HAMMAR MASKIN AB AND ORS V STEELBRO NEW ZEALAND LIMITED HC CHCH CIV 2006-409-000977

HAMMAR MASKIN AB AND ORS V STEELBRO NEW ZEALAND LIMITED HC CHCH CIV 2006-409- 000977 8 October 2008IN THE HIGH COURT OF NEW ZEALAND CHRISTCHURCH REGISTRY CIV 2006-409-000977UNDER the Patents Act 1953 and the Copyright Act 1994 IN THE MATTER OF Alleged Infringement of New Zealand Letters Patent No. 331591 BETWEEN HAMMAR MASKIN AB First Plaintiff AND BENGT-OLOF HAMMAR Second Plaintiff AND HAMMAR NEW ZEALAND LIMITED Third Plaintiff AND STEELBRO NEW ZEALAND LIMITED Defendant Hearing: 28-30 April, 1 May and 6-9 May 2008 Counsel: B W F Brown QC and A J Evans for Plaintiffs J G Miles QC, G W Hall and S Pidgeon for Defendant Judgment: 8 October 2008JUDGMENT OF PANCKHURST J Table of ContentsPara NoHammar Maskin AB : Steelbro New Zealand Limited [1]Sidelifters [7]Models of sidelifters [14]Hammar [15]Steelbro [23]The required approach to patent construction [26]The patent in suit [32]Para NoConstruction of the disputed elementsTwo support parts which are "relatively offset in the transverse direction" [39]A support sleeve "supported by a pivot pin connected to the vehicle chassis" [45]"An extension part which is moveably arranged in a bearing in the first support part" [51]"The support sleeve has a longitudinal extent which, in the parked position of the support, essentially corresponds to the width of the vehicle" [58]"The ends of the support sleeve are bevelled to provide end faces that extend substantially vertically when the support is in the parked position" [60]Infringement of the patent [62]Revocation of the patent [65]Obviousness and lack of inventive stepThe relevant legal principles [67]Particulars of objections to the validity of the patent [72]The arguments directed to the particulars [79]Mr Eaton's evidence [84]Mr Stevens' and Dr Stark's evidence [89]Evaluation of the evidence and arguments [97]Inutility [112]Insufficiency of description / Failure to disclose best method [125]The particulars re insufficiency / best method [126]The relevant principles [128]The relevant evidence [133]Evaluation of insufficiency / best method [140]Ambiguity/lack of fair basis [147]Copyright [157]A preliminary pleading point [159]The issues [162]Objective similarity of a substantial part? [166]The expert evidence [173]Evaluation of the expert evidence [182]Proof of copying [191]The relevant chronology [193]The evidence of David Jeffery [201]The rival arguments [203]Evaluation [208]Hammar Maskin AB : Steelbro New Zealand Limited[1] Hammar Maskin AB is a Swedish company. It operates from a main plant in Olsfors, Sweden. The second plaintiff Bengt-Olof Hammar established the company in July 1974. It designs, builds and sells sidelifters. The company is now a fully owned subsidiary of a parent company owned equally by Mr Hammar and his wife, Berit Hammar. Hammar has subsidiaries in Australia, Malaysia, the United States of America and in New Zealand (the third plaintiff, Hammar New Zealand Limited), at Auckland. [2] Steelbro New Zealand Limited is a New Zealand based competitor of the plaintiff company. It too specialised in the design, building and sale of sidelifters. Steelbro was founded in 1878 at Christchurch as a general engineering company. However, since the early 1980s the company has specialised. It likewise has an international presence, exporting products to numerous countries. [3] An integral part of modern sideloaders are stabiliser legs. These are extendable to the side of trucks, or trailers, fitted with hydraulic cranes for unloading and loading shipping containers. As the name implies, the stabiliser leg, when positioned to the side of a vehicle, provides stability in the course of a lift. [4] In 1997 Mr Hammar conceived what he believed to be a breakthrough modification to stabiliser leg technology. Subsequently, he filed a patent application in Sweden in September of that year. A corresponding application was filed in New Zealand and a patent granted in July 2000. [5] This proceeding involves claims against Steelbro for alleged infringement of the New Zealand patent and for alleged infringement of Hammar's copyright in four support leg drawings produced by its employees in 1998-99. The defendant denies the infringement allegations. Moreover, it asserts an affirmative defence to the patent claim by seeking revocation of the patent on a number of grounds. These include that the patent should not have been granted on account of obviousness and lack of inventive step, inutility, insufficient disclosure of best method and that the patent description is ambiguous.[6] After reference to some contextual aspects I shall first consider the construction of the patent, whether infringement of the patent occurred, then the various grounds of invalidity alleged by Steelbro and, finally, whether copyright in the design drawings was infringed.Sidelifters[7] Vehicles, both trucks and trailers, having a sidelifting capacity have existed for many years. Such vehicles through the use of mounted cranes may lift loads onto and off their carrying platform. To provide stability the vehicles have two or more extending stabiliser legs for deployment during the course of lifting operations. [8] Because sidelifters (or sideloaders as they are also known), are road-going vehicles they must comply with road transport requirements of the countries within which they operate. These invariably include a vehicle width limitation, typically 2.5 to 2.6 metres. This restriction is of particular importance with reference to the design of stabiliser legs. Efficiency requires that they are stowed (when not in use) across the width of the vehicle. Accordingly, the stowed length of a stabiliser leg is a maximum of about 2.5 metres. This in turn restricts the extended length of the leg and the measure of stability which it can achieve in the deployed position. [9] There is also a height restriction of 4.25 metres. That is, stabiliser legs in the course of being deployed must not exceed this maximum height. This requirement poses a further operational limitation. The length of stabiliser legs must likewise be kept within bounds in order to comply with the height restriction. [10] The advent and exponential growth in the use of containers from about the 1970s led to a dramatic growth and demand for sidelifters. Particularly in countries with less developed rail systems, such as New Zealand, sidelifters enabled the road transportation of shipping containers. Flexibility of operation was demanded. Sidelifters required the ability to load, and unload, to ground level; but also onto other vehicles parked adjacent to the sidelifter. There was also a requirement to unload in confined areas, whether on wharves, in railway yards or the like.[11] These operational requirements created demands with reference to the design and construction of stabiliser legs. Where a container is to be offloaded onto the ground the stabiliser legs need to be positioned a distance out from the deck of the sidelifter in order to provide adequate stability. But, in other situations the legs may need to be placed on, or beneath, the deck of another vehicle. In some situations the stabiliser legs may need to be deployed in a near vertical position, close to the side of the sidelifter, on account of some adjacent obstacle. [12] With the growth in containerisation came an increase in the size and weight of containers. Containers used to be 20 feet long. Today they may be up to 40 feet in length. The loaded weight of containers has increased, first up to 33 tonnes, and today to 40 tonnes. Given that the weight of a sidelifter itself is about 10 tonnes (including the weight of the crane units and stabiliser legs), the vehicle is an inadequate counterweight to the weight of a container which is being offloaded. Hence, increased sophistication in the containerisation industry has had to be matched by corresponding gains in sideloader development, particularly in relation to the development of improved stabiliser legs. Sidelifter cranes by contrast, apart from an increase in lifting capacity, have not required redevelopment to the same extent. [13] On account of the variable size of containers, sidelifters also need to be adaptable. A sidelifting vehicle should ideally be able to lift both 20 and 40 foot containers. A mobile crane unit is required. Such units may be shifted along decking mounts, or the vehicle chassis, so as to match the length of the container to be lifted. This means that stabiliser legs must also be mobile. In some sidelifters this is achieved by the stabiliser leg being attached to the crane unit so that the two move in tandem.Models of sidelifters[14] The imperatives mentioned above required both Hammar and Steelbro to develop new models in response to market demands. Over the years both companies developed sidelifters of increased capacity and sophistication. These were identified by different series numbers.Hammar[15] The company built its first sidelifters in 1974. Subsequently the following series were launched:1976 Hammar SL20 1987 SL150 series 1990 SL160 series 2003 SL180 seriesWithin each series there were also different model types. [16] This case concerns the SL190 series which was developed from 1998. All previous series featured stabiliser legs which were stowed in a horizontal position across the width of the sidelifter. [17] Mr Hammar explained in giving evidence that during the summer of 1997, while working at his home one evening, the idea of a negatively inclined stabiliser leg occurred to him. Conceptual drawings were prepared. By inclining the stowed leg in a negative position, away from the side of its intended deployment, a gain could be made in the length of the leg without exceeding the vehicle width. If each end of the stowed leg was tapered, or bevelled, so as to fit in vertical orientation to the edges of the truck (or trailer) an additional gain in length could be made. Once the leg was extended into its deployed position, the gain in length achieved in the stowed position could be approximately doubled. This was because stabiliser legs comprise an outer sleeve from which an inner sleeve is hydraulically extended. By also improving the configuration and placement of the heavy bracket by which the stabiliser leg is affixed to the vehicle itself, a better range of extension of the leg could be achieved. [18] Initially Mr Hammar intended that the new design of stabiliser leg would be incorporated into the 180 series models. However, the 180 series was planned to be a lighter model of sidelifter. It was placed on hold, and development of the new stabiliser leg concept occurred in the context of the 190 series.[19] A prototype of the new stabiliser leg was developed and tested. In the meantime, on 4 September 1997, Mr Hammar filed a patent application through his Swedish patent attorney. In July of that year Hammar employed Mr Benny Gustavsson as a designer. He worked on the drawings for the Hammar 190 series. This included involvement with the new style stabiliser leg. [20] Through the use of a negatively inclined stabiliser leg a gain of 100 mm (from 2,500 mm to 2,600 mm) in the total length of the leg in its stowed position was achieved. The bevelled end also produced a gain of about 200 mms, being the extent to which the bevel protruded out from the side of the vehicle once the leg was moved to a horizontal position. The total gain achieved when the leg was fully extended and placed in a deployed position was an increased reach approaching 300 mms. This improvement in reach translated to increased stability. [21] The sale of the 190 series began with the release of three new units in late 1998. On 28 August of that year Mr Hammar filed the New Zealand patent application with a 4 September 1997 priority date. By 2000 models from the Hammar 190 series were sold in New Zealand. The New Zealand patent for the new style stabiliser leg was granted on 6 July 2000 as Patent No. 331591. By then Benny Gustavsson was employed by Steelbro at Christchurch. He was employed in April 2000. In 2000-2001 Mr Gustavsson was responsible for the preparation of a number of engineering drawings. I shall return to the significance of these later. [22] In early May 2005 New Zealand patent attorneys acting on behalf of Hammar wrote to Steelbro alleging that the company had infringed copyright in engineering drawings and infringed the patent. Steelbro's solicitors denied the infringement allegations. Both with reference to the patent, and copyright, Steelbro stated that it had been producing sidelifters since the early 1980s and that the company's most recent model, SB361, incorporated improvements which were logical modifications of previous sidelifter arrangements.Steelbro[23] The Steelbro model history is as follows:May 1983 Mk III sidelifter September 1984 Mk IV sidelifter September 1988 Mk V sidelifter June 1991 Mk VI (SB360) sidelifter April 1993 SB120 sidelifter July 1999 SB 300 sidelifter March 2004 SB 361 sidelifterThe SB401 series was developed alongside the SB361. [24] With the various models came an increase in lifting capacity and in the ability to carry containers of longer length. All models through to the SB330 in 1996 featured stabiliser legs which were stowed in a horizontal position. The change to a negatively inclined stow position occurred with the development of the SB361/401 series. [25] In mid-2001 the project to develop the new models began in earnest. The design process involved evaluating the best features, and deficiencies of the SB360 and SB330 series. The latter was identified as having the best stabiliser leg for ease of manufacture. Because the new series had to lift a maximum of 40 tonnes (about a 10 per cent increase), a corresponding increase in stabiliser performance was required. A team of engineers undertook this work. The change to a negatively inclined stabiliser leg was but a refinement to existing designs in order to meet increased lifting capacity. According to Steelbro the negative incline represented an obvious progression, which was developed through the use of sophisticated computer-based design tools.The required approach to patent construction[26] Both Mr Brown QC and Mr Miles QC referred to a number of cases with reference to this aspect. However, there did not seem to be any real disagreement as to the relevant principles. [27] The decision in Lucas v Peterson Portable Sawing Systems Ltd [2006] 3 NZLR 721 (SC), given by Gault J on behalf of the Court, included this:[22] As the Patents Act [1953] makes clear, the applicant for the grant of a patent defines the scope of the invention in respect of which the statutory monopoly is claimed in a claim or claims at the end of the specification (s 10). The claims must be clear and succinct and fairly based on the disclosure in the specification. Conventionally there is a series of claims directed to aspects of the invention. They reflect the skill of the drafter who seeks to claim as widely as possible to encompass potential infringements but avoiding such width as may be invalid. Claims usually are drawn in increasing detail, often (as here) ending with a narrow claim to the specific embodiment described in the specification and any drawings.