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[2015] ZASCA 126
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Strix Limited v Nu-World Industries (20453/2014) [2015] ZASCA 126; 2016 (1) SA 387 (SCA); 2015 BIP 89 (SCA) (22 September 2015)
Links to summary
THE
SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT
Case
No: 20453/2014
DATE:
22 SEPTEMBER 2015
Reportable
In
the matter between:
STRIX
LIMITED
..............................................................................................................
APPELLANT
And
NU-WORLD
INDUSTRIES (PTY)
LTD
......................................................................
RESPONDENT
Neutral
Citation:
Strix Limited v Nu-World
Industries
(20453/2014)
[2015] ZASCA
126
(22 September 2015).
Coram:
Navsa, Saldulker, Swain and Dambuza JJA and
Van der Merwe AJA
Heard:
17 August 2015
Delivered:
22 September 2015
Summary:
Patent – alleged infringement of
patent relating to overheat control in kettle comprised of multiple
sensors spaced apart
– interpretation of patent –
allegedly infringing kettles falling within scope of claims –
defence of invalidity
of patent – lack of novelty alleged –
defence available even where revocation of patent not sought –
allegedly
infringing kettles not embodied in prior publication -
obviousness expressly abandoned in court a quo, but raised on appeal
–
would be prejudicial to appellant to allow at this late stage
– held that patent had been infringed.
ORDER
On
appeal from
: Court of the Commissioner
of Patents (Preller J sitting as court of first instance).
The
following order is made:
1.
The appeal is upheld with costs including the costs of two counsel.
2.
The order in the court below is set aside and the following is
substituted:
‘
(a)
the defendant is interdicted from infringing claim 1 of South African
Patent 95/4779 (“the patent”) by making, using,
disposing, offering to dispose of, or importing liquid heating
vessels containing Liang Ji LJ-06A, Liang Ji LJ-06 or Sunlight
SLD-105A IL thermally sensitive overheat controls or any other
thermally sensitive overheat controls as claimed in claim 1 of the
patent;
(b)
the defendant is ordered to deliver up any product infringing the
patent and any article or product of which an infringing product
forms an inseparable part;
(c)
as to damages:
(i)
an enquiry is ordered as to the damages suffered by the plaintiff as
a result of the infringement of the patent by the defendant,
alternatively as to the amount of a reasonable royalty as
contemplated in
s 65(6)
of the
Patents Act, 1978
and payment of the
amount found to be due to it;
(ii)
in the event of the parties being unable to reach agreement as to the
further pleadings to be filed, discovery, inspection
or other matters
of procedure relating to the enquiry, any of the parties may make
application to the court for directions in regard
thereto;
(d)
the defendant is ordered to pay the plaintiff’s costs,
including the costs of two counsel to the extent that such were
employed and including the qualifying and attendance fees of the
expert witness Richard Moorhouse.’
JUDGMENT
Navsa
JA (Saldulker, Swain and Dambuza JJA and Van der Merwe AJA
concurring):
[1]
This appeal is directed against a finding by the Court of the
Commissioner of Patents (Preller J), that claim 1 of the patent
in
suit was not novel
[1]
and that
in any event the import and sale of kettles by the respondent,
Nu-World Industries (Pty) Ltd, did not infringe appellant’s
patent 95/4779. I shall, for convenience, refer to the appellant and
respondent as Strix and Nu-World, respectively.
[2]
The patent is entitled ‘Liquid heating vessel’. Claim 1
which is central to the dispute reads as follows:
‘
1.
A liquid heating vessel comprising: a liquid receiving container; an
electrical heating element provided on or in thermal contact
with the
base of said container; a thermally sensitive overheat control
arranged to operate in the event of said element overheating
so as to
interrupt or reduce the supply of electrical energy to the element;
said thermally sensitive overheat control comprising
at least two
thermally responsive sensors arranged in good thermal contact with,
and at spaced apart locations on, the base of
the container or the
element, said sensors individually being operable, in the event only
of said element overheating when the
vessel boils dry or is switched
on dry so as to interrupt or reduce the supply of electrical energy
to the element.’
