Rehm Pty Limited v
Websters Security Systems (International) Pty Ltd [1988]
FCA 232
FEDERAL
COURT OF AUSTRALIA
GUMMOW J
GUMMOW
J:
Introduction
These proceedings were commenced in 1986, that is
to say, before the passage of the Jurisdiction
of Courts (Miscellaneous Amendments) Act 1987. The significance of that
circumstance shortly will become apparent. The applicant and the first, second
and third respondents are companies incorporated in New South Wales. From time
to time between 26 May 1986 and 10 November 1987, the first respondent supplied
to the second respondent on a retail basis products known as the Hirsch
Micro-50 and the Hirsch Micro-55 Access Control Security Systems. The first
respondent has imported these products from the United States since early 1986.
In July 1987, the first respondent agreed with Talbot Street and Associates to
sell the Hirsch products to a joint venture company and in August 1987 the
third respondent was acquired for this purpose. The fourth and fifth respondents
are directors of the third respondent and the fifth and sixth respondents are
directors of the first respondent.
The applicant is the registered proprietor of
standard patent No. 537136 which was granted pursuant to the Patents Act 1952 ("the Patents
Act") for an invention entitled "Improvements in Security Means"
("the patent"). The provisional specification was lodged on 15
February 1980, and the complete specification was lodged on 5 February 1981.
The term of the patent is a period of 16 years commencing on 5 February 1981.
The patent was sealed on 27 September 1984.
The applicant alleges that the first respondent has
imported into Australia from the United States the two Hirsch security systems
which I have mentioned; the importation of those products together with the
advertising for sale, offering for sale and selling of those products are
alleged to be infringements of the patent by the first respondent. It is
further alleged that the advertising for sale, offering for sale and marketing
of those products by the second and third respondents likewise constitutes
infringement.
The applicant also complains of alleged
contraventions of s. 52 of the Trade Practices Act 1974 ("the TP Act") together
with contraventions of sub-ss. 53 (c) and (g) of that Act; the jurisdiction of
this Court thus initially was attracted by s. 86 of the TP
Act. The complaint arises from the circulation of various brochures and other
written material by the first, second and third respondents. It is then said
that the fourth, fifth and sixth respondents have aided, abetted, counselled or
procured the contraventions by the corporate respondents and further that they
have been directly or indirectly knowingly concerned in or parties to such
contravention, within the meaning of s. 75B of the TP Act.
Little time was spent at the trial in dealing with
the trade practices allegations, and their fate was seen by both parties as
following the outcome of the patent dispute. This was because the complaints
made of the advertising material, in essence, are directed at assertions made
therein which would be accurate if the respondents were successful in the
patent dispute; if the applicant were successful in the patent dispute, then
the parties indicated to the Court that the future dissemination of these
advertising materials probably would be dealt with by consent orders or other
means not requiring further resolution of any dispute by the Court.
Accordingly, I turn to the patent matter. The
patent contains seven claims and attention has been directed principally to
claim 1, on the footing that if the products in question infringe claim 1,
there is no need to deal with claims 2-6 inclusive. However, the applicant
pressed an allegation of infringement of claim 7 as not necessarily following
the fate of the allegation of infringement of claim 1.
In addition to resisting the allegations as to
infringement, the respondents, by cross-claim, put in question the validity of
claim 1 (and the other claims, so far as it is necessary for the purposes of
the case to do so). Section 115 of the Patents Act enables revocation to be sought in this way
without presenting a petition under s. 99.
By the cross-claim, allegations were made as to
want of novelty and as to obviousness. A considerable proportion of the
material in the affidavits which were filed was devoted to those topics. But at
the commencement of the hearing the Court was informed that the respondents no
longer pressed lack of novelty and obviousness. The respondents still pressed
an allegation of want of fair basing (within the meaning of sub-s. 40 (2) and
sub-para. 100 (1) (c) of the Patents
Act), together with a further and fresh allegation of lack of utility
(within the meaning of sub-para. 100 (1) (h) of the Patents Act).
The trial proceeded on the basis that it was only
with these two grounds that the attack on validity was concerned. I should also
note that Counsel were agreed that if the applicant was successful in its
allegation of infringement and in resisting the attack on validity, then
questions of the form of injunctive and ancillary relief and of the conduct of
any inquiry as to damages or for an account of profits, should stand over for
further submissions.
Allegations also are made in the cross-claim that
the applicant has made to the second respondent unjustifiable threats within
the meaning of s. 121 of the Patents Act and by those threats also
contravened s. 52 and sub-s. 53 (g) of the TP Act. This aspect of the case may also
be left until resolution of the patent infringement and validity issues.
The cross-claim also denies jurisdiction in the
Court to entertain the proceedings for patent infringement, presumably on the
basis that there is no associated matter within the meaning
of s. 32 of the Federal
Court of Australia Act 1976. No submissions were made in support of that
allegation. I have treated it as a pleader's conceit (albeit an embarrassing
one in the technical sense) in the light of American
Optical Corp. v Allergan Pharmaceuticals Pty. Ltd. (1985) ATPR 40-539.
The Body of the Patent Specification
As I have indicated, the invention is entitled
"Improvements in Security Means". The complete specification opens
with a general description of the invention and a statement of the problem to
which it was directed. It does so thus:
This invention
relates generally to security systems. More particularly, it relates to access
control systems which may be used for controlling access to, for example,
safes, strong rooms, buildings, security areas in buildings, computer terminals
and electronically stored information such as credit records, just to mention a
few of the applications where security is required.
Many types of access
control systems have been devised over the years, from the earliest forms of
key operated locks, to the sophistication of combination locks and the
relatively recent advent of electronically coded card key systems and readers.
None of these systems has been particularly satisfactory, however, since more
and more sophisticated procedures have been developed to defeat them. Keys can
be duplicated, combinations can be broken by trial and error or detected by
observation of an authorized person opening the combination controlled lock and
electronically coded card keys can be forged.
The complete specification goes on to describe a
previous proposal and the shortcomings thereof. It does so in the following
terms:
It has previously
been proposed to provide an access control system incorporating a manually
actuable keyboard, the keys of which are selectively actuable to generate a
code which, if correct, will provide the necessary access. This system has the
advantage that there is no key or card which can be lost, stolen or forged, but
conventional keyboard systems suffer a similar disadvantage to combination
locks in that it is possible for an observer to note the combination of keys
actuated by an authorized person. The present invention provides an improved
keyboard security apparatus by which this problem is overcome.
