process. These showed the stabiliser leg in a
negative
inclination. Final development of the SB361/401 models was protracted.
Other development projects received priority. And, it must
be remembered that the
stabiliser leg was but one part of an entire vehicle structure, including sophisticated
cranes of the necessary
lifting capacity. Mr Muirsmeath's evidence indicated that he
was closely involved in this development work from 2002 to late 2004.
The evidence of David Jeffery
[201] In the meantime, partway through the development process detailed by
Mr Muirsmeath, Mr David
Jeffery made a number of visits to Steelbro's yard about
which he gave evidence. Mr Jeffery is an owner driver. In late April 2002
he
acquired a Hammar 195 swing lift trailer. One of his regular jobs was a delivery run
from Lyttelton to Steelbro's Christchurch
yard. Upon his first visit to the yard with
the new rig he noted Steelbro employees paying close attention to it. On subsequent
visits
he found that what had previously been a five minute exercise became much
more protracted. He was asked to wait for further directions
concerning where to
place the container to be offloaded. A number of employees would gather, including
better dressed men from the
office area. Numerous photographs were taken. Over a
number of visits attention was paid to some particular part of the trailer or
some
aspect of its deployment.
[202] In cross-examination Mr Jeffery was challenged concerning whether he had
received commission
payments from Hammar or favoured treatment in relation to
service work on his gear. He said he had not. Challenged as to the degree
of interest
shown in his trailer, and the number of occasions upon which, and the number of
photographs, taken, Mr Jeffery was not shaken. Cross-examination
ceased.
The rival arguments
[203] Mr Miles relied on the evidence of Mr Muirsmeath, whom he described as a
careful and credible
witness, who denied copying and was not cross-examined on the
point. Counsel criticised the reliance placed upon drawings produced
in the context
of obtaining a patent for the ankle stabiliser in the period 2000-2001, when the
plaintiffs' case was pleaded with
express reference to working drawings for, and the
development of, the SB361/401 models. Significantly, the patented ankle design
was not incorporated in the stabiliser with which this case is concerned.
[204] In relation to Mr Gustavsson, Mr Miles stressed
that he worked at Steelbro's
Christchurch plant from April 2000 to May 2002 and from June to August 2003.
Although he did some drafting
work in relation to the SB361/401 project, his role
was very much secondary to that of Mr Muirsmeath. With reference to the evidence
of Mr Jeffery, counsel submitted that whether or not it was exaggerated, the evidence
was "unremarkable". It was perfectly usual
for competitors to take a close interest in
each other's products and to draw comparisons between them. What occurred in
relation
to Mr Jeffery's rig should be viewed in this light and did not infer copying.
[205] Mr Brown was roundly critical of Mr Muirsmeath's
role as Steelbro's sole
witness with reference to the design path leading to the SB361/401 models. He only
joined the company in
mid-2001. Inevitably, therefore, a significant portion of his
evidence contained "imbedded hearsay". The optimisation process was
the critical
phase of the development history. To it was attributed the change to a negative
inclination of the stabiliser leg. Yet,
the expert evidence established that computer
optimisation was only a tool. Use of the computer enabled calculations to be
undertaken
which would otherwise be laborious and time-consuming. But, it
remained the case that the person using the computer
drove the process. The
selection of coordinates, by trial and error, produced the optimal answer.
[206] This meant
that the failure to call Mr Swarbrick was highly significant.
Computer optimisation was said to have brought about the change to
a negative
inclination, but it was Mr Muirsmeath who was left to make this assertion, when he
had no first hand involvement in the
process. This circumstance, said Mr Brown,
explained and justified his election not to cross-examine Mr Muirsmeath concerning
this
aspect. Indeed, the defendant's failure to call Mr Swarbrick was said to invoke
the principle in Jones v Dunkel [1959] HCA 8; (1959) 101 CLR 298 (HC), namely that the failure of
a party to call a witness may invite an inference that the missing evidence could only
have been
adverse to that party's case.
[207] Mr Brown argued that the evidence as a whole clearly pointed to the negative
inclination feature
having been adopted by Steelbro well before the geometry
optimisation work undertaken by Mr Swarbrick in late 2001. At least a year
earlier,
and while Mr Gustavsson was working for Steelbro, the concept of negative
inclination was used in relation to the drawings
for the ankle stabiliser patent.
Subsequently, despite Mr Muirsmeath's best endeavours to fill the gap left by the
failure to call
Mr Swarbrick, there was no document path which evidenced the
change to a negative inclination design. Instead, Steelbro resorted
to the "mantra of
optimisation", to use Mr Brown's words. Hence, counsel submitted, copying
occurred in relation to the
drawings for the ankle stabiliser patent and these were
"inevitably carried through into the drawings which Mr Muirsmeath made at
a much
later stage of the process".
Evaluation
[208] I can set out my conclusions on this aspect quite briefly. It is, I think,
essential to first restate what must be copied. In terms of Bleiman (see para [170]), is
it established that Steelbro appropriated
the effort, skill and judgment evident in the
copyright works of Hammar? In that regard it is the drawings which must be copied,
not the idea which underpins them.
[209] To my mind the evidence in this case strongly supports the conclusion that
Steelbro filched
the idea of negative inclination of the stabiliser leg from Hammar.
Mr Gustavsson was first employed in New Zealand in April 2000,
relatively soon
after he had worked for Hammar in producing drawings required for its Swedish
patent. As Mr Brown rightly emphasised,
the concept of negative inclination first
appeared in relation to the design of Steelbro's ankle stabiliser which was
provisionally
patented in December 2000. I accept the emergence of this innovation
was no mere coincidence. The strong likelihood must be that
Hammar's idea was
transported from Sweden to New Zealand. I also accept Mr Brown's submission
that once adopted, negative inclination
was carried through to the SB361/401 models
a few years later.
[210] But this does not, in my view, establish copying of the copyright
works.
There may often be a substantial overlap between the elements of substantiality on
the one hand, and copying on the other.
The conclusions I have already expressed in
relation to substantiality impress me as relevant to copying as well. Mr Eaton
articulated
several features of the copyright works which were of particular
significance. However, I have not found this evidence persuasive,
both because a
significant number of the features were not found in the SB361/401 models and
because there were other significant
differences of design identified by the expert
witnesses for the defence. This suggests that the geometric optimisation process
undertaken
by Mr Swarbrick did influence the design of the new Steelbro models to
a substantial degree. That is, although I find that the optimisation
process did not
spawn the idea of negative inclination, it did influence Steelbro's design details to
the point that neither substantiality,
nor copying, are established.
[211] For these reasons the copyright cause of action must fail.
__________________________________________________________________________
Solicitors:
Henry Hughes & Co, Wellington for Plaintiffs
Buddle Findlay, Auckland for Defendant
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