[3]
The following are the agreed 8 integers in respect of claim 1:
‘
(a)
a liquid heating vessel comprising:
(b)
a liquid receiving container;
(c)
an electrical heating element provided on or in thermal contact with
the base of said container;
(d)
a thermally sensitive overheat control arranged to operate in the
event of said element overheating so as to interrupt or reduce
the
supply of electrical energy to the element;
(e)
said thermally sensitive overheat control comprising at least two
thermally responsive sensors;
(f)
arranged in good thermal contact with;
(g)
and at spaced apart locations on, the base of the container or the
element;
(h)
said sensors individually being operable, in the event only of said
element overheating when the vessel boils dry or is switched
on dry
so as to interrupt or reduce the supply of electrical energy to the
element.’
[4]
At the priority date in 1994, thermally sensitive kettle controls
were not novel. It is undisputed that integers (a)-(d) were
part of
the prior art. Integers (e) to (g) are critical in the determination
of the present dispute. At the priority date of the
patent in suit it
was common to have electrical kettles with a thermally sensitive
overheat protection switch in thermal contact
with the heating
element of the kettle which, when activated, would interrupt the
supply of electrical energy to the element. That
would happen for
example when the vessel boiled dry or if it was switched on without
any liquid in the vessel. A thermally sensitive
switch in the base of
the kettle was also in use at the priority date of the patent in
suit. The actuator switch could either reset
automatically upon the
vessel cooling down or it might have consisted of a once-off switch
which had to be replaced after serving
its purpose, namely, turning
off the electrical supply. In this judgment, for practical purposes,
we use the words ‘sensor’
and ‘control’
interchangeably.
[5]
The relevant part of the patent specification of the patent in suit
states that the problem with existing switch controls of
the type
located in the base of the kettle as described above is that the
temperature of the container base of the kettle is sensed
at a
single
location. In the body of the patent specification an example is
provided of how, because of a
single
thermally sensitive
switch, problems could arise, namely:
‘
The
problem with existing controls of this type is that the temperature
of the container base, and thus indirectly the temperature
of the
element, is sensed effectively only at a single location on the base.
Thus if, for example, the vessel is accidentally placed
on a work
surface so that its base slopes, it is possible that as the vessel
boils dry one part of the bottom of the container
may still be
covered by water, but another be uncovered. This part of the base
will therefore overheat first, and if the overheat
protecting means
is arranged under the part of the vessel base still covered with
water, severe overheating of the element may
occur locally which is
potentially very dangerous.’
[6]
The body of the patent specification goes on to state the following:
‘
The
invention from one aspect seeks to provide an improved vessel of the
above type. From a first aspect therefore, the invention
provides a
liquid heating vessel comprising: a liquid receiving container; an
electrical heating element provided on or in thermal
contact with the
base of said container, a thermally sensitive overheat control
arranged to operate in the event of said element
overheating so as to
interrupt or reduce the supply of electrical energy to the element,
said thermally sensitive overheat control
comprising at least two
thermally responsive sensors arranged in good thermal contact with,
and
at spaced apart locations
on, the base of the container or the element, said sensors
individually being operable, in the event of said element overheating
so as to interrupt or reduce the supply of electrical energy to the
element.
Thus
in accordance with the invention, at least two thermally responsive
sensors are provided in close thermal contact with the
base of the
vessel container, which will allow the temperature of the base and
element to be detected accurately at at least two
spaced apart
locations so that should the base or element overheat locally, at
least one of the sensors may sense this quickly
and operate to
interrupt or reduce the power supply to the element, for example
opening a set of electrical contacts remote from
the sensor through
suitable actuating means.’ (My emphasis.)