The complete specification then proceeds, under the
heading "DISCLOSURE OF THE INVENTION", with the consistory clause,
the language of which is reflected in claim 1. The consistory clause is as
follows:
According to the
invention there is provided security apparatus comprising:
a keyboard having an
array of selectively actuable keys;
key value
designation means with a random number generator for generating random digits
and a memory storage for storing the random digits in successive locations of a
digit storage array corresponding to the array of the keys;
display means
comprising an array of display units, each corresponding to a respective key
and associated to a respective location of the digit storage array and register
means to register for each key actuation the value designated to the actuated
key;
characterised in
that a multiplexing circuit is provided for successively transferring the
random digits from the locations of the digit storage array to the respective
associated display units and that the register means comprises a microprocessor
detecting the location of a key in the keyboard array as the key is actuated
and interrogating the multiplexing circuit to register the current value of
said key by determining that location of the digit storage array, which is
associated to the display unit corresponding to the actuated key, and entering
the digit stored in the said location of the digit storage array into a number
store.
The complete specification continues:
The keys may be in
the form of push-buttons and the display units may comprise light-emitting
diode or liquid crystal displays located adjacent the respective buttons or
carried by the buttons so as to display the indicia through the outer ends of
the buttons.
The complete specification goes on to describe in
the following terms the particular type of insecurity with which the invention
deals:
In operation of the
above described apparatus the random scrambling of the designated key values
prevents an observer from detecting a
correct code merely by noting the order in which particular keys are actuated since
the position of the keys for the correct code will be changed.
In a simple access
control system, access may be obtained solely by operation of the keyboard. In
more sophisticated systems, however, additional security equipment may be
included. For example, the system may also include a magnetic code reader which
must receive a correctly coded instrument such as a key or card to enable [sic]
the keyboard.
The passage I have italicised indicates the promise
of the invention concerns a specific and limited aspect of insecurity; this
will be of importance in dealing with the allegation of inutility.
The complete specification then describes one
particular embodiment of the invention by reference to the accompanying
drawings and goes on to detail the best modes for carrying out the invention by
reference to those drawings. This is in compliance with the requirement of
sub-s. 40 (1) of the Patents
Act that the full description of the invention shall include "the
best method of performing the invention which is known to the applicant".
In the course of submissions on issues both of validity and of infringement,
reference was made to this portion of the specification, but it is appropriate
that I defer any treatment of it until I deal with those submissions. However,
I should at this stage set out the final paragraph of the treatment of the
preferred embodiment, as an indication of the significance to be attached to
the embodiment:
It is accordingly to
be understood that the invention is in no way limited to the details of the
illustrated embodiment and that many modifications and variations will fall
within the scope of the appended claims.
The body of the specification concludes with the
following:
INDUSTRIAL
APPLICABILITY
Apparatus according
to the invention may be incorporated in any security system for controlling
physical access to a security area or for controlling access to data storage
equipment and/or information stored in such equipment.
It will be apparent from what I have said that the
problem to which the invention is directed concerns conventional security
devices using a keyboard or keypad, the keys of which are selectively actuable
to generate a code which provides access to a particular facility. An example,
to which reference was made in the evidence, is provided by the type of
keyboard used in banks as part of a system permitting access by customers to
"automatic tellers", such keyboards containing a configuration of ten
keys in fixed physical relation each to the others, each key bearing fixed on
its face a number between "0" and "9", there being no
duplication of numbers. In such cases the selection by a person using the
facility of a particular sequence of keys representing a code for that person
may be observed by other persons who, if sufficiently observant, might be able
to arrive at the code.
The
invention addresses the problem by providing for a keyboard, each of the keys of
each does not bear on its face a fixed consecutive number; rather, a random
number between "0" and "9" is assigned to each key on each
activation of the device. The code of the operator remains constant, but on
each activation of the device each number is assigned to a key by a process of
selection that is not deterministic but random, and the device causes these
changes to appear in the numbers displayed on the keys in each activation of
the device. The location of each key that is pressed by a particular operator
may still be apparent to an observer but no key will display a fixed number.
Hence, security will be improved, because the observer will not be able to
detect the code of the operator merely by noting the order in which the
particular keys are actuated.
The Claims
The invention is the subject of seven claims. Each
is for a "security apparatus", not for a method of achieving
security. The last claim is for a security apparatus "substantially as
hereinbefore described with reference to the accompanying drawings". I
turn now to the text of the remaining claims, numbered 1 to 6 inclusive, and in
doing so indicate that the debate before me turned in large measure upon the
construction of the portion of claim 1 set out below which is italicised. The claims
proceed in familiar fashion with a progressive narrowing of the invention
claimed, "the patentee hoping that somewhere along the line he may find a
claim sufficiently narrow to be valid and sufficiently wide to catch an
infringer": Sir Arthur Dean, "Claiming Clauses" (1949) 4 Res
Judicatae 144 at 148. The text of claims 1-6 is as follows:
(1) Security
apparatus comprising:
a keyboard having an
array of selectively actuable keys;
key value designation means with a random number generator for generating
random digits and a memory storage for storing the random digits in successive
locations of a digit storage array corresponding to the array of the keys;
display means
comprising an array of display units, each corresponding to a respective key
and associated to a respective location of the digit storage array and register
means to register for each key actuation the value designated to the actuated
key;
characterized in
that a multiplexing circuit is provided for successively transferring the
random digits from the locations of the digit storage array to the respective
associated display units and that the register means comprises a microprocessor
detecting the location of a key in the keyboard array as the key is actuated
and interrogating the multiplexing circuit to register the current value of
said key by determining that location of the digit storage array, which is
associated to the display unit corresponding to the actuated key, and entering
the digit stored in said location of the digit storage array into a number
store.
(2) Security
apparatus according to claim 1, characterized in that the multiplexing circuit
provides a key actuation signal to the microprocessor at the time the display
unit corresponding to the actuated key is switched by the multiplexing circuit
and the microprocessor registers the current value of the actuated key as being
that digit in the digit sotrage [sic] array which is displayed by the display
means at the time of the key actuation signal.