[28] Then followed reference to the claims in the patent in suit, after which Gault J said with reference to construction:[25] The first and essential step, therefore, is to construe the claim. Construction is a matter of law for the Court. [26] A patent specification is to be read as a whole and given a purposive construction. It must be construed as it would be understood by the appropriate addressee – a person skilled in the relevant art. [27] Each part of the specification is to be read objectively in its overall context and in light of the function of that part. The claims are to be interpreted by reference to the object and description in the body of the specification. [28] The claims define the scope of the monopoly conferred by the patent. They limit what others may do. They must clearly define the protected field so others may fairly know where they cannot go. The description in the body of the specification may assist interpretation, but it cannot modify the monopoly the inventor has clearly marked out. If his claim is formulated too narrowly so that imitators do not infringe, that cannot be rectified by reference to the description. If it is too wide, consequent invalidity cannot be saved by reading in limitations appearing in the description. The description of a preferred embodiment of the invention is just that and plainly will not confine the scope of an invention claimed more broadly. All of this is well established.[29] It is also settled that the construction of a claim is inelastic, in that the construction remains the same whether the validity, or infringement, of the patent is being considered. In other words, the patentee is not entitled to the luxury of a narrow meaning when assessing validity, but a wide meaning when considering infringement: Terrell on the Law of Patents (16th ed) at para 6-06. [30] The words of Lord Diplock in Catnic Components Ltd v Hill and Smith Ltd[1982] RPC 183 (HL) at 243 bear repeating. He said that in giving a purposive construction to a patent "the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge" was inappropriate, since it was what a person skilled in the art would understand from the use of a particular word or phrase which mattered. [31] Finally, in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 (HL) Lord Hoffman said at para [34]: the language he [the patentee] has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee's own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.The patent in suit[32] The patent specification is quite lengthy. I shall not refer to all its aspects. Hammar alleges infringement of claims 1, 2, 4, 6 and 7 of the patent. Accordingly, I shall refer to aspects of the specification most relevant to this infringement contention.[33] The patentee defines the invention as relating to a support structure for wheel-mounted vehicles of the type comprising at least two support parts extendable in the transverse direction to the vehicle. The space in which such support structures must be accommodated in a parked position corresponds to the transverse dimension of the vehicle. Previously, the specification continues, support structures had been inclined downwards, when stowed, to the operational side of the vehicle. Thereby the support structure may be "somewhat longer" than would be the case if parked in a horizontal position. However, in this inclined position it proved difficult to use the support structure when transferring a load to another surface at a similar level to the load surface of the subject vehicle. [34] The object of the invention is stated to be two-fold. The support structure must be able to provide vertical support (close to the subject vehicle, in order to avoid obstacles), and also "far away" support, whether onto the ground or onto an adjacent elevated loading surface. [35] These objects are achieved by a support structure of the type described in the characterising clause of claim 1. The sub-claims (2-7) contain "further details and advantages of the invention". [36] An embodiment of the invention is described by reference to six drawings. Figure 1 depicts the vehicle from the rear with the support structure in its parked position. Figures 2, 3 and 4 depict the support structure deployed onto a neighbouring platform, the ground at a distance and the ground immediately beside the subject vehicle, respectively.[37] Claim 1, as the characterising clause, can be conveniently divided into eight integers:(a) a structure which is adapted to support a wheel-mounted vehicle, (b) the structure consisting of at least two support parts which arerelatively offset in the transverse direction of the vehicle(c) and of which a first part is a support sleeve supported by a pivot pin connected to the vehicle chassis(d) and the second part is an extension part which is movably arranged in a bearing in the first support part, i.e. the support sleeve, (e) characterised in that the support, i.e. the two support parts, are pivotable between a parking position in which they slope downwards to the side of the vehicle which is furthest away from the pivot pin of the support structure, (f) and at least one operative position with an opposite inclination, (g) wherein the support sleeve has a longitudinal extent which, in the parking position of the support, essentially corresponds to the width of the vehicle, (h) and wherein the ends of the support sleeve are bevelled to provide end faces that extend substantially vertically when the support is in the parking position. (emphasis added)The phrases which have been highlighted excited differences of view between the expert witnesses as to their proper construction. I shall return to them shortly. [38] The sub-claims which are of present relevance provide:2 A structure as claimed in claim 1, characterised in that the pivot pin is arranged far down in the vehicle chassis, i.e. at least below the platform surface of the vehicle, preferably in level with the vehicle chassis. 4 A structure as claimed in any one of the preceding claims, characterised in that the support sleeve is connected to the pivot pin via a bracket which is rigidly connected to the support sleeve and which forms a bearing arm, which is also engaged by a lifting jack which extends from the bearing arm to the vehicle side opposite to the pivot pin and which serves as a drive means for pivoting the support. 6 A structure as claimed in claim 4, characterised in that the bearing arm has a length and shape adapted such that the support is freely pivotable to a vertical position outside the vehicle wheels. 7 A structure according to claim 1 substantially as herein described or exemplified.Construction of the disputed elementsTwo support parts which are "relatively offset in the transverse direction"[39] Mr Edward Stevens (a defence expert) considered the terminology "relatively offset in the transverse direction of the vehicle" meaningless. He presumed that "the transverse direction of the vehicle" was upon viewing the vehicle from behind. But,"relatively offset" in relation to what? Did it mean that the two support parts may be relatively offset to each other in the transverse direction of the vehicle? And, Mr Stevens asked, in what position are the two support parts relatively offset? Not in the stowed position, but perhaps it could be said they were offset in the operative position. All in all, Mr Stevens considered the phrase unintelligible. [40] Doctor Hugh Stark, another defence expert observed that the two support parts were only relatively offset in the transverse direction when deployed at an inclination as depicted in figures 2, 3 and 6, not when the support parts were stowed or deployed vertically (as in figure 4). In cross-examination he said that when the stabiliser leg was in a vertical position its centre line is parallel to the centre line of the vehicle and, hence, the leg at that point is not in the transverse direction of the vehicle. Therefore, he opined, in relation to infringement the SB361 would not infringe the patent while the stabiliser leg was stowed, or deployed in a vertical position. [41] The expert for Hammar, Graham Eaton, considered this wording somewhat cumbersome, but said that in the context of the drawings it was immediately clear "that the structure consists of at least two support parts which are relatively offsetable, or moveable, and that these parts are arranged in the transverse direction of the vehicle". [42] Mr Miles criticised this interpretation as strained. Counsel noted that Mr Eaton substituted "offsetable" for "offset", and added "moveable" in order to improve the meaning of the phrase. This was said to contradict the plain meaning of the words, since "are relatively offset" had a plain and ordinary meaning other than offsetable, or moveable. [43] Mr Eaton commented at the outset of his evidence that the Hammar patent was sourced from the original Swedish equivalent. He thought the patent used terminology which an English-speaking engineer would not have chosen, nonetheless he found no difficulty in understanding the specification.[44] I agree that the patent reads in a manner consistent with a translation from Swedish. This, of course, cannot influence its proper construction. The patent remains to be construed according to its terms. In my view the phrase "relatively offset in the transverse direction of the vehicle" is intelligible when read in the context of the document as a whole and the figures in particular. The subject-matter of the phrase is the "two support parts". Such support parts are relatively offset in the transverse direction of the vehicle. In a context where the structure has both a parked, and an operative, position, it is, I think, self-evident that the subject phrase aptly describes the direction of relative offset of the two parts.A support sleeve "supported by a pivot pin connected to the vehicle chassis"[45] At p 3 of the specification the support structure is described as "pivotally connected to the platform of the vehicle or to the chassis thereof by means of a pivot pin 6". Figure 1 identifies the chassis (by the number 2) and the moveable platform (by the number 4) as distinct, if connected, components. Yet, the phrase used in claim 1 is that pivot pin 6 is connected to the vehicle chassis. [46] Mr Eaton made two points with reference to this aspect. He agreed that the figures showed pivot pin 6 connected to the platform rather than the chassis. However, he did not consider that "connected to" implied only a direct connection. Indirect connection to the chassis, via the moveable platform, occurs in operation, because when the stabiliser leg is deployed the moveable platform is locked to the chassis and, thus, becomes part of it. Secondly, Mr Eaton considered that the patent read as a whole demonstrated that the words chassis and platform were each used in a very general way and effectively interchangeably. [47] Mr Stevens took a more literal approach. He rightly observed that the specification expressly distinguished between the platform and the chassis, yet claim 1 required a connection to the vehicle chassis. Although he accepted that "connected to" was broad enough to include indirect connection, the figures plainly depicted connection of pivot pin 6 to the platform and, absent something to countenance indirect connection, he construed the words in claim 1 at face value.[48] In general terms, Dr Stark agreed with Mr Stevens' approach. He regarded the specification and the embodiments as in conflict with this integer. In light of this confusion he concluded that the integer should receive a literal interpretation, so that connection to the chassis is required. [49] In closing Mr Brown relied upon Rescare Ltd v Anaesthetic Supplies Pty Ltd(1993) 25 IPR 119 at 129, a judgment of Gummow J. Claim 1 of the patent in suit used the phrase "connected to". These words, it was held, may be used in two senses. Objects A and B may be connected in the sense of an immediate physical relationship, each being fastened to the other. Equally, however, A and B may be connected by the medium of C. The sense in which "connected to" has been used in a particular context is a matter of construction, to be answered in the context of the document as a whole. [50] Here the specification at page 3 refers to the support structure "pivotally connected to the platform of the vehicle or to the chassis thereof by means of a pivot pin 6". The figures identify the platform and the chassis as separate entities, although directly connected to one another. Pivot pin 6 is depicted in the platform which part is described as moveable. The evidence established that sidelifters do not have a platform, or deck in the conventional sense. Rather, there is a minimal structure, upon which containers may rest, and which is moveable but hydraulically fixed to the chassis while the crane and stabiliser leg are operational. Hence, I accept the submission that the terms platform and chassis are used in a general sense, and because of their association in practice, are interchangeable. In these circumstances "connected to" the chassis is used in what Gummow J termed the second sense ie a connection through the medium of the platform."An extension part which is moveably arranged in a bearing in the first support part"[51] This wording occasioned a keen difference of expert opinion concerning whether a separate bearing element was required. The witnesses for Steelbro emphasised the use of the indefinite article before bearing. They did not suggest that the words "a bearing" required rolling bearings, but more likely bearing strips thatwould facilitate relative movement (sliding) of the extension part within the support sleeve. [52] Mr Eaton, however, in giving evidence for Hammar, said that the use of the word "bearing" simply conveyed that the extension part bears on the support sleeve as it moves in and out as shown in figures 5 and 6. Mr Miles criticised this evidence, in part because it ignored the use of the indefinite article ("a bearing") in claim 1. [53] In giving evidence Mr Hammar referred at some length to the actual construction of the SL190 sidelifter. He drew a diagram which showed reinforcing steel affixed to portions of the upper and lower outer surfaces of the support sleeve in the area of greatest upwards and downwards force when the stabiliser leg is deployed (see the area identified as L in figure 6). His diagram also depicted, affixed to the inner surfaces of the support sleeve and in the same general area, what he termed 3 mm stainless steel plates. These were to minimise movement between the extension and the support parts. After being referred to the Swedish terminology used in relation to this element, Mr Hammar translated the terminology by use of the English words "wear" and "glide", being terms which captured the function of the internal stainless steel plates.