Coopers (South Africa) (Pty) Ltd v Deutsche Gesellschaft Für Schädlingsbekämpfung mbH

• Jurisdiction: South Africa
• Judge: Wessels JA, Jansen JA, Trollip JA, Rabie JA and Corbett JA
• Judgment Date: 17 May 1976
• Citation: 1976 (3) SA 352 (A)
• Hearing Date: 08 March 1976
• Court: Appellate Division

Wessels, J.A.:

For the sake of convenience I shall refer to appellant as the defendant and to respondent as the plaintiff. Plaintiff, the proprietor of South African Patent No. 60/2608 H in respect of an invention entitled 'Metal Phosphides and Process for the Production and Use thereof', instituted proceedings against defendant in the court of the Commissioner of Patents for the Republic of South Africa (hereinafter referred to as the court of first instance). In its particulars of claim, plaintiff alleged that defendant had sold and was selling metal phosphide compositions, the sale of which infringed all of the 17 claims of the patent in question. It claimed an interdict restraining defendant from infringing the patent and the usual ancillary relief. In its plea, defendant averred that the patent was invalid for the

Wessels JA

reasons particularised in its counterclaim. Defendant also denied that it had in any way infringed plaintiff's patent. In its counterclaim, defendant claimed an order for the revocation of the patent.

Although it was alleged that the sale by defendant of metal phosphide compositions under the name of Detia tablets A infringed all of the 17 claims of the patent, the substantial issue at the trial concerned the question whether the tablets sold by defendant infringed claim 1, which reads as follows (the numbering of the various integers has been inserted by me):

'(1) A metal phosphide composition protected against moisture for pest-control purposes, (2) wherein the individual particles or small particle groups of the phosphide are coated B with a water-repelling, solid substance, (3) and this substance has added thereto a substance which is capable of controllable physical and/or chemical modification and/or decomposition under predeterminable conditions, (4) the modification and/or decomposition of which results indirectly or directly in the production of capillary apertures in the coating which apertures permit the access of water vapour to the phosphide particles.'

The matter came to trial before the court of first instance on 25 October 1973. It is necessary to set out a brief summary of C certain events which took place prior to the commencement of, and during, the trial. On 1 October 1973 plaintiff 's attorneys delivered to defendant's attorneys a notice in terms of Rule 36 (9) (a) of the Uniform Rules of Court of plaintiff 's intention to call five witnesses to give expert evidence on its behalf, namely Professors Fluck, Sebba and Backeberg and Messrs. Mayr D and Knopke. On 3 October defendant's attorneys notified plaintiff's attorneys of defendant's intention to call four witnesses to give expert evidence on its behalf, namely Professor Pretorius, Dr. Ebert, Dr. Friemel and Mr. Carr. On 12 October defendant's attorneys delivered a further notice intimating that defendant intended calling Professor Sachtler E and Dr. Klingele to give evidence as experts. On the same date, (1) plaintiff's attorneys delivered to defendant's attorneys summaries of the opinions and reasons therefor of Professors Sebba and Fluck and Mr. Mayr, and (2) defendant's attorneys delivered to plaintiff's attorneys summaries of the opinions and reasons therefor of Dr. Friemel, Dr. Klingele, Professor Pretorius, Professor Sachtler and Mr. Carr. On 19 October plaintiff's attorneys delivered to defendant's F attorneys summaries of the opinions and reasons therefor of Professor Backeberg and Mr. Mayr. In the case of Mayr, it was stated that the summary was supplementary to that delivered on 12 October. On 18 October plaintiff's attorneys wrote to defendant's attorneys complaining that defendant's summaries G did not comply with the provisions of Rule 36 (9) (b). The complaint was that the summaries

'do not disclose sufficiently the nature of the experiments and the tests conducted by the witnesses and do not adequately set out their reasons for the opinions expressed'.

On 22 October defendant's attorneys replied as follows:

'We submit that the summaries of the witnesses given to you, H are adequate. The Rules of Court do not require that 'the nature of the experiments and tests conducted by the witnesses' be disclosed. Nor do the Rules of Court require that the summaries should 'adequately set out... reasons for the opinions expressed'.

We submit also that a summary, being a summary, is intended to cover merely the main points of the evidence which a witness will give, and that it is not necessary, in a summary, to detail each and every item on which a witness is to give evidence.

