The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Ltd and Others

JurisdictionEngland & Wales
CourtCourt of Appeal (Civil Division)
Judgment Date23 July 1971
Judgment citation (vLex)[1971] EWCA Civ J0723-5
Date23 July 1971

[1971] EWCA Civ J0723-5

In The Supreme Court of Judicature

Court of Appeal

(Civil Division)

(From: Mr Justice Graham, Chancery Division)

Before:

Lord Justice Sachs

Lord Justice Buckley and

Lord Justice Orr

The General Tire & Rubber Company
and
The Firestone Tyre and Rubber Company Limited and Others

MR S. W. TEMPLEMAN, Q. C., MR WILLIAM ALDOUS and MR DAVID YOUNG (instructed by Messrs. Herbert Smith & Co.) appeared on behalf of the Appellants (Defendants).

SIR LIONEL HEALD, Q. C., MR STEPHEN GRATWICK, Q. C and MR J. G. DRYSDALE (instructed by Messrs. Bristows, Cooke & Carpmael) appeared on behalf of the Respondents (Plaintiffs).

1

2

This is an appeal from the Judgment given on 31 July, 1970, by Mr Justice Graham in proceedings in which the Respondent Plaintiffs asserted claims for the infringement of Patent No.737,086 (priority date 20 November 1950) and the Appellant Defendants sought its revocation. It was not contested that if all of the claims of the patent were valid, some 18 had been infringed by the Defendants: so the result of the proceedings depended on whether grounds for revocation were established.

3

The patent in suit was for a process for making a compound suitable for tyre treads by mixing synthetic rubber with oil and carbon black (a mixture commonly referred to as "oil-extended" rubber) and for the compound thus made. It was common ground that after the Plaintiffs publicised the process in June, 1951, i was rapidly taken into general industrial use to the extent that will be mentioned later in this Judgment: it was correctly stated in the judgment that "the importance of the method cannot be gainsaid".

4

The attack on the patent at first instance had, by the of time judgment came to be given, concentrated on seeking to establish anticipation under Sec.32(1)(e) of the Patents Act, 1949; obviousness and absence of any inventive step under sec.32(1) (f); and absence of sufficient and clear definition or ambiguity, under sec.32(1)(i). On each of these three heads the onus, of course, lay on these who sought revocation. in each instance it was held that the Appellants failed; and as regards each head the attack, with some modifications, has been renewed before this Court.

5

The judgment is reported in convenient form in the Fleet Street Patent Law Reports, 1970, page 268, and for the purposes of this appeal we have used that report, after there had been inserted into it those full and helpful references to pertinent evidence and documents which appeared in the transcript supplied by the shorthand writers. When referring to passages in that judgment we will simply cite the relevant page in that report.

6

(2)

7

The proceedings in this country, with which alone we are concerned, commenced (see judgment, page 270) in 1963, when a petition for revocation of the patent was presented by the International Synthetic Rubber Company Limited ("I. S. R."), one of the Defendants. In 1964 and 1967-actions for infringement were commenced by the Plaintiffs, and in them counterclaims for revocation were made. On 7 May, 1968, an Order was made consolidating the three sets of proceedings.

8

On 2 October, 1969, there commenced a hearing before Mr Justice Lloyd-Jacob: this occupied 34 days, 19 of which were devoted to evidence. Unhappily, after the conclusion of that hearing, but before judgment could be delivered, this learned Judge died — to the grievous loss of all concerned in patent cases.

9

On 8 April, 1970, Mr Justice Graham commenced to rehear the case. By agreement this trial, which occupied 25 days, took place upon the transcript of the evidence as recorded at the first hearing — no further evidence being adduced.

10

The issues and relevant questions of fact as raised in the pleadings, the requests for admissions, the particulars ofobjections and other notices on the Court record cover in all close on 100 pages (Vol. D.1): they were thus voluminous. Moreover, the parties came to Court with material gathered from worldwide litigation under various systems of law relating to the patent in suit — we were told that in the U. S. proceedings alone some 300,000 documents were disclosed or used.

