Firth Industries Ltd v Polyglas Engineering Pty Ltd

Firth Industries Ltd v Polyglas Engineering Pty Ltd - [1975] HCA 25 - HCA 1975 case summary — Zoe

[8]

The Court in the Beecham Group Case [2] dealt in some detail with what should, in these circumstances, be the principles governing the grant or refusal of interlocutory relief; the case made out by the plaintiff must be "a strong one so far as the question of validity is concerned" [1] , there must be more than mere reliance on the granting of the patent. In particular the Court described the long standing general practice, in those cases where substantial issues of validity arise, as requiring rejection of a plaintiff's application for interlocutory relief unless validity had already been judicially upheld or unless the patent had already stood unchallenged for a long period, generally to be regarded as more than six years. Moreover even an unchallenged patent of long standing would not generally be protected by interlocutory injunction if the defendant "shows by evidence "some ground" for supposing that he has a chance of successfully disputing the validity of the patent at the trial" [3] . This the Court qualified only by its reference, again at the same page, to what was said by Sir George Jessel in Dudgeon v. Thomson [4] . The Master of the Rolls there described three classes of cases in which, in such circumstances, an injunction might be granted, cases of long and undisturbed enjoyment of an old patent, cases where validity had been established by the courts of another jurisdiction and cases in which the defendant's conduct enabled the Court to say that as against that defendant there was no reason to doubt validity of the patent. These last two categories clearly have no present application, nor is the patent in suit one which I would regard as of sufficient long standing to be described as an old patent either in the sense in which the Master of the Rolls used it, coupled with the notion of long and undisturbed enjoyment, or as the Full Court described it, with greater particularity, when it said that an old patent is "generally taken to mean more than six years old" [3] .

[16]

The defendants attack the validity of each claim but, because of what they regard as strong grounds for denying any infringement of the method claims, they direct their attack on validity especially to the article claims. These claims are in one respect unusual; if read without the references they contain to the particular purpose for which the articles in question are intended the articles described are of a most ordinary and commonplace character. It could, I think, scarcely be said of the article described in the main article claim, claim 5, that if stripped of all words of purpose its shape or construction is in any sense novel or inventive, the same, of course, may be said of the other article claims. Whatever novelty or inventiveness they possess depends then upon the method of use as compost bins and in this sense their validity as claims must also be dependent upon that method of use. The introduction into claim 5 of words of purpose is no doubt intended to enhance its adequacy as an independent claim but viewed in the light in which it is put forward, as a claim to an article and not to a method, it is difficult to appreciate how these words of purpose in fact improve the position; the article described and for which monopoly is claimed remains a most commonplace one and by adding to its description the name "compost bin" or the information that it may be placed on the ground, filled with a substance and later removed does no more than acknowledge that it has mass and is open at both ends. Any novelty or inventiveness appears to reside not in the article claims themselves but in the method claims, which include reference to the articles and, by a combination of the method and of the article used in conjunction with it, may involve a valid claim. What I have said may disclose real difficulties as to validity both from the point of view of width of claim and of novelty and obviousness and the defendants in this respect rely upon the case of Adhesive Dry Mounting Company Ltd. v. Trapp & Co. [6] , in which two claims were made, a method claim and an article claim. As a matter of construction the latter claim was held not to be confined to the particular article only when used in accordance with the claimed method and was accordingly bad because anticipated by an earlier patent for an article designed for a quite different application but which in its physical description anticipated the article claim which was in suit. Here no earlier patent is relied on but it is said that if, as the defendants contend, the article claims are to be treated independently of method of use the same result ensues because of the entirely commonplace nature of the article described.

[22]

These contentions do disclose, in my view, ample grounds for concluding that the article claims raise substantial issues as to validity. I do not propose on this interlocutory application to examine questions of validity of the method claims because the evidence does not, I think, establish any case of infringement of these claims. Each of the method claims incorporates reference to the covering of the pile of compost "with a substantially air and/or water proof cover for airing or curing", this is an integral step in the claimed methods. Now the infringement of these method claims which is alleged is not that the defendants themselves employed those methods but that they advised and procured others to do so by selling infringing bins together with instruction folders as to their use. Assuming that this amounts to infringement, a matter open to some doubt - see Innes v. Short [9] and compare Townsend v. Haworth [10] , Adhesive Dry Mounting Co. Ltd. v. Trapp & Co., per Parker J. [11] and Walker v. Alemite Corporation, per Dixon J. [12] - the evidence does not establish that anyone has in fact on the advice of the defendants undertaken that step, prescribed in the method claims which is involved in covering the pile of compost with a cover for airing or curing. Indeed the defendants' written instructions issued to purchasers of their bins do not prescribe such a course; all that is said in this regard, in the course of quite lengthy instructions for use, is that if the composting material is not needed immediately or is insufficiently cured it should be wrapped in black polythene. It is a curious feature of this case that the plaintiffs' own quite elaborate instruction pamphlet is entirely silent concerning this integral step in the method claims, as are the various affidavits filed on behalf of the plaintiffs and which describe the use of the bin, in accordance with the plaintiffs' pamphlet, as entirely satisfactory. These affidavits strongly suggest that this step plays no useful part in the composting process. Be that as it may, the whole of the evidence as to infringement of the method claims is such that I would on this ground alone, and without regard to questions of their validity, refuse any injunction so far as they are concerned.

At a glance

Court

Decision date

Before

Source

Judgment (24 paragraphs)

Parties