Australian Consolidated Industries Ltd & Anor v Scholle Industries (Australia) Pty Ltd [1982] FCA 59

The essential background facts are set out in the judgment of Cox J. and it 1s unnecessary that we repeat them. His Honour's judgment also contains a concise and, in our view, accurate statement of the relevant principles governing

the granting of interlocutory relief and the question whether

there has been an infringement of the patent. We are content to express our general agreement with His Honour's judgment in those respects.

His Honour refused an interlocutory injunction on the ground that he was not satisfied that, if the evidence remained the same on the trial, there was a fair possibility that the appellants would succeed in making out their case of alleged infringement. His Honour's failure to be satisfied in that regard has been the primary issue between the parties on the appeal.

Senior counsel for the appellants restricted the appellants' case for the purposes of the appeal to reliance upon claim 1 of the thirteen claims defining the patented

invention. What follows must be understood in the light of

"l. A dispenser-closure comprising a spout having a tubular wall arranged to be connected at one end to a container for fluids and having an opposite delivery and a diaphragmic transverse wall closure of elastomeric material mounted on the spout at said delivery and pre-formed in a deeply concave configuration extending into said spout from a peripheral juncture therewith, said wall closure having a frusto-conical outer peripheral portion extending inwardly from said juncture at an acute angle to said tubular wall forming a hollow of wedge-shaped cross~section therebetween, said spout being formed with an orifice inwardly of said juncture, said spout having means extending into said hollow inwardly of said orifice, said means and wall closure being constructed and arranged for contact therebetween and distention of said wall closure for sealing the spout against flow of fluid therebeyond, and finger manipulatable means on said wall closure for distorting a portion of the wall closure from said concave configuration to a convex configuration extending radially towards said orifice for breaking the seal and directing a flow of fluid through the orifice".

It 21S not appropriate on this appeal in an interlocutory matter, to form or express any concluded views on the proper construction, scope or application of the words which the patentee has used in claim 1. Relevant technical evidence could be directed towards different questions or could take a different form on the hearing at the trial. Tentative views, which it is necessary to form on the basis of material before the court on the interlocutory proceedings, could prove to be mistaken in the light of the evidence, tested in cross-examination, on the final hearing. It 1s, however, desirable that we indicate that on the material before us, we have reached the following tentative view, which 1s adverse to the appellants' submissions on one particular aspect of the effect of the words used in claim l. This aspect was not expressly canvassed in the judgment in the Supreme Court.

Two ""dispenser-closures" ("taps") which were in evidence before Cox J. have been before us on the hearing of the appeal. One, ("the Fattori tap") is produced under the subject patent. The other, ("the Scholle tap"), is the alleged infringement produced by the respondent. Both of these taps consist of two separable components. One is a type of spout in a white semi-rigid and semi-transparent plastic. The other is a unit made from an opaque brownish plastic material having elastomeric properties which can be clipped on the first unit. It seems to us, as presently

advised, that for the purposes of claim 1, the semi-rigid

unit in the Fattori tap represents the "spout" to which the claim refers, and the clip-on unit, in its entirety, represents the "diaphragmic transverse wall closure of elastomeric material mounted on the spout". To put the matter differently and more accurately and pertinently for present purposes, we do not presently read claim 1 as having the effect that in the embodiment of the patent which is said to be represented by the Fattoril tap, the skirt which comprises part of the mounted clip-on unit constitutes part of the tubular wall of the spout ("a spout having a tubular wali"), which is referred to as "the said tubular wall" in claim 1.

It presently appears to us that this skirt should be seen as a means of mounting the closure unit or "closure" and not as part of "the said spout". Our tentative view in this regard has been formed in the context of claims 2, 3, 7, 8 and 9 of the specifications.

To the extent that they are relevant, it also derives support from the specification as a whole including the paragraphs commencing with the words "Fig 2" and "Fig 4" on page 3, the paragraphs commencing "Fig 9" and "Fig 11" on page 4, the two paragraphs commencing with "Closure Unit 13" on page 5 and notes 12 and 13 to Figs 3, 4, 5, 6 and 7, notes 22 and 23 to Fig 8, notes 32 and 33 to Fig 9, notes 42 and 43 to Fig 10 and notes 52 and 55 to Fig 11. That tentative view 1s of some importance in determining whether the Scholle tap

infringes what we see as being essential integers of the

invention described in claim 1, namely the formation of a hollow of wedge-shaped cross-section between the inwardly extending portion of the wall closure and "the said tubular wall", and the "said spout having means extending into said hollow", and the "said means and wall closure being constructed and arranged for contact therebetween and distention of said wall closure for sealing the spout against flow of fluid therebeyond". It tends to support the views expressed by Cox J. on the question of infringement.

We do not think it desirable that we embark on any detailed analysis of the words in which Cox J. expressed the tentative views which led him to conclude that the appellants

had not established a prima facie case of infringement in the

relevant sense (see Commercial Bank of Australia v Insurance

Brokers Association of Australia (1977) 16 A.L.R. 161 at page

168). It must be stressed that neither Cox J. nor this Court on appeal, was required or concerned to do more than express a tentative view formed on the material presently in evidence. The judge who 1s called upon to deal with the matter at the trial will, no doubt, have before him additional evidence. He will have the benefit of seeing and hearing witnesses including their cross~-examination. He will have the benefit of the heightened insight and understanding which 1s likely to flow from the full hearing of a trial as distinct from the necessarily curtailed hearing of an

Having stressed these matters, we think it is sufficient for the purposes of the present appeal that we indicate our agreement with the conclusion reached by Cox Jd.

that on the material before him, he did not consider that the

"appellants had made out a prima facie case for infringement.

We are in general agreement with the reasons which he gave for that conclusion.

We feel we should indicate that we have, in reaching the conclusion to which we have come, been conscious of the strength of the arguments pressed on behalf of the appellants on the question of balance of convenience, notwithstanding the undertaking as to accounts given by the respondent, which will and should continue. The present case is plainly one which calls for an early hearing. In our

opinion, the appeal should be dismissed with costs.

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