[7]
Simply put, if regard is had to claim 1 and the constituent integers
set out above, and indeed to Strix’s contentions
in the court
below and before us, the novelty claimed is that there are two
thermally sensitive switches, spaced apart, on the
base of the
kettle, which provide an additional safety measure against
overheating. The body of the patent specification states
that the
additional switch is a measure against the danger of overheating that
could be caused by the kettle’s base being
placed unevenly (at
a slope) and the one switch not sensing that a part of the base is
uncovered by water which is potentially
hazardous. In short, it was
submitted on behalf of Strix that the patent related to an improved
kettle with a novel feature of
spaced apart sensors serving the
aforesaid purpose.
[8]
Nu-World, a South African company, makes, imports and sells, amongst
others, electrical kettles. The litigation leading up to
the present
appeal commenced with Strix, a company registered in the Isle of Man,
instituting an action against Nu-World in the
court below seeking an
order in the following terms:
‘
(a)
an interdict restraining the defendant from infringing claim 1 of
South African patent 95/4779 by making, using, disposing,
offering to
dispose of, or importing liquid heating vessels containing Liang Ji
LJ-06A, Liang Ji LJ-06, Sunlight SLD-105A IL or
Jia Tai KSD688-A
thermally sensitive overheat controls;
(b)
an order for the delivery up of any product infringing South African
patent 95/4779 and any article or product of which an infringing
product forms an inseparable part;
(c)
as to damages
(i)
an enquiry as to the damages suffered by the plaintiff as a result of
the infringement of the South African patent 95/4779 by
the
defendant, alternatively as to the amount of a reasonable royalty as
contemplated in
s 65(6)
of the
Patents Act, 1978
and payment of the
amount found to be due to it;
(ii)
an order directing that, in the event of an enquiry in terms of
sub-paragraph (i) being ordered and the parties being unable
to reach
agreement as to the further pleadings to be filed, discovery,
inspection or other matters of procedure relating to the
enquiry, any
of the parties may make application to the court for directions in
regard thereto; and
(d)
costs of suit.’
[9]
By agreement between the parties, merits and quantum were separated
and the trial proceeded to determine whether Strix was entitled
to
interdictory relief. It was agreed that each of the kettles listed in
the preceding paragraph had two thermally sensitive overheat
controls. The question was whether a Nu-World kettle with any one of
these controls constituted an infringement of claim 1 of the
patent
in suit. After hearing the evidence, including those of experts,
Preller J reasoned and concluded as set out immediately
hereafter.
First, the learned judge rightly took into account that he was
addressing novelty and therefore considered prior art.
He held that
at the priority date the idea of two thermally sensitive switches in
an electrical kettle was well known. In this
regard Preller J took
into account Strix’s own prior patent registered in the United
Kingdom during 1985 on which Nu-World
relied. He went on to find that
at the priority date the idea of more than one overheat control in
kettles was not novel. He concluded
that everything contained in
integers (e), (f) and (h) was part of the prior art. Turning to
integer (g) Preller J held that it
did not necessarily form part of
the prior art. Having regard to that integer and the patent
specification he took the view that,
to serve the stated purpose of
providing a safety feature in the event of the kettle being tilted,
the two thermally responsive
sensors must be at substantially spaced
apart locations on the base of the kettle. He went on to say:
‘
It
is difficult to imagine such a person not immediately saying that to
provide for such an eventuality the two overheat controls
must be
mounted as far apart as possible. It is an obvious solution for the
problem and requires hardly any ingenuity. It follows
then that the
invention did not add anything new to the prior state of the art and
that the defendant’s defence on this basis
must be upheld.’
From
the above, and as will be explained in due course, it appears that
the learned judge did not keep the distinction between lack
of
novelty (ie anticipation) and obviousness in mind.
[2]
He went on to find that the thermally sensitive controls in each of
the allegedly offending kettles were too close together to
serve the
stated purpose and thus concluded that there was no infringement of
the patent in suit. Consequently, the court below
dismissed Strix’s
claim with costs. It is against that order and the aforementioned
conclusions that the present appeal is
directed.
