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[2023] ZAGPPHC 46
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Keen and Another v OHMS Innovations (PTY) LTD and Others (2019/05483) [2023] ZAGPPHC 46 (31 January 2023)
REPUBLIC
OF SOUTH AFRICA
IN
THE COURT OF THE COMMISSIONER OF PATENTS
(FOR THE REPUBLIC OF
SOUTH AFRICA , PRETORIA)
Case
No:
Patent
No: 2019/05483
REPORTABLE:
NO
OF
INTEREST TO OTHER JUDGES: NO
REVISED:
31/01/2023
In
the matter between
JOHN
EDWARD KEEN
First applicant
MPC
CHEMICALS (SA) (PTY) LTD
Second applicant
and
OHMS
INNOVATIONS (PTY) LTD
First respondent
SCHALK
STEPHANUS PRINSLOO
Second respondent
JACOBUS
JOHANNES GEYSER
Third respondent
OPEN
HOUSE MANAGEMENT SOLUTIONS (PTY) LTD
Fourth respondent
JUDGEMENT
BOKAKO
AJ
This
judgement is handed down electronically by circulating to the
parties’ representatives by email and by uploading on Case
lines.
INTRODUCTION:
1.
This is an application for relief in terms of section 28 of the
Patents Act, 57 of
1978 (“
the Act”
). This
application has been opposed by the respondents and the parties have
exchanged the required affidavits.
2.
This
section confers jurisdiction on this court to determine disputes
between persons as to their right to or title in a patent.
[1]
It also empowers the court to order that a person execute a deed of
assignment in respect of the patent if the court declares that
a
person has a right to the exclusion of any other person to apply for
a patent. The applicants assert, and the respondents do
not contest,
that this dispute fall within the provisions of section 28(1).
ISSUES
OF DISPUTE
3.
The applicants dispute, in respect of the patent in issue, being
South African
Patent number 2019/05483 entitled ‘METHOD OF
UNDERGROUND MINING’ (“
the patent”
):
3.1.
the respondents’ rights to obtain the patent;
3.2.
the respondents’ rights to make, use, exercise or dispose of
the invention in the patent; or
3.3.
the respondents’ rights to or title in the patent.
4.
The applicants seek various heads of relief in respect of the patent
under section
28, on the basis that the persons cited in the patent
and who brought the application for the patent, did not and do not
have a
right to do so.
5.
The application is mainly concerned with (under s28 of the Act) who
is entitled
to the patent.
6.
The
Applicants seek a declarator that the first respondent holds no
entitlement or right “to obtain”
[2]
South African patent number 2019/05483 entitled “Method of
Underground Mining”;
7.
Applicant seeks an order that the first respondent be ordered to
assign the patent
to the applicant.
8.
They seek to order the Registrar of Patents to carry out certain
directions in
circumstances where the Registrar has not been joined.
9.
As is appropriate under circumstances of relief pursuant to s28 of
the Act, the
applicants seek relief entitling them to claim damages
for past infringement of the patent.
BACKGROUND
10.
The Applicant`s contends that by virtue of the nature of this opposed
application,
the Commissioner is required to adjudicate the
application having the benefit of the applicants’ facts,
evidence and submissions
in support thereof. In that the
Plascon-Evans rule provides that where disputes of fact arise on the
affidavits in motion proceedings,
“
a final order can be
granted only if the facts averred in the applicant’s
affidavits, which have been admitted by the respondent,
together with
the facts alleged by the latter, justify such an order
of or an
independent contractor consulting to the fourth respondent. As
contended by the Applicant, it was stated that the patent
abstract
was found to have been published in the Patent
Journal,
that was issued on 23 December 2020.
11.
On the 21st of August 2018, the first respondent lodged a South
African Provisional
Patent application number 2018/05555 for the
registration of a patent with the South African Patent Office. On the
20th of August
2019, South African Complete Patent application number
2019/05483, claiming priority from 2018/05555 was filed by the first
respondent
with the South African Patent Office; on the 17th March
2020, the registrar of patents accepted the complete specification of
2019/05483
as it complied with formalities as required by the
Patents
Act and
Regulations; the inventors" are named to be Jacobus
Johannes Geyser and Schalk Stephanus Prinsloo (the second and third
respondents).
On the 23
rd
of December 2020 the registrar
granted the patent to the first Respondent. The field of the
invention covered by the patent in
issue is a 'Method of Underground
Mining'.
12.
The Applicant further contends that the invention relates to a method
of total
extraction of ore pillars in underground mining operations.
In years gone by, it was common in the mining industry to not mine
out so called 'ore pillars' or "reef pillars" but to leave
these pillars in situ. Further contending that in his experience
in
the industry, the available methods to stabilise underground
excavations did not adequately address the necessity to stabilise
excavations in underground mining operations.
13.
