In American Cyanamid Co v Ethicom Ltd  AC , the court developed a set of guidelines to establish whether an applicant’s case merited the granting of . Where an interlocutory injunction is sought, the balance of convenience will be the overriding consideration. P applied for an interlocutory injunction to prevent D . Parliamentary Archives,HL/PO/JU/4/3/ HOUSE OF LORDS. AMERICAN CYANAMID. N LIMITED. Lord DiplockViscount DilhorneLord Cross of.
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Injunction – Interlocutory – Jurisdiction to grant – Principles on which interlocutory injunction to be granted – No need to be satisfied that permanent injunction probable at trial – Protection of parties – Balance of convenience – Criteria – Rule identical in patent cases. The plaintiffs, an American company, owned a patent covering certain sterile absorbable surgical sutures. The defendants, also an American company, manufactured in the United States and were about to launch on the British market a suture which the plaintiffs claimed infringed their patent.
The defendants contested its validity on divers grounds and also contended that it did not cover their product. In an action for an injunction the plaintiffs applied for an interlocutory injunction which was granted by the judge at first instance with the usual undertaking in damages by the plaintiffs.
The Court of Appeal reversed his decision on the ground that no prima facie case of infringement had been made out. On the plaintiffs’ appeal: Held, allowing the appeal, 1 that in all cases, including patent cases, the court must determine the matter on a balance of convenience, there being no amercian that it could not do so unless first satisfied that, if ammerican case went to trial on no other evidence than that available at the hearing of the application, the plaintiff would be entitled to a permanent injunction in the terms of the interlocutory injunction sought; where there was a doubt as to the parties’ respective remedies in damages being adequate to compensate them for loss occasioned by any restraint imposed on them, it would be prudent to preserve the status quo post, pp.
Vosper cyanamiv 2 Q. Decision of the Court of Appeal  F. The following cases are referred to in their Lordships’ opinions: Bart Note  1 W. Osborne  1 W. Pacaya Rubber and Produce Co.
Luck 27 Ch. Duke of Buccleugh 12 L.
The following additional cases were cited in argument: Corona Lamp Works Ltd. Royle 36 Ch. Payne 12 Ch.
Boots Pure Drug Co. Henry 15 Ch. Wthicon Colour Kinematograph Co. Gaumont-British Picture Corporation Ltd. Wrotham Park Estate Co. The respondents counterclaimed for revocation of the patent. The Court of Appeal therefore discharged the interlocutory injunction ordered by Graham J. The court refrained from expressing any view on any of the other issues raised. The facts stated in the opinion of Lord Diplock cyanamif as follows: This interlocutory appeal concerned a patent for the use as absorbable surgical sutures of filaments made of a particular kind of chain polymer known as “a poly-hydroxyacetic ester” “PHAE”.
These were sutures of a kind that disintegrated and were absorbed by the human body once they had served their purpose.
The appellants “Cyanamid”an American company. Its priority date in the United Kingdom was October ethicoj, At that date the absorbable sutures in use were of natural origin. They were made from animal tissues popularly known as catgut.
The respondents “Ethicon”a subsidiary of another American company, were the dominant suppliers of catgut sutures in the United Kingdom market. Cyanamid introduced their patented product in The chemical substance of which it was made was a homopolymer, i.
Glycolide was the radical of glycolic cyaanmid, which was another name for hydroxyacetic acid. By this product had succeeded in capturing some 15 amefican cent. Faced with this competition to catgut, Ethicon, who supplied 80 per cent. The chemical substance of which it was made was not a homopolymer but a copolymer, i. Cyanamid wthicon that XLG infringed their patent, of which the principal claim was: The invention claimed by Cyanamid thus consisted of the discovery of a new use for a known substance.
On March 5,Cyanamid started a quia timet action against Cyanxmid for an injunction to restrain the threatened infringement of their patent by supplying sutures made of XLG to vv in the United Kingdom. On the same day they gave notice of cyanamiv for an interlocutory injunction.
