Tanashin Denki Co. Ltd. v. King Long Industrial Ltd.
Read the full judgment text of HCA 7658/1995 on BabelCite. This High Court CFI judgment was delivered on 30 September 1997.
2. The Plaintiff is a Japanese company. It manufactures a range of products but relevant to this case are audio cassette tape playing mechanisms; in this instance those specifically designed for use in cars.
Cited by 1 case
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HCA007658/1995 THIS DRAFT JUDGMENT IS PROVIDED FOR THE USE OF COUNSEL AND SOLICITORS ONLY IN PREPARATION FOR HANDING DOWN THE JUDGMENT ON THE 30TH SEPTEMBER 1997 AT 10.00 A.M. THE RESULT MAY BE COMMUNICATED TO THE PARTIES ON A CONFIDENTIAL BASIS FOR THE PURPOSES OF TAKING INSTRUCTIONS BUT MAY NOT BE REVEALED IN ANY OTHER WAY. 1995, No. A7658 IN THE HIGH COURT OF HONG KONG COURT OF FIRST INSTANCE ______________
______________ Coram: The Hon. Mr. Justice Rogers in Court Dates of hearing: 22, 23, 24 and 25 September 1997 Date of delivery of judgment: 30 September 1997 ________________ J U D G M E N T ________________ 1. This is a patent case. 2. The Plaintiff is a Japanese company. It manufactures a range of products but relevant to this case are audio cassette tape playing mechanisms; in this instance those specifically designed for use in cars. 3. The Defendant is a Hong Kong company which makes completed audio cassette playing machines containing mechanisms which it purchases from mechanism manufacturing companies. 4. The cassette mechanism the subject of this Action is one referenced SM-909N manufactured by a Korean company, Saehan Precision Co. Ltd. Saehan is not a party, as such, to these proceedings but the evidence shows that it has clearly been giving active assistance to and, apparently, financing the defence of this Action. THE HISTORY OF AUDIO CASSETTE MECHANISMS 5. The history behind the car cassette players in use today was outlined by Mr. Martin Colloms, the expert called on behalf of the Plaintiff. The need for audio entertainment in cars was initially satisfied by radios. For a short time in the early 1960s, record players which could be mounted in a car were available. These could play "single" 45 rpm records. Such record players had their limitations and were not popular. With the advent of the compact audio cassette in the 1960's came the ability to provide recorded audio entertainment in cars in a simple form. The rapid improvement of compact cassette reproduction particularly with the availability of Dolby B processing greatly enhanced the acceptability of compact cassettes. 6. Small though the compact cassette was, the requirements for mounting in a vehicle dictated that the mechanisms had to be small as well as robust and capable of withstanding such elements as cornering forces and vibration. As time went by, the space allocated to car cassette players became standardized at 7 inches by 2 inches with a depth of 5.9 inches. By comparison with domestic compact cassette players which were available in the early days, these measurements were small. 7. The early compact cassette playing machines were, it seems, basic by today's standard. They had comparatively fewer controls. It seems that initially the cassette was mounted in a longitudinal direction, meaning that the cassette was put into the player with the long side forward. All compact audio cassettes are recorded in the same manner namely with two tracks which are used for stereo recording when the tape is wound in one direction and a further two tracks which are displaced from the initial two tracks used for recording when the tape is wound in the other direction. Initially the user had to remove the cassette from the machine at the end of the first 2 tracks and turn the cassette over and replace it with its other side uppermost so that the remaining two tracks could be played. Using terms previously, and more accurately, applied to discs, this was referred to as playing one and the other "side" of the tape. Controls were arranged so that the tape could be wound forward and rewound. In that way either the tape could be wound forward to the end of the tape so that the other side could be played or else it could be rewound so that the same side could be replayed. The conventional approach was to have an additional high gearing arrangement so that in fast forward or rewind, the tape would be wound on to the appropriate reel much faster than at normal playing speed. 