The Applicant set out to develop a satisfactory method, he recognised
that these
pillars contain the same minerals as the surrounding
stopes that have been mined and the pillars could be mined
to
extract those minerals and increase yield and production. He also
recognised the need for effective and efficient mining methods
by
which these pillars, could safely be replaced with so-called "support
pillars", or "pseudo pillars"
Thus, he determined and developed a novel and unique means to
overcome a foregoing difficulty, through his technique of utilising
pseudo-pillars that do not comprise ore.
The
Applicant further submitted that he devised the invention as
described in the specification of the patent prior to its priority
date and that the first respondent, claiming to be the patentee of
the patent, was never involved in this process; and neither
of second
or third respondents.
14.
The Applicant contends that he is an independent consultant,
contracted as such
to render services from time to time in favour of
the second applicant and in respect of its underground mining
operations. He
has been in this position since August 2018. For
several years, prior to his current appointment with the second
applicant, he
was contracted to perform services at, inter alia,
Cooke Operations, Randfontein Estates, Sibanye Gold through Open
House. The
Applicant have more than 50 years' experience in
underground mining operations and rock engineering. He holds an
Onsetter or Banksman's
certificate, awarded to me in 1972, an
elementary certificate for surveyors, awarded to him in 1976 by the
Union Corporation Limited,
a Mine Overseers Certificate of
Competency, also was awarded in
1980 a certificate for completion of a Rock Mechanics for
Practitioners course, during 1986; a certificate in Rock Mechanics
was
awarded to him in 1986, certificates for the successful
completion of Computer Training Basic Excel and Basic Windows and at
Kinross
Mines Limited.
15.
He was contracted by Open House in terms of a letter of appointment,
drawn up
by the Open House management. He signed and concluded on the
12
th
of August 2012. His appointment was with effect from
13 August 2012. Contending that he was never treated as an employee
at Open
House. The pillar replacement technology that the Applicant
developed was technology that he had begun to develop and had been
known to him since the late 1990's. The Applicant brought his
knowledge and experience in respect of pillar replacement technology
to the contract of appointment with Open House. Open House did not
have any such advanced experience and knowledge; the Applicant
was
consulted to become appointed as Rock Engineer on behalf of Open
House. An interview took place in the first half of 2012,
at a
restaurant near Carnival City. During this interview, the Applicant
contends that he disclosed to Steinmann information that
was of a
confidential nature.
16.
The Applicant further contends that he devised and developed the
pseudo-support
pillar technology. In doing so, he brought his
extensive expertise. He has been employed in various positions as
Geologist, Chief
Geologist and Mineral Resources Manager for the past
25 years
in
East Rand mining operations.
17.
His concept was not pursued because, at the time, it was not
financially viable
as a result of the poor gold price. He had
developed this technology and was known to him only.
18.
It is this technology which the respondents, jointly and severally,
are now
seeking unlawfully to appropriate for themselves and
misrepresent as their invention and intellectual property.
19.
The contents of his draft paper remain confidential and was done by
him in his
personal capacity, contending that the Respondent`s
plagiarised an unauthorised reproduction and presentation of his
work. Submitted
that not only is the Respondent`s application
fraudulent, unlawful, non-compliant with the provisions of the Patent
Act, but it
is also a material misrepresentation of the true state of
affairs relating to the introduction and use of pseudo pillars
support
technology and underground mining.
20.
He is a true and only inventor of the method of underground mining to
which
the first respondent now seeks, fraudulently and falsely, to
lay claim He never authorised any assignment of the invention to the
first respondent and the first respondent was not a person entitled
in terms of the relevant provisions of the South African Patents
act
to apply for the patent.
21.
The respondents each acted and contributed to the unlawful,
misrepresenting
and misleading application under number 2019/05483
that had been made for a South African patent.
22.
In the premises, there exists a clear dispute between the applicants,
on the
one hand, and the respondents on the other hand, in respect of
the right of the latter to have obtained the patent for my invention,
as well as to the respondents' rights to or title in the patent in
issue.
23.
The Respondent contends that the first applicant did not make the
invention
which is the subject of the patent; and even if he did make
a contribution, he did so during the course and scope of his contract
with the fourth respondent, which disentitles him to claim any right
to the patent.
24.
It was also submitted by the Respondent that the first Applicant
concluded a
contract of employment with the fourth respondent in on
the 12
th
of August 2012. Although the first applicant
claims to have been an independent contractor, the contract is
clearly one of employment.
25.
Further directing the court to specific contractual clauses which
refers to
inventions made “
during your employment
”;
and that the clause would be meaningless if in fact the first
applicant was not an employee of the fourth respondent. The
Applicant
worked for the fourth respondent and received remuneration for doing
so. Therefore any inventions made by the first applicant
in the
course and scope of his employment vest in the fourth respondent. It
follows that the rights in any invention made by the
first applicant
at Cooke Shafts vests in the fourth respondent.
