HELD:

Stare decisis

Judge Hurt, Acting Judge of Appeal, wrote the judgment of the SCA.  Dealing first with the effect of the Flag & Flagpole judgment on the SCA’s judgment in the present case, the Court found that it is not sitting as some sort of “Second Court of Appeal” in judgment on the Flag & Flagpole case.  The judgment in that case, insofar as it concerned the interpretation of the specification and/or the claims of the patent in issue, and insofar as it incorporates findings that the patent and the registered design had not been anticipated by the prior art, defines rights of a statutory nature which apply as between the patentee/registered proprietor and the public at large, and not merely between the parties to the litigation.

Accordingly, and especially in the present situation, the Court would only be justified in declining to follow the interpretations and the rulings on anticipation in the Flag & Flagpole judgment in very restricted circumstances, which had been concisely stated in Bloemfontein Town Council vs Richter 1938 AB 195 at 232 viz

“The ordinary rule is that this Court is bound by its own decisions and unless a decision has been arrived at on some manifest oversight or misunderstanding that is there has been something in the nature of a palpable mistake, a subsequently constituted Court has no right to prefer its own reasoning to that of its predecessor – such a preference, if allowed, would produce endless uncertainty and confusion.  The maxim ‘stare decisis’ should, therefore, be more rigidly applied in this, the highest Court of the land, than in all the others.”

Counsel for the appellants had refrained from contending that the judgment in the Flag & Flagpole case was tainted by the type of oversight or error contemplated in the above passage.

“Purposive Construction”
Counsel had, however, persisted in a submission to the effect that the approach of the SCA in the Flag & Flagpole case had not been consistent with South African law and that, in considering the issue of infringement in this case, the Court should have regard to the caution which had been expressed by Plewman JA in Nampak Products Ltd and Another v man-Dirk (Pty) Ltd 1993 (3) SA 708 (SCA).  Counsel for the appellant had submitted that the tendency to “purposive construction” of patent specifications and claims in English law had been affected by the introduction of Section 125 of the English Patents Act of 1977 and Article 60 of the European Patent Convention.  These statutory provisions have no force in South Africa, with the result that the developments pursuant to them were not applicable to the interpretation of patents by our Courts.  The result, or so it was contended on behalf of the appellants, would be that the “time-honoured approach” to interpretation in our law needed to be, but was not, applied in the Flag & Flagpole case.  Counsel for the appellants suggested that the Court should revert to the more “literal” approach and minimise the role which the apparent intention of the patentee might play in deciding what the claims mean and which particular aspects of them should be regarded as “essential elements or integers”.

The SCA found that nowhere, in the relevant passage in the Nampak case, had the judge disapproved of the Catnic approach – he had simply cautioned that it should be applied with care.  The “purposive approach” had received the authoritative endorsement of the SCA.  It was, however, true that Catnic had not changed the law relating to construction, but it certainly had restricted the scope for contesting litigants to indulge in “meticulous verbal analysis” of the specification and claims, usually to an extent which would have been inconceivable to the ordinary skilled addressee reading the patent to ascertain the invention and the ambit of protection claimed.  The ambit of the “purposive approach’ relieved the Courts of the metaphorical “straight jacket” of having to arrive at any interpretation of claims without having free recourse, subject to well established limits, to the specification in order to decide what the skilled addressee would have understood those claims to mean.

The Patent - Invalidity
Dealing first with the alleged invalidity of the patent, the SCA found that its interpretation of the prior art in the previous Flag & Flagpole case was a question of law and that the appellants had not been able to pass the hurdle set in the Bloemfontein Town Council judgment.  Accordingly, the SCA found that the patent was valid.

The Patent - Infringement
On the issue of infringement and the presence of integer (b)(iii) in “The New Heights flag”, the appellants’ counsel had contended that the claim was to a pole having certain characteristics and not for a pole in conjunction with anything else, more especially any material.  The SCA found that there was no substance in this contention.  The patent had already been considered by seven judges, none of whom had been asked to find that claim 1 related to a pole without the material.  Nor, at this late stage of the proceedings, was it necessary for the SCA to say any more than that the experienced flag maker, reading the specification and claims, would not possibly be under the impression that the main claim described a pole stripped of the material with which it must be coupled to comprise a “flag construction”.

The appellants also repeated the contention that integer (b)(iii) was missing in “The New Heights flag”, on the basis of Judge Southwood’s earlier finding in the Flag & Flagpole case that it defined a pole which was adapted (in the sense of “being made suitable” or “altered so as to fit”) to engage (in the sense of “to fasten or attach”) the material.  Judge Claassen in the present case had declined to follow the reasoning of Judge Southwood in regard to this issue.  He had taken the view that the word “engage” had been used in the sense of requiring the pole to be able to conform to the shape of the upper periphery of the material.  The SCA agreed with this construction, inter alia having regard to the circumstance that the word “engage” has a special technical meaning of “to interlock with or to fit into a corresponding part”.  Conclusive to the resolution of this issue, however, had been the judgment of the SCA in the Flag & Flagpole case where it had held that, on a proper interpretation of claim 1, the essential requirement was that the pole and the material just be attached to each other, the precise manner in which the attachment is achieved not being material.  Also, claim 4 required that the material include a seam or sleeve along one edge, into which the tapered end of the pole could be slid.  To construe claim 1 as essentially requiring some mechanism of attachment to be incorporated in the pole, as opposed to the material or to both, would be inconsistent with claim 4.  This would be contrary to the “normal rule” of interpretation of claims referred to in previous judgments of the SCA.