(3) Security
apparatus as claimed in claim 1 or claim 2, characterized in that the display
units comprise light emitting diode or liquid crystal displays.
(4) Security
apparatus as claimed in any of the claims 1 to 3, characterized in that the
display units are located adjacent the respective keys.
(5) Security
apparatus as claimed in any of the claims 1 to 4, characterized in that the key
value designation means is inoperative until an additional key is actuated.
(6) Security apparatus
as claimed in any one of the preceding claims, characterized in that there is
further provided comparator means to compare a sequence of values entered into
the number store upon sequential operation of a number of said keys with a
sequence of values representing the preselected code and output means
conditioned by the outcome of that comparison.
Expert
evidence was presented primarily on affidavit, and this was supplemented by
oral evidence from Dr. A.K. Burston and Professor J.R. Seberry (for the
applicant) and Mr. D.J. Morgan (for the respondents). There were differences in
emphasis between the opinions expressed by the experts on various topics, but
there were no conflicts of substance on the meaning of the technical terms, the
state of the prior art, or the elements in the preferred embodiment of the
invention.
Infringement
I deal first with the two Hirsch products. For the
purposes of this case, there is no relevant distinction or difference between
them.
The essential issue is whether, within the meaning
of claim 1, the Hirsch products contain a key value designation means with a
random number generator for generating random digits, and a memory storage for
storing the random digits in successive locations of a digit storage array
corresponding to the array of the keys. It is agreed between the parties that
the Hirsch products have (i) a random number generator, (ii) for generating
random digits, (iii) a memory storage, and that the memory storage stores
random digits in locations corresponding to the array of the keys.
Nevertheless, the respondents submit there is no infringement of claim 1. That
submission is only to be understood by further consideration of the nature and
method of operation of the Hirsch products. There was, I should indicate, no
substantial difference between the parties as to the description of the Hirsch
products, the debate being whether once their nature and operation is
understood, the Hirsch products are security apparatus comprising the integers
claimed in the crucial passage in claim 1.
Mr. Morgan, who gave evidence in a clear and
concise manner, described the nature and operation of the Hirsch products as
follows:
(1)
The device is switched on by the operation of a key marked
"start" and there is established an initial configuration in the
digit storage array consisting of digits 1 to 9 and 0, in the order
corresponding to their consecutive positions on the keypad.
(2)
Mr Morgan described each of these positions in the initial configuration
as a "pigeon hole" or "location"; the initial configuration
was visually represented (in a sense metaphorically, but usefully) as follows:
|
1st
location 1 |
2nd
location 2 |
3rd
location 3 |
|
4th location 4 |
5th
location 5 |
6th
location 6 |
|
7th
location 7 |
8th
location 8 |
9th
location 9 |
|
X |
0th
location 0 |
X |
(3)
The devices contain a means for generating or "seeding" random
digits by operation of a programme in a microprocessor.
(4)
By this means there is generated a random number being 0 or a number between
1 and 9; there follows a process described as "swapping", commencing
with the 0th location, and following with the 1st and 2nd locations and so on.
(5)
If the first random number generated or "seeded" was the digit
5, that digit would be placed in 0th location and the zero would be
"swapped" for the number in the 5th location. A second digit would
then be generated by the random number generator. On the assumption that this
was 7, 7 would be placed in the 1st location and the number 1 would be placed in
the 7th location. In this sense, there has been a "swap". Likewise,
if the next random number was 9, the digit 9 would be swapped for the number in
the 2nd location and the digit "2" would be placed in the 9th
location. This procedure is followed until the configuration has been, as it
were, completely swapped. The process of 10 swaps was described as Mr. Morgan
as one shuffle.
(6)
This process is then repeated 7 times by what was described as 7
shuffles.
(7)
At the end of each shuffle sequence, there is always a digit storage
array containing the numbers 0 to 9 without duplication of any number. What
happens is that the order of the numbers is changed by each shuffle.
(8)
It may happen in the course of a shuffle that the random number
generator produces a digit which is the same digit as it has already produced
in the course of the same shuffle. For example, the random number generator
might produce for the 1st location, containing the digit 1, the digit 7, which
is in the 7th location. The digit 7 in the 7th location is then swapped for the
digit 1 in the 1st location. Suppose the random number generator then generates
the number 7 for the 2nd location, which contains the digit 2. There is no
difficulty. The number in the 7th location (i.e. 1) is swapped for the digit in
the 2nd location, viz. the digit 2. There is thus, as Mr. Morgan explained, no
special step needed to deal with "duplication" in the way there is
with a device containing the preferred embodiment of the Rehm invention. I
shall deal further with this question of duplication later in these reasons.
(9)
If the process of swapping is on the 5th location and the random number
generator picks the digit 5, there is no problem. The digit can be swapped with
itself, in effect leaving it where it is. Alternatively, it may be ignored and
another digit picked to make an actual swap for this location; the process of
swapping continues so as to deal with the next location until each location has
been swapped and the shuffle completed.
In his evidence, Mr. Morgan said under cross-
examination that "a random number generator is measured more by its output
than by the precise internal works. If it is uniform on a domain, then it is a
random number generator". He was then asked "By 'uniform on a domain'
you mean having equal probability of generating any number within that
domain?" He responded "Yes - equal frequency, equal likelihood".
The domain, in the example I have been considering, is zero and the numbers 1 -
9 inclusive.
If the shuffling was conducted in a deterministic
manner, then it might be fairly suggested that random numbers were not being
generated by operation of the Hirsch device. But I think that in the end Mr.
Morgan agreed with senior counsel for the applicant that the circumstance that
the numbers in the pigeon holes were arranged in the initial configuration in a
certain pattern before the first random number was generated and the swapping
commenced did not, of itself, mean that the operation of the system failed to
satisfy the description of random number generation. As Professor Seberry
pointed out, whilst the initial configuration with the Hirsch product is fixed,
each location is filled at random by each swap because the seed number used for
the swap is randomly generated by the programme in the microprocessor.
The submissions for the respondents, in effect, if
not in form, fasten upon the phrases "for generating random digits"
and "for storing the random digits" in claim 1 as indicating a claim
to no more than the generation of random digits that is immediate and direct so
that that which is generated is that which is stored, with the result that
there is no claim to the generation of random digits involving (as is the case
with the Hirsch device) a series of steps in the course of which random numbers
are generated but each is not transferred directly to the digit store.