26.
Further the contract expressly records that the first Applicant will
be bound
by the fourth Respondent’s policies and procedures,
including the disciplinary code, drug abuse and sexual harassment
policies,
health safety and environmental policy and the quality
policy. This makes it plain that the first applicant was working
subject
to the control and supervision of the fourth respondent at
all times and that he had to comply with the fourth respondent’s
rules in the workplace. Had the first applicant been an independent
contractor he would not have been subject to the control and
direction of the fourth respondent.
27.
Further contending that this invention, the development of a workable
concrete
support pillar that can replace an ore pillar was the result
of the respondents’ extensive research and development. The
detail of that research and development is set out, in detail, in
annexure A7 to the answering affidavit. Such annexures set out
the
tests carried out on samples of differing dimensions, and the
measures of strength of each. According to the respondent, the
first
applicant was using timber as support material for his “pillars”
when they first met him, he only started using
(concrete filled)
geotextile grout bags after consulting with him. Therefore It doesn’t
appear from the evidence that the
first applicant had built a
“pseudo-column”, or a concrete pillar of any description
before 2012.
28.
Respondent contends that the description of the Applicant`s idea as a
“
theory
”; and the reference to what he was
“
developing
” puts beyond doubt that the first
applicant had not actually developed an invention in 2012. The first
applicant plainly
had nothing more than a theory about how a pillar
might work. It wasn’t an inventive theory either: the idea that
one can
stuff a bag with sufficient material to create a support
structure, is hardly ground-breaking.
29.
The Applicant was under a contractual obligation to disclose any
invention that
he made during the course of his contract with the
fourth respondent but he never did.
DISPUTE
OF MATERIAL FACTS
30.
In summary without repeating what is on papers, there are number of
disputes
of facts. In respect of the Applicant`s narration regarding
the said invention: they contend it to be “A method for the
extraction
of ore pillars which method includes the steps of
replacing an ore pillar to be mined with a support pillar in its
stead”.
In that the Applicant started with the theory of a pile
of sand becoming an immovable pillar, configured to a specific
dimension
and density. Knowing of the strength properties of cement
and therefore concrete, he then realised that the strength and
support
resistance capabilities could be drastically increased.
31.
Whilst on the other hand the Respondent`s contentions are that an
“ore
pillar” is a natural pillar containing ore which
previously had to remain in situ to prevent the mining tunnel from
collapsing.
The ore pillar obviously contains valuable ore and it is
therefore desirable, commercially, that it be mined. There is,
however,
a significant safety risk with doing so.
32.
The invention of the patent is concerned with a method of replacing
the ore
pillar with a man-made support pillar. Mining of the ore
pillars is only possible, of course, if the support pillar is as
effective
as the ore pillar in maintaining the structural integrity
of the mining tunnel.
33.
The Applicant`s notion is that this invention is a method for the
extraction
of ore pillars which method includes the steps of
replacing an ore pillar to be mined with a support pillar in its
stead.
34.
The Respondents in its explanation suggests that the support pillar
of the invention
is preferably constructed using a cementitious
mixture which is pumped into woven geotextile bags. The bags hold the
cement in
position until cured. To form the support pillar, the bags
are stacked on top of one another from the mining floor to the
hanging
wall (the roof). The bags are further pressurised to ensure
sufficient contact with the hanging wall and the floor; and to drain
excess water to aid curing, importantly, the pillars are designed
such that the width to height ratio of the pillar is at least
5:1.
35.
The idea of constructing a concrete pillar to function as a support
structure
in an underground mine has been known since at least 1999.
36.
Applicants differs from the Respondent in that in years gone by, it
was common
in the mining industry to not mine out 'ore pillars' or
"reef pillars" (a portion of reef containing ore) but to
leave
these pillars in situ.
Unmined ore pillars are left in place at certain positions in the
underground excavated areas, for the purpose of supporting
underground
working spaces by preventing the collapse of a hanging
wall that arises from excavation in those areas. Underground mining
excavations
represent a significant threat to the health and safety
for all who work there, and it is of cardinal importance
to
stabilise both the stopes and the hanging walls in underground mining
excavations. Further submitted that the available methods
to
stabilise underground excavations did not adequately address the
necessity to stabilise excavations in underground mining operations.
It was then he decided to develop a satisfactory method
37.
The Respondent submitted that the use of concrete-filled bags to
create a concrete
pillar has been known since at least 2010. The
difficulty with using concrete to replace a natural ore pillar stems
from the fact
that natural rock has a strength of 180MPa, whereas
concrete has a strength of 16MPa.
38.
At the heart of the invention of the patent-in-suit is the teaching
that a concrete
pillar with a width to height ratio of at least 5:1,
which is carefully designed, was capable of functioning as a support
pillar
.This is because the support capabilities of a concrete pillar
are a function of the width to height ratio and not (only) material
strength.