[54] Mr Miles embraced this evidence as confirmatory of the integer contained in claim 1. He said Mr Hammar's drawing depicted and his testimony confirmed, the existence of what was essentially a stainless steel bearing. [55] Mr Stevens and Dr Stark considered that this integer was so described as to refer to a distinct component present in the support sleeve and within which the extendable sleeve was movably arranged. They considered that the bearing component would comprise rubbing strips that would facilitate relative sliding of the two components. Particularly given the use of the phrase "a bearing" both witnesses disagreed with Mr Eaton's evidence that the words simply conveyed the meaning that the extension part bears on the support sleeve in the course of relative movement of the two. [56] In final submissions Mr Brown argued that the only question was whether the wording of the claim demanded a separate and additional bearing element to be present within the support sleeve. He noted that there was no reference to a separate or additional bearing component. Nor was the existence of a separate element described in the specification or shown in the drawings. [57] That is so, but the wording of the claim describes an extension part "movably arranged in a bearing in the [support sleeve]". This description, to my mind, may only be read as referring to an additional element which performs the function of a bearing. Mr Eaton's contention that the words convey that one part bears on the other when the stabiliser leg is extended, is strained. For these reasons it is my view that the evidence of Mr Stevens and Dr Stark is to be preferred."The support sleeve has a longitudinal extent which, in the parking position of the support, essentially corresponds to the width of the vehicle"[58] Dr Stark expressed the opinion that the meaning of this integer was unclear. He said:It appears to be equating the length of the support sleeve in the parked position to the width of the vehicle. However, this would only be possible were the support sleeve horizontal in its parked position, in contravention to integer [(e)].[59] I disagree. Firstly, it is noteworthy that neither Mr Eaton nor Mr Stevens found difficulty with this integer. Secondly, Dr Stark substitutes "length" for "longitudinal extent". Longitude is the distance in degrees east or west of a defined point. The adjective "longitudinal" means relating to longitude, or length. The use of the two words, longitudinal extent, implies less exactitude than does the single word length, and in the present context plainly means the crosswise distance. But in addition, and thirdly, the integer must be read as a whole and, once it is, the meaning is apparent. In short the support sleeve, when stowed, has a crosswise extent which essentially corresponds to the width of the vehicle."The ends of the support sleeve are bevelled to provide end faces that extend substantially vertically when the support is in the parking position"[60] Mr Stevens and Dr Stark construed the word "bevelled" to mean a chamfer, for example where a right-angled timber edge has been bevelled or chamfered. On this basis the integer was challenged as containing an incorrect usage. [61] I disagree. The word bevel is apt to describe a surface that meets another surface at an angle other than 90 degrees. It is in this sense of the word that the end faces of the support sleeve are described as bevelled, so as to be at an angle which renders them substantially vertical in a parked position. If the wording of this integer left any room for doubt, it would be removed when viewed in the particular light of figures 1 and 5.Infringement of the patent[62] In its statement of defence Steelbro denied infringement in that there were material points of difference between claims 1, 2, 4, 6 and 7 of the patent, and the Steelbro models SB361/401 which were alleged to infringe the patent. However, in closing submissions, the argument was confined to three of the agreed integers of claim 1 which Steelbro maintained were not infringed by its product. These were: (a) the absence of a bearing component within the support sleeve,(b) the support sleeve was not supported by a pivot pin connected to the vehicle chassis, and (c) a longitudinal extent which did not correspond to the width of the vehicle. The suggested differences (b) and (c) are not sustainable. The interpretation I have placed on the relevant integers means that Steelbro's SB361/401 models do infringe the patent in relation to connection of the pivot pin to the vehicle chassis and in relation to the longitudinal extent of the support sleeve in the parked position. [63] On the other hand, the interpretation reached in relation to (a) means that infringement is not established with reference to this integer. Mr Eaton, in giving evidence of infringement, said that he had examined and taken photographs of a Hammar SL195 sidelifter and a Steelbro SB361 sidelifter and that he was satisfied the latter exhibited all of the features described in the claims to the Hammar patent. However, this conclusion was dependent upon acceptance of his opinion that "a bearing" in the support sleeve conveyed the function of one part bearing on the other, not the requirement of a bearing component. The Steelbro SB361/401 models do not incorporate a separate bearing component in the support sleeve. It follows that, given the absence of this integer, infringement of the patent is not established. [64] Regardless of this finding, I shall now consider Steelbro's counterclaim seeking revocation of the patent.Revocation of the patent[65] Steelbro invoked several of the grounds for revocation contained in s41 of the Act. In the end result the grounds of revocation can be reduced to four. The first ground is two-dimensional being that the claimed invention is obvious and does not involve any inventive step having regard to what was known and used before the priority date (s41(f)) and that the subject of the claim is not an invention within the meaning of the Act (s41(d)). The further grounds are inutility, in that the invention as claimed is not useful (s41(g)); insufficiency, in that the specification does not sufficiently and fairly describe the invention and the method by which it is to beperformed, or does not disclose the best method of performing it (s41(h)); and ambiguity, in that the claims are not sufficiently and clearly defined or the claims are not fairly based on the matter disclosed in the specification (s41(i)). [66] Of these four grounds the first received the most attention. To some degree a decision on the other grounds is dictated by the conclusions I have already formed with reference to the construction of the integers in claim 1. Before I can turn to the individual grounds, however, it is necessary to consider some overarching questions pertaining to the evidence of Messrs Muirsmeath and Stevens, and Dr Stark. These concern the test relevant to obviousness and lack of inventive step. Therefore, I shall first refer to those principles.Obviousness and lack of inventive stepThe relevant legal principles[67] The test of obviousness was summarised in Ancare New Zealand Ltd v Cyanamid of New Zealand Ltd [2000] 3 NZLR 299 (CA) at 309 by Gault J on behalf of the Court, as follows:[43] the test is well established. It postulates a person (or, where appropriate, a team) skilled in the field but not inventive, invested with the common general knowledge available in the field at the priority date, presented with the prior knowledge or prior use relied upon. Prior documents may be looked at together if that is what the skilled person or team would do. It asks whether to that person or team the alleged inventive step would be obvious and would be recognised, without bringing to bear any inventiveness, as something that could be done or is at least worth trying. That is a question of fact. If any embodiment within the scope of the claim is obvious the claim is invalid. These propositions are helpfully expanded upon in the recent English cases which are still applicable though under the 1977 Act; see the Windsurfing International case, Hallen Co v Brabantia (UK) Ltd [1991] RPC 195 at p 211, and Mölnlycke AB v Procter & Gamble Ltd [1994] RPC 49 at p 112.The Supreme Court, in Lucas v Peterson Portable Sawing Systems Ltd affirmed this statement from Ancare.[68] In Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 (CA) the English Court of Appeal extensively considered the principles governing obviousness. Oliver J at 73-4 said this:There are, we think, four steps which require to be taken in answering the jury question. The first is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, common general knowledge in the art in question. The third step is to identify what, if any, differences exist between the matter cited as being "known or used" and the alleged invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention.[69] Some further observations are worth adding. As Oliver J stressed earlier at p 71 obviousness is a kind of jury question which is not to be answered with the benefit of hindsight. The approach is not to look at what is known now, and what was known at the priority date, and ask whether present knowledge flows naturally and obviously from the earlier knowledge. Rather, decision-makers must place themselves in the shoes of the hypothetical skilled man as at the priority date and evaluate obviousness in a past context. [70] The test of obviousness is an objective one, and also qualitative rather than quantitative. The focus is whether the inventive concept is obvious, not whether it would have appeared commercially worthwhile to exploit it. [71] In Mölnlycke AB v Procter & Gamble Ltd [1994] RPC 49 (CA), Sir Donald Nicholls observed at 113 that courts will invariably require the assistance of expert evidence and all other evidence is secondary to that primary evidence. Therefore, evidence of the commercial success of the invention is likely to be no more than an aid in assessing the primary evidence.Particulars of objections to the validity of the patent[72] Contrary to the requirement of the rules Steelbro did not provide particulars of invalidity with its statement of defence. Particulars were provided, upon direction, on 9 August 2006.[73] With reference to the challenge based on obviousness and lack of inventive step Steelbro relied upon the prior publication of four New Zealand patents (referred to as AB Parator, Flowers, Ostermeyer and Haggar). In addition, the prior use of eight sidelifter crane models, being five Steelbro models and three Hiab cranes used in New Zealand before the priority date, was pleaded. [74] Then, on 23 April 2008 amended particulars were served. These added eight new patents, being another Haggar International patent, a German Hammar Maskin patent, a Swedish Hammar Maskin patent, a United States Hand patent, a European Klaus patent, a Danish Leicher engineering patent, a German Murauer patent and a United States Thompson patent. To the previous list of cranes used in New Zealand before the priority date three additions were made, being a further model of a Steelbro sidelifter crane and two Klaus model cranes. [75] Finally, on 28 April, the morning the trial commenced, Steelbro sought to further amend the particulars. Only four patents were still relied upon, being the New Zealand AB Parator patent and the New Zealand Haggar patent (which appeared in the 2006 particulars), and the German Hammar Maskin patent and the European Klaus patent (which first appeared in the amended particulars). Hence, eight patents (two from the original particulars and six from the first amended particulars) were no longer relied upon. With reference to sidelifter machinery said to have been used before the priority date, three cranes (a Hiab and two Klaus models) were deleted, but a different Klaus model and a Lees Annihilator crane were added. However, in the course of trial reliance upon these additions was abandoned. [76] As to proof that the four patents ultimately relied upon had been published in New Zealand before the priority date, affidavit evidence was provided from Elizabeth Veber, the library manager of a patent attorney firm, who had checked the availability of patent specifications in New Zealand with IPONZ (Intellectual Property Office of New Zealand) and also the Derwent World Patents Index. The AB Parator, Haggar and Klaus patents were available in New Zealand before September 1997, but the German registered Hammar Maskin patent was only available as an abstract from an online database. Mr Brown disputed that this constituted prior publication of the entire specification in New Zealand.[77] The abstract is an annexure to Ms Veber's affidavit. I accept that while the abstract was available online in 1996, it did not contain anything approaching the detail of a full patent specification. [78] Issue was also taken as to whether it was proved that the Hiab 090 AW crane and the Hiab 250 crane were available in New Zealand before the priority date. In the end result Mr Muirsmeath was recalled immediately before Mr Miles made submissions in reply in order to give supplementary evidence directed to this aspect. He confirmed that Steelbro had sold these models of Hiab crane from 1991 and 1996, respectively.The arguments directed to the particulars[79] Against this background of ongoing additions and deletions to the particulars of invalidity, Mr Brown submitted that an overarching problem remained. Although I granted leave to receive the final amended particulars, which specified eight models of cranes and four patents, the fact remained that Steelbro's experts had been briefed with reference to all of the patents referred to in the earlier iterations of the particulars, not just the four patents ultimately relied upon. This was demonstrated to be the case in relation to Mr Stevens who referred to various of the patents by name in his witness statement. His opinion evidence included reference to five patents and two cranes which were not ultimately relied upon as part of the prior art. Dr Stark referred to three patents which were not ultimately relied upon. In addition both witnesses had access to a translation of the specification to the German Hammar Maskin patent, whereas only the abstract was available online in New Zealand at the relevant date. [80] On this basis Mr Brown submitted that I was in a difficult position in assessing the evidence of these witnesses generally. It was not apparent what impact the information no longer relevant as part of the prior art carried in relation to the opinions of these witnesses. [81] Mr Miles, however, resisted the criticism. By reference to the evidence of the two experts he argued that their opinion evidence was shown to be based verylargely upon the model history of the Steelbro models. These, he suggested, comprised the substance of the prior art upon which Mr Stevens' and Dr Stark's views were ultimately based. [82] I shall return to the resolution of this difference shortly. Clearly, there is a basis for concern that the witnesses' opinions may be tainted. Whether this is so, or not, will depend upon an assessment of the terms of the evidence itself. [83] Mr Brown also argued that the evidence of Mr Stevens and Dr Stark was compromised because they did not appreciate the attributes of the notional skilled addressee, as explained in Windsurfing International (see para [68]). By contrast, Mr Eaton's approach was described as careful and considered.Mr Eaton's evidence[84] Mr Eaton quoted the test from Windsurfing International in his evidence in chief. He then contrasted the unimaginative addressee in the art at the priority date with the persons comprising the audience to whom the patent in suit was addressed. Mr Eaton considered that the latter audience comprised mechanical engineers and draughtsmen involved in the steel fabrication and the trailer sideloader manufacturing industries. He did not think that an experienced mechanical engineer was necessarily a university graduate. It was just as likely the addressee began on the workshop floor (possibly as an apprentice) and progressed to the design office, where, through experience and training, he became familiar with the computer-aided design of fabricated structures and acquired skills in the optimisation of machinery performance. [85] Mr Eaton saw this addressee as quite different to the person comprising the legal construct required in terms of Windsurfer International. This notional person spots the obvious, but although skilled in the field is not inventive. He considered that the requirement to postulate such a person as at the priority date, who was also devoid of knowledge of the claimed invention, was a difficult exercise.