SHFL Entertainment Inc v TCS John Huxley (Pty) Ltd and Another

JurisdictionSouth Africa
Citation2014 (2) SA 345 (GP)

SHFL Entertainment Inc v TCS John Huxley (Pty) Ltd and Another
2014 (2) SA 345 (GP)

2014 (2) SA p345


Citation

2014 (2) SA 345 (GP)

Case No

2000/5613

Court

North Gauteng High Court, Pretoria

Judge

Kgomo J

Heard

August 22, 2013

Judgment

October 23, 2013

Counsel

P Ginsburg SC (with GD Marriott) for the applicant.
AJ Bester
for the first respondent.
No appearance for the second respondent (the Registrar of Patents).

Flynote : Sleutelwoorde B

Intellectual property — Patent — Amendment — Application for when proceedings for revocation of patent pending — Public interest favouring rectification of patents by way of amendment — Amendment usually granted unless conduct of patentee discouraging it — Conduct militating against granting C of amendment including undue delay causing prejudice or potential prejudice, and mala fides.

Intellectual property — Patent — Amendment — Validity — Unlawful broadening of scope of claim — Amended claim should not include claim not fairly based on original claim — Court need only be satisfied that new part sought D to be introduced, (1) was broadly described in body of original specification; (2) is not inconsistent with body of specification prior to amendment; and (3) does not relate to feature about which body of specification is wholly silent — Similar considerations underlying requirement that amendment may not add new matter.

Headnote : Kopnota

It is a general rule, in applications for an amendment to a patent where E revocation proceedings relating to the patent are pending, that an amendment will usually be permitted unless the conduct of the patentee has been such that the court, in the exercise of its discretion, considers that it should be refused. The discretion is a wide one and the courts are inclined to exercise it in favour of granting the amendment rather than refusing it. The F reason for this is the principle that public interest favours the rectification of patents by way of amendment, thereby ensuring certainty within the field and averting unnecessary clashes. Conduct that might militate against the granting of an application for amendment includes undue and potentially prejudicial delay by the applicant in the moving of the amendment, and mala fides on the applicant's part. (Paragraphs [26], [28] and [85] – [86] at 351C – D, 351F – G and 361D – F.) G

In considering whether the patent specification as amended would include a claim not fairly based on matter disclosed in the specification of the patent prior to amendment, the court must only be satisfied that the new part or integer sought to be introduced into the claim by the amendment, (1) can be said to have been broadly described in the body of the specification prior H to amendment; (2) is not inconsistent with the body of the specification prior to amendment; and (3) does not relate to a feature about which the body of the specification is wholly silent. Similar considerations underlie the requirement that an amendment may not add new matter. (Paragraphs [30.2], [33] and [35] at 351I, 352G – H and 353A – B.)

Cases Considered

Annotations I

Case law

Southern Africa

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

2014 (2) SA p346

Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and Others 2011 BIP 12 (SCA): dictum in para [9] applied A

Bateman Equipment Ltd and Another v Wren Group (Pty) Ltd 2000 (1) SA 649 (SCA): applied

Beecham Group Ltd v Bristol Myers Co 1979 BIP 91 (CP): dictum at 101F – G applied

Bristol-Myers Co v Beecham Group Ltd 1981 (1) SA 399 (T): dictum at 405 – 406 applied B

Deton Engineering (Pty) Ltd and Another v JP McKelvey and Others 1997 BIP 113 (CP): dictum at 123 applied

Ensign-Bickford (South Africa) (Pty) Ltd and Others v AECI Explosives and Chemicals Ltd 1999 (1) SA 70 (SCA): dictum at 77H – 78B applied

Firestone (SA) (Pty) Ltd v Gentiruco AG 1970 BIP 302 (T): dictum at 403F – 404A applied C

Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A) (1971 BIP 58): dictum at 613D – 618G applied

Interfelt Products (Pty) Ltd v Feltex Ltd 1972 (3) SA 335 (T) (1972 BIP 294): dictum at 342H – 343B applied

Power Steel Construction Co (Pty) Ltd v African Batignolles Constructions (Pty) Ltd 1955 (4) SA 215 (A): dictum at 223H applied D

Selero (Pty) Ltd and Another v Chauvier and Another 1984 (1) SA 128 (A): dictum at 130H – 131A applied

Van Staden NO and Another v FirstRand Ltd and Another 2008 (3) SA 530 (T): dictum at 539D applied