8. At some stage, and it would seem that it was probably still in the 1960's, auto-reverse was introduced. Auto-reverse is a system whereby the player is constructed in a manner which enables a tape to be played in either direction. When the end of the tape is reached sensing mechanism inside the tape player causes the tape to be played in the opposite direction. This enables a cassette tape to be played on each side without the user having to remove the cassette from the player and reinsert it. Suitable means are arranged so that the correct tracks on the tape are played back. This necessitates either a multiple head system or some arrangement whereby the same head can read the separate tracks. Inevitably this will also necessitate change over of the signal which is fed to the tape head. 9. Whilst what is termed in car entertainment is frequently regarded as beneficial to the driver because it enhances relaxation particularly on long journeys, it can also cause distraction from the primary task of driving the vehicle. This would seem a natural conclusion. If support for that were wanted, studies apparently have been made of the behaviour of drivers when subjected in particular, for example, to distraction caused by the use of mobile telephones. UNIDIRECTIONAL CONTROLS 10. In the early uni-directional cassette players the controls which effected fast wind or rewind were naturally so labelled. The controls were usually buttons or knobs. The control caused one spindle of the player mechanism to wind the tape onto its associated reel of the cassette. Hence, each control operated the tape in one direction only, opposite to the other. With the introduction of auto-reverse, winding the tape onto one of the reels would cause the tape to fast forward when one side of the tape was being played but to rewind when the other side was being played and the tape was moving in the opposite direction. If the controls of the tape player are maintained so that each control merely operates on only one of the spindles causing it to rotate, it can be seen that the controls are merely uni-directional controls but are not what are termed "dedicated" fast forward or rewind (as the case may be) controls. In other words each control would operate either as fast forward or as rewind depending on direction of play. 11. This phenomena caused some difficulty because unless the person operating the machine were aware of which side of the tape was being played, i.e. in which direction the tape was moving, it would be impossible to predict which of the controls should be operated to produce either rewind or fast forward (as the case may be). DEDICATED CONTROLS - RTS 12. Whilst unidirectional controls in an auto-reverse mechanism would be inconvenient, if not confusing, for users in a domestic environment it would have an added disadvantage with a cassette player being operated by the driver of a vehicle. Even if some indication means were given so that the driver could tell which direction the tape were playing, he would first have to take his eyes "off the road" and concentrate on the tape player and then decide which of the two controls needed to be operated. Alternatively, he would have to operate one of the two controls at random and then see whether it produced the desired effect. This was regarded as being undesirable since naturally it would distract concentration from driving. As a consequence it was considered that what was needed was that there should be "dedicated" controls, that is an arrangement where one control or button always produces rewind and the other always produces fast forward. This arrangement was given the name real time system or "RTS" for short. 13. The first RTS systems were electrically, or electronically, operated. This had the immediate disadvantage of a higher cost of manufacture, the electrical, electro-magnetic and electronic components being substantially more expensive than stamped metal components which are sufficient for a simple system. There were apparently also difficulties with the environment of a car dashboard particularly because of dust, heat and vibration which have a tendency to cause electronic components to become degraded. 14. Although RTS is of course desirable particularly for cassette players in automobiles since it enables a user who is familiar with the layout of the player's controls to operate the machine without difficulty and without taking his eyes off the road or losing concentration, there are, of course, other user aids, such as automatic searching devices for use in searching passages of a tape, which are also beneficial. THE REGISTRATION IN SUIT 15. The patent in suit was originally granted in the United Kingdom under the Patents Act 1977. It is dated 19th December 1986 claiming a priority date of the 20th February 1986. The patent was granted on the 29th November 1989 and was registered in Hong Kong under the Registration of Patents Ordinance on the 3rd October 1990. On the 27th June of this year the Registration of Patents Ordinance was replaced by the Patents Ordinance, No. 52 of 1997. Under the Patents (Transitional Arrangements) Rules a standard patent is deemed to have been granted for the invention shown in the published specification. 