Gentiruco AG v Firestone SA (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Ogilvie Thompson CJ, Trollip JA, Rabie JA, Muller JA and Corbett AJA
• Judgment Date: 22 September 1971
• Citation: 1972 (1) SA 589 (A)
• Court: Appellate Division

Trollip, J.A.:

This appeal concerns the validity and the alleged infringement of a South African Patent, No. 14188, a convention patent, entitled 'Pneumatic Tire and Method of Making Same', granted under the G prior Patents Act, 9 of 1916, on 23rd June, 1952, to General Tire and Rubber Co. of Akron, Ohio, U.S.A., with priority as from 20th November, 1950. That is the date of the application filed for a similar patent in the U.S.A. by the inventors, Pfau, Swart, and Weinstock, employees of General Tire. The latter subsequently became the cessionary of that H patent. It is hereinafter referred to as 'the Weinstock patent'. The South African patent was ceded on 21st June, 1961, to Gentiruco, A. G., a Swiss corporation and subsidiary of General Tire. The term of this patent was extended by order of this Court until 20th November, 1969 - see Firestone South Africa (Pty.) Ltd. and Others v Gentiruco A.G., 1968 (1) SA 611 (AD). On 17th August, 1963, Gentiruco sued Firestone South Africa (Pty.) Ltd. (called herein 'Firestone') in the Court of the Commissioner of Patents for infringing the patent, No. 14188, and for certain consequential relief, including damages. Firestone defended the action, denying infringement and

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damages, and alleging that the patent was invalid on the grounds that the alleged invention lacked subject matter, novelty, and usefulness, and that it and its manner of performance were insufficiently disclosed or explained in the patent's specification. Firestone also counterclaimed for the patent's revocation on the same grounds.

A There were several interlocutory proceedings, including applications to take evidence on commission overseas. The Commissioner's Court granted two such applications by Firestone, and evidence was taken in June, 1967, on commission in England (referred to as 'the English B evidence') and in the U.S.A. in January and February, 1968. The hearing of the action commenced on 4th March, 1968, before MARAIS, J., sitting as the Commissioner in the Patents' Court at Pretoria. After a lengthy trial of about ninety court days, the Commissioner gave judgment in favour of Gentiruco. He held that the patent was valid and dismissed Firestone's counterclaim for its revocation. He granted orders for an C interdict, costs, delivery-up of all infringing materials and articles, and an enquiry into and payment of damages.

Mention is here made of two rulings on the admissibility of evidence given by the Commissioner in the course of the trial, since they featured in the subsequent appeals. Firstly, Gentiruco's counsel D objected to the admission of the English evidence on the ground that the order for discovery of documents, made when the commission was granted, had not been complied with. The Commissioner overruled the objection, holding that, despite such non-compliance, Gentiruco had not been prejudiced. Secondly, the Commissioner ruled from time to time that certain documents and the evidence given on them by Firestone's E witness,. Jackson, were inadmissible. For the purposes of the record and their proper identification, however, those documents were allowed in as exhibits subject to that ruling. Included among the documents were exhs. 67, 78, 69, 70, 71, 121, and TAT 6.

Firestone appealed to the Transvaal Provincial Division of the Supreme F Court ('the T.P.D.'). In addition, it applied on notice of motion in the same Division to have the Commissioner's second group of rulings mentioned above reviewed and to have his judgment and orders set aside and the action remitted to him for the admission and consideration of those documents and evidence. The Commissioner, with the consent of the T.P.D. granted under sec. 25 of the Supreme Court Act, 59 of 1959, as G amended, was cited and joined as a respondent in his capacity as such. Gentiruco opposed the review application, and fairly voluminous affidavits were filed by it and Firestone. By consent the application was set down for hearing at the same time as the appeal.

The appeal and review application were heard by a Full Court of the H T.P.D., HILL, GALGUT, and COLMAN, JJ. First the appeal and then the review was argued. (Gentiruco contested before us that it had agreed to that order of hearing, but nothing turns on that dispute, as will presently appear). On 2nd March, 1970, after a hearing of 38 Court days, Firestone's appeal was upheld, the Commissioner's orders were set aside and replaced by orders dismissing Gentiruco's action and revoking the patent as being invalid in several respects. In the meantime, during the course of the hearing, the patent had expired on 20th November, 1969. However,

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the order for revocation was suspended for six months to enable Gentiruco to seek such amendments to the patent's specification as it deemed advisable and could obtain.