Water Renovation (Pty) Ltd v Gold Fields of SA Ltd 1994 (2) SA 588 (A): dictum at 594C – E not followed. E

England

Electrical and Musical Industries Ltd v Lissen [1937] RPC 23: dictum at 39 applied

Mullard Radio Valve Co Ltd v Philco Radio and Television Corporation of Great Britain Ltd and Others (1936) 53 RPC 323 (HL) ([1936] 2 All ER 920): applied F

Re Mond Nickel Co Ltd's Application [1956] RPC 189 (PAT): dictum at 194 applied

Vector Corp v Glatt Air Techniques Inc [2007] EWCA Civ 805 ([2008] RPC 10): G dictum in paras [4] – [5] applied.

Case Information

P Ginsburg SC (with GD Marriott) for the applicant.

AJ Bester for the first respondent.

No appearance for the second respondent (the Registrar of Patents).

H Application for the amendment of a patent. The order is in para [106].

Judgment

Kgomo J:

Introduction

I [1] The applicant is the plaintiff in a pending patent-infringement action against the first 'respondent' (who is the defendant therein) in this court. The applicant ('patentee' or 'applicant', interchangeably) is the registered proprietor of the patent, it being a South African Patent No 2000/5613 (the patent).

[2] In its plea in the infringement action the first respondent denies J infringing the patent and defends the action on the basis, among others,

2014 (2) SA p347

Kgomo J

that the patent relied upon by the applicant is invalid and therefore A unenforceable. The first respondent seeks the revocation of the patent in a counterclaim. The second respondent is not opposing this application. Consequently any future reference in this judgment to 'the respondent' is a reference to the first respondent.

[3] The applicant then launched this application in which it seeks an B amendment of the patent. The respondent raised an apprehension, speculative, though, that apparently the applicant is launching this application for the amendment of the patent in order to pre-empt some of the first respondent's ground which it intends to rely on to ask for the revocation of the patent. C

[4] It is so that, in terms of s 51(9) of the Patents Act 57 of 1978 (as amended) (the Act), since the main-action proceedings are pending before this court, this court has jurisdiction to hear this matter and the applicant has the right to approach this court to apply for the amendment of the patent. D

[5] The first respondent raised several grounds of opposition to the amendment application. It originally contended that:

[5.1]

the patentee has failed to provide full reasons for the amendment;

[5.2]

the amendment sought does not comply with s 51(6) and (7) of the Act; and E

[5.3]

this court should exercise its discretion to refuse the amendment sought, on the basis that the patentee has procrastinated or delayed culpably in bringing the amendment application, and has acted mala fide in seeking to enforce the patent in the motion proceedings. F

[6] Section 51 of the Act appears to be and is arguably the pivotal prescript around which a decision in this matter will revolve. As such it is in my considered view and finding that setting the material portions thereof upfront, ie at the inception stage, the arguments, submissions and contentions from both sides would be understood in their proper perspectives. The general title of this section of the Act is 'Amendment G of specifications'.

[7] Section 51(9) of the Act reads as follows:

'(9) Where any proceedings relating to an application for a patent or a patent are H pending in any court, an application for the amendment of the relevant specification shall be made to that court, which may deal with such application for amendment as it thinks fit but subject to the provisions of subsections (5), (6) and (7), or may stay such pending proceedings and remit such application for amendment to the registrar to be dealt with in accordance with subsections (2), (3) and (4).' I

[8] Subsections (5), (6) and (7) read as follows:

'(5) An amendment of a provisional specification shall be allowed if it is by way of correction, including correction of an obvious mistake, and no amendment of a provisional specification shall be allowed if it would introduce new matter not in substance disclosed in the specification sought to be amended. J

2014 (2) SA p348

Kgomo J

(6) A No amendment of a complete specification which becomes open to public inspection after the publication of the acceptance of the specification in terms of section 42, whether before or after it so becomes open to public inspection, shall be allowed if —

(a)

the effect of the amendment would be to introduce new matter or matter not in substance disclosed in the specification before B amendment; or

(b)

the specification as amended would include any claim not fairly based on matter disclosed in the specification before amendment.

(7) No amendment of a complete specification which has become open for public inspection after the publication of the acceptance of the specification in terms of section 42 shall be allowed if the specification C as amended would include any claim not wholly within the scope of a claim included in the specification before amendment.'

Notice of motion and nature of amendments sought

[9] At the hearing of this matter the...

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