[86] With reference to the first step, identification of the inventive concept in the Hammar patent, Mr Eaton concluded that the characterising clause of claim 1 captured the essence of the invention. Upon turning to the prior knowledge and prior use at the priority date, Mr Eaton concluded that the inventive concept of the Hammar patent was not replicated in prior publications or prior usages, not at least in relation to the inventive concept. [87] This, Mr Eaton considered, was identified by the differences between the prior art and the claimed invention, namely: (a) the negative incline of the support parts in the parked position, being downwards to the side away from the pivot pin, and (b) with the support sleeve corresponding to the width of the vehicle, including bevelled end faces sitting substantially vertically in the parked position. [88] Mr Eaton was of the opinion that a person skilled in the field and cognisant of the prior art, but not inventive, would not have designed a stabiliser leg with these features. He said: such a [stabiliser leg], as at September 1997, was significantly different in concept from the practices which had been followed for close on 20 years. I would not expect it to occur to the non-inventive person to position the leg, in its parking position, in an orientation of inclined oppositely to that in which the leg is to be deployed. I am fortified in my view given the fact that there is evidence that both the plaintiffs and the defendant had apparently tried for some time, but without success, to devise an improved stabiliser leg. The reason why I refer to this fact is that those persons working for both the plaintiffs and the defendant must have had an inventive capacity greatly superior to the notional skilled addressee as I understand him to be defined.Mr Stevens' and Dr Stark's evidence[89] Mr Stevens began his consideration of obviousness and lack of inventive step by saying that he had already discussed the concept of the "notional skilled addressee". This was a reference back to his discussion of the person, or audience, to whom the patent specification was addressed. That discussion was detailed and closely reasoned, but contained no reference to the requirement that the relevant person, or team, although skilled in the field was not inventive. Mr Stevens' earlierdescription of the addressee identified engineers of the kind employed by Steelbro who are, of course, expected to be inventive. At least to this extent his analysis was questionable. [90] Nor did Mr Stevens initially approach this aspect on the basis of a four step analysis. In his third brief of evidence he did so, in order to respond to Mr Eaton's assessment. Mr Stevens found no inventive concept described in claim 1 of the subject patent. That said, he agreed with Mr Eaton that "no prior art or publication in New Zealand contains all of the elements of the Hammar patent". The Steelbro sidelifters, Mk 3, Mk 4, Mk 5, Mk 6 and SB 30 were closest in that all these models employed a stabiliser leg stowed horizontally across the full width of the vehicle, with the ends of the leg trimmed vertically to match the 2.5 metre width of the vehicle. Mr Stevens considered that it was quite "common practice" to trim the ends of a member such as a stabiliser, so that the support sleeve in the stowed position was the same width as the vehicle. Moreover, he would expect this practice to continue once the leg was parked in a sloped position. Hence, Mr Stevens saw nothing inventive in relation to trimmed, or bevelled, ends to the structure. [91] That left the question whether stowing the stabiliser leg on a negative incline was obvious, or inventive. Mr Stevens said this:In my opinion, while the use of an inverse incline may not have been immediately obvious to the university trained skilled addressee that I envisage, the discovery that the determination of the optimum geometry led to such an arrangement would have been an inevitable consequence of the application of their skills and training to what was known of established mechanisms.He then referred to some relevant mathematical tools (Mathcad, MathLab and Mathematica) having been available since before 1980. The systematic application of any of these tools would, Mr Stevens considered, have led to a solution which entailed the stabiliser leg being stowed with a negative incline. This solution, Mr Stevens saw as "a job well done", not as inventive. [92] The first task asked of Dr Stark was for him to consider how to maximise the outreach of a stabiliser leg. He was supplied with a diagram depicting a Steelbro sidelifter with the stabiliser leg stowed in a horizontal position. The diagramspecified the legislative dimensional limitations (a maximum width of 2.5 metres and a maximum height of 4.250 metres). Further diagramatic representations identified what was meant by outreach and identified as additional requirements that the stabiliser leg must be able to be positioned on an adjacent trailer platform slightly higher than the sidelifter platform, and also be positioned close to the sidelifter in a near to vertical orientation. These requirements reflected the commonplace working situations where sidelifter cranes may need to transfer a container onto an adjacent vehicle, with the stabiliser leg positioned on that vehicle; or a similar transfer, but with the stabiliser leg positioned on the ground in between the sidelifter and the other vehicle. [93] In order to increase the outreach of the stabiliser leg Dr Stark made two changes to the design of the stabiliser leg. He significantly increased the height of the bracket by which the leg was attached to the sidelifter chassis on its operational side. Indeed, the suggested bracket extended the height of the stabiliser leg in its stowed position to the maximum of 4.250 metres. The second change was that the stabiliser was stowed on a significant negative incline (approaching 40-45 degrees). Thereby the lengths of the sleeve and the inner extendable part were maximised, as was the outreach capacity of the stabiliser leg in operation. [94] With regard to these modifications Dr Stark said that he was immediately and without difficulty able to achieve them, because:both of these solutions rely on nothing more than an appreciation of the simple geometrical considerations that a diagonal of a rectangle is longer than its width, and that the length along a given angle of circular arc increases with this radius, and as such would, in my view, be obvious to the typical technical draughtsman in the steel fabrication/trailer manufacturing business.[95] Aside from the issues that a stabiliser leg stowed at a height of 4.250 metres would create wind and instability problems when the sidelifter was in motion, Mr Brown challenged Dr Stark's thesis on other grounds. He had not been asked to assess obviousness from the perspective of a skilled but non-inventive person. Nor was a requirement imposed to approach the task on the basis of what was known and used as at 1997; although Dr Stark rightly observed that the principles of geometry he applied were no different then, to now.[96] Mr Miles submitted that the solutions so easily reached by Dr Stark belied the existence of any inventive step in the patent in suit, and demonstrated just how obvious was a negative inclination solution.Evaluation of the evidence and arguments[97] At most, two elements comprise the inventive concept. These are that the support sleeve and extension part are stowed "with an opposite inclination", that is in a negatively inclined position, and that the ends of the support sleeve are bevelled so as to be substantially vertical and aligned to the width of the sidelifter. Most emphasis, I think, was placed upon the concept of negative inclination, although the aspect of bevelled ends also excited a difference of expert opinion. I shall return to that aspect later. [98] I am required to place myself in the shoes of the skilled but unimaginative addressee in the art at the priority date. To this person one must impute the common general knowledge available in the field as at 1997. Mr Eaton did this. However, I do not think Mr Stevens did, in that he omitted the non-inventive requirement. And, on account of the manner in which he was briefed, Dr Stark personally acted as the notional addressee. Yet, Dr Stark is a mechanical engineer of great experience, in practice as an academic and, now, as a consultant. I doubt that he is uninventive or unimaginative. Moreover, Dr Stark was freed from the shackles which most probably would have hindered the notional addressee. Those skilled in the field would not, I think, have designed a stabiliser leg stowed at such an acute angle as Dr Stark suggested, nor would they have affixed it using a bracket of the dimensions he prescribed. Put another way, the task he was given invited immediate attention to the geometrical principles which he applied, because normal operational constraints were ignored. In my view, therefore, Dr Stark's opinion evidence must be assessed with these aspects firmly in mind. [99] It was common ground that the prior art as at the priority date did not include a stabiliser leg stowed in a negatively inclined position. Until the patent in suit the industry norm was for stabiliser legs to be stowed in an horizontal position. Nor, therefore, did the prior art contain an example of bevelled end faces. There was noneed for them. Horizontal stowage of the stabiliser leg meant that square end faces were preferable, since they enabled the length of the leg to equate with the width of the sidelifter vehicle. [100] Negative inclination and bevelled end faces are the essential differences between the patent in suit and what was previously known or used at the relevant date. I turn, then, to the last question, whether these differences would have been obvious to the skilled addressee, or whether they were to a degree inventive. I do not find this an easy question. The competing expert evidence seemed to me to reflect a difference in both approach and emphasis. [101] On the one hand Mr Eaton focused on the prior art and particularly the circumstance that no-one prior to Mr Hammar had designed a stabiliser leg with a negative incline, despite a demand for increased stability on account of the increased size and weight of containers. What he saw as the breakthrough nature of Mr Hammar's idea and design persuaded Mr Eaton that the solution was inventive and anything but obvious. [102] On the other hand, the evidence of Mr Stevens and Dr Stark focused more upon the incremental nature of the solution and the extent to which it was based upon perfectly obvious geometrical principles, dating back to Pythagoras. Building on the knowledge that the diagonal through a rectangle is longer than its sides, and that the throw of a circular arc increases with its radius, they concluded that it was only logical to incline the stabiliser leg in its stowed position in order to increase its length, improve its arc of operation, hence its scope of outreach, and thereby gain increased stability. Mr Stevens expressed the further opinion that the established availability of geometric optimisation tools further removed the Hammar solution from the realm of the inventive. Mr Gregory Muirsmeath, Steebro's engineering manager, also stressed throughout his evidence the extent to which the move to a negatively inclined stabiliser leg was an incremental change, which was inevitable, particularly once geometrical optimisation was applied. [103] I think that the decision of Laddie J in Haberman v Jackel International Limited [1999] FSR 683 is of assistance in resolving this conflict. Habermanconcerned a patent for an infant's trainer cup. The inventive concept was said to be a flexible mouthpiece, incorporating a slit valve opened by a pre-determined level of suction, which automatically closed as suction ceased. The invention was intended to address a long-standing problem of leakage which had bedevilled previous trainer cups. The defendant company sought revocation of the patent, including upon the grounds of obviousness and absence of inventive step. A number of similar products were on the market at the priority date. In particular, there were examples of teats of baby bottles which employed slit valves in order to render them self-sealing. Seeking revocation, the defendant said that the solution was blindingly obvious and had been for some time. [104] Laddie J observed at [29]:In all cases where obviousness is in issue the court is trying to look back at what paths would have been seriously considered by a notional skilled but uninventive person in the relevant art at the priority date. The task is made more difficult because the patentee's development is already known to the parties and the court. Therefore inevitably the court will know not only that a solution is possible but what it is. Many patented inventions operate in accordance with simple principles of physics, chemistry or other sciences. It is normally easy to understand why they work. From this it is but a short step to thinking that a competent technician in the art would have realised, starting from the same simple principles, why the solution proposed by the patentee should have worked. So, working from those principles, the solution must be obvious. In such cases it is also easy to take the relevant expert witnesses under cross-examination through a series of logical steps which lead to the solution. The simpler the solution, the easier it is to explain. The easier it is to explain, the more obvious it can appear. This is not always fair to inventors. [emphasis added][105] One of the experts for Jackel International was provided with a Jackel trainer cup and asked if he could render it spill-proof. Within half an hour he suggested a slit valve design. The expert gave evidence that the solution was obvious. [106] The argument that a negatively inclined stabiliser leg represented a small design change, based on simple principles of geometry, has a seductive attraction. Yet, the fact remains that over a period of about 20 years stabiliser leg design was modified and improved in response to the increased size and weight of containers. But no-one, until 1997, developed the negative inclination solution.