Patents: What Does "Between" Mean? 

May, 2017 - Rowan Forster

It seems absurd that South Africa’s Supreme Court of Appeal (“SCA”) should be called on to decide what the word “between” means. But that’s exactly what happened in the recent patent case of Orica Mining Services v Elbroc Mining Products. In the process, the SCA very clearly opted for a purposive interpretation of patent claims. The two parties involved, Orica and Elbroc, supply goods to the mining industry. Orica has a patent for a “roof bolter rig”, a drill rig that’s used to drill holes on the hanging roof or wall of a mine for the purpose of placing roof bolts or other stabilising apparatus into the roof or wall. A roof bolter rig has two extendable telescopic rigs on which the drill carriage is mounted. This makes the device self-supporting; in other words, one that does not need to be held by a person. Ideal when you need to drill holes in confined spaces! When Elbroc started selling a roof bolter rig, Orica sued for patent infringement. Elbroc argued that one of the integers of the claims was not present in its product, namely the description of the drill carriage being located “between” a pair of telescopic props. Elbroc alleged that the word “between” meant that the drill carriage had to be located “linearly between” the props, which was not the case with its rig. The Court of the Commissioner of Patents accepted this defence, holding that the dictionary definition of “linearly between” should apply. On appeal, Orica argued that “between” simply meant that the drill carriage was located in the space between the two telescopic props. The SCA quoted extensively from previous South African decisions, such as:

Gentiruco AG v Firestone SA (Pty) Ltd, where the court said that the first task is to “ascertain the nature of the invention as claimed and its precise scope … the specification and especially the claims, have to be construed – it is after all the instrument on which the letters patent were applied for and granted and it must therefore necessarily govern those issues.” Multotec Manufacturing (Pty) Ltd v Screenex Wire Weaving Manufacturers (Pty) Ltd, where the court said that it “should always guard against too ‘textual’ an approach … by peering too closely at the language of a claim the court may overlook an infringement which takes the substance of the invention … 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.” Monsanto Co v MDB Animal Health (Pty Ltd), where Judge Harms said that “the words must be read grammatically and in their ordinary sense … technical words of the art or science involved in the invention must also be given their ordinary meaning, ie as they are ordinarily understood in the particular art or science.” The court also quoted from UK cases such as Kirin-Amgen Inc and others V Hoechst Marion Roussel Ltd and others, where Lord Hoffman 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.” Elbroc argued that, as the word “between” is unambiguous and not one that has a peculiar technical or scientific meaning, the word had to be accorded its ordinary meaning. But it then went on to advance three dictionary meanings, one of which referred to “distinct collinear points”. It didn’t, however, explain why this definition should be adopted ahead of the other two, and the SCA felt that it shouldn’t.

The court felt that the dictionary definition that says that “between” means “with something on each side” was the better one: “It accords with the relational nature of the word ‘between’ and is not dependant [sic] on the configuration of the objects under comparison.” The court went on to talk about purposive interpretation, saying that unlike literalism, it “takes into account the practical knowledge and experience of the person skilled in the kind of work in which the invention is intended to be used … it considers that a person skilled in the art would understand whether strict compliance with a particular word or phrase was intended and whether a variant of a word would have an effect upon the way the invention works.” There was no evidence here that Orica intended that a drill carriage located only linearly between the props was essential to the invention, or that a person skilled in the art would understand the word “between” to be used as a “word of precise meaning.” The court remarked on how similar this case was to the famous UK case of Catnic Components Limited and another v Hill and Smith Limited. In that case, the defendant admitted to having taken all but one of the essential features of a patent for steel lintels, and there was no evidence that the variant feature had any material effect on the function of the patented product. Adopting a purposive interpretation, the court held that the phrase “extending vertically” was capable of meaning “near enough to vertical to enable the back plate to perform satisfactorily all the functions that it could perform if it were precisely vertical.” The SCA concluded by saying that interpreting the word “between” as meaning linearly between the props would not be in accordance with a purposive interpretation of the specification. So, the appeal succeeded, meaning that the patent had been infringed.





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