However, a further notice giving additional details on which witnesses will give evidence, is being delivered to you with this letter.'

The notice in question reads as follows:

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'In addition to the summaries previously given of the evidence which the previously named witnesses will give on behalf of the defendant, they will also give evidence as to the meaning of the technical terms and statements of a scientific nature which appear in the specifications in suit, as well as in the specifications cited in the attack based on lack of novelty.'

A In opening, counsel for plaintiff drew attention to the summaries and submitted that they were inadequate. But he wished the trial to proceed because plaintiff had brought witnesses from overseas. He, however, intimated that if he were taken by surprise as a result of the inadequacy of the summaries, it might become necessary for him to seek an adjournment. The trial proceeded.

B Prof. Sebba was the first witness called by plaintiff to give expert evidence on its behalf. He gave evidence, inter alia, as to the meaning of technical terms and statements of a scientific nature appearing in the patent specification in question. He also dealt with the nature and purpose of the various chemical substances in compositions in tablet form C manufactured in accordance with the patent specification. On the issue of infringement he was asked in his evidence-in-chief to consider the nature of the Detia tablets which were being sold by defendant against the background of his evidence relating to tablets manufactured in accordance with the patent specification. He was about to deal with certain tests or D experiments carried out in co-operation with Professor Backeberg, when defendant's counsel objected to evidence being led in regard thereto. He submitted that the expert evidence which the witness was being asked to give in regard to tests or experiments was not properly foreshadowed in the summary delivered in accordance with the aforementioned Rule 36 (9) (b). After hearing argument, the court of first instance ruled as follows:

E 'Objection has been taken to the giving of evidence by Prof. Sebba, an expert witness, on a particular matter. The ground of objection is that the summary of his evidence delivered by the plaintiff does not comply with the requirements of Rule 36 (9) (b) of the Uniform Rules of Court.

The relevant paragraph of the summary is para. 2 (b) which reads:

'(b)

The witness will testify that the pellets contain or F show all the integers of claim 1, 2, and 7 of the patent. In particular the witness will express the opinion that

(i)

............

(ii)

the composition of such pellets is metal phosphide protected against moisture for pest control purposes. The witness' reasons are the chemical analysis above referred to which shows that the pellets contain aluminium phosphide, and the rate at which phosphide is liberated shows that the composition is protected against moisture.'

G It is objected that no details are given of the experiments which form the basis for the statement in the words which I have italicised.

Rule 36 (9) provides that -

'No person... shall be entitled to call as a witness any person to give evidence as an expert upon any matter upon which the evidence of expert witnesses may be received, unless he shall:

(a)

H ............

(b)

not less than ten days before the trial have delivered a summary of such expert's opinion, and his reasons therefor.'

It is clear that the opinion is summarised in the paragraph quoted. The question is, then, whether the words italicised constitute 'the reasons' for that opinion.

To a person unacquainted with the specification those words are extremely obscure. Mr. Plewman who appears on behalf of the plaintiff, said, however, that when regard is had to the specification now in suit, it is clear that the reference is to a rate curve attached to the specification, and the explanation of that curve contained in the body of the specification. If that is so, and it is not challenged by Mr. Van

Wessels JA

Reenen, who appears on behalf of the defendant, then it seems to me that the words italicised do constitute 'the reason' for the opinion expressed by Prof Sebba. There was, therefore, compliance with the Rule, which does not in terms, or as a matter of necessary implication, require that where 'the reason' is based on experiments, the results of the experiments themselves should be set out in detail.

I accordingly rule that, on the basis on which Mr. Plewman has argued the matter, the witness may be further examined on this A matter.'

Thereafter, the witness continued his evidence-in-chief. He was fully cross-examined by defendant's counsel, who did not apply for a postponement. After Professors Fluck and Backeberg had given further expert evidence, plaintiff's case on the issue of infringement was closed.

The first witness called to give expert evidence on defendant's B behalf was Dr. Sachtler. Defendant's right to lead such evidence was challenged by plaintiff's counsel, who submitted that his summary delivered by defendant to plaintiff did not comply with the provisions of the above-mentioned Rule 36 (9) (b). This was contested, and it was submitted on defendant's behalf that, in any event, the court...