[107] Mr David Walters, a consulting engineer who was previously employed by Steelbro, gave evidence of a "brainstorming" exercise in which he was involved in mid-April 1997. Hand-written notes taken at a meeting of three or four engineers recorded a number of ideas to improve the reach of a stabiliser leg. One was to "incline [the] telescopic leg in parked position". A calculation followed in which the gain in length of the leg, if positioned at angles of 15°, 30° and 45° and stowed within a width of 2.5 metres, was calculated. Another suggestion was to "optimise pivot geometry". [108] The notes were referred to another engineer, Andrew Ashby, for his reaction. He produced a geometric sketch based on the design of a Steelbro stabiliser leg. He questioned the accuracy of certain of Mr Walters' calculations, and added the comment "in fact, I believe putting on [a] 20° slope actually reduces ground reach in this case". Mr Walters' evidence ended on the note that investigations into the feasibility of an inclined leg ceased at this point. He remained in the employ of Steelbro, working in part on stabiliser leg design for almost two years, without further consideration of the negative inclination option. [109] I regard this evidence as revealing. It shows that while inventive minds broached the idea of negative inclination, nothing came of it. To the contrary, the utility of the idea was expressly doubted. Other design solutions were pursued, at least until an example of the Hammar stabiliser leg surfaced. [110] I am not persuaded that a negative inclination of the stabiliser leg was obvious. I regard it as inventive. The use of bevelled ends in the stabiliser structure was, I think, in the nature of a follow-on or collateral modification. With negative inclination of the leg, squared ends did not work. Either the stabiliser leg would jut out to either side of the vehicle, or the potential maximum length of the structure would be compromised to achieve stowage within the 2.5 metre limit. Bevilled ends ensured statutory compliance and at the same time maximised the length of the stabiliser structure. Thereby both the reach of the extendable part was increased and the support provided by the outer sleeve was maximised.[111] I see this aspect as most relevant in the sense that the commonplace use of squared ends militated against negative inclination. It was an impediment to seeing that solution. But once a breakthrough was achieved in relation to negative inclination, the design of bevilled ends followed. This design change was not necessarily imaginative, but the essence of the invention lay in negative inclination.Inutility[112] Section 41(1)(g) defines this grounds of revocation as follows:That the invention, so far as claimed in any claim of the complete specification, is not useful.[113] Claim 6 of the patent provides:A structure as claimed in claim 4, characterised in that the bearing arm has a length and shape adapted such that the support is freely pivotable to a vertical position outside the vehicle wheels.[114] Claim 4 makes it clear that the "bearing arm" is the large bracket which connects the pivot pin on the sidelifter to the stabiliser leg itself, the bracket being of a shape to facilitate the functioning of the leg (particularly in a vertical position). This can be best seen in figure 4 (wherein the number 20 denotes "an obstacle"). [115] The patent specification described the object of the invention as: to provide a support structure, which at low design and production cost makes it possible to use the support for both vertical support close to theoutside of the vehicle wheels, above all in narrow spaces, ie when the vehicle at the side concerned is standing in the vicinity of an obstacle which can be, for instance, another vehicle, a loading bridge or some other elevation, and support far away from the vehicle both on the ground and on some other loading surface located beside the vehicle.[116] In closing submissions Steelbro accepted that the Hammar stabiliser leg achieved support far away from the sidelifter, and support on another loading surface. The submission continued, however, that the objective of providing vertical support was not achieved, notably because the specification required "verticality". A contrast was drawn between the reference to "vertical" position in claim 6 and the description in claim 1 of the bevilled ends to the stabiliser structure, described as "substantially vertically" positioned when the stabiliser was parked. [117] The promise contained in the patent was said to be that the stabiliser leg was pivotable to a vertical position beside the sidelifter. In fact, the Hammar stabiliser leg cannot be pivoted to a true vertical position. Therefore, the promise was not met. The patent failed for inutility. [118] The evidence relevant to this aspect was brief. In cross-examination Mr Hammar said that the SL190 and 195 models could be deployed with the stabiliser leg in a position one or two degrees, plus or minus, from vertical. Subsequent to hearing that evidence Mr Stevens gave supplementary oral evidence that during the intervening weekend he had examined a Hammar sidelifter and found that the stabiliser leg fell short of achieving verticality by 12 or possibly 13°. In cross-examination it emerged that the test was conducted on a sidelifter which was at a workshop for servicing. A foreman from the workshop operated the vehicle. A "rather battered" spirit level which incorporated a protractor measuring device was used. With reference to the spirit level and the measurement, Mr Stevens said:I wouldn't like to assign a high degree of accuracy to it, but it certainly indicated an inclination of more than 10 degrees. Some of this may have been due to the fact that the sideloader rocked back a small amount when its foot was put on the floor, but that would only have been one or two degrees at the most.[119] The sidelifter was not loaded with a container at the relevant time, and only the rear leg was extended for the inclination to be measured. One extension occurred, and only one measurement was taken. [120] Although the evidence is somewhat imprecise, there can be no doubt that the Hammar stabiliser leg cannot attain a true vertical position. Mr Hammar conceded as much. On the evidence it is probable that an inclination several degrees short of vertical is the most that it can achieve. [121] Does this evidence establish inutility? In the course of closing submissions I was referred to Horville Engineering Company Limited v Clares (Engineering) Limited [1976] RPC 411. The case concerned a wheeled pellet to which detachable sides could be fixed to prevent movement of the load. The specification to the patent identified as a problem with existing load carrying devices that side walls could not be fitted once the load was in place. The specification conveyed, by implication if not expressly, that the invented device could have its side walls fitted after loading. Claim 3 spoke of sides fitted outside the confines of the deck and without encroachment onto the load supporting surface. [122] At first instance a finding of fact was made that the invention covered load handling devices to which sides could not be affixed after loading. The issue was whether an implied promise of this capability was sufficient to found a finding of inutility, when in fact the promise was not capable of fulfilment. The Court of Appeal found the patent void for inutility. [123] To my mind the case provides a useful example of inutility in an industrial setting. The actual words used in the specification were not determinative. Rather, a promise as to the usefulness of the claimed invention was implied by the wording. Since that promise was not met, the patent failed for inutility. [124] I consider that a similar proposive approach is required here. An object of the invention is that the stabiliser leg may be used for support in various situations, including in a vertical support position close to the sidelifter when only a limited operational space is available. In claim 6 this is characterised as "pivotable to avertical position outside the vehicle wheels". I am in no doubt that "vertical" is not to be construed literally. The express object described in the specification is that the stabiliser leg can function in a confined space alongside the sidelifter. This object, or promise, is achieved so long as the leg can be placed in a near to vertical position. Importantly, there is no evidence to suggest that the utility of a Hammar sidelifter is in any way compromised by the inability to place the stabiliser leg at a true vertical inclination. It follows, I find, that inutility is not demonstrated.Insufficiency of description / Failure to disclose best method[125] Section 41(1)(h) of the Act defines this ground of revocation as follows:That the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed, or does not disclose the best method of performing it which was known to the applicant for the patent and for which he was entitled to claim protectionThe rationale is that the patentee, in exchange for the monopoly secured under the invention, must fairly disclose to others how it works.The particulars re insufficiency / best method[126] The defendant's particulars state that how the support structure of the alleged invention achieves the stated object of the invention, namely providing "both vertical support close to the outside of the vehicle wheels and support far away from the vehicle, both on the ground and on some other loading surface" is not sufficiently and fairly described in the specification. The particular asserts that especially the vertical support aspect is not properly described. [127] In closing, Mr Brown submitted that the case run by Steelbro at trial did not match the particulars. The defendant's case was advanced by reference to an alleged failure to disclose how the support structure and its jacking mechanism should be arranged so that verticality could be effectively obtained, to use the words of Mr Stevens. His particular concern was with the arrangement of the pivot pins for the attachment of the jacking mechanism and, more particularly, the position of thepivot pin by which the main bracket is affixed to the sidelifter itself. I shall return to the issue of the adequacy of the particulars shortly.The relevant principles[128] Some, at least, of the relevant principles were not in dispute. The notional addressee is a person skilled in the relevant art. However, such person is not considered to be inventive. Indeed, enabling disclosure requires that no element of inventiveness is necessary on the part of the addressee. The description must enable the invention to be performed across the full width of the claims. The relevant date for assessing sufficiency is the date when the complete specification is filed, not the priority date. [129] The extent of disclosure required in order to fairly describe the invention, and disclose the best method of performing it, proved to be a more contentious legal principle. Mr Brown submitted that Mr Stevens misunderstood the statutory requirement, in that he expected the patent specification to embody design details as opposed to the overarching inventive concepts or ideas. Counsel adopted a statement of Romer LJ in No-Fume Limited v Frank Pitchford & Co Limited (1935) 52 RPC 231, at 243:Be it observed from the very words I have used, that the Patentee fulfils his duty if in his complete specification he describes and ascertains the nature of the invention, and the manner in which the invention is to be performed, sufficiently and fairly. It is not necessary that he should describe in his specification the manner in which the invention is to be performed, with that wealth of detail with which the specification of the manufacturer of something is usually put before the workman who is engaged to manufacture it. [emphasis added]The Judge then observed that specifications frequently contain mistakes or have omissions. Even these are not fatal, if the skilled addressee can correct/remedy the defects without the exercise of any inventive faculty. [130] Whether the invention is sufficiently and fairly described is highly dependent upon the nature of the invention. Hence, the first step is to identify the invention and what claims are made in relation to it. With these aspects in mind the questionbecomes whether a skilled addressee can replicate the invention from the specification. [131] But as Aldous J said in Mentor Corp v Hollister Inc [1991] FSR 557 at 561:The [English] section contemplates that patent specifications need not set out every detail necessary for performance, but can leave the skilled man to use his skill to perform the invention. In so doing he must seek success. He should not be required to carry out any prolonged research, enquiry or experiment. He may need to carry out the ordinary methods of trial and error, which involve no inventive step and generally are necessary in applying the particular discovery to produce a practical result. In each case, it is a question of fact, depending on the nature of the invention, whether the steps needed to perform the invention are ordinary steps of trial and error which a skilled man would realise would be necessary and normal to produce a practical result.[132] To similar effect is Terrell on the Law of Patents (16 th ed 2006) at 7-102: in modern engineering practice no one would think of treating the drawings of a machine in a specification as working drawings: a certain amount of designing and calculation has to be carried out before a machine can be built, and the degree of knowledge requisite to perform such operations must be presumed in the person to whom the specification is addressed.To my mind these observations are relevant to the conflict which emerged in relation to this aspect.The relevant evidence[133] To support its case for revocation Steelbro relied on cross-examination of Mr Hammar and the evidence of Mr Stevens. The full specification was filed in New Zealand on 28 August 1998, almost a year after the priority date. As at September 1997 the plaintiff had only sketches of the stabiliser leg. Over the ensuing months a prototype was built and production drawings were completed in the first half of 1998. By about May 1998 the essential details for production of the stabiliser leg were complete. These milestones were confirmed by Mr Hammar in the course of cross-examination. [134] He also accepted that to build the most efficient stabiliser leg two groups of calculations were essential. These were the dimensions for the main componentsand the five key pivot points by which these components were interlinked. He also agreed that the patent specification showed no dimensions and contained drawings which were only conceptual in nature. Yet, by 28 August 1998, when the specification was filed, development of the invention was at an advanced stage. [135] Mr Stevens closely analysed the sufficiency of the description contained in the specification. He particularly focused upon the geometry of the support structure and the arrangement of the jacking mechanism. He said this:5.11 The success of the support structure in service depends on how well the geometry of the support structure and jacking mechanism is arranged. Of crucial significance to this is the optimal placement of pivot pins. The optimisation of the geometry is the task of the designer - the skilled addressee. The Patent gives no guide as to the optimum geometry of the support structure but instead appears to generally refer to all possible geometries of the described mechanism. I refer particularly to the arrangement of the pivot pins for the attachment of the jacking mechanism and especially to the determination of the position for pivot pin 6 about which the support structure pivots.