Marine 3 Technologies Holdings (Pty) Ltd v Afrigroup Investments (Pty) Ltd and Another

• Jurisdiction: South Africa
• Citation: 2015 (2) SA 387 (SCA)

Marine 3 Technologies Holdings (Pty) Ltd v Afrigroup Investments (Pty) Ltd and Another
2015 (2) SA 387 (SCA)

2015 (2) SA p387

Citation	2015 (2) SA 387 (SCA)
Case No	18/14; [2014] ZASCA 208
Court	Supreme Court of Appeal
Judge	Ponnan JA, Swain JA, Mathopo AJA, Mocumie AJA and Gorven AJA
Heard	November 25, 2014
Judgment	December 1, 2014
Counsel	AJ Bester SC for the appellant.; No appearance for the respondents.

Flynote : Sleutelwoorde B

Intellectual property — Patent — Revocation — Inutility — Proof — Purposive C construction of claims in patent required — Claims to be construed in light in which they would be understood in particular art or science — Perverse attempts to show theoretical failure not supporting plea of non-utility — Argument that invention impossible to make via process set out in claim contradicted by fact that product being commercially manufactured and sold — Application for revocation dismissed on appeal — Patents Act 57 of 1978, s 61(1)(d). D

Headnote : Kopnota

The respondents (Afrigroup) applied for the revocation of Marine 3's patent for a surface active solution (or surfactant) [*] composed of a base liquid with various chemicals 'dispersed' or 'dissolved' in it. Afrigroup was a former distributor of Marine 3's product range but litigation ensued when the E relationship between them soured. The court of the Commissioner of Patents found in favour of Afrigroup that the patent should be revoked for inutility, but granted leave to appeal to the Supreme Court of Appeal. Pursuant to an agreement concluded between the parties Afrigroup undertook not to oppose the appeal, noting that 'there was no reason why the Supreme Court of Appeal . . . should not find in favour of' Marine 3. F

In support of its original application for revocation Afrigroup argued that the claimed invention could not be performed or lead to the results set out in the specification. To bolster its case it led the evidence of two expert witnesses who testified that it was not possible to create the composition by dissolving the components in the base liquid in the claimed proportions by using the method claimed. In arriving at its conclusion of inutility the court G a quo laid particular emphasis on the words 'dispersed' and 'dissolved' in the claim specification.

In upholding the appeal the SCA made the following points:

•

Inutility was a question of fact that depended on the proper construction of the claims in the patent.

•

An invention was useful if it effectively produced the result aimed at or H promised by the specification, properly construed.

•

Patent claims had to be construed in accordance with the description of the problem to be overcome and the methodology set out in the body of the specification.

•

If a claim involved the use of a class of chemical compounds as ingredients, it would be invalid if any of these did not work. I

•

In inutility cases the claims had to be construed with regard to the way in which it would appeal to the addressee who had to work with such things.

2015 (2) SA p388

•

A Perverse attempts to show failure, or the choice of unusual combinations which would not succeed, were generally not sufficient to support a plea of non-utility.

•

Here the use of the words 'dispersed' and 'dissolved' pointed to the achievement of the claimed features by a process of manufacture, and had to be interpreted as they would be understood by someone with qualifications B in chemistry or analytical chemistry.

•

The court a quo had, by restricting the meaning of 'dissolve' and 'disperse', disregarded not only the above rule, but also the body of the specification and the evidence of Marine 3's experts.

•

The evidence of Afrigroup's experts, that the surfactant of claim 1 could not be manufactured, was not based on an actual attempt to do so but was C purely theoretical.

•

This was contrary to the factual evidence that the surfactant of claim 1 had been in commercial manufacture and sold, and that Afrigroup had infringed the patent by manufacturing its own surfactant.

•

Accordingly the court a quo's order of revocation had to be set aside.

(Paragraphs [10], [12] – [16] and [19] – [20] at 391D – I, 392C – 394H and D 395G – 396C.)

