[93] In addition to its plea denying infringement, as mentioned at the outset, Vodacom filed a claim in reconvention
objecting to the patent in suit on the grounds of a lack of novelty and a lack of inventive step.
[94] Section 61(1) of the Act provides that any person may at any time apply for the revocation of a patent on
various grounds, including the ground that the invention concerned is not patentable under section 25 of the
Act (section 61(1)(c)). Section 25(1) reads:
"A patent may, subject to the provisions of this section, be granted for any new invention which involves an inventive
step and which is capable of being used or applied in trade or industry or agriculture."
In terms of the other provisions of the section, an invention shall be deemed to be new if it does not form part
of the state of the art immediately before the priority date of any claim to that invention (section 25(9)). The
state of the art shall comprise all matters (whether a product, a process, information about either, or anything
else) which have been made available to the public (whether in the Republic or elsewhere) by written or oral
description, by use or in any other way (section 25(6)). The state of the art shall also comprise matters
contained in an application, open to public inspection, for a patent, notwithstanding that the application was
lodged at the patent office and became open to public inspection on or after the priority date of the relevant
invention, if that matter was contained in that application both as lodged and as open to public inspection;
and the priority date of that matter is earlier than that of the invention.
[95] The proper approach to determining an objection of anticipation, or a lack of novelty, was enunciated by
Trollip JA in Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (AD) at 646BH as follows:
"I turn now to the objection of anticipation. It relates to the claims and not the description of the invention in the body
of the specification . . . Hence the particular claim must be construed to ascertain its essential constituent elements or
integers. For the purpose of this objection the claim so construed is assumed to be inventive . . . The prior printed
publication or patent alleged to be anticipatory is then construed. As Blanco White, supra says at 101:
'The question whether a claim has novelty over what is disclosed in an earlier document is primarily one of
construction of the two documents.'
The two documents are then compared to ascertain whether the prior patent was granted for, or the prior printed
publication 'describes' the same process, etc. as that claimed. Prior patenting will be dealt with later. In regard to a
prior publication, the ordinary meaning of 'describe' means
'to set forth in words or recite the characteristics of . . .'
Page 410 of [2009] 1 All SA 381 (T)
Hence for it to 'describe' the invented process etc., it must set forth or recite at least its essential integers in such a
way that the same or substantially the same process is identifiable or perceptible and hence made known, or the
same or substantially the same thing can be made from that description. 'Substantially the same' means practically
the same, or, . . the same 'for the purposes of practical utility'; ie substance and not form must be regarded.
Consequently, if on the comparison of the two documents it appears that the same or substantially the same process,
etc., is described as in the above sense in both, the claim has been anticipated and is not novel; conversely, if the
description in the prior document differs, even in a small respect, provided it is a real difference, such as the non
recital of a single essential integer, the objection of anticipation fails."
[96] Extrinsic evidence is admissible to prove the meaning of technical terms or the prior state of the art in so far
as it is relevant for the proper construction and application of the document. However, the opinions of an
expert that a document does or does not anticipate a claim of the patent in suit should be disregarded as
such is obviously a matter of interpretation for the court (Gentiruco, supra, at 646H647A).
[97] In the claim in reconvention Vodacom alleged that the patent in suit was not new in that it formed part of the
state of the art immediately before the priority date of the claims to the invention and stated its intention to
rely on five processes, products etcetera that constituted, in its view, matter which was made available to the
public immediately before the priority date thus forming part of the relevant state of the art. These were:
(i) the system and method of recharging airtime used commercially by Cointel (Pty) Ltd and Vodacom from
about June 1998 ("the Autocharge system");
(ii) South African patent 99/0794, referred to in evidence and argument as the "I Touch" patent;
(iii) the "pay as you go" or prepaid voucher system used in South Africa by Vodacom from about 1994;
(iv) WO 98/47112, referred to as the "Miller" patent; and
(v) WO 96/41462, referred to as the "EDS" patent.
[98] During the course of the trial, Vodacom abandoned its reliance on the "pay as you go" system and qualified its
reliance on the "Autocharge system". It stood firm in its reliance on the three other documents, though the
dispute in that regard was narrowed considerably by the expert evidence.
[99] Vodacom's contention that the patent in suit was perhaps anticipated by the Cointel Autocharge system was
predicated upon a possible infringement on account of a linear (as opposed to triangular) enabling code being
found to be part of the prepaid hybrid system. If, on the other hand, the patent is construed to mean that the
enabling code needs to be sent to the subscriber and that the subscriber should feed it into the network
("the triangular code system"), as I have in fact construed the claims, then it is common cause between the
parties that there would be no anticipation by the Autocharge system. That concession needs brief
elucidation. It is common cause that the Cointel Autocharge system discloses the features of integers (a), (b)
and (c) of claim 1. Had I found integers (d) and (e) disclosed in the prepaid hybrid system, which I did not, it
would