16. For the purposes of this Action no distinction has been drawn between the law applicable in respect of the registration under the Registration of Patents Ordinance and the deemed standard patent under the Patents Ordinance. Mr. Liao S.C., who appeared on behalf of the Plaintiff, specifically reserved the point to be argued in a higher court, if necessary, as to whether the defence of innocence could be maintained in respect of a patent registered under the Registration of Patents Ordinance. THE PATENT IN SUIT 17. Because of the intricate nature of the various levers, gears and parts many of which overlie each other and the inter-reaction between those parts, the specification of the patent in suit is somewhat lengthy and requires some study in conjunction with the drawings to be able to understand it. Indeed Mr. Colloms, the Plaintiff's expert, said that he, himself, took a number of hours to work out the mechanism of the patent in suit. 18. Although the description and claims of the specification are not limited to car cassette tape player mechanisms, that is what is shown in the preferred embodiment. 19. The invention relates to cassette player mechanisms which can play (and record if required) tape playing in either direction. So that maximum benefit can be obtained from this feature an automatic reverse function is provided. 20. Put simply and stripped to its essentials the mechanism described has 2 long thin plates which are called "operating members". These two operating members are located adjacent to and in part overlap each other. The arrangement of the operating members is such that when the first member is pushed forward there is a cam which operates against a slotted hole in the operating member which begins to retract the head mounting plate upon which the tape head is fixed. The tape being played will be located between what is called a capstan shaft and a pinch roller. The capstan shaft is the part of the cassette player which controls the speed of the tape. The rotation of the capstan with the tape sandwiched between it and the pinch roller pulls the tape past the tape head. There are 2 capstans and associated pinch rollers. These are located on either side of the head. The movement of the operating member which causes retraction of the head also causes the clamping action of the pinch rollers against the associated capstan shafts to be removed. As the first member is pushed further forward, it comes into contact with mechanism which sets off the automatic reverse mechanism which is used for reversing the direction of play when the end of a tape is reached. 21. In the cassette player mechanism which is described in the specification the arrangement is such that the spindle which turns the reel of the cassette turns much faster when there is no restraint caused by the head and the capstans and pinch rollers. In conventional players, the spindle is designed to rotate so that it keeps the tape taut after it has passed the capstan and pinch roller pulling the tape past the head. The necessary torque is not that great and the evidence was that in conventional machines without the resistance of the capstans and pinch rollers the spindles would turn at about 3 times its usual speed. With the conventional high gearing system for fast forward and rewind the tape would be would be wound at about 15 to 18 times its normal speed. The embodiment in the specification in suit would produce a speed of about 10 times the speed of normal play. 22. The operating member is kept in a forward position by means of a retaining mechanism. This retaining mechanism can be released either when the other operating member is pushed forward or when the end of the tape is reached and the automatic reverse mechanism operates. In either event the first operating member goes back to its original position under the operation of a spring. The tape head and pinch roller consequently take up their original position. 23. The other operating member works in a similar manner except that it does not act on the auto-reverse mechanism. When the second operating member is pushed forward the tape head is released and the fast forward operation is caused by the increased speed of the spindles without the restraint of the head and capstans. 24. The player described in the specification achieves RTS or what might otherwise be called dedicated rewind without using a fast wind mechanism and without the use of what is termed a coding or sensing mechanism. Such a mechanism is a means used in a player which can play in either direction for determining in which direction the player is operating. It is referred to by a number of names and is sometimes called an indicating mechanism. 