Filta-Matix (Pty) Ltd v Freudenberg and Others

• Jurisdiction: South Africa

Filta-Matix (Pty) Ltd v Freudenberg and Others
1998 (1) SA 606 (SCA)

1998 (1) SA p606

Citation	1998 (1) SA 606 (SCA)
Case No	258/96
Court	Supreme Court of Appeal
Judge	Harms JA, F H Grosskopf JA, Harms JA, Marais JA, Schutz JA
Heard	November 13, 1997; November 14, 1997
Judgment	November 27, 1997
Counsel	ABS Franklin for the appellant; P Ginsburg (with him C J Van Der Westhuizen) or the respondents

Flynote : Sleutelwoorde

Patent — Infringement of — Counterclaim for revocation on the grounds of lack of novelty, obviousness, inutility and uncertainty of B claiming — Appeal against dismissal of counterclaim dismissed.

Patent — Validity of — Validity of patent attacked on various grounds — Each objection to validity to be C considered in isolation — Such not meaning that evidence on one aspect might not be relevant on another.

Practice — Trial — Pre-trial conference — Agreement between parties limiting issues and scope of litigation — Party cannot resile from such agreement deliberately reached — Where party elects to limit ambit of his case, such election usually binding — Rule 37 of Uniform Rules. D

Headnote : Kopnota

In an action for the infringement of South African patent 75/5566, which was entitled 'A Gas Filter Element' and which had been extended for a period of five years after its normal term had expired on 6 September 1992, the defendant (the appellant) counterclaimed for E revocation of the patent on the grounds of lack of novelty, obviousness, inutility and uncertainty of claiming. The Court of the Commissioner of Patents dismissed the counterclaim and granted an interdict and ancillary relief. In an appeal to the Supreme Court of Appeal the appellant petitioned for leave to amend a response given to questions at the pre-trial conference.

Held, on the facts, in regard to the question of infringement, that the findings of the F Commissioner had to be upheld. (At 612G.)

Held, further, in regard to the question of invalidity of the patent in general, that, whilst each ground of objection had to be considered in isolation, that did not mean that evidence led on one aspect might not be relevant on another. A patent had one meaning only and it applied to both infringement and validity. (At 612H--I.) G

Held, further, in regard to the ground of uncertainty of claiming, that the phrase 'if desired' in integer (j) of claim 1 of the patent did not render the claim uncertain or unclear and that the formulation had been used merely to indicate that the integer was inessential. (At 611A/B--B/C and F.)

Held, further, insofar as the ground of inutility was concerned, that the appellant's evidence and H argument had been based upon a misconception of the promise of the invention and that the ground of inutility had therefore to fail. (At 613C/D--D.)

Held, further, insofar as the ground of lack of novelty was concerned, that providing a copy of a document in which the invention was described to one person hardly amounted to a 'publication', although it showed a willingness to publish. (At 614H.) I

Held, further, on the facts, that the objection of lack of novelty based on the said document failed to pass muster. (At 616G.)

Held, further, that the Court was not satisfied that the Commissioner's assessment on the issue of lack of novelty had been wrong. (At 619F--G.)

Held, further and as to the ground of obviousness, that it was not necessary to deal in any detail with the evidence on the matter because it had not been shown that the trial Judge had erred in his assessment. (At 620F/G--G.) J

1998 (1) SA p607

Held, further, and in relation to the application to amend the appellant's response to pre-trial A questions, that to allow a party, without special circumstances, to resile from an agreement deliberately reached at a pre-trial conference would be to negate the object of Rule 37, which was to limit issues and to curtail the scope of the litigation. If a party elected to limit the ambit of his case, the election was usually binding and there was no reason why the principle should B not be applied in this instance. (At 614B/C--D.) Appeal dismissed.

The decision in the Court of the Commissioner of Patents in Freudenberg and Others v Filta-Matix (Pty) Ltd 1996 BP 391 confirmed.

Cases Considered

Annotations

Reported cases C

A J Shepherd (Edms) Bpk v Santam Versekeringsmaatskappy Bpk 1985 (1) SA 399 (A): dictum at 415B--D applied

B-M Group (Pty) Ltd v Beecham Group Ltd 1980 (4) SA 536 (A): applied

C van der Lely NV v Bamfords Ltd [1963] RPC 61 (HL): dictum at 71 lines 5--19 D discussed

Chemfos Ltd v Plaasfosfaat (Pty) Ltd 1985 (3) SA 106 (A): dictum at 114I--115B applied

Fraser-Johnston v G I Marketing CC 1993 BP 461 (CCP): considered

Freudenberg and Others v Filta-Matix (Pty) Ltd 1996 BP 391 (CCP): confirmed on appeal

G I Marketing CC v Fraser-Johnston 1996 (1) SA 939 (A): considered E

Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A): dictum at 646F--G applied

Letraset Ltd v Helios Ltd 1972 (3) SA 245 (A): dictum at 267A--C applied

Narlis v South African Bank of Athens 1976 (2) SA 573 (A): dictum at 578A--B applied

Netlon (Pty) Ltd and Another v Pacnet (Pty) Ltd 1977 (3) SA 840 (A): dictum at F 861H--862B applied

Price NO v Allied-JBS Building Society 1980 (3) SA 874 (A): compared

Selero (Pty) Ltd and Another v Chauvier and Another 1982 (2) SA 208 (T): applied

Selero (Pty) Ltd and Another v Chauvier and Another 1984 (1) SA 128 (A): applied.

