Patents: South African Supreme Court of Appeal comes down in favour of purposive construction

In the case of Orica Mining Services v Elbroc Mining Products (2017) 2 All SA 796 (SCA) the South African Supreme Court of Appeal (SCA) came down strongly in favour of the purposive approach to interpreting patent claims. The SCA adopted this approach to decide the main issue in this case, which was this: what does the word ‘between’ mean?

The case involved a patent for a device known as a ‘roof bolter rig’, something that is used in the mining industry. The patentee had sued a competitor for infringing the patent. The alleged infringer had argued that there was no infringement because one of the integers in the claims was missing in its product, namely the description of a drill carriage being located ‘between’ a pair of telescopic props.

The patentee argued that in the context of the patent ‘between’ simply means that the drill carriage is located in the space between the two telescopic props.The alleged infringer argued that it means that the drill carriage is ‘linearly between’ the props. So who was right?

The SCA likes to quote from previous decisions. It referred to the South African decision of Multotec Manufacturing (Pty) Ltd v Screenex Wire Weaving Manufacturers (Pty) Ltd 1983 (1) SA (709 (A), where the court said that it should avoid being too ‘textual’ and concentrate on the substance of the invention. It went on to say that an ‘infringer who takes the “pith and marrow” of the invention commits an infringement even though he omits an inessential part or substitutes for that part a mechanical equivalent.’ The SCA also referred to Monsanto Co v MDB Animal Health (Pty) Ltd 2001 (2) SA 887, where the court said that ‘the words must be read grammatically and in their ordinary sense.’

Looking further afield, the SCA referred to the UK case of Kirin-Amgen Inc & Others V Hoechst Marion Roussel Ltd & Others (2005) 1 All ER 667, where the court said that ‘construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean.’ The SCA also remarked on how the purposive approach was favoured by the UK court in the famous case of Catnic Components Limited & another v Hill & Smith Limited (1982) RPC 183.

The SCA concluded that interpreting the word ‘between’ as meaning linearly between the props would not be in accordance with a purposive interpretation of the specification. It opted for the meaning that talks of ‘something on each side’, saying that this ‘accords with the relational nature of the word “between” and is not dependant on the configuration of the objects under comparison.

So the appeal succeeded, meaning that the patent had been infringed.

Date published: 14 March 2018
Author: Spoor & Fisher

Tags: trade marks South Africa