39.
According to the Respondent`s submissions the first applicant did not
make the
invention which is the subject of the patent.
40.
The Applicant contends that he devised the invention as described in
the specification
of the patent prior to its priority date; the first
respondent, claiming to be the patentee of the patent, was never
involved in
this process; and neither of second or third respondents,
the alleged inventors of the patent according to "JEK 2",
was
involved in inventing the technology described in the
specification and claims of the patent.
41.
The Respondent argued that if the Applicant had developed an
invention which
was intended to work as a safety device in a mine,
there would be an extensive documentary record showing the
development of the
device and detailing the tests carried out to
determine the safety and effectiveness of the device. At the very
least, the Applicant
should be able to produce a write-up of the
invention, a diagram showing the way the invention was to work,
photographs of rudimentary
tests, correspondence with suppliers of
raw materials, or something to show that the invention existed in
some form, no matter
how rudimentary, before 2012.
42.
The Applicant is adamant in that he developed the technology for
pseudo-support
pillars for underground mining operations. In his
experience, he determined that this means of support (previously not
utilised)
was necessary and he developed and invented it as a result
of researching several, mostly unsuccessful attempts to produce
concrete
mat packs or bags which would take the place of timber mat
packs as support in underground mining operations.
43.
He then started with the theory of a pile of sand becoming an
immovable pillar,
configured to a specific dimension and density.
Knowing of the strength properties of cement and therefore concrete,
he then realised
that the strength and support resistance
capabilities could be drastically increased, which he attended to.
44.
The Respondent is adamant that the Applicant did not adduce any
supporting document
containing a reference to any invention developed
by him before 2012. Whilst the Applicant contends that in 2013, he
prepared revised
his concept paper but
had
not yet published, a paper in respect of the utilisation of
pseudo-pillars as primary and/or secondary support medium when
extracting in-stope
pillars
on Cooke operations, Sibanye Gold. The contents of this draft paper
remain confidential and was done by him in his personal
capacity.
45.
Such was rebutted by the Respondent in that, the Applicant`s
description of
his idea as a “theory”; and the reference
to what he was “developing” puts beyond doubt that the
first
Applicant had not actually developed an invention in 2012. The
first applicant plainly had nothing more than a theory about how
a
pillar might work.
46.
Further contention which is highly disputed by the Respondent is that
of the
Applicant`s claim to have been an independent contractor, the
contract is clearly one of employment.
47.
The Applicant submitted that he was never treated as an employee nor
was, he
considered to be such by Open House. He was not subject to
the same application of wage increases or bonuses and, if any wage
increases
or bonuses were awarded to employees, it was done without
his knowledge.
48.
His remuneration was clearly specified in clause 6 of the agreement
and in the
event that he wished to receive a greater compensation for
his services, he was required to apply for an increase in his
contract
rates.
49.
It was also stated in some contractual clauses that a consultant will
not form
part of Open House's provident fund,
further a consultant, will invoice Open House every month for
services rendered and . will be liable to pay over all legally
required
taxes.
50.
The Respondent made reference to a number of clauses that suggests
that the
Applicant was their employee. In that clause 11 refers to
“during your employment”; clause 12.1 refers to “before
commencement of employment”; clause 12.2 refers to
“pre-employment”; clause 12.3 refers to “a
condition
of employment”; clause 15.1 refers to “by
virtue of your employment with the Company”; clause 15.2 refers
to
“the period of your employment with the Company” and
“to perform your duties as employee of the Company”;
clause 15.3 refers to “during the period of your employment
with the Company” and “on the termination of your
employment with the Company”; clause 16.2 refers to “in
the course of carrying out your duties as employee of the Company”;
clause 17.1 refers to “the date upon which you cease to be an
employee of the Company, for whatever reason”; clause
18 refers
to “from date of termination of your employment with the
company”; clause 21 refers to “after termination
of the
employment relationship with you”; clause 22 refers to the
right to “terminate your employment as consultant
by giving
written notice”; clause 23 is titled “Employee duties”
and refers to “as an employee of the company”
and
thereafter lists the duties of the first applicant; clause 27 refers
to the “decision whether or not to employ you”;
“the
terms on which such employment takes place” and “the
Company reserves the right to terminate your employment.
51.
According to the Respondent, the Applicant only started using
(concrete filled)
geotextile grout bags after consulting with the
Respondent. It doesn’t therefore appear from the evidence that
the first
applicant had built a “pseudo-column”, or a
concrete pillar of any description, before 2012. also the Applicant
does
not refer to any specific width-to-height ratio in his founding
affidavit, or mention that it’s a necessary feature of a
workable concrete support pillar. He did not explain how he invented
the “inventive concept” of the patent; or how he
went
about proving that it was viable.
52.
The respondent’s contrast, have adduced nearly 100 pages of
documentary
evidence detailing the trials that they carried out to
prove that a concrete pillar could function effectively as a
replacement
for an ore pillar provided that the width to height
ratios were correct.
