Maeder v Busch - [1938] HCA 8

BUSCH AND ANOTHER

RESPONDENTS. DEFENDANTS,

ON APPEAL FROM THE SUPREME COURT OF

SOUTH AUSTRALIA. Patent-Validity-Permanent - waving of human hair still growing on the head

Process in relation thereto-Prior knowledge and user-New method of conducting operation on part of the human body, Whether patentable. 1937,

M. was granted letters patent in respect of an improved process of, and means for, producing permanent waves in human hair still growing on the head. It was common knowledge that the hair had to be moistened and SYDNEY,

warmed in order to produce the desired waves. M.'s claim was for the 1938,

use in the waving process of (1) a sulphide solution, (2) more particularly, a hydrosulphide solution, (3) any such solution together with the warming of the hair to a temperature of approximately 100 degrees C. In an action by M. for infringement evidence was adduced which showed that before the grant of M.'s patent such solutions were known in the business or occupation of hairdressing as useful for this purpose, and that they were so used from time to time and on many occasions by hairdressers in their ordinary work. The degree of heat required was varied as appeared to be necessary, and the application of a temperature of 100 degrees C. was adopted in common practice. This evidence was accepted by the trial judge, who found that the grant of letters patent was invalid on the grounds of prior public commercial user and want of novelty.

Held that the claims upon which M. based his action were invalid by reason of prior common knowledge and prior public user.

59 CLR 685

Quare whether a claim for a new method of conducting an operation upon a part of the human body (as distinct from a claim relating to an appliance or substance which may be used upon or in connection with the human body), and, in particular, a method of treating the hair, can be protected under the law relating to patents.

Decision of the Supreme Court of South Australia (Cleland J.) affirmed.

APPEAL from the Supreme Court of South Australia.

Frederie Maeder instituted an action in the Supreme Court of South Australia against Walter Busch and Henry Anton for an infringement of his patent No. 17990, granted on 13th June 1933, for the term of sixteen years, for an invention entitled Process of and means for producing permanent waves in hair," praying for an injunction, that an inquiry might be had as to the damages sustained by the plaintiff by reason of the infringement and an order for payment of such damages, or, alternatively, that an account might be taken of the profits made by reason of the infringement and an order for payment of such profits to the plaintiff, delivery up and destruction of the infringing articles, and an order that the defendants should pay the plaintiff's costs.

The plaintiff's complete specification was as follows :------ " This invention relates to a process for forming permanent waves…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [1938] HCA 8
Decision Date: 1 March 1938

CaseChat Overview and Summary

The appellant, Maeder, sought to appeal a decision of the Supreme Court of South Australia, which had found his letters patent invalid. The patent, granted for an improved process and means for producing permanent waves in human hair, claimed the use of a sulphide solution, specifically a hydrosulphide solution, and the warming of the hair to approximately 100 degrees Celsius. The respondents, Busch and Anton, were sued for infringement.

The central legal issues before the court were whether the claims made in Maeder's patent were valid, specifically concerning novelty and prior public commercial user. The court was also asked to consider whether a method for treating the human body, as opposed to an appliance or substance, could be protected under patent law.

The court affirmed the decision of the Supreme Court of South Australia, holding that Maeder's patent claims were invalid due to prior common knowledge and prior public user. Evidence presented established that sulphide solutions were known and used in hairdressing for permanent waving prior to the patent's grant, and that the application of heat, including temperatures around 100 degrees Celsius, was also common practice. The court accepted the trial judge's findings that the patent lacked novelty and had been subject to prior public commercial use.

Orders