[10]
Before us Strix contended, firstly, that in the absence of a claim in
reconvention by Nu-World for revocation of the patent,
a defence that
the patent in suit was not novel at the priority date was unavailable
to the latter. Furthermore, so it was contended
on behalf of Strix,
the defence was, in any event, not specifically pleaded and could
thus not be relied upon. It is common cause
that there was no
counterclaim for the revocation of the patent based on its invalidity
for lack of novelty. Nu-World is adamant
that this defence was
nevertheless pertinently raised. In this regard Nu-World points out
that in response to Strix’s claim
that the patent was at all
relevant times valid and in full force and effect and was being
infringed by Nu-World, the plea denied
the validity and
enforceability of the patent in suit as well as any infringement.
According to Nu-World the defence was specifically
predicated and
raised in its summary of expert opinion, with reference to prior art.
Moreover, so Nu-World asserted, it was made
clear in the opening
address by counsel on its behalf and referred to and dealt with
extensively in the
viva voce
evidence and in argument at the conclusion of the case.
[11]
Secondly, it was submitted on behalf of Strix that even if the
defence of invalidity was available to Nu-World, the latter
had not
shown that the allegedly infringing kettles were simply embodiments
of kettles described in a publication prior to the
patent in suit.
Lastly, Strix submitted that the court below erred in its restrictive
interpretation of the words ‘at spaced
apart locations’
as contained in integer (g), and the consequent finding that the
overheat controls were not arranged in
such a manner.
[12]
At the outset it is necessary to consider whether, in the absence of
a claim for revocation of the patent in suit the defence
of
invalidity on the basis of lack of novelty was available to Nu-World.
Section 65(4) of the Patents Act 57 of 1978 (the Act)
provides:
‘
In
any proceedings for infringement the defendant may counterclaim for
the revocation of the patent and, by way of defence, rely
upon any
ground on which the patent may be revoked’
Section
61 sets out the grounds of revocation of patents, including that the
invention is not patentable in terms of section 25
(s 61(1)
(c)
).
Section
25 bears the title ‘Patentable inventions’, and section
25(5) reads as follows:
‘
An
invention shall be deemed to be new if it does not form part of the
state of the art immediately before the priority date of
any claim to
that invention.’
The
relevant part of section 25(10) reads as follows:
‘
.
. . [A]n invention shall be deemed
to
involve an inventive step if it is not obvious to a person skilled in
the art, having regard to any matter which forms, immediately
before
the priority date of the invention, part of the state of the art . .
. .’
[13]
A defence based on the invalidity of a patent on the statutorily
recognised ground of lack of novelty is competent without
a claim for
revocation. That appears to be clear from the wording of s 65(4) read
with the other sections of the Act referred to
above. In
Clipsal
Australia (Pty) Ltd & another v Trust Electrical Wholesalers &
another
[2007] ZASCA 24
; 2009 (3) (SA) 292 (SCA) at 295B-C para
15, Harms ADP, in dealing with almost identical wording contained in
corresponding sections
of the
Designs Act 195 of 1993
, said the
following:
‘
The
defendant in infringement proceedings may counterclaim for the
revocation of the design registration or, by way of defence,
rely on
any ground on which the registration may be revoked
(s 35(5)).
In
this case, the respondents chose the second option, namely to rely by
way of defence on the grounds that the design was neither
new nor
original as required by
s 14(1)
(a)
,
which are grounds for revocation under
section 31(1)
(c)
.
In addition they denied infringement, alleging that their products do
not embody either of the two designs and differ substantially
from
them.’
The
consequence of not applying for revocation was spelt out In
Thomas
Grant v Winkelhaak Mines Limited
1985 BP 143 (CP) at 152 where
Nestadt J said the following:
‘
As
Mr Osborn pointed out, although the
Patents Act allows
for invalidity
to be raised as a defence, it does not require that a counterclaim
for revocation be coupled therewith
(Section 65(4)
of Act 57 of
1978). If invalidity is raised only by way of a defence it has no
consequence beyond the parties to the action. Even
if a defence of
invalidity is successful, thereby defeating an infringement action,
the patent remains on the register and the
proprietor can sue others
on the patent.’