11

Nonetheless Mr Justice Graham (who in 1he circumstances we will refer to as the trial judge), with the cooperation of Counsel, succeeded in analysing the massive material in a way to which we wish to pay tribute: at the same time he crystallised the issues and stated the law in a manner which has been most helpful. As regards the evidence he said (p.272):

"the decision in this case depends not on questions of disputed fact but on what are the proper inferences to be drawn from the primary historical and technical facts, which are very largely not in issue".

12

He further said:

"it is very fortunate that all the witnesses in this case, as Counsel on both sides agreed and as Mr Justice Lloyd-Jacob clearly considered from comments which he made during the hearing, were of considerable caliber and gave their evidence with candour, clarity and lack of partisanship".

13

Insofar as there were conflicts of expert evidence he was able to resolve them with the aid of the submissions of Counsel — to which he gave appropriately warm praise. In this behalf he was no doubt assisted by his own special experience and could thus assess whether on any particular point witnesses had been able to keep within or may have strayed outside those "limits of objectivity" to which Mr Templeman referred, and could also discount the effect of that hostility which existed between on the one hand the Plaintiffs and on the other theUnited States Office of Rubber Reserve and some of the Appellants — as appears clearly from a number of documents and from some of the oral evidence.

14

In this Court the hearing has taken some 27 days. At the outset, in view of the number of technical words and phrases unfamiliar to this "non-expert court" (to borrow the language of Lord Justice Willmer in the ( John's-Manvilie case 1967R. P. C., 479, at 496)) that were to be found in the evidence and in the judgment, we indicated to Counsel that they should not hesitate, in their discretion, to request us to nominate a scientific adviser under the provisions of R. S. C. Order 40, Rule 1, if such a course appeared to be in the interests of the parties. We received no such request and consider that the discretion of Counsel was wisely exercised. Despite the necessary ramifications of the technology discussed, we found that we had to deal in substance with the application of well — charted law to issues of fact that were reasonably plain despite being in some respects difficult to resolve.

15

Before going further into these matters, we wish to express our deep appreciation of the help we received from all the Counsel concerned in the arduous task of presenting to us the law and the relevant facts — not least to Mr Gratwick for his assistance on the many technical natters which became the subject of discussion before us.

16

So far as facts are concerned, the difficulties stemmed in the main from the by no means easy task of obtaining a reasonably exact and full understanding of the many diversified practical problems that faced the tyre manufacturing industry in its transition from almost exclusive use of natural rubberto widespread use of synthetic rubber; of the interlocking nature of those problems — for a process tending to solve one could well have an adverse side effect on another; and of the particular problems to which individual specifications of different dates were addressed in the light of what was then known. These difficulties were increased by the fact that neither in the specifications nor in the evidence of the experts was the same language necessarily used in relation to each problem, and that the specifications were each in turn in the main concerned with and directed towards some identifiable end result rather than such theories as might be enunciated in them. It was indeed the end results that naturally mattered to this industry, which was somewhat conservatively and empirically minded in view of its massive machinery and equipment and the need to use it economically.

17

The nature of these various interlocking problems will be specified later: they were the subject of a great bulk of evidence employing highly technical phrases, but to which reference can nonetheless be made, for the purposes of this Judgment, in relatively simple terms.

18

It is at this point convenient to mention that, as the trial judge had attached some weight (pages 282 and 290) to a visit paid by him to the tyre factory of the first-named Appellants at Brentfordese, we acceded to a suggestion that we, too, should go there, should view those processes which the trial judge had observed, and should see two instructive films that had been shown to him -"Making of a tyre" — Firestone (U. S.) 1947, and "Man-made rubber" — Dunlop 1953. We found the two films helpful in that they made clear in visual formthe sequence of the processes at the various stages which lead to the making of compounds for use as tyre treads. As regards what could actually be seen at the factory, one naturally cannot there see any of the processes referred to as Stages (i) and (ii) in the next section of this Judgment, nor can one observe what occurs inside that very important machine (much referred to in the evidence), a Banbury mixer, or, indeed, other machines: so that part of the visit was perhaps more interesting than useful, save to give us a concept of the magnitude of the operations as a whole and the machines in particular. We were, however, grateful for the arrangements made to put us in the same position as regards evidence as the trial judge.

19

(3)

20

(a) PROCESSES

21

For the purposes of the present case the processes that produce the compounds for tyre treads can be divided into three stages:-

22

(i)...

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