Voluminous affidavits and exhibits were filed on behalf of each party. The hearing of the motion before Graham J. On July 30,he granted an interlocutory injunction upon ethicno usual undertaking in damages by Cyanamid. Ethicon appealed to the Court of Appeal. The hearing there took eight days.
On February 5,the Court of Appeal gave judgment. They allowed the appeal and discharged the judge’s order. Leave to appeal from that decision was granted by the House of Lords. The main issue in this appeal is whether PHAE, construed in the patent in suit, covers more than the homopolymer. In holding that that had not been established prima facie the Court of Appeal was wrong and the trial judge was right in holding that what was meant by comonomer in the patent contemplated copolymers.
For the purpose of deciding whether the plaintiffs have established a prima facie case the House must decide whether on the evidence the construction for which they contend is the one. On construction the case put forward by the respondents is barely arguable. The Court of Appeal wrongly construed the claim and specification and its decision was based on a misapprehension of the evidence.
It erred in holding that the appellants had not established that prima facie the patent in suit would be infringed by the marketing of the respondents’ amerifan. The onus is not on the plaintiffs to establish a prima facie case of infringement before an interlocutory injunction case can be granted.
Here, if anything, it means that the plaintiff has more than a 50 per cent. The general rule that one must establish a probability, or a strong probability, is not correct.
One must look at the whole case to see whether there is a question to be tried and, if there is, then look at the balance of convenience between the parties, bearing in mind that there is good reason why the status quo should be preserved. The relevant authorities are Preston v. The shackles of Harman Pictures N. The appellants adopt the principle laid down in Hubbard v. There is logical reason or justification why the percentages there set out do not equally apply to plaintiffs and defendants.
If there is a serious issue to be tried it will lead to a just result and mini-trials on the application for an interlocutory injunction would be prevented. It is undesirable to adopt any other course. When the court is considering whether or not to grant an interlocutory injunction the right approach is to ask first whether or not there is a serious question to be tried. When the court has some idea of the strength of the respective cases that is a factor to be taken into consideration.
In the present case Graham J. The differing decisions of the Court of Appeal and the judge on the merits show that there is a serious question to be tried. On the evidence the appellant should succeed. On the question of the balance of convenience reliance is placed on Graham J.
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Paterson for the respondent company. On an application for an interlocutory injunction amerixan court must look at the respective situations of the two contending parties.
The first question to ask is why a plaintiff should not be left to fight his action and. The normal rule of English litigation is that a party gets no relief till he has gone to trial and persuaded the court that he has a chanamid which has been infringed. He is not entitled to chanamid interlocutory injunction just because he has a strong case. He is only so entitled if it is shown that there could be injustice if the defendant is left unfettered and that there is a serious risk of irreparable damage to the plaintiff.
In the first place the plaintiff should show that there is some serious need for the defendant to be restrained. The law recognises that there are situations in which the property in dispute has some special quality of its own, e. The Evans Marshall case  1 W. See also Mogul Steamship Co. The question is whether the plaintiff would suffer irreparable injury or ethickn an injury which could be compensated in damages.
One must look at the facts of each particular case to see whether irreparable damage would be caused.
American Cyanamid Co. v. Ethicon Ltd.
If there is simply a dispute between traders as to a monopoly there will be no irreparable damage. The grant of a patent is an exception recognised by the Statute of Monopolies which was designed to give everyone freedom to trade.
In each case one must ask why damages are not a sufficient remedy. In the present case it could be serious for the defendants to have to put all their work into cold storage. There is no suggestion that they would not ethiicon good for any damages which might be awarded against them if they lost the action eventually. It should not be the policy of the court to preserve the statuts quo in all cases but only to prevent irreparable damage to the plaintiffs: As to the assessment of damages should the plaintiffs succeed, see Terrell on the Law of Patents, 12th ed.
In practical experience, parties in patent litigation rarely find difficulty in reaching an agreement on damages. If there is evidence of irreparable damage the next question is: What sort of a case has the plaintiff got? It must also be considered on what basis the defendants will defend the cyyanamid.