A During the hearing of the appeal to the Court a quo Gentiruco's counsel applied for the Commissioner's ruling on the admissibility of the English evidence to be reversed and for the evidence to be struck out. The Court a quo eventually granted the application, holding that Gentiruco had been prejudiced by non-compliance with the relevant discovery order. As consequential relief it ordered Firestone to pay all the costs of and incidental to the whole of that issue, mostly on an B attorney and client basis.

During the hearing of the review application before the Court a quo, Firestone, in order to avoid a remittal of the action to the Commissioner for further hearing, confined its argument and prayer for relief to certain of the disputed documents - exhs. 67, 78, 69, 70, 71, C 121, and TAT 6 - and to the recorded evidence relating thereto; in other words, it abandoned its prayer for remittal for further hearing and merely asked that those exhibits and that evidence be held admissible and taken into account in the adjudication of the merits of the case. The Court a quo, dealing with the review application on that D narrow basis, held that they were admissible, but it refused to take them into account. Its reasons were that the evidence was incomplete, the Commissioner's rulings having precluded a full and proper investigation of the exhibits, and to have relied on them might therefore have seriously prejudiced Gentiruco. In the result the Court a quo held that the review application was abortive and dismissed it with costs.

E In regard to costs, the Court a quo ordered Gentiruco to pay the costs of the action, counterclaim, and the U.S.A. commission, except (a) that the costs of only one counsel (three were engaged by Firestone) were allowed in respect of the proceedings before the U.S.A. commission, and (b) that all the costs of the trial and appeal occassioned by the F calling of certain overseas witnesses, Deutsch, Meichsner, Hainbach, and Zutrauen, were to be paid by Firestone.

Gentiruco, with the leave of the Court a quo, appealed to this Court against those parts of the judgment and orders adverse to it. Firestone, without obtaining leave from the Court a quo, cross-appealed against the G orders of the Court a quo dismissing the review application, striking out the English evidence, and those relating to the costs in (a) and (b) mentioned immediately above. Although the Patents Act, 37 of 1952, does not itself provide for any such appeal or cross-appeal they are sanctioned by sec. 21 of the Supreme Court Act (Svenska Oljeslageri Aktiebolaget v Lewis Berger & Sons Ltd., 1960 (2) SA 601 (AD) at p. 606B).

H PRELIMINARY AND COLLATERAL ISSUES.

Prior to the commencement of the hearing in this Court Firestone and Gentiruco each applied on notice of motion to strike the other's appeal off the roll with costs.

Firestone's application, dated 1st December, 1970, was based on the ground that the record for the appeal was not complete in certain

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respects. In this regard Gentiruco's failure to number the lines of the patent's specification and the judgment of the Court a quo, especially after its attention had been drawn to these deficiencies, was deplorable and caused much inconvenience. In addition we referred to the illegibility of the copies of several exhibits in the record. This Court A has always taken a serious view of such deficiencies, especially where, as here, the appellant has been alerted to them. However, by the commencement of the hearing Gentiruco had already remedied one of the deficiencies and had undertaken to furnish legible copies of the relevant exhibits (which was done during the hearing); moreover, the appeal - a massive one - was otherwise ripe for hearing and had been B set down for the whole of the Courts' first term. We consequently decided to refuse Firestone's application, intimating that an appropriate order for the costs of the application would subsequently be incorporated in the Court's order regarding the costs of the whole appeal. In all the circumstances I think that Gentiruco should be C ordered to pay the costs of Firestone's application.

Gentiruco's application, dated 18th November 1970, was based on the ground that Firestone had perempted its right of cross-appealing on the review application or had in effect abandoned that application in the D Court a quo. At the commencement of the hearing this Court informed counsel for the parties that, in addition to argument on Gentiruco's application, we required argument as to whether the proceedings of the Commissioner's Court were reviewable in law and whether, in the absence of any leave to cross-appeal, Firestone's cross-appeal could be entertained by us. We then deferred argument on all these matters, with E counsel's concurrence, until the hearing of Gentiruco's appeal was completed. Having then heard and considered those arguments, we announced that we had reached the following conclusions on them:

A. (1) that Gentiruco's notice...