See
also
Roman Roller CC & another v
Speedmark Holdings (Pty) Ltd
[1995]
ZASCA 78
;
1996 (1) SA 405
(A), at 412H-J and
Electro-Medical
Corporation (Pty) Ltd v Madame et Monsieur Franchise (Pty) Ltd &
others
1996 BP 539 (CP), at 543B-544C.
This disposes of the first point raised on behalf of Strix as
recorded at the beginning of para
10 above.
[14]
The next question then, is whether, in the present case the defence
of invalidity on the basis of lack of novelty of the patent
was
indeed pleaded and whether novelty was indeed an issue in the trial.
At the outset it needs to be acknowledged that Nu-World’s
defence to Strix’s particulars of claim was pleaded in general
and vague terms and for reasons that will become apparent,
perhaps
designedly so. Nu-World’s plea is a general denial of the
plaintiff’s claim that the patent in suit is valid
and
enforceable and that there was in fact an infringement. However, in a
supplementary expert notice in terms of Uniform Rule
36(9)
(b)
there is an express and relatively
detailed reference by Nu-World to prior art and the lack of novelty
of the patent in suit is
pertinently raised. Novelty as an issue was
also distinctly raised by counsel on behalf of Nu-World during his
opening address
and the trial was conducted on the basis that it was
an important issue in the case. That disposes of the second
submission on
behalf of Strix.
[15]
That leads us to the next question, namely, whether the patent was
invalid on the basis of lack of novelty. In this regard,
it is
necessary to be reminded that the onus of proving that the patent in
suit was invalid rested on Nu-World.
[3]
The prior art relied on by Nu-World is that embodied in Strix’s
own expired 1985 United Kingdom patent (GB 2181 598 A). The
1985
patent relates to thermally sensitive controls for electric heaters
for containers such as kettles. The body of the patent
specification
records that thermally sensitive controls for heaters, which include
a switch meant to interrupt power supply in
the event of overheating,
are well-known. It further indicates that the heaters to which the
patent relates are either immersion
heaters or ‘similarly
constructed heaters mounted externally to the containers in good
thermal contact with a wall thereof,
for example being brazed to the
underside of the container base’. The 1985 patent then goes on
to describe the use of such
controls principally in immersion
heaters. The problem sought to be overcome, so that patent
specification asserted, was that in
the event of failure of the one
switch the power supply would not be interrupted leading to a
potentially hazardous situation.
That patent sought to introduce an
effective back-up protection in the form of a second improved
thermally sensitive switch as
a further safety measure in the event
of the failure of the first. The features described in this and the
preceding paragraph would
encompass integers (a) to (e) of the patent
in suit.
[16]
The patent in suit acknowledged prior art which encompassed integers
(a) to (d). It is clear that integers (e) to (h) are claimed
in
combination. The problem for Nu-World is that the 1985 patent does
not describe two thermally responsive sensors arranged in
good
thermal contact with the base of the container. Although the 1985
patent describes two thermally responsive sensors, one being
a
bimetallic actuator or sensor (item 11 on Figure 1 of the 1985
patent) and the other a push-rod or thermal fuse (item 27), neither
of these sensors are in good thermal contact with the base of the
container and it is only the bimetallic sensor that is in good
thermal contact with the element (item 5). The bimetallic sensor is
located adjacent to where the ‘hot return’ of the
element
is brazed to the heater (element) head but the thermal fuse is placed
a distance apart from the ‘hot return’
and is in poor
thermal contact with the element. lntegers (e) and (f) in combination
are not embodied in the 1985 patent. Indeed,
integer (f) is
conspicuously absent. Furthermore, and critically, the 1985 patent
does not describe two thermally responsive sensors
spaced apart on
the base of the container. Thus, critically, integer (g) also does
not form part of the prior art. The problem
that the patent in suit
sought to address would occur when one part of the kettle base is
uncovered with water and would overheat
at that spot whilst another
part of the base would be covered. The effect of the second control
would be that the control at the
part that overheats because it is
dry would activate and cut off the electricity supply. The 1985
patent dealt in the main with
immersion heaters, in which an element
to which the thermally sensitive controls were linked would protrude
into the container
vessel from a side wall of the kettle container,
and perhaps extend to its base. The juxtaposition of the two controls
in order
to deal with the safety problem that might ensue in the
event of the kettle being tilted was not considered or addressed.
