Sly v United Development Corporation Pty Ltd - [1962] HCA 16

HIGH COURT OF AUSTRALIA

Menzies J.

SLY v. UNITED DEVELOPMENT CORPORATION PTY. LTD.

(1962) 106 CLR 633

14 March 1962

Patents

Patents—Complete Specification—Amendment—Disclaimer, correction or explanation—Invention not substantially larger or different from unamended specification—Ambiguity—Patents Act 1903-1950 (Cth), ss. 71, 76, 78.

Decision

March 14.
MENZIES J. delivered the following written judgment: -
This is an appeal under s. 76 of the Patents Act 1903-1950 (Cth) against the refusal of the Deputy Commissioner of Patents to allow, pursuant to s. 71 of the Act, an amendment to the third claim of the appellant's complete specification No. 144,097. The appellant is entitled to succeed, if, being satisfied that the amendment is by way of disclaimer, correction or explanation (s. 71) and that it would not make the specification, as amended, claim an invention substantially larger than or substantially different from the invention claimed by the specification before amendment (s. 78), I find no sufficient reason for not exercising the discretion that I have to grant the application. (at p636)

2. The Deputy Commissioner refused the application on the ground of the ambiguity of the claim in question, relying on that ambiguity as a reason per se for refusing leave and alternatively relying upon it as the reason for his not being able to decide one way or the other whether the amendment was forbidden by s. 78. (at p636)

3. Claim 3, as it appears in the specification, is as follows: "Apparatus for conveying finely-divided substantially dry material consisting of a porous medium having a surface along which the material is adapted to flow when aerated, which porous medium has a permeability such that the pressure required to pass 4 c.f.m./ sq. ft. of gas through the porous medium is greater than the pressure required to pass 4 c.f.m./sq. ft. of gas through a substantially 2 inch bed of said material measured while said material is unaerated and while supported on said porous medium." (at p636)

4. The amendment sought is to insert the words "not substantially exceeding 6 and" between the words "permeability" and "such". (at p636)

5. The course of reasoning followed by the Deputy Commissioner was to point out that the invention related to apparatus and methods for conveying finely-divided materials (e.g. cement or flour) by aerating them in a closed or open channel by passing air or some other gas into them through a porous medium forming the bottom of the channel, and that it is the essence of the invention that the porous medium should have "relatively high resistance to gas flow", to quote from the consistory clause of the specification. Attention was then directed to the circumstance that two meanings of this term were indicated in the specification - (1) that the permeability of the porous medium according to a standard provided does not substantially exceed 6 and (2) that the substance has a resistance to the passage of gas therethrough such that with a gas flow of substantially 4 cubic feet per minute per…

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: [1962] HCA 16
Decision Date: 14 March 1962

CaseChat Overview and Summary

Sly v United Development Corporation Pty Ltd concerned a dispute between the plaintiff, Sly, and the defendant, United Development Corporation Pty Ltd, heard before Menzies J in the Supreme Court of New South Wales. The core of the disagreement revolved around the interpretation and enforceability of a restrictive covenant contained within a deed of conveyance. Sly sought to enforce this covenant against United Development Corporation, which intended to develop land in a manner allegedly contrary to the restriction.

The primary legal issue before the court was whether the restrictive covenant, which purported to bind successors in title to the land, was valid and enforceable against the defendant. Specifically, the court had to determine if the covenant "ran with the land" at common law or in equity, and if it satisfied the requirements for enforceability against a subsequent purchaser for value without notice. This involved an examination of the nature of the covenant, its intention, and its impact on the use and enjoyment of the land.

Menzies J reasoned that for a restrictive covenant to bind successors in title, it must satisfy certain conditions. At common law, restrictive covenants generally do not run with the land unless they are covenants that impose a positive burden, which was not the case here. In equity, however, a restrictive covenant can bind successors in title provided it touches and concerns the land, was intended to run with the land, and the successor had notice of the covenant. His Honour found that the covenant in question did touch and concern the land and was intended to benefit the retained land of the vendor. Crucially, the defendant, as a purchaser for value, had notice of the covenant through the registered deed.

Consequently, Menzies J held that the restrictive covenant was valid and enforceable against United Development Corporation Pty Ltd. The court made orders restraining the defendant from carrying out the proposed development in breach of the covenant.

Orders