Supreme Court DECISION RESERVED! IN PATENT ACTION

Press, Volume C, Issue 29554, 1 July 1961, Page 14

Supreme Court DECISION RESERVED! IN PATENT ACTION

Whether the Vigilant Auto I matic Fire Alarm Company, ' Ltd. was entitled to an ; inquiry into damages, and the 1 right of discovery, for an in- t fringement of its patent rights 1 to an automatic fire detector 1 by Automatic Fire Alarms. Ltd., was argued before Mr ’ Justice Richmond in the Sup- ’ reme Court yesterday. ! His Honour reserved his de- . ciiion after hearing submis- . sions. i The argument stemmed from an action for damages brought by the Vigilant ' alarm company against the Automatic alarm company for the alleged breach of > patents rights. The Automatic alarm company filed an answer in de- i fence seeking revocation of the Vigilant alarm company’s 1 patent on the ground that : the patent was invalid be- : cause of prior usage. His Honour ruled that the Automatic alarm company could 1 not use revocation as n de- : fence because the company had not. as required by statute, notified the AttorneyGeneral of its intention to have a patent declared invalid. His Honour heard the Vigilant alarm company’s claim for damages and subse- 1 quently, in a separate action. 1 heard a motion brought by the Automatic alarm company • for the revocation of the Vigilant patent. Findings In findings given on March 24, his Honour held that the Automatic alarm company • had infringed the Vigilant 1 alarm company’s patent rights ; on the automatic claim in dis- ■ pute. He also found that the Vigilant alarm company’s i patent was invalid. His i Honour did not deliver judg- ‘ ment in either hearing, but 1 gave leave for further argu- !

ment on the matter of the Vigilant alarm company's application for an inquiry as to damages suffered by the company because of the in-' fringement of its patent rights. In the hearing yesterday, Mr R. E. Harding, of Wellington. appeared for the Vigilant alarm company, and Mr J. G. Leggat. with him Mr; A. Hearn, for the Automatic alarm company. Mr Harding submitted that the Vigilant alarm company was entitled to an inquiry as I to damages as its patent was' valid up to the date it was; actually revoked. Therefore the Automatic alarm com--pany must be liable for dam-' ages for infringement of a, valid patent. Mr Harding cited the dictum of Lord Juatice Fletcher Moulton, in Poulton v. Adjustable Cover. Boiler. Block Company, 1908. that ’ revocation of a paten* i operated in future. Counsel agreed with his Honour that Lord Justice Fletcher Moul-! ton was “a heavy gun’’ in: patent law. “Retrosncctive*’ Mr Leggat submitted that the Vigilant alarm company was not entitled to an inquiry as to damages because the Automatic alarm company had infringed only an invalid patent. Revocation of a patent was. in effect, retrospective to its beginning. The Poulton case, he said, had been decided on the ground of res judicata, in that judgment had been entered that patent rights had been infringed before judg-1 ment that the patent was in- 1 valid had been entered. In the present case, no judgment had been entered that, oatent rights had been in-1 fringed. His Honour had! found that in fact, but had not entered judgment. He cited cases in support i of his contention that Lord, Justice Fletcher Moulton'sdictum that revocation was! in future had not been fol-! lowed, and in support of the] submission that revocation; was ab initio. Submissions bv Mr Leggat were to the effect that the! action for infringement and I damages and the motion forrevocation In the present! proceedings were contem-1 noraneous. and that there-! fore judgment in each easel should be entered at the! same firne, Mr Harding, in reply, sub-! mltted that the action for in-! fringement and damages! came first and was entitled i to nrior iudffment. H's Honour said. and counsel agreed, that the! actual sealing of itHornen* would be the time in law on which to decide, if required.: which judgment had prior-! itv. Reserving h'= decision, his: Honour said that if he eh-1 tered judgment that theVigilant alarm comnanv's} natent was invalid, then the oaten* would be re”oked at that moment. If he then turned to the action for damages on infringement of, natent rights and entered iudvment that the natent rights had been infringed the Vigilant alarm company could have no claim for damages because it could not go back beyond the time when he bad declared the patent invalid. It appeared to him. said his Honour, that he had to decide which iudgment to enter first. One wav. the Vigilant alarm company would be entit’ed to an inquiry as to damages; the Other wav, that com nan y would be barred from an inquiry as to damages.