PLASTICISERS Ltd v WILLIAM R STEWART & SONS (HACKLEMAKERS) Ltd
| Jurisdiction | Scotland |
| Judgment Date | 29 June 1972 |
| Docket Number | No. 36. |
| Date | 29 June 1972 |
| Court | Court of Session (Inner House - First Division) |
FIRST DIVISION.
Lord Avonside.
PatentInfringementInterdictRespondents' proof not completedRespondents intimating willingness to submit to interdict in limited termsWhether petitioners entitled to general interdict.
The proprietors of a patent presented a petition for interdict of an alleged infringement of it by the respondents' manufacture and supply of certain machines, the gravamen of the allegation (which the respondents denied) relating to the rollers of the machines, an example of which was lodged as No. 173 of process. The prayer of the petition craved interdict against the manufacture or supply by the respondents generally of any article consisting of or incorporating any of the patented inventions, and specifically of any machine having a roller substantially the same as No. 173 of process.
In the course of a proof the petitioners led the evidence of the inventor and two expert witnesses, and closed their case. The respondents' first witness was their managing director, who stated in the course of his evidence that they did not intend to produce or use any more rollers of the type of No. 173 of process, and that all future machines would have rollers of a type exemplified by No. 174 of process. The Lord Ordinary having indicated that, in view of the record and the state of the evidence led for the petitioners, he was not prepared to consider anything said about No. 174, the proof was adjourned. The respondents subsequently intimated that, to avoid the expense of continuing with the proof, they would not object to an interdict appropriate to the manufacture of machines with rollers like No. 173 of process. After a hearing as to the form of the interdict, the Lord Ordinary pronounced an interlocutor, which did not bear to be of consent, granting interdict in terms of the prayer. He did not deal with the parties' pleas relating to infringement.
In a reclaiming motion the respondents contended that the interdict should have been limited to the specific case of machines with rollers like No. 173 of process, and that the Lord Ordinary had erred in granting a general interdict when they had not completed their proof and had not conceded infringement.
Held that the Lord Ordinary was entitled in the circumstances to grant interdict in general terms, in respect that it must be inferred from the course of the procedure that he had been invited by the respondents to pronounce interdict against them as if, or on the assumption that, there had been an infringement in the case of machines with rollers like No. 173 of process, and that it is settled practice that, where even one out of several alleged infringements is admitted or proved, a petitioner is entitled, apart from special circumstances, to a general interdict.
Montgomerie-Fleming's Trustees v. Kennedy, 1912 S.C. 1307, distinguished.
PatentCertificate of contested validityAttack on validity abandoned during proofValidity not fully explored in evidence or argumentPropriety of granting certificateTitle of reclaimer to challenge grant of certificatePatents Act, 1949 (12, 13 and 14 Geo. VI, cap. 87), sec. 64 (1).
Sec. 64 of the Patents Act, 1949, enacts:"(1) If in any proceedings before the court the validity of any claim of a specification is contested, and that claim is found by the court to be valid, the court may certify that the validity of that claim was contested in those proceedings."
In a petition by the proprietors of a patent for interdict against alleged infringement the respondents, inter alia, attacked the validity of the patent. In the course of a proof the petitioners led the whole of their evidence, which comprised that of the inventor and two expert witnesses. The inventor was cross-examined as to validity, but, the respondents having intimated that they abandoned their attack on this point, the experts were not. During the examination of the respondents' first witness their counsel intimated their willingness to submit to interdict in certain terms, and the proof proceeded no further. The Lord Ordinary, having pronounced interdict, granted also a certificate of contested validity, stating in his opinion that "the attack by the respondents, which was directed against all claims of patent, was developed to a substantial extent," and that there was enough evidence before him to enable him to make up his mind on the point. In a reclaiming motion against his interlocutor the respondents contended that he had erred in granting the certificate, when the question of validity had not been fully explored in evidence or argued out. In supporting their motion they did not lay the notes of evidence before the Court. The petitioners contended, inter alia, that the respondents had no title in an appeal to question the granting of such a certificate.