The respondents pray in aid for this construction
of the claim two considerations flowing from material outside the body of claim
1. The first concerns the description of the preferred embodiment in the body
of the complete specification. That embodiment describes a device in which the
digit storage array which (unlike the Hirsch device) contains no digits at the
start of operations; rather, the microprocessor generates random digits or
"seeds" between "0" and "9". In the words of the
preferred embodiment (with reference to drawings):
The random number
generator generates a first random digit which is transferred to a digit store
within the working member 25. Successive digits are then taken from the random
number generator and, after rejection of any duplicated digits, these are
stored at successive locations in the digit store to build up a random sequence
of the 10 digits 0 to 9.
The respondents submit that this assists their suggested
construction of claim 1. This treats the expression "for generating random
digits" and the expression "for storing the random digits" as
limited to the generation of the first random digit and its direct transfer to
a digit store, followed by the generation of the second random digit with its
transfer directly to the digit store, and so on, subject only to the rejection
of duplicated digits and avoidance of an end result whereby the configuration
contained 10 locations but, for example, the digit 3 appeared in two of them,
and the digit 7 did not appear at all. (The passages in the preferred
embodiment dealing with rejection of duplicated digits are of importance also
in considering the attack on the validity of claim 1 for want of fair basing; I
deal with that aspect later in these reasons.)
The settled rule is that in ascertaining the width
of a particular claim, it is not permissible to vary or qualify the plain and
unambiguous meaning of the claim by reference to the body of the specification;
provided that if an expression in the claim is not clear, then it is
permissible to resort to the body of the specification to define or clarify the
meaning of the words used in the claim: Interlego
AG v Toltoys Pty. Ltd. (1973) 130 CLR 461 at 478-479. The use
of the word "for" in patent claims to introduce expressions such as
"for generating" and "for storing" has been deprecated:
Blanco White, "Patents for Inventions", 4th Ed., 2' 2-213. However,
the present is not a case which illustrates the concerns expressed by the
learned author. Further, whilst resort may be had in the circumstances I have
indicated to the body of the specification, it also must be remembered that it
usually is not legitimate, in the absence of an express reference in the claim
itself, to import into a claim features of the preferred embodiment. The
preferred embodiment cannot properly be used to introduce into the definite
words of a claim an additional definition or qualification of the patentee's
invention: Erickson's Patent (1923)
40 RPC 477 at 491. This (with some justification) the applicant
complains, is what is attempted by the respondents' submission as to the
significance of the preferred embodiment in the construction of claim 1.
The second matter to which the respondents refer as
an aid to construction requires attention to claim 1 in its original form,
before it was amended in the course of examination before grant in the Patent
Office. Section 157A of the Patents Act (formerly sub-s. 88 (3) of that statute) makes
this reference permissible, by providing that in construing a complete
specification as amended, the Court may refer to the specification without the
amendment.
In its unamended form, the second paragraph of
claim 1 read:
Key value designation
means to designate values to the keys and including designation scrambling
means operative randomly to scramble the designation of key values.
That paragraph was sufficiently widely expressed apparently
to catch the Hirsch device, because it encompassed any means of scrambling the
designation of key values. Then, the respondents submit, it is clear that the
amendment was made to exclude all means of scrambling the designation of key
values, other than that means which is described in the preferred embodiment.
Reference was made in the evidence to two Japanese
patent applications (No. 54-102844 and No. 54-102845, both dated 13 August
1979) which were cited in the course of the examination of the application
which led to the grant of the patent presently in suit. The Japanese prior art
was described and analysed in the evidence, particularly that of Dr. Burston
and Mr. Morgan. It differed markedly from the random generation and selection
found both in the preferred embodiment in the patent, and in the Hirsch device,
because it involved a set of fixed ten value displays, one of which was
selected by the user; there was no device that generated a random pattern of
digits.
However, as the respondents agree, on one view of
it in its unamended form, claim 1 would encompass the Japanese prior art as
well as the other means of scrambling the designation of key values found in
the Hirsch device and in the preferred embodiment of the patent. In that setting,
there is much substance in the submission of the applicant that the recasting
of claim 1 may have been in response to the citation of the Japanese material
and that this, to put it broadly, was achieved by introducing a computer based
mechanism in contrast to the unintelligent mechanism presented by the citations
of prior art emanating from Japan.
For these reasons, I place no significant weight
upon the two special factors referred to by the respondents as favouring their
construction of claim 1.
I turn now as to the submissions as to construction
by the applicant. The applicant submitted that there was infringement on the
proper reading of the claim, without resort to any body of special learning by
which there may be liability without "textual" infringement in a
direct or immediate sense. The applicant's argument proceeded by the following
steps:
(a)
claim 1, like the other claims, is not for a method of achieving or
improving security, but for a security apparatus;
(b)
that apparatus comprises, inter alia, a key value designation means with
(i) a random number generator for generating random digits and with (ii) a
memory storage for storing the random digits (i.e. the digits generated as
described) in successive locations of a digit storage array corresponding to
the array of the keys;
(c)
there will be a random number generator for generating random digits if
the product is random digits and the precise algorithm for generating the
random digits that are stored in the memory storage is not a matter of concern;
(d)
this is so even if the generation of the digits stored in the digit
storage array comprises more than one stage or step (as is the case with the
swapping and shuffling in the operation of the Hirsch device) such that each
step itself might be described as generating random numbers;
(e)
the word successive describes the relation of the locations each to the
others, the locations taken as a configuration corresponding to the array of
the keys;
(f)
it is not to the point that the procedure for generating and storing
digits does not operate so that all steps are gone through to produce and store
one such digit, and then repeated to produce the next digit, and so on; it is
enough that all such digits are produced and stored, without the temporal
limitation or sequence I have described;
(g)
accordingly, it is not of concern that in the course of random number
generation, one puts random numbers in "locations" and then overrides
or replaces them with other random numbers; one still has a random number
generator that generates those random digits which are the digits stored in the
memory storage, within the meaning of claim 1.
I accept those submissions. It follows, in my view,
that the claim for infringement of claim 1 is made out.