[136] Mr Stevens then noted this extract from the specification:In the embodiment shown, the pivot pin 6 is positioned in the vicinity of the external boundary 13 of the vehicle, but it may also be arranged further inwards, possibly quite close to centrally extended frame side members in the vehicle chassis. It is also possible for the pivot pin 6 to be arranged in the vicinity of the centre of the vehicle even between these frame side members. Owing to the direction of inclination, selected according to the invention, of the support, the pivot pin 6 will be located at a relatively great distance A from the centre 14 of the support, said distance being further increased if the pivot pin is arranged further down in relation to the vehicle chassis.Mr Stevens found the various suggested positions for pivot pin 6 "misleading and confusing". [137] He considered that the position of pivot pin 6 must be as depicted in figure 4 (as opposed to "further inwards", even possibly "in the vicinity of the centre of the vehicle "). By reference to diagrams which he produced, Mr Stevens expressed the opinion that the only practical position of pivot pin 6 was towards the edge of the sidelifter (as in figure 4), because otherwise the angular movement of the main bracket would not permit the rotation of the stabiliser leg to a vertical position.[138] The witness also observed that the jacking mechanism was required to move the stabiliser leg through a wide range of angles and extensions. He considered it was not a straight-forward matter to optimise the design of the hydraulic jacking system to achieve this, particularly as its geometry interacts with the geometry of the stabiliser leg itself via the main pivot pin. Mr Stevens concluded that the description contained in the specification did not enable a skilled addressee to know how the stabiliser leg would achieve a vertical position. [139] Mr Brown was critical of this evidence. He maintained that it was not the function of a specification to illustrate the invention to the level of working drawings. The drawings must disclose the concept and the patent as a whole the best method of performing the invention. But geometrical optimisation was not required. These aspects were the lot of the skilled addressee, who must by trial and error produce a practical result based on the enabling disclosure contained in the specification.Evaluation of insufficiency / best method[140] In my view there are two aspects to the question of sufficiency and disclosure of best method in this instance. I do not accept Mr Stevens' view that the specification should have provided guidance as to the optimum geometry of the support structure, particularly with reference to the pivot pins for the jacking mechanism and for pivot pin 6 which affixes the main bracket to the vehicle itself. These details, to my mind, fall within the trial and error field, which the skilled addressee must work through in order to use the inventive concept in a given application. Apart from anything else, it is evident from the respective model histories of the Hammar and the Steelbro products that there are some differences of design approach. As might be expected, there is a basic design similarity, but in terms of component sizes, configurations and exact placements, there are differences. These indicate that individualised geometrical optimisation would be essential on the part of each competitor. [141] The evidence of Mr Muirsmeath and Mr Stevens as to geometrical optimisation given with reference to obviousness, seemed to me to be of somerelevance in the present context as well. Both men stressed the themes that geometric tools were readily available and that with their assistance the solution of a negatively inclined stabiliser leg was an obvious and inevitable engineering modification. The thrust of this evidence indicated that geometrical optimisation was very much the stock in trade of engineers in the field and, therefore, part and parcel of the trial and error process required in order to incorporate and optimise any inventive step. For these reasons, I reject this aspect of the defendant's challenge. [142] Equally I do not accept the contention that working drawings (it seemed), rather than concept drawings, were required to be disclosed. The role of patent drawings is to illustrate the concept so that, with the description contained in the specification, a skilled addressee can put the invention into practice. Generally, the requirement of sufficiency is met if the addressee can perform the invention without the exercise of any inventive faculty: No-Fume Ltd v Frank Pitchford & Co Ltd at 243 and 248. [143] Mr Stevens also focused, however, upon whether the best method of using the invention was disclosed, particularly given the suggestion that it was possible to arrange pivot pin 6 "in the vicinity of the centre of the vehicle even between [the] frame side members". The specification added that wherever placed, pivot pin 6 needed to be "at a relatively great distance" from the centreline of the stabiliser leg, this "distance being further increased" if the pin was further down in relation to the vehicle chassis. These references disclosed the need for the major bracket to be of a size and configuration sufficient to establish a distance from the main pivot pin to the centreline of the stabiliser leg, which would enable the bracket to pivot the leg to a vertical position beside the sidelifter. [144] However, Mr Stevens concluded that the best method was undoubtedly for pivot pin 6 to be positioned close to the operational side of the vehicle. Indeed, he was sceptical whether a negatively inclined stabiliser leg could function from a pivot pin towards the centre of the vehicle and further down in relation to the chassis. Through the use of diagrammatic representations he demonstrated the problems arising from such a placement of the pivot pin. This led him to the opinion that there was really only one practical position for pivot pin 6 and that was in the generallocation in which it was shown in figures 1-4 of the patent. The references in the text of the specification to placement of the pin more towards the centre of the vehicle and further down in relation to the chassis only served to obfuscate. [145] Mr Hammar in his second brief of evidence sought to counter this point. He referred to a drawing dated April 2008 (at CB 3/649) which depicted a configuration in which pivot pin 6 was towards the centreline of the vehicle, although at much the same level in relation to the chassis. To my mind the drawing is most notable for the fact that the main bracket is of such an extended size that, if used, the stabiliser leg would be very considerably elevated above the deck of the sidelifter when in a stowed position. Interestingly, this very feature led Mr Hammar to be critical of Dr Stark's first impression diagrams, by which he contended that the negative inclination solution was obvious and non-inventive. [146] In my view Mr Stevens' evidence does not so much establish that the best method was not disclosed (it clearly was), but rather that the water was muddied by reference to other possible methods. Does this indicate a failure to disclose the best method? The disclosure of best method is a good faith requirement. The quid pro quo for enjoyment of the monopoly is fair disclosure of the invention. Here, it seems to me, there was proper disclosure of the best method. The specification identifies the embodiment which Mr Stevens strongly favoured, and figures 1-4 depict pivot pin 6 in the position which he concluded was optimal. I find that the references in the specification to other possibilities for the placement of pivot pin 6, do not detract from the disclosure of the best method, albeit they are probably unhelpful.Ambiguity/lack of fair basis[147] Section 41(1)(i) of the Act defines this ground of revocation as follows:(i) That the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification:Mr Miles adopted a statement from Procter & Gamble Co v Peaudouce [1989] FSR 180 at 198 from the judgment of Fox LJ:A claim must be sufficient and clear so as to define the monopoly upon which there can be no intrusion. If there is no clarity, intrusion cannot arise. It is fundamental to the law that a producer of a product must know where he cannot intrude.[148] The final amended particulars of objections identified nine references from the patent which were alleged to be "indeterminate and speculative". However, only four of these were relied upon in final argument. I shall refer to each in turn. [149] Mr Brown submitted in closing that the various allegations of ambiguity fell away once a proper construction of the patent was arrived at. He relied upon earlier arguments addressed with reference to construction of the disputed phrases/sentences contained in the specification. [150] The first allegation of ambiguity related to the phrase "relatively offset in the transverse direction of the vehicle". The evidence, arguments and my conclusion as to the interpretation of this phrase already appear at paras [39]-[44] of the judgment. In particular, the conclusion that the phrase, although cumbersome, is intelligible in the context of the patent as a whole, effectively disposes of this allegation. [151] The second allegation of ambiguity pertained to the phrase "longitudinal extent which in the parking position of the support, essentially corresponds to the width of the vehicle". The same situation obtains. I have already considered, and rejected, an argument that the meaning of this integer was unclear. That reasoning (at paras [58]-[59]) is necessarily determinative in the present context, as well. [152] Next is the phrase "wherein the ends of the support sleeve are bevelled to provide end faces that extend substantially vertically". Again, I briefly dealt with the interpretation of this phrase at paras [60]-[61]. I am satisfied that its meaning is clear and, therefore, unambiguous. [153] Finally, it was argued that the patent reference to "the pivot pin is arranged far down in the vehicle chassis i.e. at least below the platform surface of the vehicle,preferably in level with the vehicle chassis" was ambiguous. The descriptions "far down" in the chassis and "in level" with it, were particularly contrasted by counsel. Although I have already considered a related issue, being the reference to a support sleeve "supported by a pivot pin connected to the vehicle chassis" in claim 1 (refer paras [45]-[50]), the present challenge is directed to claim 2 which provides:A structure as claimed in claim 1, characterised in that the pivot pin is arranged far down in the vehicle chassis, i.e. at least below the platform surface of the vehicle, preferably in level with the vehicle chassis.[154] Mr Eaton expressed this opinion:Claim 2 relates to the position of the pivot pin [pivot 6] far down in the vehicle chassis and this is explained to mean at least below the platform surface of the vehicle. The arrangement can clearly be seen in figures 1 to 4 of the patent.Mr Miles argued that this was to ignore the uncertainty, because the witness focused upon the characterisation that the pivot pin be far down in the vehicle chassis, at least below the platform surface, which took no account of the concluding phrase "preferably in level with the vehicle chassis". It was this additional reference which led to confusion and uncertainty, therefore the claim was ambiguous. [155] I disagree. Figure 1 (see para [36]) depicts the position of the pivot pin as 6, while the platform is 4 and the chassis 2. Once claim two is read alongside the drawing it is evident that the claim emphasises the need for the pivot pin to be far enough down in the chassis to at least be below the platform surface of the vehicle and, preferably, level with the chassis. This accurately describes what is depicted in figure 1, in that the pin is down in the chassis to a point below the platform, but still level with the top of the chassis. While I accept that more felicitous wording could have been employed, the scope of the claim is sufficiently and clearly defined. [156] It follows that each of the grounds upon which revocation was sought is rejected. However, the finding of non-infringement remains and is fatal to the plaintiffs' claim for breach of patent.Copyright[157] Hammar is the owner of copyright in four drawings prepared in 1998-99 relating to the design of the stabiliser leg for the SL190 series. It alleges that the diagrams are graphic works, and therefore artistic works: s2 of the Copyright Act 1994. Each of the drawings is said to be an original artistic work and, therefore, to enjoy protection pursuant to s14(1) of the Act. As Sweden is a convention country in terms of the Patents, Designs and Trademarks Convention Order 2000 (SR 2000/236), Hammar alleges infringement of its copyright in the drawings contrary to the New Zealand Act. [158] The amended statement of claim alleges that Steelbro:copied a substantial part of the copyright works by the making of the working drawings for and the manufacture of the support structure comprised in [its] self-loading trailers model numbers SB361 and SB401.Steelbro denies infringement. In particular, it maintains that in producing working drawings for, and manufacturing, stabiliser legs for its SB361/401 models, it has "not copied a substantial part of the works in which the first plaintiff claims it owns copyright". Hammar's copyright in the four relevant drawings was not challenged, rather the defence is that copying has not occurred and that there is no objective similarity between the copyright drawings and Steelbro's drawings, or products.A preliminary pleading point[159] Mr Miles in opening the defendant's case was roundly critical of the plaintiffs' reliance upon Steelbro's working drawings for an ankle stabiliser, which were produced around December 2000. The ankle stabiliser was the subject of a provisional patent specification in December 2000 and of a complete specification filed in December 2001, in which the stabiliser leg was depicted stowed in a negative inclination. Some at least of the working drawings pertaining to the development of this patent were prepared by Mr Benny Gustavsson. The plaintiff focused on these drawings on account of the negative inclination feature and because Mr Gustavsson was a former employee of Hammar in Sweden.