Rules Considered

Rules of Court G

The Uniform Rules of Court, Rule 37: see Erasmus and Barrow The Supreme Court Act 59 of 1959 and the Magistrates' Courts Act 32 of 1944 11th ed (1997) Part A at 70.

Case Information

Appeal from a decision in the Court of the Commissioner of Patents (MacArthur J), reported H at 1996 BP 391. The facts appear from the judgment of Harms JA.

A B S Franklin SC for the appellant.

P Ginsburg SC (with him C J van der Westhuizen) for the respondents.

In addition to the authorities cited in the judgment of the Court, counsel for the parties referred I to the following authorities:

African Guarantee and Indemnity Co Ltd v Moni 1916 AD 524 at 532

Circuit Breaker Industries Ltd v Barker and Nelson (Pty) Ltd 1993 BP 431 (CCP) at 448

Fourie v Morley and Co 1947 (2) SA 218 (N) at 222

Lensvelt & Co v John Swift 1920 WLD 112 at 113 J

1998 (1) SA p608

Lewis Berger and Sons Ltd v Svenska Ojeslageri Aktiebolaget 1959 (3) SA 604 (T) at A 617F--G

Marine Construction and Design Co Ltd v Hansen's Marine Equipment (Pty) Ltd 1972 (2) SA 181 (A)

McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Another; B McDonald's Corporation v Dax Prop CC and Another; McDonald's Corporation v Joburgers Drive-Inn Restaurant (Pty) Ltd and Dax Prop CC 1997 (1) SA 1 (A) at 27F--H

Metro Ontwikkelingsmaatskappy (Edms) Bpk v Allan Maskew (Pty) Ltd 1991 BP 138 (CCP) at 151G-- 152D

Natural Colour Kinematograph Co Ltd (in Liquidation) v Bioschemes Ltd (1915) 32 C RPC 256 at 266

Rand Cold Storage & Supply Co Ltd v Alligianes 1968 (2) SA 122 (T) at 124--5

Roman Roller CC and Another v Speedmark Holdings (Pty) Ltd 1996 (1) SA 405 (A) at D 419B--421F

Rotaque (Pty) Ltd v General Mining and Finance Corporation and Chamber of Mines of South Africa 1986 BP 534 (A) at 538G

Selas Corporation of America v Electric Furnace Co 1983 (1) SA 1043 (A) at 1050A--1052A

Stead v Conradie en Andere 1995 (2) SA 111 (A) at 121B--122I

The Electric Construction Co Ltd v The Imperial Tramways Co Ltd and the British E Thompson-Houston Co Ltd (1900) RPC 537 (CA) at 550

Transvaal and Orange Free State Chamber of Mines v General Electric Co 1967 (2) SA 32 (T) at 63

Transvaal and Orange Free State Chamber of Mines v Hukki 1964 (2) SA 518 (T) at 531

Veasey v Denver Rock Drill and Machinery Co Ltd 1930 AD 241 at 261, 271, 281 F

Bousted Agency at 2

Burrell South African Patent Law and Practice 1st ed at 106, 199; 2nd ed at 214 G

De Villiers and Macintosh The Law of Agency in South Africa at 16

Hoffmann and Zeffertt The South African Law of Evidence 4th ed at 152

Joubert (ed) The Law of South Africa vol 20 para 44 at 87.

Cur adv vult.

Postea (November 27). H

Judgment

Harms JA:

This appeal concerns the validity and infringement of patent 76/5566. The patent, entitled 'A Gas Filter Element', belongs to the first respondent, and the second and third I respondents are registered licensees under the patent by virtue of which they could join as plaintiffs in an infringement action. The appellant, the defendant before the Court of the Commissioner of Patents (MacArthur J), admitted that it had copied the commercial product made and sold by the plaintiffs, but denied infringement of the patent. In addition, it counterclaimed for revocation of the patent on several grounds of alleged invalidity. MacArthur J found in favour of the plaintiffs on all aspects of the case, issued an interdict J

1998 (1) SA p609

Harms JA

and ordered an enquiry into the damages suffered. He granted leave to appeal to this Court. A For the sake of convenience I shall refer to the respondents simply as 'the patentee'.

The patent was granted pursuant to a convention application first filed in Germany on 17 September 1975. That is the effective date of the patent - the date on which its validity has to B be decided. The initial term of the patent was 16 years, which was extended for a further five years. The validity of the patent is to be judged in terms of the repealed Patents Act 37 of 1952. (See s 3(1) of the Patents Act 57 of 1978.) Judgment was given in the Court below on 12 March 1996 and the patent lapsed on 16 September 1996. C

The specification

What follows is a discussion of the more pertinent statements in the specification.

Gas filter elements are employed for separating...