25. Claim 1 of the patent reads as follows:
26. The apparatus described in the specification is entirely mechanically operated. It will be noticed however that the claims are not limited to apparatus which is entirely mechanical and thus equivalent electronic parts can be used as well. 27. One feature of the apparatus described in the specification which is not made a specific limitation in the claim is the use of the movement of the trigger mechanism which in the drawings takes the form of a hook shaped lever which acts upon a cam. When the auto-reverse works, the hook shaped lever is moved out of contact with the cam allowing the cam to rotate which in turn enables the commencement of the auto-reverse function. The movement of the hook shaped lever causes a reverse movement in the connecting means connecting that lever to the first operating member. If the first operating member is in its forward position, i.e. rewind has been activated, this reverse movement of the connecting means immediately unlatches the mechanism which holds the first operating member in its forward position, releasing it under the operation of its spring. This neat movement is part of the apparatus. THE ISSUES 28. At the commencement of the trial, the parties made clear that the Plaintiff alleged infringement of only claim 1 of the patent in suit. The Particulars of Infringement were amended to include inter alia that change. As was clear from the witness statement of the Defendant's expert witness, the Defendant did not challenge that the Saehan SM-909N mechanism which it used as an alternative to the Plaintiff's 717 mechanism in its compact cassette players, fell within claim 1 of the patent in suit. Therefore, there is no need for me to consider the question of infringement. VALIDITY 29. The validity of the patent is attacked upon one ground only that is obviousness or what is now called lack of inventive step. Section 93(1) of the Patents Ordinance provides as follows:-
30. Section 96(1) of the Patents Ordinance provides:-
There was no dispute between the parties in this case as to the law applicable but the application of the law was the matter of dispute. 31. Much has been said on the question of obviousness. I do not propose to repeat here what has been said in other cases more than I feel is necessary and useful. Nor do I propose to add further to what has been said. Obviousness means today what it meant more than a hundred years ago. Lord Herschell in Vickers, Sons & Co. v. Siddell (1890) 7 RPC 292 at 304 said that the relevant question was whether what is claimed is "so obvious that it would at once occur to anyone acquainted with the subject, and desirous of accomplishing the end...". My own decision in Canon Kabushiki Kaisha v. Green Cartridge Co. (Hong Kong) Limited (1995) 1 HKC 729 was cited to me. As Harman J. said in the case of re Thorn EMI plc (1988) 4 BCC 698 at 701,
32. The same process of reasoning, in my view, applies here and I adopt the same approach as I did in the Canon case without setting out the law, bearing in mind all that it has been said in particular cases such as PLG Research Limited v. Ardon International Limited [1995] RPC 287, Hallen Co. v. Brabantia (UK) Limited [1991] RPC 195, Genentech Inc's (Human Growth Hormone) Patent [1989] RPC 619 and most recently by Aldous L.J. in Beloit Technologies Inc. v. Valmet Paper Machinery Inc. [1997] RPC 489. 33. I adopt the structured approach suggested by Oliver L.J. in Windsurfing International Inc. v. Tabur Marine (Great Britain) Limited (1985) RBC 59 at page 73,
34. I apply that approach bearing in mind that it is simply a useful tool but that it must always be remembered that the ultimate question is whether the person attacking the patent has proved that the invention is obvious. THE INVENTIVE CONCEPT 35. In my view the inventive concept of the patent in suit is the provision of an auto-reverse compact cassette player where the operation of the fast forward and the rewind controls produce the desired effect, no matter which direction the tape is being played, by means of first moving the head away from the operating position and then utilising the auto-reverse mechanism to change the direction of the tape when the rewind control is operated and using the same drive train for rewind and fast forward as is used in the normal play operation of the player without the need for high speed gearing. 36. Part of that concept namely the operation of the fast forward and rewind controls producing the desired effect no matter which direction the tape is being played is of course commonly referred to as RTS and I shall continue to refer it in that way. KNOWLEDGE TO BE IMPUTED TO THE NORMALLY SKILLED BUT UNIMAGINATIVE ADDRESSEE 37. There was in the end little or no dispute between the parties as to what common general knowledge the skilled man would have possessed on the 20th February 1986, which is the earliest priority day claimed for the patent in suit. In this respect the skilled man would clearly have known of RTS and its desirability. I consider that a person constructing an auto-reverse compact cassette player at that time would have in mind the desirability of RTS, although perhaps it might not have been quite the overriding consideration which the Defendant might suggest. Nevertheless it would have been a consideration. 