Cases Considered

Annotations

Case law

Southern Africa E

Aktiebolaget Hässle and Another v Triomed (Pty) Ltd 2003 (1) SA 155 (SCA) ([2002] 4 All SA 138): dictum in para [9] applied

Coflexip SA v Schlumberger Logelco Inc 2001 BIP 1 (CP): dictum at 30H – I applied

Filta-Matix (Pty) Ltd v Freudenberg and Others 1998 (1) SA 606 (SCA) ([1998] 1 All SA 239): dictum at 612I applied F

Frank & Hirsch (Pty) Ltd v Rodi & Wienenberger Aktiengesellschaft 1960 (3) SA 747 (A): dictum at 756E – F applied

Fundstrust (Pty) Ltd (in Liquidation) v Van Deventer 1997 (1) SA 710 (A) ([1997] 1 All SA 644): dictum at 726H – 727B applied

Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A) (1971 BIP 58): referred to G

Miller v Boxes and Shooks (Pty) Ltd 1945 AD 561: dictum at 576 applied

Monsanto Co v MDB Animal Health (Pty) Ltd (formerly MD Biologics CC) 2001 (2) SA 887 (SCA): dictum in para [8] applied

Rembrandt Fabrikante en Handelaars (Edms) Bpk v Gulf Oil Corporation 1963 (3) SA 341 (A): dictum at 348H applied

Roman Roller CC and Another v Speedmark Holdings (Pty) Ltd 1996 (1) SA 405 (A): dictum at 419D – E applied H

The Gap Inc v Salt of the Earth Creations (Pty) Ltd and Others 2012 (5) SA 259 (SCA): dictum in para [2] applied

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

England I

Turner v Bowman [1925] 42 RPC 29: dictum at 39 applied.

Canada

AstraZeneca Canada Inc and Others v Apotex Inc and Another 2014 FC 638: J dictum in para [83] applied.

2015 (2) SA p389

Statutes Considered

Statutes A

The Patents Act 57 of 1978, s 61(1)(d): see Juta's Statutes of South Africa 2013/14 vol 2 at 2-181.

Case Information

AJ Bester SC for the appellant.

No appearance for the respondents.

An appeal against a decision of the Gauteng Division, Pretoria (Tuchten J). B

Order

(1)

The appeal is upheld.

(2)

The order of the court below in the revocation application is set aside and substituted with the following order: 'The application for the revocation of South African Patent No 2008/10778 is dismissed.' C

Judgment

Ponnan JA (Swain JA, Mathopo AJA, Mocumie AJA and Gorven AJA concurring):

[1] The appellant, Marine 3 Technologies Holdings (Pty) Ltd (Marine 3), D is the patentee of South African Patent No 2008/10778 (the patent), issued on 30 June 2010 for a 'surface active ingredient composition'. Marine 3 applied for patents for the invention in various jurisdictions internationally, including examining jurisdictions such as the USA, the European Community (EC), Australia and New Zealand. [1] At the date of E the hearing in the court below, patents for the invention had issued in Australia and New Zealand, but the applications in the USA and EC were still pending. The claims in the Australian and New Zealand issued patents are the same as those in the patent in suit.

[2] The second respondent, Hendrik du Toit (Du Toit), was previously associated with Marine 3, having approached it to finance the exploitation F of the invention. On 14 November 2008 Du Toit, his alter ego Afri-Group Investments (Pty) Ltd (Afrigroup) (the first respondent) and Marine 3 entered into a written distribution agreement in terms of which Afrigroup became the sole distributor of Marine 3's product range. However, towards the end of 2009 or early in 2010 the relationship between the parties soured, apparently because Du Toit wanted to market products of Marine 3's competitors as well. G

[3] The relationship between the parties deteriorated to such an extent that litigation, which included an Anton Piller application and an application for interim relief to interdict an alleged infringement of the patent, was launched by Marine 3 against the respondents. Those H applications were opposed by Afrigroup who, in turn, applied for the revocation of the patent.

[4] All three applications served before the Court of the Commissioner of Patents (per Tuchten J), who found for the respondents with costs in all three but granted leave to Marine 3 to appeal to this court. I

[5] Subsequent to the grant of leave to appeal, the parties concluded an agreement that, inter alia, recorded:

2015 (2) SA p390

Ponnan JA (Swain JA, Mathopo AJA, Mocumie AJA and Gorven AJA concurring)

'3.3

A This is a judgment in the public interest that cannot be abandoned by Afrigroup.

3.4

In the light of Marine 3's appeal to the Supreme Court of Appeal in respect of the revocation of the relevant patent:

3.4.1

Afrigroup herewith agrees that there is no reason why the Supreme Court of Appeal, after due consideration, should B not find in favour of the appellant.

3.4.2

Afrigroup will take no further steps nor file any documents in opposition to Marine 3's appeal to the Supreme Court of Appeal and Marine 3 will not hold Afrigroup or any other party liable for any costs in this regard, whether...