53.
The Applicant also refers to a project at Sappi but provides no
detail whatsoever
in relation to it. Applicant contended and referred
to a declaration made by Mr Evan Cook, the ex-mineral resources
manager at
Gold One Modder East Operations, South Africa, Evan Cook's
declaration is annexed, Evan Cook confirms that he has been employed
in various positions as Geologist, Chief Geologist and Mineral
Resources Manager for the past 25 years
in
East Rand mining operations. The Applicant have known Evan for many
years and that they discussed confidentially, as long ago
as the late
1990's, the utilisation of pillar replacement technology in respect
of a project where Black Reef undermined the SAPPI
paper plant.
54.
In contrast the Respondent avers that the nature of the “pillar
replacement
technology” was employed at Sappi in the late 1990s
is therefore not disclosed. In fact, it’s quite clear that this
was nothing more than an “idea”, which was never proven
to be viable.
ANALYSIS
55.
The dispute of fact will, more often than not, resort under a wide
scope of
issues or the eventual scope will be unclear when matters
are referred for trial. In
Room Hire Co (Pty) Ltd v Jeppe Street
Mansions (Pty) Ltd
1949 (3) SA 1155
(T)
it was stated that
(except in interlocutory matters) it is undesirable to attempt to
settle disputes of fact solely on probabilities
disclosed in
contradictory affidavits as opposed to viva voce evidence. The
tendency of resorting to affidavits has been denounced
ninety years
ago by
Tindall, J in Saperstein v
Venter's Assignee
1929
TPD 14
, P.H. A at [71]
and is still the law. specified issues
with a view to resolving any dispute of fact and to that end may
order any deponent to appear
personally or grant leave for such
deponent or any other person to be subpoenaed to appear and be
examined and cross-examined as
a witness or it may refer the matter
to trial with appropriate directions as to pleadings or definition of
issues, or otherwise.
56.
Harms, Civil Procedure in the Superior Courts, B6.48 Robust
approach
.
President of the Republic of South Africa and Others
v M&G Media Ltd
2012 (2) BCLR 181
(CC);
[2012] JOL 28167
(CC);
2012 (2) SA 50
(CC) at [34] and Hoffmann v Pension Funds Adjudicator
and Others
[2012] 2 All SA 198
(WCC
)
at [23].
Harms, Civil
Procedure in the Superior Courts, B6.49 Dismissal. In confirmation of
the above; seventy years later in
The National Director of Public
Prosecutions v Zuma
[2009] ZASCA 1
;
2009 (2) SA 277
(SCA) Harms, JP ruled at [26] and
[27]
that: Motion proceedings, unless concerned with interim
relief, are all about the resolution of legal issues based on common
cause
facts. Unless the circumstances are special, they, motion
procedures, cannot be used to resolve factual issues because they are
not designed to determine probabilities.
57.
It is well established under the Plascon-Evans rule that where in
motion proceedings
disputes of fact arise on the affidavits, a final
order can be granted only if the facts averred in the applicant's
affidavits,
which have been admitted by the respondent together with
the facts alleged by the latter, justify such order.
58.
The court may not impose an onus on the respondent to prove a
negative. The
rule of evidence, namely that if the facts are
peculiarly within the knowledge of a defendant the plaintiff needs
less evidence
to establish a prima facie case, applies to trials.
59.
In motion proceedings the question of onus does not arise and the
approach set
out in the Plascon Evans-matter governs irrespective of
where the legal or evidential onus lies. Finally, the more serious
the
allegation or its consequences, the stronger must be the evidence
before a court before it will find the allegation established.
A
person claiming relief acts at his peril in proceeding by motion
action; he cannot by electing to proceed by motion deprive his
opponent of a number of procedural advantages. The flip side is that
the respondent may not sabotage the proceedings that is established
law for expeditious and cost-efficient resolve of civil cases. A real
dispute of fact can arise in one or other of the following
ways:
Where the court is satisfied that the party who purports to raise the
dispute has in his affidavit, seriously and unambiguously,
addressed
the facts said to be disputed; The respondent may deny one or more of
the material allegations made on the applicant’s
behalf and
produce evidence to the contrary, or apply for the leading of oral
evidence of witnesses who are not presently available
or who, though
averse to making an affidavit, would give evidence if subpoenaed; The
respondent may admit the applicant’s
affidavit evidence but
allege other facts, which the applicant disputes; The respondent,
while conceding that he has no knowledge
of one or more material
facts stated by the applicant, may deny them and put the applicant to
the proof, and himself giving or
proposing to give evidence to show
that the applicant and his deponents are biased and untruthful or
otherwise unreliable, or that
certain facts upon which the applicant
relies to prove the main facts, are untrue. The absence of positive
evidence directly contradicting
an applicant’s main
allegations, does not render a case such as this free of a real
dispute of fact. In other words, a respondent
is entitled to seek a
reference to oral evidence or to trial under circumstances where it
is unable to produce affidavits containing
positive allegations that
prima facie establishes a defence. This requires of the deponent to
set out the import of the evidence
which the respondent proposes to
elicit (by way of cross-examination of the applicants’
deponents or other persons he proposes
to subpoena) and explain why
the evidence is not available. Importantly, the deponent must satisfy
the court that there are reasonable
grounds for believing that the
defence would be established. If the respondent`s version is
farfetched and untenable there is not
a dispute. A bare denial is not
a dispute.