[160] Hence, the gist of Mr Miles' complaint was that although the statement of claim alleged copying in the context of the SB361/401 working drawings, the plaintiffs' case at trial involved a focus upon the earlier ankle stabiliser drawings. Mr Brown disputed that the plaintiffs' case had changed. He submitted that "the significance of the Gustavsson drawings is that they were the conduit for and provided the road to proof of the later infringements". [161] I do not regard this dispute as of defining significance. The plaintiffs' case remains that infringement occurred with reference to working drawings for, and the manufacture of, the SB361/401 models; albeit that the origin of the infringement is said to lie in earlier drawings. I shall need to refer to this history of events in more detail, shortly.The issues[162] As in Henkel KGaA v Holdfast New Zealand Ltd [2006] 1 NZLR 577 (SC) I think this is a case which can be considered under two headings: proof of copying and whether a substantial part of the copyright work was copied. [163] There was a marked difference of approach to the aspects of copying and substantiality. The plaintiffs' case focused most on the question of copying. It was contended that there was ample evidence to establish both access to Hammar's working drawings and that they were probably copied. With reference to substantiality, the plaintiff emphasised that it was the inclined orientation of the stabiliser leg in the parked position, and the bevelled ends to the structure, which were the subject of the infringement claim. These features in themselves were said to constitute a substantial part of the artistic work. Differences identified by Steelbro in relation to other aspects of the working drawings were of no moment. [164] Steelbro both denied that copying had occurred and that its working drawings, or products, exhibited a substantial objective similarity to the copyright works. With reference to the former its case was that there was no causal connection between Hammar's copyright works and Steelbro's development of the SB361/401 models. And, even if the idea to stow the stabiliser leg on these models in a negativeinclination was similar to the approach adopted by Hammar, there were a "myriad of differences" between the Steelbro products and those of its competitor. These were pointed out in the evidence of Steelbro's expert witnesses. They found and described numerous differences in the expression of a common solution. Mr Miles was critical that the experts were not cross-examined concerning these differences. Mr Brown, however, maintained that cross-examination was largely unnecessary, since the differences fell outside the substantial part of the copyright work which Hammar alleged had been infringed. [165] To my mind this marked difference of focus exemplified the nature of the respective cases. And, a decision concerning which focus and approach is correct will also be determinative of the copyright cause of action.Objective similarity of a substantial part?[166] I shall deal with this aspect first, and then consider whether there is proof of copying. Section 30 of the Copyright Act provides that "the copying of a work is a restricted act in relation to every description of copyright work". In terms of s29(2):References in this act to the doing of a restricted act are to the doing of that act – (a) in relation to the work as a whole or any substantial part of it; and (b) either directly or indirectly; and it is immaterial whether any intervening acts themselves infringe copyright. (emphasis added)[167] As to substantiality the Supreme Court in Henkel said this at [44]:It is not necessary for the plaintiff to show that the defendant copied the whole of the copyright work or that the copying was exact. It is enough if the plaintiff demonstrates that the defendant copied a substantial part of the copyright work. This can sometimes be a difficult matter of evaluation and is usually the most difficult question which arises in copyright cases. What amounts to a substantial part in an artistic work case depends more on qualitative visual impression rather than on quantitative analysis. As it has helpfully been put, what must have been copied is the essence of the copyright work. This is a subject upon which, in borderline cases, minds can reasonably differ, and it is appropriate for appellate Courts to give to the trial Judge's assessment the degree of latitude that conventionally applies to appellate review of a discretion.[168] In evaluating whether there has been copying of a substantial part of a copyright work the distinction between an inventive idea on the one hand, and its expression on the other, must be borne in mind. Copyright does not protect ideas, but rather the actual form(s) in which ideas are expressed. [169] And so in UPL Group Limited v Dux Engineers Limited [1989] 3 NZLR 135 (CA) the Court said at 144:Although we have little doubt that Dux has filched the idea of a connector piece from [the plaintiff], that which it has produced is in our opinion not substantially the same as [the plaintiff's product].In other words, copyright protects the expression of a work (provided the form of expression is original), as opposed to the idea (even if inventive) which underpins the work. Hence, at least in a copyright context, Dux was at liberty to filch the idea of a competitor, so long as it did not copy the expression of that idea, whether from working drawings or the product itself. [170] It follows that the law of copyright protects the input of the copyright owner into the original work, as opposed to any inventive idea which may have preceded that input. Hence, in Bleiman v News Media (Auckland) Limited [1994] 2 NZLR 673 (CA) Gault J said at 678:It is perhaps more helpful to consider whether the effort, skill and judgment of the copyright owner in the making of his original work has been taken [appropriated] in the making of what appears, on a realistic assessment, to be a reproduction of a substantial part.[171] The thrust of Hammar's case was confirmed in correspondence between solicitors in October 2007, being an infringement in relation to those parts of the stabiliser leg structure which enabled it to be positioned in an inclined orientation in the parked position including the bevelled ends. This was confirmed through the supply of copies of the four drawings, dated 15 and 27 January 1998, 14 May 1998 and 14 March 1999 (the copyright works), with the asserted substantial part highlighted. [172] A part of one of the drawings dated 24 March 1999, as highlighted and supplied to Steelbro's solicitors, illustrates the plaintiffs' contention.The expert evidence[173] As with patent construction, whether there is visual objective similarity between a copyright work and the alleged infringement is to be assessed through the eyes of the kind of person to whom the relevant drawings are addressed. Visual similarity and significance to a layman is not the test. Accordingly, I turn to the expert evidence. [174] Mr Eaton described seven aspects embodied in the Hammar design of the 190 series. In order to describe these I think it is helpful to refer to comparison drawings assembled by Dr Stark as appendix 3 to his evidence. The drawings show the respective stabiliser legs in a stowed position. Helpfully, the drawings are aligned in order to aid comparison.The letters (A – D) and the word descriptions have been added. [175] The seven aspects identified by Mr Eaton (which can be seen in the bottom drawing) were: (i) The lift cylinder pivot (A) is outside the extension cylinder pivot (C) i.e. closer to the outer edge of the vehicle. (ii) The lift cylinder mount pin (B) is marginally above the extension cylinder pivot (C). (iii) The lift cylinder pivot (A) is above the bracket pivot (D). (iv) The bracket pivot (D) is below the top of the trailer chassis. (v) The lift cylinder pivot (A) is above the top of the trailer chassis. (vi) Both the lift cylinder, and the extendable leg are inclined at about 13º away from the bracket pivot (D).11º inclination Chassis DB C A 13º inclination C (extension cylinder pivot) A (lift cylinder pivot) B (lift cylinder mount pin) Chassis D (Bracket pivot)(vii) The bevelled ends of the extendable stabiliser leg keep the structure within the width of the vehicle and reduce the loads within the structure due to the greater contact area (presumably of the foot, while the leg is in operation). [176] Mr Eaton then referred to the various side lifters manufactured by Steelbro prior to the SB361/401 series. He particularly noted that in all of these models the support leg was parked in a horizontal position. With reference to the SB361/401 models he noted "a very similar arrangement to the Hammar design". The angle of incline was described as "clearly not very different from the Hammar angle", while points (i) – (v) in the previous paragraph were also present. That said, Mr Eaton accepted that there were differences in relation to the frame structure and appearance of the respective designs, but these he attributed to refinement of the design to fit within Steelbro's manufacturing capability and reflective of the type of materials historically used by the company. [177] In cross-examination, however, Mr Eaton resiled to a degree. With regard to points (i) and (ii) he accepted he was mistaken. That is the lift cylinder pivot (A) is not outside the extension cylinder pivot (C) in the Steelbro models. And, the lift cylinder mount pin (B) is not above the extension cylinder pivot (C). Then, with reference to the lift cylinder pivot (A) being above the bracket pivot (D) and A also being above the height of the chassis; and the bracket pivot (D) being below the surface of the chassis, Mr Eaton accepted that these features were found in most of the earlier Steelbro models. In the end result features (vi) and (vii) remained and he described these as the critical aspects with reference to whether a substantial part of the Hammar drawings were copied. [178] Mr Stevens gave detailed evidence in support of his conclusion that there was no substantial objective similarity between the SB361/401 models and the copyright drawings. He drew attention to a number of design differences, which may be captured in a table comparison.Hammar SL190 Steelbro SB361/401Stabiliser leg constructed of two Outer box section not enclosed; enclosed box sections. rather open as to 55% of uppersurface and 15% of lower surface. Dimensions of outer box section Dimensions of 200 x 380 x 2.6. 200 mm (wide) x 300 mm (deep) x 2.6 m (long). Support bracket a separately Bracket not a separate component; constructed component, being rather fabricated as part of the outer matching steel plates which box side plates (with some local "sandwich", and are affixed to, reinforcement plates affixed). the outer box section. Distance of approximately 465 mm Distance from pivot D to the from the bracket pivot (D) to the vehicle edge just over 200 mm. vehicle edge. Extension cylinder pivot (C) lower Pivot C higher and as close to the and as close to the chassis as possible. vehicle edge as possible. [179] Dr Stark's evidence as to copyright was largely founded on a comparison of Hammar and Steelbro drawings of the stabiliser leg in various positions. His comparison of the respective stabiliser legs in the stowed position is reproduced at para [174]. Further comparison drawings showing "vertical" and furthest extension deployment, respectively, are figures A3.3 and A3.5:[180] With reference to the difference of about 265 millimetres in the distance from the bracket pivot (D) to the vehicle edge, Dr Stark said:This enables the Hammar design [of the bracket] to have a large concave curve facilitating vertical deployment over the wheel . . By comparison the Steelbro pivot (D) is substantially closer to the side of the vehicle with the outboard face of the stabiliser angularly convex rather than concave.As to this difference, see Dr Stark's figure A3.1 (para [174]). By way of conclusion Dr Stark expressed the opinion that the differences between the respective structures were such that the SB361/401 models required their own set of drawings, geometric calculations and structural strength calculations. Therefore, in his view, the Steelbro models were not a copy of the relevant Hammar model. [181] Given Steelbro's approach to the construction and fabrication of the support bracket, both its experts also pointed out that the lift cylinder mount pin (B) was effectively connected to the outer box section, not to a separate support bracket as inthe Hammar configuration. Attention was also drawn to the different inclinations of the structures in the stowed position, being 13º (Hammar) and 11º (Steelbro).Evaluation of the expert evidence[182] The focus is necessarily upon the similarities evident in the respective designs. I have already made the point that in comparing engineering drawings it is the impact upon an engineering eye which is important. Matters of detail, which may not attract the eye of a layman, may nonetheless be important. Equally, the originality, or distinctiveness, of the copyright work will be relevant to the assessment of substantiality. Conversely, manufacturing and engineering constraints may dictate that product design is necessarily similar. In such cases even lesser differences of design may be of significance. [183] As to these aspects the judgment of Hoffmann J in Billhofer Maschinenfabrik GmbH v T H Dixon and Co Limited [1990] FSR 105 is instructive. Copyright infringement was alleged in relation to design drawings for a laminating machine, which gave a glossy finish to sheets of paper by covering them with a thin transparent layer. Billhofer, a German engineering company, launched a new design of a film laminating machine, which it alleged was copied by Dixon, an English engineering company. The laminating process essentially involved affixing a thin transparent film (using a water-based adhesive) to a roll of paper, which was then cut into sheets of the desired size. Integral to the process was a revolving drying drum, around which the thin film passed immediately after the water-based adhesive was applied. The copyright claim centred upon Billhofer's design of the drying drum, about which were mounted numerous tubes supplying jets of air onto the surface of the film in order to optimise adhesion to the paper at the next point in the process. The copyright claim in part concerned the dimensions of the drying drum and the positioning, number and size of the adjacent tubes supplying the jets of air. [184] In the context of arguments concerning the assessment of engineering drawings and whether the defendant had taken a substantial part of the plaintiff's design, Hoffmann J said at 121:It follows that the substantiality of part of an artistic work depends upon the importance of the particular dimensions and spatial arrangements depicted and not merely upon the importance of the underlying idea which they express.Later at 121-2 he added: the question of whether the actual dimensions and relationships visually depicted on the drawings are sufficiently important to be a substantial part must in my judgment depend upon their significance to the kind of person to whom the drawings addressed. To regard "visually significant" as meaning significant to the layman is in my view illegitimate.