Simply
put, the additional safety feature in the form of two
thermally sensitive controls
spaced
apart
and in good thermal contact with
the base to deal with the problem that might present itself, when the
kettle is tilted, does not
occur in the prior art.
[17]
It thus appears to me to be clear that the combination of integers
(e) to (g) were not embodied in prior art and constituted
a novel
safety feature as described above.
[18]
It is true, as noted by the court below, that the patent
specification provided as follows:
‘
.
. . to obtain a good response, the sensors should be spaced apart by
a
substantial
distance.’
(My emphasis.)
And
further, later in the specification:
‘
As
stated above, preferably only two actuators are provided, most
preferably spaced apart by substantially 180°.’
‘
Substantial’
is defined in the
Shorter Oxford
Dictionary,
amongst others, as follows:
‘
5.
Of an act, measure, etc.: having force or effect, effective,
thorough.’
The
adjective is relative to subject matter. In this particular instance
distances have to be considered in relation to the relatively
limited
extent of the base of the kettle. It also has to be borne in mind
that the controls being spaced apart has the purpose
described above,
namely, to provide a safety measure in the event of the kettle being
tilted. In short, as will be demonstrated
below, an 8 millimetre
distance between the controls was ‘significant’ enough
for the controls to be effective.
[19]
I now turn to deal with Preller J’s conclusion that there was
no infringement of the patent in suit because the controls
in the
allegedly offending kettles were too close together to be effective
as a safety feature. In coming to the aforesaid conclusion,
he
disregarded the tests conducted on the kettles in question by
Nu-World’s own witness, Mr Mark Wheeler, who completed a
report
setting out the nature and the results of the tests which he had
conducted on the kettles in question. The report was compiled
to
demonstrate that the controls in each of the kettles, which were the
subject of the litigation, were substantially ineffective
to serve
the purpose spelt out in the patent specification, namely, to act as
a safety feature in the event of the kettle being
tilted. Ironically,
the test results proved the controls to be relatively effective.
[20]
In three of the kettles, namely Sunlight SLD-105A IL, Liang Ji LJ-06
and Liang Ji LJ-06A the distances between the sensors
were 8
millimetres, 8 millimetres and 12 millimetres respectively. In Jia
Tai KSD688-A there was a bridge between the sensors and
the distance
was zero millimetres.
[21]
Mr Wheeler’s evidence during the trial that the further apart
the sensors the more effective they would be to serve the
purpose
referred to in the specification and in the preceding paragraph is
undoubtedly correct. His evidence that a Strix kettle
with a 37
millimetre distance between the sensors was effective to serve the
purpose is also uncontested. Despite Mr Wheeler’s
report
stating that the controls in the Nu-World kettles were ineffective,
and despite his protestations when he was testifying
that this was
indeed so he conceded, with reference to the tests he conducted, that
a Nu-World kettle with an 8 millimetre distance
between the sensors,
when filled with 120 millilitres of water would have one of the
sensors activated when the kettle was tilted
at 19 degrees. The
totality of tests conducted and reported on by Mr Wheeler show that
in the Nu-World kettles with an 8 millimetre
distance between the
sensors one would be activated when filled with volumes of water
varying from 40 to 120 millilitres, when
tilted at angles ranging
from two to 19 degrees. The Nu-World kettle with sensors spaced 12
millimetres apart would obviously be
even more effective.
[22]
It must be borne in mind that the patent in suit did not claim
perfection but claimed that when the kettle was placed on a
slope a
second spaced-apart actuator which was uncovered by water as a result
of it being tilted would serve as a safety feature
and be activated
and cut off the electricity supply. The Jia Tai KSD688-A kettle with
a bridge between the two sensors and which
effectively, at the most,
had a distance of 0,5 millimetres between the two sensors would be
ineffective and would not serve the
purpose stated in the patent
specification. In respect of that kettle the infringement would not
have been proved.