60.
Mouton v Park 2000 Development 11 (Pty) Ltd
2019 (6) SA 105
(WCC)
summarised the above aptly: At the same time, it is equally well
established that where a dispute of fact is not a ‘real,
genuine or bona fide’ one the Court will be justified in
ignoring it and may proceed to find on the applicant’s version
thereof. So too, where the respondent’s version is clearly or
palpably far-fetched or untenable, the Court may take a robust
approach and decide the matter on the basis of the applicant’s
version. As always, in evaluating the contents of the affidavits
the
Court must have due regard for the treatment which the respondent has
given to the averments under reply. In this respect a
respondent has
a duty to engage with the facts which are put up by the applicant,
and to deal with them fully and comprehensively.
Any ‘skimpiness’
and improbabilities in his version may thus count against him.
61.
It is also well-established that when a party deposes to an affidavit
(be it
an answering or a founding affidavit) he commits himself to
its contents, and only in exceptional circumstances will he be
permitted
to disavow them.” Both parties committed to the facts
in their affidavits and it is clear that there is some sort of an
invention
and the question is who is the inventor. There are
substantial disputes of facts.
62.
A real genuine or bona fide dispute of fact must exist. In exercising
my discretion,
I am required to consider the alleged facts in dispute
and see whether real disputes of fact exist which cannot be
satisfactorily
determined without the aid of oral evidence. The law
pertaining to how courts should approach matters where disputes of
fact are
raised has been settled by our authorities. I am mindful
that vague and insubstantial allegations are insufficient to raise
the
kind of dispute that should be referred for oral evidence.
63.
in my view, oral evidence is one or other form envisaged by the rule
should
be allowed if there are reasonable grounds for doubting the
correctness of the allegations concerned. In reaching the decision in
this regard facts peculiarly within the knowledge of the applicant
which for that reason cannot be directly contradicted or refuted
by
the opposite party, are to be carefully scrutinized.
64.
As alluded to above, a dispute regarding any inventions made by the
first applicant
in the course and scope of his employment vest in the
fourth respondent and that this invention was the result of the
respondents’
extensive research and development.
65.
I am of the view that reasonable grounds have been proffered by
both parties
doubting and disputing the originality and functionality
of this invention. In my opinion, an application on this basis is not
sufficient to resolve this matter on papers. It is not clear though
that the Applicant had anticipated a material dispute of fact
that
could not be resolved on the papers, this court does not find the
actions of the Applicant to be inappropriate, in seeking
an order by
way of notice of motion. It is important to note though that the
dispute of facts arose or was highlighted once the
answering
affidavit in the above case was filed.
66.
This court re-iterates its position in that motion proceedings are
about the
resolution of legal issues based on common cause facts;
they cannot be used to resolve factual issues because they are not
designed
to determine probabilities. Where in motion proceedings
disputes of fact arise on the affidavits, a final order can be
granted
only if the facts averred in the applicant’s
affidavits, which have been admitted by the respondent, together with
the facts
alleged by the latter, justify such order. In this case
facts are totally different with veracity of material disputes.
67.
it is trite that motion proceedings are not appropriate for
resolution. material
disputes of facts. Should a factual dispute
arise which is incapable of being resolved in the papers there is a
risk of dismissal
of the application should the court, in the
exercise of its discretion, not refer the matter for trial nor direct
that oral evidence
be heard on specified issues.
68.
A court will exercise a discretion to dismiss the application if the
applicant
ought to have foreseen, or in fact did foresee, when
launching his application, that a serious dispute of fact, incapable
of resolution
on the papers was bound to develop. I do not think that
the Applicant predicted when launching this application that a
serious
dispute of fact was bound to develop.
69.
Mr Marius Steinmann`s testimony is necessary as he would be able to
confirm
that at that time as an employee of Open House, he
interviewed the Applicant for this appointment and this interview
took place
in the first half of 2012, at a restaurant near Carnival
City and that during this interview, the Applicant disclosed to
Steinmann
information that was of a confidential nature, there is
also an affirmation by Steinmann where he confirms that the pillar
replacement
technology was the technology that the Applicant brought
to the 'party' when he joined Open House as a consultant in August
2012.