The applicant also urged there was infringement of
claim 7. This, as I have indicated, claims "security apparatus
substantially as hereinbefore described with reference to the accompanying
drawings". The operational sequence is illustrated by the flow sheet in
figure 7, and I have set out that passage from the body of the specification
dealing with the preferred embodiment which details the method of generation of
random numbers and the transfer to the digit store. It is apparent from what I
have there said that there is absent from any security apparatus described by
reference to the accompanying drawings, the features of swapping and shuffling
which I have described when dealing with the Hirsch device. The question is
whether the Hirsch device is nevertheless a security apparatus substantially as described in the body
of the specification with reference to the accompanying drawings.
The terms of claim 7 succeed in incorporating the
drawings into the claim: Raleigh Cycle
Co. Ltd. v Miller & Co. Ltd. (1948) 65 RPC 141; Utilux Pty. Ltd. v AMP Incorporated (1974)
48 ALJR 17 at 20. The preferred
embodiment, read with the drawings (particularly figure 7), makes it quite
plain that, as an essential feature, the claimed device takes successive digits
seeded by the random number generator and after rejection of any duplicated
digits (in the sense I have earlier described) each digit is stored at
successive locations in the digit store. This is not what takes place with the
swapping and shuffling procedures in the Hirsch products.
The applicant submitted that, nevertheless, the two
devices, the Hirsch and that described in the preferred embodiment, operate in
the same way in the sense that the user enters a code and a microprocessor
works out the numbers to be associated with the keys; what was involved in the
working out of the numbers was, it was said, so closely similar as not to be
substantially different. In my view, to approach the matter in this fashion is
to do so at too general a level of of abstraction and comparison. I say this
bearing in mind the force of the term "substantially" as appearing in
claim 7: Monsanto Company v Commissioner
of Patents (1974) 48 ALJR 59; Blanco White, "Patents For
Inventions", 4th Ed., 2' 2-209; Fox, "Canadian Patent Law and
Practice", 4th Ed., p. 359.
Nor, in my view, is this a case where the
differences presented by the swapping and shuffling procedures in the Hirsch
device may be characterised as a subterfuge and an attempt to take full
advantage of the invention while avoiding trespass upon the literal meaning of
the claim by a modification so small as to be insignificant and to have no
material effect upon the way the invention as claimed in claim 7 works: Commonwealth Industrial Gases Ltd. v M.W.A. Holdings
Pty. Ltd. (1970) 44 ALJR 385 at 388 per Menzies J. As
senior counsel for the respondents pointed out, the facts in Catnic Components Ltd. v Hill and Smith Ltd. (1982)
RPC 183, are illustrative of the type of situation with which Menzies J. had
been dealing in the Australian case. The remarks of Lord Diplock ((1982) RPC at
242-243) as to "purposive" rather than "purely literal"
construction, may be understood in that light. It may be for this reason that
in Populin v H.B. Nominees Pty. Ltd. (1982)
59 FLR 37 at 42-43, the Full Court of this Court in essence
treated the House of Lords as having confirmed that what is called for in
construing claims is a common sense assessment of what the words used convey,
in the context of the then-existing published knowledge, and did not treat
their Lordships as having propounded any novel principle or new category of
"non-textual" infringement; cf. Rhone-Poulenc
Agrochimie SA v UIM Chemical Services Pty. Ltd. (1986) 12 FCR
477 at 496-497.
There being no "textual" infringement,
the question remains whether the substance of the invention as claimed in claim
7 has been taken. In my view, the essential integers of claim 7 include the
generation of random digits as described in the passage I set out earlier,
detailing the preferred embodiment, with the rejection of duplicate digits as
therein indicated. This conclusion is enforced by the flow-sheet drawings in
Figure 7 showing the operational sequence of the microprocessor based circuit
of the preferred embodiment. This may be contrasted with the integers of the
Hirsch products. The current state of the law in Australia as to the "pith
and marrow" doctrine is discussed in Populin
v H.B. Nominees Pty. Ltd. (1982) 59 FLR 37 at 41-43. The
effect of the structure and sequence of the claims in the subject patent is
progressively to narrow the area of monopoly claimed. The form of claim 7 is to
leave open and unclaimed what has been done with security apparatus which
includes the swapping and shuffling integers of the Hirsch products. The
"pith and marrow" doctrine, therefore, does not bring the respondents
within the field of infringement of claim 7.
I turn now to the question of validity.
Fair Basing
The respondents submit that claim 1 of the patent
is not fairly based on the matter described in the body of the complete
specification.
Section 40 of the Patents Act, so far as is material,
provides:
40. (1) A complete
specification -
(a) shall fully
describe the invention, including the best method of performing the invention
which is known to the applicant; and
(b) shall end with a
claim or claims defining the invention.
. . .
(2) The claim or
claims shall be clear and succinct and shall be fairly based on the matter
described in the specification.
The phrase "fairly based" appears in
other provisions of the Patents Act.
In s. 45, it appears in a context concerned with the priority dates of claims
in a complete specification allegedly fairly based on matter disclosed in a
provisional specification. It was with s. 45 in an earlier form, and with
analogous British legislation, that Fullagar J. and Lloyd-Jacob J.,
respectively, were concerned in Societe
des Usines Chimiques Rhone-Poulenc v Commissioner of Patents (1958)
100 CLR 5, Re Mond Nickel Company Ltd.'s
Application (1956) RPC 189 at 194, and Imperial Chemical Industries Ltd.'s
Application (1960) RPC 223 at 228. In sub-s. 45A (2), the
phrase "fairly based" is directed to the fixing of the priority date
of the claim in certain petty patent specifications by reference to earlier
applications. This Court was concerned with s. 45A in Coopers Animal Health Australia Ltd. v Western Stock Distributors Pty.
Ltd. (1986) 67 ALR 390; affd. (1987) 76 ALR 429.
In s. 141 of the Patents
Act, the expression "fairly based" is used to describe the
necessary relationship between a claim made in an Australian complete
specification or petty patent specification and matter disclosed in a basic
application which has been made in a "Convention country" within the
meaning of Part XVI. It was with the term in this latter setting that Gibbs J.
dealt in F. Hoffman La Roche & Co. AG
v Commissioner of Patents (1971) 123 CLR 529 at 538-539.