As to integer (b)(iv), the appellants contended that there was a material difference between the “spiral” shape of the upper section of “New Heights flag” and the “semi-circular” contour of the flag depicted in the patent as an embodiment of the invention.  In essence, the contention was that in rejecting the contention (in the Flag & Flagpole case) that the prior art was an anticipation of the patent, the Court had emphasised that the particular shape referred to in the prior art could not be equated to the “inverted U” claimed in the patent in suit.  Accordingly, by “reverse application” of the adage “that which would infringe if later anticipates if earlier”, the corollary to the finding referred to would be that the article described in the prior art would not infringe the patent in suit because the shape of its upper periphery would be different to that claimed in the patent in suit.  Since there is, likewise, a material difference in the shape of “The New Heights flag” compared to the article claimed in claim 1, there cannot be an infringement.

The SCA found that this submission was flawed on two fronts.  In the first place, claim 1 refers to the pole being bent into a “substantially U-shaped section”.  The skilled addressee would appreciate that the ultimate shape of the taut upper periphery of the flag, given that the pole and material are required to engage each other, would ultimately be dictated by the arc taken up by the flexed pole and the shape of the periphery of the material.  He would not construe the claim as being confined to an article in which the combination of the flexed pole and its attachment to the flag material produced an inverted U.  Secondly, it was clear that the prior art patent contemplated a wide range of shapes.  It was trite that, in considering whether an earlier document “describes a later claim”, “the wider or more general the language” (of the earlier document), the less likely it is to render the specific invented process (claimed in the later patent) identifiable and perceptible and therefore to “describe it”.  The article contemplated as a part of the invention in the prior art patent was generally described as having a “curvilinear edge” which term plainly embraces a wide range of curved shapes.  Accordingly, the finding that the prior art patent did not anticipate the patent in suit did not, as a matter of logic, have the necessary result that a spiral shape upper section could not fall within the ambit of the expression “substantially U-shaped”.

Finally, on the issue of infringement, Counsel for the appellants contended that the pole contemplated by the claims in the patent was a single unit.  Since “The New Heights flag” pole was in segments, it could not fall within the scope of the claim.  The Court, in rejecting this, again referred to the remaining claims, in particular claims 2 and 3.  Claim 2 required that the top end of the pole include a flexible section of fibreglass which tapers to a narrow diameter.  Claim 3 required that, in the pole of claim 2, the tapered section be integral with the pole.  The necessary implication therefore was that claim 1 included, within its scope, a multi-component pole.

The Design - Validity
In regard to the validity of the design, the Court again stated that there was no reason to depart from its findings in the Flag & Flagpole case.

The Design - Infringement
Insofar as infringement of the design was concerned, the appellants repeated their unsuccessful contention in first instance, that there were significant differences between the shape of “The New Heights flag” and the shape depicted in the registered design shown above.  They emphasised (a) the difference in the shape of the curved upper periphery of the design compared with that of “The New Heights flag”; and (b) the “multi-components with their peculiar interaction” of “The New Heights flag”.  The SCA found that the difference alleged in (b) was a functional feature which was not relevant in assessing differences between “The New Heights flag” and the aesthetic design for which protection was claimed.  In regard to contention under (a), the differences between the two contours must be gauged through the eye of the “likely customer”.  Although there had been no specific evidence in that regard, the SCA came to the conclusion that it was fair to assume that a very large proportion of the customers in this instance would be attracted to the tear drop shape of the flag, which was plainly a striking feature of the registered design.  Comparing the shape of the design with that of “The New Heights flag”, through the eyes of a hypothetical customer, the SCA did not consider that the subtle differences in curvature over the upper periphery of the two flags would be regarded as significant.  It followed that “The New Heights flag” was an infringement of the registered design.

Contributory Infringement
On the issue of contributory infringement, the SCA repeated that this is not recognised as a species of patent infringement in South African patent law, rather as a delict under the common law.  As such, a requirement for contributory infringement is knowledge by the contributory infringers that their actions would lead to infringement.  In an aside, the SCA stated that the law in South Africa had developed to the point where a revision of this approach to be more in line with the United States approach was probably called for.  In any event, however, the SCA found it unnecessary to make a finding of contributory infringement.  Rather, it found that the facts established in the Court of first instance during the hearing of oral evidence from witnesses on behalf of the appellants, justified the inference that the appellants had not separately acted bona fide in the matter, and that they knew what was being done with the various separate components which each was manufacturing.  Accordingly, the appellants had directly infringed the patent.  The appeal was therefore dismissed.

COMMENTS:
The SCA has seemingly now confirmed that purposive construction is part of our law and is to be applied in determining the scope of claims in South Africa.  It did not review its construction of claims as requested by Counsel for the appellants, to differ from that of the Flag & Flagpole case.

However, the Court still had regard to the division of the claim into integers, and also to interpreting the integer of claim 1 in a manner which would make it consistent with claims 3 and 4 thus applying principles which had been laid down in previous cases.  In short, although purposive construction is part of our law, it is not clear to the author to what extent “purposive construction” has supplanted the “normal rules” of interpretation of claims.  Perhaps the Supreme Court of Appeal will take the opportunity in upcoming cases to set out, clearly and unequivocally, the principles of claim construction as they should be applied, in much the same manner as it did in the now famous Gentiruco AG vs Firestone Pty Ltd case.

This case is also interesting because the same patent and registered design were found to be anticipated by Judge Southwood, but upheld by Judge Claassen on the same prior art.  Similarly, they were held to be not infringed by Judge Southwood, but infringed by Judge Claassen, who took opposite views on the same integer and the meaning of the term “engage”.  The SCA preferred Judge Claassen’s approach.  Judge Southwood is, with respect, the most experienced IP judge in the Court of the Commissioner of Patents.  In the author’s view, the emergence of judges like Judges Claassen and Botha as Commissioners of Patents bodes well for the state of the patent judiciary in South Africa.

Dario Tanziani
Partner (Chairman: Patent Department)
dft@adamsadams.co.za