Further, Steinmann also confirms that the pillar replacement
technology that the Applicant had developed was never assigned to
Open House.
70.
Mr Evan Cook`s declaration is also crucial in that the Applicant have
known
him for many years and that they discussed confidentially, as
long ago as the late 1990's, the utilisation of pillar replacement
technology in respect of a project where Black Reef undermined the
SAPPI paper plant. Mr Evan Cook has been employed in various
positions as Geologist, Chief Geologist and Mineral Resources Manager
for the past 25 years
in
East Rand mining operations. It was also submitted that their
confidential discussions at that time, revolved around the removal
of
the reef pillars under the industrial plant, and that he indicated
his proposal and concept that such pillars can be removed
if they are
replaced with equal or better strength support, packed sufficiently
to exceed the maximum stresses this is precisely
what the
pseudo-support pillar concepts contained in the patent in issue,
covers.
71.
On the issue as to whether the Respondent in an inventor, it is
evident that
this fact remains disputed and can only be resolved by
virtue of oral evidence. I deem it necessary to highlight the
discrepancies
as they stand on the papers on the said issue: The
Applicant`s version is that his concept was not pursued because, at
the time,
it was not financially viable as a result of the poor gold
price; and he was taken aback and upset by the unacceptable,
unprofessional
and unethical behaviour of Open House in seeking to
appropriate for itself his invention and obtain patent protection.
72.
The Respondent`s contends that they have proven that the support
pillars could
work as replacements for ore pillars, the first
respondent filed a patent for the invention as it was entitled to do.
Alleging
that whatever theories the first applicant may have had
about “pseudo-pillars” does not make him an inventor of
the
patent and does not confer any right on him to apply for a
patent. The respondents made the invention because, on their
evidence,
they are the ones who figured out to make it work.
73.
There are these variables and the court cannot conclusively draw an
inference
based on the different interpretations which appear both in
the founding and the answering affidavits.
74.
The same approach was adopted in Transnet Limited v ERF 152927 Cape
Town (Pty)
Ltd and others, 6 where the Supreme Court of Appeal Court
quoting with approval what was said in Room Hire CO (Pty) Ltd v Jeppe
Street Mansions (Pty) Ltd, 7 had the following to say: “It is
certainly proper that an applicant should commence proceedings
by
motion with knowledge of the probabilities of a protracted enquiry
into disputed facts not capable of easy ascertainment, but
in the
hope of inducing the Court to apply Rule 9 to what is essentially the
subject of an ordinary trial action. As stated in
the SAFA matter
there are three ways in which a dispute facts of may manifest itself
in motion proceedings and those may be summarized
as follows: 1) the
respondent in the answering affidavit denies one or more of the
material allegations made by the applicant in
the founding affidavit
and produce evidence to the contrary. (2) the respondent admits the
allegations made in applicant’s
affidavit but allege other
facts which the applicant disputes. (3) the respondent, while
conceding that he has no knowledge of
one or more material facts
stated by the applicant, may deny them and put the applicant to the
proof.
75.
In the present instance it should be noted that, SATAWU contends that
there
exist dispute of facts without having properly placed before
the Court its answering affidavit. It is important to note that from
the above authorities it is not every dispute of fact that would
warrant a dismissal of the claim or a referra
l
to oral evidence. It is only a material dispute of fact that
would warrant the dismissal of a claim instituted by way of motion
proceedings.
76.
Therefore, this court finds that this application cannot properly be
decided
on the affidavits, therefore it stands to be referred for
oral evidence . This court will direct that oral evidence be heard on
a number of issues with a view to resolving such dispute of facts.
There is not a single fact that is not in dispute between the
parties
before court, apart from the fact that there is an invention.
77.
The test for applied in determining disputes of fact is trite. It is
the test
set out in Plascon-Evans Paints Ltd v Van Riebeek Paints
(Pty) Ltd. The Plascon-Evans Rule postulates that in deciding
disputes
of fact in application proceedings, those disputes should be
adjudicated on the basis of the facts averred in the founding
affidavits
which have been admitted by the respondent together with
the facts alleged by the respondent, whether or not the latter has
been
admitted by the applicant unless a denial by the respondent is
not such as to raise a real genuine bona fide dispute of fact or
a
statement in the respondent’s affidavit is so far-fetched or
clearly untenable that the court is justified in rejecting
it merely
on the papers. This approach remains the same irrespective of the
question which party bears the onus of proof in any
particular case.
78.
In terms of section 28 of the Patents Act, 57 of 1978 (the Act). The
section
confers jurisdiction on this court to determine disputes
between persons as to their right to or title in a patent. It also
empowers
the court to order that a person execute a deed of
assignment in respect of the patent if the court declares that a
person has
a right to the exclusion of any other person to apply for
a patent.
79.