It has been pointed out that the question of
"fair basing" of a claim upon the body of a complete specification
(involving a comparison within the one document) is not altogether analogous to
questions of "fair basing" of claims upon earlier documents, such as
a provisional specification or basic application: Blanco White, "Patents
For Inventions", 4th Ed., 2' 2-115. Nevertheless, it was accepted by the
parties before me that what was said in the cases I have mentioned gave a guide
to the approach that should be taken in dealing with sub-s. 40 (1), although
the comparison is not between documents but within different parts of the one
document.
I should add that s. 35 of the Patents Act 1903 stipulated that
the provisional specification must "fairly describe the nature of the
invention", and s. 36 stated that the complete specification must
"fully describe and ascertain the invention and the manner in which it is
to be performed, and must end with a distinct statement of the invention
claimed". The requirement of "fair basing" of claims upon matter
disclosed in the body of the specification or in some other document was
introduced into the present Patents Act from British law, though its
origins in that country are by no means clear: Blanco White, "Patents for
Inventions", 4th Ed., 2' 2-117.
In Societe des
Usines Chimiques Rhone-Poulenc v Commissioner of Patents (supra) Fullagar J. (at 11) spoke of the
necessity for "a real and reasonably clear disclosure". In my view,
it is this characteristic which makes the claim "fairly" based on
that disclosure: cf. Coopers Animal
Health Australia Ltd. v Western Stock Distributors Pty. Ltd. (1987) 76
ALR 429 at 447-448. As will become apparent, whilst accepting what
Fullagar J. had said, the present respondents in effect pitched the standard
rather higher in their submissions.
The criteria propounded by Lloyd-Jacob J. and
approved and adapted by Gibbs J., in the authorities to which I have earlier
referred, express in more detail the general approach indicated by Fullagar J.
Adapting those criteria to s. 40 of the Patents Act, one asks the following:
(1)
Is the alleged invention as claimed in claim 1 broadly (i.e. in a
general sense) described in the body of the specification?
(2)
Is there anything in the body of the specification which is inconsistent
with the alleged invention as claimed in claim 1?
(3)
Does claim 1 include as a characteristic of the invention a feature as
to which the body of the specification is wholly silent?
More succinctly, Mr. Blanco White QC would ask
whether "the idea" of the invention claimed in the claim in question
was to be found in the body of the specification: "Patents For
Inventions", 4th Ed., 2' 2-111.
In the present case, the respondents submitted that
there was a want of fair basing for two reasons.
First, they submitted that if in the body of the
specification it is stated as a requirement that there be a means of avoiding
duplication of digits, and that if claim 1 on its proper construction contains
no such requirement, it follows claim 1 is not fairly based because a device
with or without any means of avoiding the duplication of digits would be within
claim 1 and this meant claim 1 was for an invention more widely delimited than
the invention described in the body of the specification. I have earlier in
these reasons described how the Hirsch products deal with the possibility of
duplication.
Secondly, they submitted that if there is in the
body of the specification a requirement for a viewing restriction and if no
such requirement is contained in claim 1, on its proper construction, it follows
that claim 1 is not fairly based. This is said to be because what is claimed,
viz. a device with or without any viewing restriction to prevent the display
being read by persons other than those directly in front of the display, is
"wider" than the invention described in the body of the
specification.
The preferred embodiment, in referring to the
drawings figure 1 and figure 2, states that a person operating the keyboard
"must look straight down the tubes 22 to read the characters
displayed". This is an importation of a viewing restriction and it may be
correct that this is an essential integer in claim 7. That, however, does not
necessarily mean that claim 1 is not fairly based on matter disclosed in the
body of the specification. The respondents referred to passages in Coopers Animal Health Australia Ltd. v
Western Stock Distributors Pty. Ltd. (1986) 67 ALR
390 at 406. There, the question concerned the claim in a petty patent
and the issue was one of fair basing of that claim upon matter disclosed in the
provisional specification for a standard patent: sub-s. 45A (2) and s. 51. The
question was approached by asking whether an essential integer of the claim was
an essential integer of the invention described in the provisional
specification.
I accept the submission of counsel for the
applicant that when the question is one of fair basing of a claim upon matter
disclosed either in the body of the specification or in a provisional
specification, it is not appropriate and is, indeed, misleading to seek to
isolate in the body of the specification or in the provisional specification
"essential integers" which correspond with the essential integers in
the claim in question. I should add that the applicant directed no such
criticism to the treatment of "fair basing" in the Full
Court: (1987) 76 ALR 429.
It is important when dealing with "fair
basing" to bear in mind the different functions served by the body of a
specification and the claims. As s. 40 itself indicates, the
task of the body of the specification is fully to describe the invention
including the best method of performing it known to the applicant. The
description primarily is addressed to "all and sundry who may wish to
construct the device after the patent has expired": Ludlow Jute Co. v Low (1953) 70 RPC 69 at 76. The
function of the claims is to define the invention and mark out the ambit of the
patentee's monopoly, and primarily is addressed to potential rivals: see
generally Fox, "Canadian Patent Law and Practice", 4th Ed., pp.,
165-166, 193-196. The circumstance that something is a requirement for the best
method of performing an invention does not make it necessarily a requirement
for all claims; likewise, the circumstance that material is part of the
description of the invention does not mean that it must be included as an
integer of each claim. Rather, the question is whether there is a real and
reasonably clear disclosure in the body of the specification of what is then
claimed, so that the alleged invention as claimed is broadly, that is to say in
a general sense, described in the body of the specification.
In his final address on this issue, senior counsel
for the respondents gave the impression somewhat of resiling from reliance upon
what had been said in Coopers Animal
Health Australia Ltd. v Western Stock Distributors Pty. Ltd. (supra) at first instance, in favour of a
somewhat different proposition. This was that whilst it does not have to be
specific, the inventor has to tell the reader "what is involved
essentially" in his invention, so that one then asks whether the alleged
invention as claimed is broadly described in the body of the specification,
having regard to the essential character of the invention as described therein.
Even that proposition, in my view, distorts the first of the propositions
propounded in the judgments of Lloyd-Jacob J. and Gibbs J. to which I have
referred. The inquiry in the present case is as I have expressed it in the
immediately preceding paragraph.