38. A number of patent specifications were relied upon in the pleadings in particular a United States Patent No. 3,758,049 in the name of Staar, a Japanese patent publication number 48-3606 in the name of Sanyo and a prior patent applied for by the Plaintiff namely 61-24043. Indeed that was one where the inventors appeared to be the same inventors as those of the patent in suit. 39. Whilst in no way suggesting that patent specifications in themselves will constitute common general knowledge, nor without specific evidence, that particular specifications were of such importance and notoriety that they should be considered to have come to the knowledge of the hypothetical unimaginative skilled worker, I accept for the purposes of this case that what is shown in those specifications may generally be regarded as knowledge that would have been possessed by such a person. In so saying I bear in mind that apparently Staar was one of the earlier manufacturers of mechanisms for compact cassette players and hence developments which it introduced might be expected to have been of interest. 40. The embodiments described in those specifications incorporated separate driving mechanisms for both the fast forward and the rewind features. Both these specifications related to cassette players with auto-reverse and the specifications showed a system whereby the controls would operate such that the rewind lever would always serve to rewind the tape no matter which direction it were playing and similarly the fast forward would always operate in fast forward. 41. The Staar specification described 2 embodiments, one which was purely mechanical and the other incorporated the use of electromagnets. In both of these there were high speed gears to drive the spindles turning the reels of the cassette when fast forward or rewind were engaged. Each of the levers was designed to operate on one of two high speed gears, each high speed gear was associated with one of the spindles. Which high speed gear was engaged by each of the levers was determined by a mechanical system which has been referred to as a coding, sensing or detecting means. Depending upon which direction the tape was playing so the position of this sensing means would be altered and in turn would alter the spatial position of the lever mechanism, which in turn would determine which of the high speed gears was brought into play and therefore which of the spindles was operated in a high speed manner. 42. In respect of the electromagnet version of the Staar specification much of the lever mechanism was not needed and the electromagnet system was designed to change the spindle upon which the single high speed gear would operate. 43. The Sanyo patent which dated from 1971, likewise had a high speed gear system for fast forward and rewind. It, too, addressed the problem of RTS. The embodiment shown in this specification not only similarly had a high speed gearing system in addition to the gear train which was required for the normal record and playback operation of the recorder but it too had a sensing means for determining the direction of play of the tape and, dependent upon the position of that, the spindle which would be operated upon by the high speed gear would be determined. 44. It seems to be accepted by the experts that in 1986 the conventional way of achieving RTS was by use of a separate high speed gear for fast forward and rewind and that some form of coding or sensing or detecting mean (whatever expression is preferred) was required. It seems that such systems, and apparently not limited to the Staar and Sanyo embodiments, were well known at that stage. 45. Indeed as I have already said, it also appears that the use of additional high speed gearing for fast forward and fast rewind was conventional. There was a difference between the experts as to whether it was known to use the same gearing for fast forward and rewind as for ordinary play. Mr. Colloms said quite clearly that he had not heard of tape recorders using such a system at that time. Mr. Takahashi on behalf of the Defendant said that cassette decks which had no high speed gearing and used the play gearing for high speed winding as well were quite popular at the time. Mr. Takahashi said that he had not mentioned it in his witness statement because he though it was common knowledge to everybody working in the cassette deck field at the time. Mr. Colloms was not challenged as to his statement nor were any examples put to him. No textbook or article which showed such a use was produced nor was there, for example, any patent specification produced showing this let alone was any reference made to specific cassette players. 