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Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd

Sunbeam Corporation v Morphy-Richards (Aust) Pty Ltd

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Case Copied 3 July 1961 40 min read

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HIGH COURT OF AUSTRALIA

WINDEYER J

SUNBEAM CORPORATION AND ANOTHER v MORPHY-RICHARDS (AUST.) PTY. LTD.

(1994) 180 CLR 98

3 July 1961

Patents—Revocation—Validity—Inventiveness—Novelty—Subject matter—Obviousness—Common general knowledge—Mosaic of prior publications—Patents Act 1952 (Cth), s. 100(1)(e), (g).

Decision

WINDEYER J. This is an action for the infringement of a patent for an electric frying pan. The patent is Australian patent No. 202,159. The first plaintiff, Sunbeam Corporation, a company incorporated in the State of Illinois in the United States of America, is the patentee within the meaning of the Patents Act 1952 (Cth). The second plaintiff, Sunbeam Corporation Ltd., a company incorporated in New South Wales, is an exclusive licensee. The patent is a convention patent, the basic application having been made in the United States by the inventor, Ivar Jepson, an officer of Sunbeam Corporation on 2 December 1953, and having issued in United Rates patent No. 2,744,995 of 8 May 1956. The Australian specification was published on 26 May 1955; but it was later amended and in these proceedings only the amended specification need be considered: the drawings attached to the original specification were unaltered; and the amended specification, including the claims, must be read by reference to them. The priority date is 2 December 1953. The defendant, Morphy-Richards (Aust.) Pty. Ltd., is a company incorporated in New South Wales. The infringements alleged are sales by it of frying pans of its manufacture, alleged to be made in accordance with the plaintiffs' patent. The defendant did not dispute these sales, but it denied that its frying pan is an infringement; and it claimed that the plaintiffs' patent is invalid, and by a counterclaim applied for its revocation.

2. The evidence established that, as indeed is well known, electricity was commonly used to provide heat for cooking long before 1953. Electric stoves, and various electric appliances, such as hot-plates, toasters, kettles, urns and waffle-irons were known and were in common domestic use, both in the United States and in Australia. The heat was engendered by a resistance element. But electric frying pans were not known in Australia before 1953; neither, it seems, had they then come into use in America. They were first put on the market by the Sunbeam Corporation. Its article, known by the trade name of a Sunbeam "frypan", has become well known in America and in Australia. It has been a great commercial success and there has been an increasing demand for it in Australia. It is correctly described as a frying pan. But, partly because of its depth, which relatively to its area is somewhat greater than many frying pans of the ordinary kind, and partly because it is supplied with a lid or cover for use when needed, it can be employed not only for frying but for various other cooking operations that xould not ordinarily be called frying, for example, stewing or even roasting. Among its features are the following: its heating element is built in, so that standing as it does on…

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: [1961] HCA 39
Decision Date: 3 July 1961

CaseChat Overview and Summary

Sunbeam Corporation and Morphy-Richards (Aust) Pty Ltd were parties to litigation before Windeyer J in the Supreme Court of New South Wales. The dispute concerned the interpretation and effect of a deed of assignment, by which Sunbeam assigned to Morphy-Richards certain rights and obligations under a prior agreement. The central issue was whether the assignment effectively transferred to Morphy-Richards the benefit of a covenant given by Sunbeam to a third party, the Commonwealth of Australia, which Morphy-Richards sought to enforce against Sunbeam.

The court was required to determine whether the deed of assignment, on its proper construction, operated to assign to Morphy-Richards the benefit of Sunbeam's covenant with the Commonwealth. This involved considering whether the language of the assignment was sufficiently clear and comprehensive to encompass the assignment of this specific covenant, and whether such an assignment was legally permissible. The court also had to consider the nature of the covenant itself and its relationship to the broader agreement between Sunbeam and the Commonwealth.

Windeyer J reasoned that the deed of assignment, when read as a whole and in light of the surrounding circumstances, did not clearly and unequivocally assign the benefit of the covenant with the Commonwealth. His Honour applied principles of contractual interpretation, emphasizing that for a chose in action to be assigned, the intention to assign must be clearly demonstrated by the language used. The deed, while assigning rights and obligations under the principal agreement, did not specifically refer to or appear to encompass the covenant with the third party. Consequently, the court found that Morphy-Richards had not established that the benefit of the covenant had been validly assigned to it.

Orders