[185] Later still at 122 the Judge said: the question in this case is whether the particular dimensions and spatial arrangements taken by Mr Hardcastle from the Billhofer design would to an engineer have been of sufficient importance to constitute a substantial part of the overall drawing. This is a question of fact and degree. Mr Howe, who appeared for Billhofer, warned me against deciding this question by over-dissecting his client's design. There was, he said, a sufficient overall resemblance in the drum assembly to amount to reproduction of a substantial part. In my judgment, however, the overall resemblance lies principally in the fact that both machines have drum dryers with air tubes. This is not a consequence of the reproduction of visually significant information but because of Dixon's legitimate adoption of the underlying concept.Then followed reference to points of detail, which comprised considerable differences, in relation to the embodiments of the drying drum in the respective designs. [186] I regard the subject-matter of this copyright claim as broadly similar to that inBillhofer. For reasons which will emerge shortly, I consider it is likely that Steelbro filched the idea of a negatively inclined stabiliser leg from the example provided by the Hammar SL190 model. But, I am not persuaded that the visual features of the SB361/401 models are quantitatively sufficient to render them reproductions of a substantial part of the Hammar copyright drawings. Certainly there is a degree of visual similarity between the two. But, as in Billhofer, I think this is the product of adoption of the underlying concept of negative inclination and bevelled ends. And whether an engineer would consider there to be sufficient similarity in terms of the dimensions and spatial arrangements as to constitute a substantial part of the copyright drawings, is another matter.[187] Generally, I accept the evidence of the defence experts that, while the respective designs demonstrate the adoption of a common idea, the embodiments are significantly different. In particular I regard the positioning of the bracket pivot (D) as a marked distinguishing feature. In the Hammar embodiment this critical pivot point is about 465 millimetres from the side of the vehicle, whereas the comparable distance in the Steelbro embodiment is just over 200 millimetres. This difference was described by Mr Stevens as having "a major impact on the relative capabilities of the two mechanisms and is not trivial". He added that if the Steelbro design was a copy he would not have expected a difference of this magnitude. Later he noted that the difference affected the swing of the respective support structures and the extent of the articulation required in relation to each stabiliser leg. [188] Probably unsurprisingly, given the difference in the positioning of the bracket pivot (D), the geometric arrangement of the other pivot points (A, B and C) are at least subtly different as well. In particular, the extension cylinder pivot (C) in the Steelbro embodiment is higher and closer to the far edge of the vehicle; while the lift cylinder mount pin (B) is lower than (C). By comparison the Hammar embodiment depicts the extension cylinder pivot (C) closer to the chassis level and marginally below the level of the lift cylinder mount pin (B). Consistent, I infer, with these geometrical differences, the negative inclination of the two support legs differs to some extent, a difference of about 2º. [189] In addition there are other obvious visual differences in the two embodiments. These reflect differences in the manufacture of the respective support structures. The construction of the outer and the inner hydraulically extendable box sections are markedly different, as is the configuration of the support bracket by which the leg is pivoted from the vehicle chassis. While these may be less significant than the other differences to which I have referred, they further erode the contention of copying, rather than support it. [190] This conclusion is necessarily fatal to the case of copyright infringement. However, in case I am wrong in concluding that there is insufficient objective similarity between the Steelbro embodiments and a substantial part of the copyright work, I shall consider the further issue, whether there is proof of copying.Proof of copying[191] In closing argument Mr Brown observed that in most copyright cases proof of copying was a matter of inference. This case, however, he characterised as one where the causal connection was clear and direct. Commencing not later than 2000 there was a trail of drawings, culminating in those for the SB361/401 models, which established copying of the Hammar designs. [192] While this was not initially obvious to the plaintiff, following eventual discovery of highly relevant documents, and the administration of interrogatories, more of the picture emerged. A trail extending back to 2000 prompted an amendment to the statement of claim to include the cause of action for copyright infringement.The relevant chronology[193] In April 2000 Benny Gustavsson commenced employment with Steelbro in Christchurch as a design draughtsman. Previously, from 1997, Mr Gustavsson was employed by Hammar. He worked on the development of the SL190 series, including drawing at least one of the copyright works. [194] In May 2000 the first Hammar side lifter from the 190 series was sold in New Zealand. [195] In August 2000 Steelbro commenced work on an improved stabiliser leg, incorporating in particular an ankle which was pivotable relative to the stabiliser leg extension member, so that the ankle (or foot) could be stowed in a substantially perpendicular position and could also be deployed in a fixed position at the end of the leg when in use. Mr Alan Swarbrick, a Steelbro engineer, commenced work on the design of the improved stabiliser leg in August 2000. The following month Mr Gustavsson produced a drawing of the structure in a closed (stowed) position. The embodiment showed the leg in a negative inclination, with bevelled ends matched to the overall width of the structure.[196] On 19 December 2000 Steelbro filed a provisional specification for the improved stabiliser leg, including further similar drawings produced by Mr Gustavsson. The answers to interrogatories dated these drawings in November 2001, but at trial it was accepted that the correct date was about a year earlier. This was a significant concession. [197] Further iterations of the drawings for Steelbro's improved stabiliser leg were drawn during 2001, culminating in the filing of a complete specification on 19 December of that year. The final embodiment incorporated the features of negative inclination and bevelled ends. [198] With reference to the development of the SB361/401 models Gregory Muirsmeath outlined the development history on behalf of Steelbro. He joined the company in August 2001. He described a process of: obtaining feedback from interested parties, development of performance criteria specifications (three versions), establishment of design parameters, a geometry optimisation process, detailed design work, development and testing of a prototype and the launch of the new product. These steps occurred between about September 2001 and late 2004, although work on the new series was not continuous. [199] With regard to the change to a negative inclination of the stabiliser leg in a stowed position, Mr Muirsmeath described this as "no earth shattering decision", rather a design change which was "obvious and of modest consequence". It was, he said, a direct product of a geometry optimisation process undertaken using sophisticated computer programmes. This process, through trial and error, enabled the optimum positions for the five main pivot points to be identified given the change to stowage of the structure at a negative inclination. This optimisation work, however, was undertaken by Mr Swarbrick. He did not give evidence. [200] Mr Muirsmeath said the optimisation process occurred in November- December 2001. He referred to working drawings (CB4/714 and 4/727) as examples of product from the optimisation process. These showed the stabiliser leg in a negative inclination. Final development of the SB361/401 models was protracted. Other development projects received priority. And, it must be remembered that thestabiliser leg was but one part of an entire vehicle structure, including sophisticated cranes of the necessary lifting capacity. Mr Muirsmeath's evidence indicated that he was closely involved in this development work from 2002 to late 2004.The evidence of David Jeffery[201] In the meantime, partway through the development process detailed by Mr Muirsmeath, Mr David Jeffery made a number of visits to Steelbro's yard about which he gave evidence. Mr Jeffery is an owner driver. In late April 2002 he acquired a Hammar 195 swing lift trailer. One of his regular jobs was a delivery run from Lyttelton to Steelbro's Christchurch yard. Upon his first visit to the yard with the new rig he noted Steelbro employees paying close attention to it. On subsequent visits he found that what had previously been a five minute exercise became much more protracted. He was asked to wait for further directions concerning where to place the container to be offloaded. A number of employees would gather, including better dressed men from the office area. Numerous photographs were taken. Over a number of visits attention was paid to some particular part of the trailer or some aspect of its deployment. [202] In cross-examination Mr Jeffery was challenged concerning whether he had received commission payments from Hammar or favoured treatment in relation to service work on his gear. He said he had not. Challenged as to the degree of interest shown in his trailer, and the number of occasions upon which, and the number of photographs, taken, Mr Jeffery was not shaken. Cross-examination ceased.The rival arguments[203] Mr Miles relied on the evidence of Mr Muirsmeath, whom he described as a careful and credible witness, who denied copying and was not cross-examined on the point. Counsel criticised the reliance placed upon drawings produced in the context of obtaining a patent for the ankle stabiliser in the period 2000-2001, when the plaintiffs' case was pleaded with express reference to working drawings for, and the development of, the SB361/401 models. Significantly, the patented ankle design was not incorporated in the stabiliser with which this case is concerned.[204] In relation to Mr Gustavsson, Mr Miles stressed that he worked at Steelbro's Christchurch plant from April 2000 to May 2002 and from June to August 2003. Although he did some drafting work in relation to the SB361/401 project, his role was very much secondary to that of Mr Muirsmeath. With reference to the evidence of Mr Jeffery, counsel submitted that whether or not it was exaggerated, the evidence was "unremarkable". It was perfectly usual for competitors to take a close interest in each other's products and to draw comparisons between them. What occurred in relation to Mr Jeffery's rig should be viewed in this light and did not infer copying. [205] Mr Brown was roundly critical of Mr Muirsmeath's role as Steelbro's sole witness with reference to the design path leading to the SB361/401 models. He only joined the company in mid-2001. Inevitably, therefore, a significant portion of his evidence contained "imbedded hearsay". The optimisation process was the critical phase of the development history. To it was attributed the change to a negative inclination of the stabiliser leg. Yet, the expert evidence established that computer optimisation was only a tool. Use of the computer enabled calculations to be undertaken which would otherwise be laborious and time-consuming. But, it remained the case that the person using the computer drove the process. The selection of coordinates, by trial and error, produced the optimal answer. [206] This meant that the failure to call Mr Swarbrick was highly significant. Computer optimisation was said to have brought about the change to a negative inclination, but it was Mr Muirsmeath who was left to make this assertion, when he had no first hand involvement in the process. This circumstance, said Mr Brown, explained and justified his election not to cross-examine Mr Muirsmeath concerning this aspect. Indeed, the defendant's failure to call Mr Swarbrick was said to invoke the principle in Jones v Dunkel (1959) 101 CLR 298 (HC), namely that the failure of a party to call a witness may invite an inference that the missing evidence could only have been adverse to that party's case. [207] Mr Brown argued that the evidence as a whole clearly pointed to the negative inclination feature having been adopted by Steelbro well before the geometry optimisation work undertaken by Mr Swarbrick in late 2001. At least a year earlier, and while Mr Gustavsson was working for Steelbro, the concept of negativeinclination was used in relation to the drawings for the ankle stabiliser patent. Subsequently, despite Mr Muirsmeath's best endeavours to fill the gap left by the failure to call Mr Swarbrick, there was no document path which evidenced the change to a negative inclination design. Instead, Steelbro resorted to the "mantra of optimisation", to use Mr Brown's words. Hence, counsel submitted, copying occurred in relation to the drawings for the ankle stabiliser patent and these were "inevitably carried through into the drawings which Mr Muirsmeath made at a much later stage of the process".Evaluation[208] I can set out my conclusions on this aspect quite briefly. It is, I think, essential to first restate what must be copied. In terms of Bleiman (see para [170]), is it established that Steelbro appropriated the effort, skill and judgment evident in the copyright works of Hammar? In that regard it is the drawings which must be copied, not the idea which underpins them. [209] To my mind the evidence in this case strongly supports the conclusion that Steelbro filched the idea of negative inclination of the stabiliser leg from Hammar. Mr Gustavsson was first employed in New Zealand in April 2000, relatively soon after he had worked for Hammar in producing drawings required for its Swedish patent. As Mr Brown rightly emphasised, the concept of negative inclination first appeared in relation to the design of Steelbro's ankle stabiliser which was provisionally patented in December 2000. I accept the emergence of this innovation was no mere coincidence. The strong likelihood must be that Hammar's idea was transported from Sweden to New Zealand. I also accept Mr Brown's submission that once adopted, negative inclination was carried through to the SB361/401 models a few years later. [210] But this does not, in my view, establish copying of the copyright works. There may often be a substantial overlap between the elements of substantiality on the one hand, and copying on the other. The conclusions I have already expressed in relation to substantiality impress me as relevant to copying as well. Mr Eaton articulated several features of the copyright works which were of particularsignificance. However, I have not found this evidence persuasive, both because a significant number of the features were not found in the SB361/401 models and because there were other significant differences of design identified by the expert witnesses for the defence. This suggests that the geometric optimisation process undertaken by Mr Swarbrick did influence the design of the new Steelbro models to a substantial degree. That is, although I find that the optimisation process did not spawn the idea of negative inclination, it did influence Steelbro's design details to the point that neither substantiality, nor copying, are established. [211] For these reasons the copyright cause of action must fail.__________________________________________________________________________Solicitors: Henry Hughes & Co, Wellington for Plaintiffs Buddle Findlay, Auckland for Defendant