Peterson Portable Sawing Systems Limited (In Liquidation) v Lucas
Supreme Court of New Zealand, 30 March 2006
This decision is the first patent case to come before New Zealand’s final appellate court, the Supreme Court, since the abolition of the Privy Council. The reasons of the court were given by Gault J, the Court’s specialist intellectual property judge, on what was his final decision before retirement.
The respondent’s patent covered a portable sawmill with improved lateral and longitudinal stability. The patentee sued Peterson for infringement. Peterson counterclaimed that the patent was invalid. The specification acknowledged as prior art a portable sawmill construction sold by the appellant known as the Peterson Standard Frame Mill. A further piece of prior art was the Lewis portable sawmill which had been used in New Zealand and was the subject of a US patent prior published in New Zealand.
In its decision, the Supreme Court reversed both the High Court (Fisher J) and the Court of Appeal and found that the patent was invalid for both lack of novelty and obviousness. The key points to note from the decision were:
(a) Patent construction and novelty
The Supreme Court adopted a conventional approach to construction. The 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 art. Each part of the specification is to be read objectively in its overall context and in the 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. The description in the body of the specification may assist interpretation but it cannot modify the monopoly the inventor has marked out in the claims.
Here the court was found to have wrongly limited the relevant claim by reference to the description, including that of the prior art, in the body of the specification. The Court held that the claim must stand on its own wording.
Once the relevant claim was properly construed, the Court held that the Lewis sawmill as used in New Zealand and described in a US patent published in New Zealand before the priority date anticipated that claim and made it invalid for lack of novelty.
(b) Obviousness
The Supreme Court reaffirmed the approach to obviousness taken by the Court of Appeal in Ancare [2001] 3 NZLR 299 that the principles in New Zealand are the same as those adopted in England under the UK Patents Act 1977, being those articulated in Windsurfing International Inc v Tabur [1985] RPC 59, 73-74 and Mölnlycke AB v Procter & Gamble Limited (No. 5) [1994] RPC 49, 112-115.
In this case the Supreme Court noted that an additional factor to be considered in the approach to obviousness was that the invention here consisted of a combination of elements. The Supreme Court adopted the approach of the House of Lords in Sabaf SpA v MFI Furniture Centres Limited [2005] RPC 209. If two integers interact upon each other, if there is synergy between them, they constitute a single invention having a combined effect and one assesses whether there is an “invention” in relation to the idea of combining them. But if each integer performs its own proper function independently of any of the others, then each is a separate invention and whether there is an “invention” has to be applied to each integer separately.
In the relevant patent claim in this case, each of the two relevant features relating to a portable sawmill - the concept of separate rails and the concept of moving means by which the rails could be raised or lowered in unison - performed its known function. “Neither incorporates an inventive concept. Combining them cannot amount to an inventive step”. Further there was no inventive step in mechanising by standard means, such as a winch, a construction operated manually. Nor could there be an inventive step in taking the Lewis mill, dispensing with the facility to move the rails horizontally, and coupling the rails directly to the vertical sides of the frames. The Court found that the claimed inventive concept was obvious.
(c) Commercial success
At first instance, Fisher J had placed weight on the commercial success of the “package” produced by the respondent. But the Supreme Court urged care in looking at commercial success. The witnesses had not distinguished between the sawmill marketed by the respondent and the combination of features claimed in claim 7. The “package” was not the appropriate focus. Commercial success had not been proven arising from the features in claim 7 as opposed to other features.