Held that, in the absence of the evidence, there was no material before the Court to justify holding that the Lord Ordinary was wrong in granting the certificate, which must accordingly stand.
Opinions reserved on the question of title.
InterdictPatentInfringementForm of interdict"Directly or indirectly""Assisting" any person to infringeProhibition against advertising.
In a reclaiming motion against the granting of a general interdict against the infringement of a patent the reclaimers criticised,inter alia, the inclusion in the interdict of the words "directly or indirectly," on the ground that "indirectly" was too vague in the context of a patent action; "assisting any person to infringe," on the ground that "assisting" was ambiguous and could apply to persons lawfully supplying ingredients to an infringer; and "advertising," on the ground that advertising by itself could not constitute infringement.
Held that the words were rightly included in the interdict.
ExpensesPatentInfringementPetition for interdictAward as between agent and client in Outer House.
Circumstances in which expenses in the Outer House were awarded as between agent and client against the unsuccessful respondents in a petition for interdict against infringement of a patent.
Plasticisers Limited, a company incorporated under the Companies Acts and having its registered office in England, and proprietors of letters patent dated 2nd December 1963 and numbered 1,073,741, presented a petition in the Court of Session for suspension and interdict against (first) William Stewart & Sons (Hacklemakers) Ltd. and (second) Melville Plastics Engineering (Scotland) Ltd., both companies incorporated under the Companies Acts and having their registered offices in Scotland.1 The prayer of the petition, as amended on 30th November 1971,2 craved the Court "to interdict, prohibit and discharge the respondents and each of them by themselves or by others acting under their authority from directly or indirectly infringing or causing, procuring or assisting any person to infringe letters patent dated 2nd December 1963 and numbered 1,073,741 during the continuance of the said letters patent, by putting in practice or using or by making, manufacturing, advertising, displaying, offering for sale, vending, supplying, delivering, disposing of or using any article of which the whole or part consists of or incorporates the inventions or any of them forming the subjects of said letters patent and described and claimed in the specification relative thereto without the consent, licence or agreement of the petitioners; and, in particular, without prejudice to the foregoing generality, from making, manufacturing, advertising, displaying, offering for sale, vending, supplying, delivering, disposing of or using the machine described as Stewart's Mechanical Fibrillation Production Machine or Stewart's Fibrillator
having or including a drum or roller having pins disposed over the surface thereof in rows in a manner the same or substantially the same as on the drums or rollers manufactured by the first respondents and supplied by them to British Papers Ltd. in September 1971."The petitioners averred, inter alia:(Art. 2) "The petitioners are proprietors of letters patent dated 2nd December 1963 and numbered 1,073,741 There will be produced a certified print of the specification relative to said letters patent, which is held as here repeated brevitatis causa and founded upon. The said letters are valid and subsisting." (Art. 3) "The respondents have infringed, and in any event have threatened to and intend to infringe, said letters patent. It is believed and averred that the respondents have entered into an arrangement for the manufacturing and marketing of fibrillation machines, under which such machines are to be manufactured by them jointly, and are to be marketed by them jointly or at any rate individually. Since the early part of 1970 at latest the first respondents have advertised their intention of manufacturing for sale from about the summer of 1970 a machine variously described by them as Stewart's Mechanical Fibrillator Production Machine and as Stewart's Fibrillator. In particular, representatives of the first respondents at the Carpet Fair in London, held between 2nd and 6th March 1970, issued copies of a pamphlet to persons attending said Fair interested therein, giving information as to the first respondents' intention On or about 22nd June 1970 the second respondents announced to the trade and press their development, in co-operation with the first respondents, of fibrillation machines and their intention to manufacture and sell such machines. Further, a machine described as a Stewart's Fibrillator was installed at the laboratories of the Scottish Textile Research Association at Dundee Industrial Estate for the purpose of an exhibition to the trade at the beginning of December 1970. Reference is made to a report and photograph thereof which appeared in the Courier and Advertiser newspaper of 3rd December 1970. It is believed and averred that the drum or roller of said machine was of...
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