I have earlier in this judgment set out the
provisions of much of the body of the specification, including the consistory
clause. That clause is reflected in claim 7. However, in my judgment, on its
proper construction, claim 1 does not claim a viewing restriction means. I have
set out earlier in these reasons the concluding paragraph of the passage which
contains the preferred embodiment, with the statement therein that the
invention is in no way limited to the details of the preferred embodiment. One
of those details in the preferred embodiment concerns the restriction of
viewing, as described in figures 1 and 2. Applying the principles I have
described, it is not correct to deny for this reason that claim 1 is fairly
based on the material disclosed in the body of the specification.
I return now to the first ground urged by the
respondents as disclosing a want of fair basing. The passage from the preferred
embodiment, which I have set out when dealing with infringement makes it plain
that the particular means of rejecting duplication of digits is an essential integer
in claim 7. However, in my view, there is lacking in claim 1 any essential
integer directed to the prevention of configurations with duplication of
digits. This follows from what I said earlier in these reasons when dealing
with infringement of claim 1. Bearing in mind the principles I have earlier
discussed, in my view it is not correct that the invention as claimed in claim
1, without specification therein of a means of rejecting duplicated digits, is
not "fairly based" on matter described in the body of the
specification.
Inutility
The respondents do not suggest that claim 1 may
lack utility simply for want of commercial practicality in results achieved by
the invention so claimed: Bannon, "Australian Patent Law", 2' 156.
The respondents rely for inutility of claim 1 on two grounds.
First, it is submitted that a device according to
claim 1 does not contain any viewing restriction as I have earlier discussed,
and that a device according to claim 1 containing scrambled digits will still not
be useful for the purpose claimed if the values of the keys in use can be read
by an observer other than the operator of the device. It is submitted that what
must be considered is the usefulness of the device as claimed for the purpose
claimed, viz. for the purpose of ensuring that it cannot be used by an observer
not being the operator. The device as claimed was contrasted with the Hirsch
products which contain a sophisticated viewing restriction means which greatly
limits the angles from which the display may be observed by persons other than
the operator.
The basic principle has been formulated as follows
in Fawcett v Homan (1896) 13 RPC
398 at 405 per Lindley LJ:
If an invention does
what it is intended by the Patentee to do, and the end attained is itself
useful, the invention is a useful invention.
What the invention is intended to do is a matter to
be gathered from the title and the whole of the specification: Blanco White,
"Patents for Inventions", 2' 4-403. A distinction may be drawn
between a case where a patentee claims a result and bases his claim on the
production of that result and the case where a patentee merely points to
certain advantages that will accrue from the use of his invention: Fox,
"Canadian Patent Law and Practice", 4th Ed., pp. 152-154.
The title of the patent is "improvements in
security means". The body of the specification commences with a statement
of the problem, viz. that none of the existing types of access control systems
have been particularly satisfactory and in particular a previous proposal to
provide an access control system incorporating a manually actuable keyboard the
keys of which were selectively actuable to generate a code which, if correct,
would provide the necessary access, suffered a disadvantage in that it would
still be possible for an observer to note the combination of keys actuated by
the authorised person.
It is then said that the present invention provides
"an improved keyboard security apparatus by which this problem is
overcome". I take the reference to "this problem" being
"overcome"to be a reference to the possibility for an observer to
note the combination of keys actuated by an authorised person. However, this
passage has to be read by a passage, after the intervening consistory clause,
as follows:
In the operation of
the above described apparatus the random scrambling of the designated key
values prevents an observer from detecting a correct code merely by noting the
order in which the particular keys are actuated since the position of the keys
for the correct code will be changed.
In a simple access
control system, access may be obtained solely by operation of the keyboard. In
more sophisticated systems however additional security equipment may be
included . . .
The phrase "from detecting a correct code merely by noting the order in which the
particular keys are actuated" is significant. It indicates that the
promise of the invention is to deal with a particular type of insecurity, viz.
the breaking of a code merely by noting the order in which the keys are
actuated. The evidence indicated that there are many different degrees of
security which can be required, and many different ways in which security might
be achieved. However, the promise of the invention is concerned with a
particular aspect of security, the breaking of the code by the noting of the
order in which the keys are pressed. It is in the light of this that one has to
consider the question of utility, and the question is whether in the sense of
patent law the device is useless for that purpose. The circumstances that an
even greater improvement in security might be obtained by the addition of a
restricted viewing means, such as that which is present in the Hirsch products,
does not mean that the invention as claimed in claim 1 is not useful, or that
it does not attain the object of the invention.
In my view, the attack on utility based on this
ground fails.
The other ground urged for inutility concerns the
treatment in claim 1 and in the body of the specification of the avoidance of
duplication of digits. The submissions for the respondents on this branch of
the case proceed by the following steps:
(1)
A device according to claim 1, on its true construction, does not
contain any means for avoiding duplication of digits.
(2)
It follows that a display generated by a device according to claim 1 may
not contain some digits in a user code number.
(3)
For a 4-digit code number, the probability that one or more the digits
in that code will be missing from any given display is such that on average a
user would have to bring up more than 5 displays before the user would find a
display in which there were present all 4 digits of the code. In the case of a
5-digit code, the probability is that on average, the user would have to bring
up 12 or more displays before the user found a display with all the digits of
the code present; the corresponding number of displays for 6, 7 and 8-digit
codes, is 30 or more displays, 88 or more displays and 326 or more displays,
respectively. (I should add that the evidence also showed that if no steps were
taken to avoid duplication, the device claimed in claim 1 would permit entry of
a 3-digit code after an average of 2 displays.)
(4)
If any device falling within the terms of claim 1 is not useful for the
purpose of the invention, the whole claim is invalid and because 7 and 8-digit
codes fall within claim 1 so as to give obviously useless embodiments, the
device is not useful for that purpose. Hence, claim 1 is invalid for inutility.
The applicant submitted that the Court should be
extremely reluctant to place a construction upon a claim that would render it
invalid as including embodiments that a qualified reader would recognise as
being obviously useless. The applicant referred to the treatment in the
preferred embodiment itself of the avoidance of digit duplication; it submitted
that normally a construction will be adopted which treats the avoidance of such
useless embodiments as something left by the draftsman to the reader of the
specification to settle for himself. In support of this proposition, the
applicant relied upon Welch and Perrin
& Co. Pty. Ltd. v Worrel (1961) 106 CLR 588 at 601-602.