46. When Mr. Takahashi was questioned he said that the number of this kind of deck was very huge because of the cost. What was understood by that was therefore that the system he was referring to was incorporated in cheap cassette decks. Indeed Mr. Liao S.C. then asked Mr. Takahashi whether these cheap decks had RTS and the answer was no. 47. It seems to me that two difficulties arise from this. In the first place I am not sure as to the types of cassette decks that Mr. Takahashi was talking about. Even if his statement in the witness box, unassisted by reference to any written articles, which could be dated, or manufactured products, which could be identified, were correct, the question then arises as to exactly what form this mechanism, which Mr. Takahashi refers to, took. Without knowing more, one cannot be sure that the mechanism really operated as a fast forward mechanism in a true sense of the word "fast". Indeed if such a system were not used for RTS there is a possibility that it may not have operated as a rewind mechanism. Mr. Takahashi was not specific about this, but I note that what he said is consistent with perhaps merely a forward function and not a rewind function: see in particular Day 2 page 61 line 22. 48. In the second place it seems to me, and indeed Mr. Garland S.C. did not seek to persuade me otherwise, that this use to which Mr. Takahashi referred cannot be regarded as common general knowledge. Common general knowledge has been referred to as being the information known to duly qualified persons engaged in the particular art or science: see British Thomson-Houston Co. Ltd. v. Stonebridge Electrical Co. Ltd. 33 RPC 166 at 171. It is part of the mental equipment which is necessary for competency in the particular field under consideration. Before the court can be satisfied that a particular matter is common general knowledge it must be satisfied that a witness has not an excess of any peculiar or special sort of knowledge but that he is giving evidence of matters he has learnt in the ordinary practice as a man engaged in the art. DIFFERENCE BETWEEN THE MATTER CITED AND THE ALLEGED INVENTION 49. As I have already stated there were a number of prior patent documents which were cited in the Particulars of Objection. Understandably, when it came to the argument the Defendants' contentions put by Mr. Garland S.C. were based upon the Tanashin Patent 61-24043. This was referred to in the course of the case as the Tanashin prior art. On the face of it, the mechanism shown in the Tanashin prior art would seem to have similarities to the embodiment of the patent in suit; many of the parts would appear to correspond. The first matter to be noted, however, is that the Tanashin prior art appears in part to have been directed to a more efficient use of electrical power in connection with a solenoid mechanism. There was an arrangement which would allow the power to be stopped during the course of fast wind and rewind. Mr. Colloms may well be right in his observation that such a matter might have greater importance in a case of a portable mechanism designed for battery use rather than a car mounted mechanism where it is unlikely that the power consumed by a solenoid during rewind of a cassette tape would be a serious matter. 50. The Tanashin prior art embodiment included an auto reverse mechanism. But this of itself was old. The fast forward and rewind was effected by additional gearing which not only required additional parts but required a complicated spindle shown in figure 15 of the drawings. Although the Tanashin prior art had the fast forward and rewind mechanism it did not incorporate RTS i.e. a dedicated rewind and fast forward. WOULD THE DIFFERENCES CONSTITUTE STEPS WHICH WOULD HAVE BEEN OBVIOUS TO THE SKILLED MAN OR DID THEY REQUIRE A DEGREE OF INVENTION 51. This, of course, is the crucial question. It has been described on a number of occasions as being a type of jury question. In respect of this case, the hypothetical jury would in my view either not retire at all or would return with its verdict almost immediately. 52. The crucial factors in this assessment seem to me to be that if the hypothetical skilled man not exercising any inventive talent were to take the Tanashin prior art and arrive at something within claim 1 of the patent in suit, there are, as I have indicated, at least two important steps in the process. In the first place, he would have to decide to use the auto-reverse mechanism in conjunction with the rewind control. In the second place, he would have to discard the conventional high speed gearing system of the Tanashin prior art and simply use the normal winding mechanism to achieve fast forward. 53. Mr. Takahashi said at paragraph 33 of his witness statement that he could see "no inventiveness or ingenuity in designing a construction for activating the direction change-over mechanism when the first operating member was advanced." That statement may indeed have some validity, but the idea of needing and using such a construction, discarding the high speed mechanism and combining the auto-reverse mechanism with the ordinary wind mechanism to achieve RTS seems to me to have that scintilla (at least) of invention which entitles the patentee to his patent. 54. Mr. Garland's approach which was essentially to look at the result and ask the question whether it is a solution which would have looked sufficiently promising to the uninventive skilled man, again side steps the important point as to whether that man would have thought of that solution in the first place. Like Mr. Takahashi's formulation it concentrates on the question of a "design" of a particular mechanism and avoids the question of why the skilled man would think of it in the first place. 