[23]
It is necessary to record that a defence by Nu-World based on a
mediation agreement concluded upon direction of the Supreme
People’s
Court in China was specifically abandoned before us.
[24]
In respect of the remaining kettles, Preller J disregarded the
evidence and erred in concluding that in relation to them there
was
no infringement.
[25]
One further aspect requires brief attention. During the trial,
counsel on behalf of Nu-World was emphatic that he was not relying
on
obviousness as a defence. In an exchange in the court below the
following was said by counsel on behalf of Nu-World:
‘
The
Defendant is not relying on obviousness, but it is relying on old art
and as I made it clear when I examined, and it ought to
have been
clear, I rely for the purposes of the Defendant’s case on the
85 patent.’
Before
us the same counsel insisted that he could rely on obviousness as a
ground of challenge to the validity of the patent and
was not
abandoning it. He took the view that it was a point of law which
could be decided on the evidence that was adduced. I disagree.
The
defence of obviousness was never pleaded. The case was never
conducted on the basis that it was contemplated as a defence.
More
importantly, that defence was expressly disavowed on behalf of
Nu-World. The evidence required to establish a defence of obviousness
is of a different nature to that required to establish a defence in
relation to a defence of a lack of novelty. In this regard
see
Burrel’s
op cit at 4.12.2 and
Veasey
v Denver Rock Drill and Machinery Co Ltd
1930 AD 243
at 281
et
seq
..
This is not a case where allowing the defence of obviousness to be
raised before us would not be prejudicial.
[4]
I do not intend to deal with this aspect any further.
[26]
Following on the aforesaid conclusions the following order is made:
1.
The appeal is upheld with costs including the costs of two counsel.
2.
The order in the court below is set aside and the following is
substituted:
‘
(a)
the defendant is interdicted from infringing claim 1 of South African
Patent 95/4779 (“the patent”) by making, using,
disposing, offering to dispose of, or importing liquid heating
vessels containing Liang Ji LJ-06A, Liang Ji LJ-06 or Sunlight
SLD-105A IL thermally sensitive overheat controls or any other
thermally sensitive overheat controls as claimed in claim 1 of the
patent;
(b)
the defendant is ordered to deliver up any product infringing the
patent and any article or product of which an infringing product
forms an inseparable part;
(c)
as to damages:
(i)
an enquiry is ordered as to the damages suffered by the plaintiff as
a result of the infringement of the patent by the defendant,
alternatively as to the amount of a reasonable royalty as
contemplated in
s 65(6)
of the
Patents Act, 1978
and payment of the
amount found to be due to it;
(ii)
in the event of the parties being unable to reach agreement as to the
further pleadings to be filed, discovery, inspection
or other matters
of procedure relating to the enquiry, any of the parties may make
application to the court for directions in regard
thereto;
(d)
the defendant is ordered to pay the plaintiff’s costs,
including the costs of two counsel to the extent that such were
employed and including the qualifying and attendance fees of the
expert witness Richard Moorhouse.’
M
S Navsa
Judge
of Appeal
APPEARANCES:
FOR
APPELLANT: B du Plessis SC (with him C Cothill)
Instructed
by: Spoor and Fisher, Pretoria
Matsepes
Attorneys, Bloemfontein
FOR
RESPONDENTS: A J Bester SC
Instructed
by: Bouwers Inc., Pretoria
Phatshoane
Henney Inc., Bloemfontein
[1]
Although,
as will become apparent later, the court below appears to have
confused novelty and obviousness.
[2]
In
this regard see T D Burrel
Burrel’s
South
African Patent and Design
Law
3ed (1999) para 4.12.2 at 169-170 and the authorities there cited.
[3]
See
Gentiruco
AG v Firestone SA (Pty) Ltd
1972 (1) SA 589
(A) at 629D-F.
[4]
See
Alexkor
Ltd & another v Richtersveld Community & others
[2003] ZACC 18
;
2004 (5) SA 460
(CC) paras 43–44.