There, in the course of discussing Norton
& Gregory Ltd. v Jacobs (1937) 54 RPC
271 at 276, Menzies J. said that what was said in the earlier
case by Greene MR did not mean that a specification should be construed in a
way that any sensible person would appreciate would lead to unworkability when
it could be given a more limited meaning.
In Washex
Machinery Corporation v Roy Burton & Co. Pty. Ltd. (1974) 49 ALJR
12, Stephen J. considered an allegation of inutility in respect of a claim for
a machine designed to wash and damp dry materials by immersing them in water or
other cleaning liquid, subjecting them to rotary tumbling action and then, by
the application of high centrifugal forces, driving off the washing liquids
leaving the materials clean and damp. The machine worked at low speed in the
washing operation, and at high speed in the extraction. Over the full range of
speeds, it was necessary to avoid vibration.
The allegation was that claim 1 of the patent in
suit was invalid because it failed to require that there be such a difference
between the critical speed and the extraction speed as to ensure effective
vibration isolation. Stephen J. said (at p. 18):
The evidence does
make it clear that the latter must be considerably in excess of the former if
the advantages of avoiding operation at critical speed are to be gained and
claim 1 does no more than require critical speed to be less than the speed of
extraction. However, the need in determining operating speeds, to avoid by a
wide margin the critical speed, has long been common knowledge in the art and
call for no statement to that effect in a claim. The claim states that during
the extraction cycle the extraction speed is to be in excess of critical speed
and it is no part of its function as a claim to go on to specify a minimum
speed separation between the two; the failure to do so does not, in my view,
amount to inutility.
In Washex
Machinery Corporation v Roy Burton & Co. Pty. Ltd. (supra), there was a further attack made
on claim 1 for inutility. There was said to be a failure to give effect to one
object of the invention, viz. the provision of a machine in which the mass
distribution of the load, axially of the cleaning unit, need not be uniform.
The evidence was that during operation, any uneven distribution of load tended
to correct itself, but that in some circumstances malfunction might occur. His
Honour said (at 19) that to postulate such a happening was not an appropriate
mode of testing utility and referred to what had been said by Menzies J. in Welch Perrin & Co. Pty. Ltd. v Worrel
(supra) at 602.
I should also set out the following passage
(omitting footnotes) from the Mr. Blanco White's work (4th Ed., 2' 4-408):
Claim including that
which is not useful
It follows from what
has been said that it is often a convenient test of the utility of the
invention contained in a claim to consider whether the claim includes forms of
the invention which are not useful, but that this test must be applied with
very great caution. The function of a claim is to delimit the monopoly given by
the patent, not to give instructions for the working of the invention, and it
is consequently not necessary that the claim should contain these instructions;
even the body of the specification is required to contain only those
instructions that the reader cannot supply for himself. It would be
unreasonable to expect the claims to contain more. A distinction should
accordingly be drawn between cases in which the invention claimed is not useful
unless an additional feature or features be added to those claimed (the claim
then being invalid), and cases where the qualifications and expedients necessary
to make the article claimed work can be, and on a true construction of the
claim are, left to the reader to supply for himself. Since in cases where the
reader can make the thing work the courts tend wherever possible to construe
claims as requiring him to do so, it is not in practice enough to ask whether
the claim includes things that are not useful; it is necessary to ask also
whether there is anything in the language of the claim positively pointing to
some useless construction. The successful utility attacks are nearly always in
cases of that sort. Examples are: where a claim specifies two alternative
processes or constructions of mechanism, of which only one is useful; or the
claim specifies the use of any of a group of chemical compounds, and it is not
substantially true that all will work; or the claim includes a series of
constructions, and only certain members of the series are useful; or more
generally, the claim contains a limitation directed to a particular feature and
further limitation of that same feature is needed for utility; or the feature
needed for effective working is expressly made optional - as when it is added
by a subsidiary claim.
In the present case, in the course of his
cross-examination by senior counsel for the respondents, Dr. Burston said the
following:
My interpretation of
the claims, making what I consider an intelligent understanding of what they
mean, is that in fact the random number generator is only generating a digit from
the set that remains. For instance, if you have 9, 8 and 7, what is referred to
as a random number generator is in fact generating a number between zero and
six at that stage. The point is that when you start off with an array empty,
you have a choice of ten digits and the random number generator will generate a
digit 0 to 9 which will be put in your first pidgeon hole. That is then
eliminated as a digit you want to consider for allocating in the second pidgeon
hole. My impression would be then as part of the random number generator
mechanism you would generate one of the remaining nine, restricting it by
eliminating number duplicates. Does that answer the question?
Yes, you agree that
are no express words relating to avoiding duplication?
There are no express
words relating to avoiding duplication.
You rely on the fact
that there is some reference to the avoidance of duplication in the body of the
specification?
No, I would rely on
the fact that an intelligent reader would immediately assume there would be no
duplication.
Further, in her affidavit, Professor Seberry
deposed that claim 1 of the patent in suit provided for the main feature of the
patent, viz. that "the numbers zero to nine without duplication (italics
supplied) will be produced in random sequence and allocating in such random
sequence to a keyboard having ten keys". She was not cross-examined on
this understanding of the invention claimed.
Accordingly, in my view, there is the evidentiary
foundation for the conclusion that a qualified reader would not place a
construction on claim 1 as including embodiments that were obviously useless;
the claim does not positively point to some useless construction. The present
is a case where the qualifications and expedients necessary to avoid duplication
of digits are left to the qualified reader to supply. Accordingly, I accept the
submission for the applicant that claim 1 is not lacking in utility for failure
to specify a means of avoiding duplication of digits.
Conclusions
In summary, the conclusions I have reached are that
claim 1 is infringed, claim 7 is not infringed, and claim 1 is not invalid
either for want of fair basing or for inutility.
As indicated earlier in these reasons, I will stand
the proceedings over to a date convenient to the parties for consideration of
the further conduct of the matter, and the making of any final orders that can
be made at that stage.
However,I should point out that it may be that an
outstanding inquiry as to damages may result in any injunctive relief being in
the meantime interlocutory; see Computer
Edge Pty. Ltd. v Apple Computer Inc. (1984) 54 ALR
767 at 768, and the discussion thereof by Lockhart J. in A.C.I. Australia Ltd. v Glamour Glaze Pty.
Ltd. (22 April 1988, unrep., p. 22).