55. It seems to me that Mr. Liao is correct that the skilled man seeking to achieve RTS based on an embodiment such as the Tanashin prior art would consider inserting a coding or sensing means such as has already been in use for some considerable period and was disclosed for example 15 years or more earlier in the Staar patent. The conventional high speed gearing was already present in the Tanashin prior art embodiment, it seems me it was not obvious that it should be discarded. As Mr. Colloms pointed out there were a number of considerations which had to be taken into account in designing a mechanism which would work as a winding mechanism which was acceptably high speed as well as for use in the ordinary course of winding the tape in normal play. As Mr. Takahashi agreed in cross-examination, when considering the matter in his witness statement, he had possibly overlooked the question of the presence of the high speed gearing and the need to discard it. The presence of high speed gearing as I have already mentioned caused the existence of a considerable number of extra parts in the Tanashin prior art as well as a complicated structure of the spindle. 56. Mr. Takahashi's evidence was attacked by Mr. Liao not only as being potentially biased because of Mr. Takahashi's previous involvement through his company with Saehan but because he appeared to have been falling into the trap of approaching the question of obviousness with hindsight. 57. In this respect it is necessary to mention that the question of obviousness is one for the court and not for the witnesses. The role of expert witnesses as shown by the cases is to give evidence as to the state of the art at a given time, explain the meaning of technical terms to the court, say what in the expert's opinion that which is described in the specification on any given hypothesis as to its meaning would have taught or suggested to him, say whether in his opinion a particular operation in connection with the art could be carried out and to give scientific explanations. But the meaning of a specification is for the court. Still less is an expert witness entitled to say that a particular step was obvious nor (and this of course is not in point in this case because infringement is conceded) could he say something was an infringement. These propositions are repeated in many cases. The statements of Lord Tomlin British Celanese Ltd. v. Courtaulds Ltd. (1935) 52 RPC 171 @ 195 and Lord Russell C.J. and Lindley L.J. in Brooks v Steele and Currie 14 RPC 46 @ 73 are just 2 examples. Although, Section 58(1) of the Evidence Ordinance provides that :-
that provision does not make such previously inadmissible evidence any more admissible. Questions of the construction of a specification, infringement and obviousness are, at best, matters of mixed fact and law and the expert is not qualified to express his opinion in that regard- he is a technical witness. The provisions of Section 58(2) of the Evidence Ordinance do not assist very much more. Section 58(2) provides :-
58. I can not imagine circumstances where in order to convey a fact perceived by the witness it is necessary for him to say that something is obvious or an infringement. One would hardly expect it to be necessary or permitted for a witness to say that he perceived a driver to be negligent even if he were giving expert evidence. 59. Nevertheless, there has been a tendency to be less observant of the proper role of an expert technical witness. The witness statements in this case reveal that there has been a great deal of what can only be submissions incorporated into what should be evidence. The fact that the evidence in chief is now in written form, perhaps, makes it less necessary to be watchful to exclude it because it can be taken for what it is when the papers are examined but the importance of these rules and the significance of them should not be lost sight of because the reasons for them remain as valid today as they were previously. 60. In this case, for example, it seemed to me that particularly with regard to Mr. Takahashi, the Defendant's expert witness, he was possibly not merely simply concerned to give expert evidence but to further the Defendant's cause. In giving his evidence, he was not necessarily directing his mind to the correct issues and was in any event giving his evidence from the point of view of a highly inventive person. His own witness statement demonstrates that he was responsible for approximately 54 patents and utility models. He was thus a person who hardly falls within the category of unimaginative or uninventive persons. In listening to his explanations, it seemed to me that he looked at matters in broad conceptual ways; he could see the same features in what appeared to me to be considerably different embodiments. Mr. Liao described it as