At this point, even the contractual terms remain in dispute. The
Respondent`s
contention that the Applicant failed to disclose during
his time of his employment with the Respondent regarding his
invention
its still a contentious issue. In the pleadings before me,
I am unable to determine the originality of such an invention. I have
not been placed in a position to determine the knowledge of the
Respondents at the time the Applicant was contracted with them
and
also the purpose thereof of why the Applicant`s services were sought,
if the Respondent already had a solution in mind.
80.
The Applicant avers that in his confidential deliberations with
Rossouw, he
reminded him of a project which had been successfully
carried out under his guidance years before in 1992 or 1993, and
where considerable
ore reserves had been removed from the underground
mining shafts. This was achieved through utilisation of a support
system which
had been specifically designed to safely and effectively
replace the removed pillars within the stopes. Mr Rossouw testimony
is
necessary. His evidence should be tested, particularly in
cross-examination. He would be required to clarify what was relayed
to
the applicant, and explain his responses.
81.
Often in motion proceedings the court is required to take a robust
common-sense
approach to a dispute and should not hesitate to decide
an issue on an affidavit merely because it is difficult to do so.
However,
this approach must be adopted with caution. The court should
not be tempted to settle disputes on fact solely on the probabilities
emerging from the affidavits without giving due consideration to the
advantages of oral evidence. There should be reasonable grounds
for
doubting the correctness of the allegations raised. I also find it
appropriate to highlight what the court stated in Buffalo
Freight
Systems (Pty) Ltd v Crestleigh Trading (Pty) Ltd
2011 (1) SA 8
SCA at
14 D-E: “In deciding disputed facts in application proceedings
a court should always be cautious about deciding probabilities
in the
face of conflict of facts in the affidavits.
82.
However the courts have recognised reasons to take stronger line to
avoid injustice.
In Khumalo v Director General Cooperation and
Development and Others
[1990] ZASCA 118
;
1991 (1) SA 158
A at 167 G to 168 A, where the
court cited with approval the conclusions of Kumleben J in Moosa
Brothers and Sons (Pty) Ltd v Rajah
1975(4) SA 187 D at 93 E-H
regarding the approach adopted in applications for referral to oral
evidence in terms of Rule 6(5)(g).
The passage is worthy of
repetition: “(a) As a matter of interpretation there is nothing
in the language of Rule 6(5)(g)
which restricts the discretionary
power of the court to order the cross-examination of a deponent to
cases in which a dispute of
fact is shown to exist.
Conclusion
83.
In light of the disputes raised, it is not possible to determine as
to whether
the respondent has convincing evidence showing who in fact
developed the inventive concept of the patent. More importantly, a
mere
speculative suggestion that the Applicant did not conceptualise
his inventive idea or theory is not sufficient. One needs to
establish
more than a mere prima facie case or an arguable
possibility. A mere speculative suggestion is not enough. More,
because it is
the applicant who seeks to satisfy the court of the
prospect, it must establish that these reasonable grounds in
accordance with
the rules of motion proceedings which generally
speaking, require that it must do so in its founding papers.
84.
This court is alive to the fact that this matter has been on the roll
since
the beginning of 2022, however it feels that should I proceed
to adjudicate this matter on the papers before court, it would render
a grave injustice to both the parties affected.
85.
The Legal Practitioner for the Applicant ought to have foreseen that
material
disputes of fact would arise in this matter already at the
drafting of its papers and would have rather brought the matter as
one
of action rather than as motion proceedings.
86.
The court finds itself between a rock and a hard place. There are
simply too
many glaring facts in dispute between the parties for the
court to be able to determine any of the issue in dispute judicially.
This court is required to adjudicate matters in a fair and full
manner. Often courts have to decide where the truth lies between
two
conflicting versions. In this instance, where the said disputes of
fact exist, it would not be possible to make a determination
on the
matter without subjecting the parties to cross-examination. A court
may, of course, after cross-examination still be unable
to decide
where the truth lies. However, that possibility does not entitle the
court to decide the matter without allowing cross-examination.
87.
In the premises I make the following order:
1.
This matter is referred to trial for oral evidence.
2.
Costs of the application are reserved.
BOKAKO
AJ
ACTING
JUDGE OF THE HIGH COURT
GAUTENG
DIVISION, PRETORIA
Date
of Hearing:
16 August 2022
Date
of Judgement :
31 January 2023
Appearances
For
the Applicant :
Advocate Anthonie P. Jansen van Vuuren
Instructed
by:
DT Du Preez Attorneys
law@dtdp.co.za
For
respondent:
Advocate Gavin Marriott and Pieter Moll
Instructed
by:
Richards Attorneys
Legal1@riclaw.co.za
[1]
The
section also empowers this court to determine disputes between
persons as to their rightto obtain a patent for or to make,
use,
exercise or dispose of an invention. In this case, however,
the patent has already been obtained; and the dispute
is therefore
concerned with the rights to that patent.
[2]
The patent has already been obtained, however.