[130] It emerged in the course of the crossexamination of the defendants' expert that the plaintiff's case was
somewhat at variance with the pleadings and his earlier testimony. It was put to the witness that the plaintiff
would express the view that the combination of the features in the various claims of his patent constituted
the inventive step: "Not any one of them, but the combination." The plaintiff confirmed this in his evidencein
chief when he was called in rebuttal of the counterclaim. Then he stated the inventive step to be:
"It is the combination of all these elements in the technology that includes remotely identifying, verifying and
providing a subscriber with an enabling code which when input into the network will give access to the network to a
predetermined extent."
When asked whether the inventive step was limited to airtime on a cellular phone network, he replied that it
was not but instead involved providing enabling codes for different uses and thus his invention had a wider
application.
[131] Mr Bowman made something of the apparent shift in emphasis as to the inventive step. In my opinion, there is
not much in it. Combination or no combination, airtime or other product, the plaintiff's stated inventive step
consists of the provision of enabling codes to remotely identified and verified subscribers. That much has not
changed. Moreover, it is stated in the opening paragraph of the specification that the invention relates to "a
method of dispensing enabling codes". The difficulty for the plaintiff rather is that his claim to inventiveness is
predicated upon his assertion
Page 422 of [2009] 1 All SA 381 (T)
that the Cointel Autocharge system was not in operation at the priority date of the patent in suit. Such quite
evidently was the entire thrust of his case until such time as Rathilall gave his evidence. As I have found, and
which now appears to be common cause, the Cointel Autocharge system was in fact operational before the
priority date and included in its features were the integers of remote identification and verification from a
subscriber database for the purpose of providing airtime. That being so, such formed part of the state of the
art at the priority date, with the result that the plaintiff's "invention" was not a step beyond or any different
to what existed as part of the state of the art. It follows that on such ground alone the plaintiff's claim is bad
for obviousness as well; and that is so despite PPOL having had some measure of commercial success and
the fact that Vodacom officials had early on evinced an exploratory interest in relation to it.
The order
[132] For those reasons the counterclaim for invalidity succeeds. In accordance with the prevailing practice the
plaintiff should be afforded an opportunity to cure the invalidity. With regard to costs there is no reason why
costs should not follow the result in relation to both the action for infringement and the counterclaim. The
complexity of the matter justified the employment of two counsel.
[133] In the result, the following orders are issued:
1.
The plaintiff 's action for an interdict restraining the defendants from infringing the patent in suit is
dismissed.
2.
The defendant's counterclaim is allowed and patent 2002/1924 is revoked, but the order of revocation
is suspended for a period of three months from the date of this order to enable the plaintiff to seek
such amendments to the specification and claims as he may deem necessary.
3.
The plaintiff is ordered to pay the costs of the action and the counterclaim, including the costs of two
counsel.
For the applicant:
CE Puckrin SC and R Michau instructed by Van Niekerk & Van den Berg
For the respondent:
LG Bowman SC and B du Plessis instructed by Spoor & Fisher