lateral thinking. It possibly was but it was also, it seems to me, a misunderstanding of the issues for I doubt that he was directing his attention to the claims of the patent in suit. However, towards the end of his cross-examination, he agreed with Mr. Liao that the apparatus described in the patent in suit was neater, much cleaner and simpler when compared to the Tanashin prior art. He agreed that it was cheaper for production. He went on to say "actually, my opinion, if I were to answer, I think it is a good design"; by that he said he meant that the balance of the parts was beautiful. He then went on with more poetic imagery to compare it to the look of a pretty or beautiful lady. "Good design" he said "means that every part looks good". Clearly, he was looking and thinking of this in the eyes of an engineer. 61. In my view, he is correct and this was a neat invention which involved a significant advance over the Tanashin prior art. DAMAGES 62. Under S.81 of the Patents Ordinance it is provided that
63. Similar provisions have existed in the Patents Act in the United Kingdom for some time and in particular in the Patents Act 1977. 64. It is of course for the person seeking to rely on this provision to prove that he was not aware of the patent in suit and it is agreed by both sides that on the authorities it is an objective test as to whether the Defendant had no reasonable grounds for supposing the existence of the patent in suit. 65. It is clear that to rely on this defence the onus must lie upon the Defendant. In support of their case, the Defendant called one witness Mr. Chan Chun Lung. He is the Assistant to the General Manager of the Defendant and he joined the Defendant in May 1991. Unfortunately, when it came down to it, his evidence was of little use to the Defendant. In the first place it seemed to me that he knew little of the mechanism under consideration. Although his witness statement referred to the feature of "dedicated rewind" when the matter was put to him it seemed that he had a great deal of difficulty in understanding what dedicated rewind meant and distinguishing that from auto-reverse. 66. It seems that the Defendant had been purchasing the Plaintiff's model 717 which incorporates the features of the patent in suit at a time prior to Mr. Chan joining the Defendant. As a consequence it seems that he knew little of the decision that was taken, and why it was taken, for the Defendant to purchase and use such a mechanism. It also seemed from his evidence that he knew very little of the decision to purchase the Saehan mechanism. He was unable to say when that was. It seems that there were at least two other people who are, or at least had been, in the Defendant's organisation at the relevant time who might have been able to give such important evidence. First was the purchasing manager and the second was Mr. Louis Chan who was a director of the Defendant. No enquiries had been made by Mr. Chan of these people. What was clear was that the Saehan device which is the subject of this action was cheaper than the Plaintiff's device. 67. Having seen and listened to Mr. Chan in the witness box I doubt his technical expertise. He was not involved with cassette players prior to joining the Defendant in 1991. I doubt that he knew sufficient about the particular mechanism and what was available prior thereto to have any idea as to whether a patent might be involved or not. It is clear however, that the Defendant knew about patents, copyright, registered designs and trademarks and was therefore familiar with industrial property rights in general. It seems to me that Mr. Chan's evidence was so wanting that the Defendant is unable to rely on it at all as establishing any relevant facts on which it could succeed in this defence. 68. I would note that Mr. Liao went further and drew attention both in cross examination and submissions to a defence of estoppel which had previously been included in the Defence but had subsequently been amended out of it. In that previous plea reliance had been placed upon correspondence between the Plaintiff and Saehan and it was suggested that such instructions must have come from Mr. Louis Chan and therefore the Defendant must have known of the Plaintiff's patent in order to be able to plead such a defence. That is, of course, a possibility but in the absence of being able to know exactly where the instructions came from for the inclusion of that matter in the Defence, it seems to me that it is also consistent with the instructions coming directly from Saehan, who apparently have financed the defence of these proceedings, and it not being appreciated by the pleader that the Defendant was not in a position to rely upon such a plea.
Representation: Mr. Andrew Liao S.C. and Miss Winnie Tam instructed by Messrs. Lovell White Durrant for Plaintiff. Mr. Peter Garland S.C. and Mr. Stewart Wong instructed by Messrs. Johnson Stokes & Master for Defendant. |
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