Assa Abloy New Zealand Limited v Aluminium Systemjs NZ Limited HC Wellington CIV 2010-485-2

[2010] NZHC 1014

IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY

CIV 2010-485-2

UNDER  the Patents Act 1953

IN THE MATTER OF     New    Zealand    Patent    Application    No.

533304

AND

IN THE MATTER OF     an appeal of the decision of the Assistant

Commissioner of Patents dated 7 December

2009

BETWEEN  ASSA     ABLOY     NEW     ZEALAND LIMITED

Appellant

ANDALUMINIUM  SYSTEMS  NZ  LIMITED Respondent

Hearing:         12 April 2010

Counsel:         C Elliott and O Dickie for Appellant

C A Warburton and M C Warburton for Respondent

Judgment:      13 April 2010

JUDGMENT OF MILLER J

[1]      At the hearing on 12 April 2010 I granted the appellant’s application for leave to adduce the affidavits of Mr Holden and Mr Jones relating to prior use of the clear wedges.  These are my reasons.

[2]      The application falls to be determined under R 22.34, which provides that an appeal is by way of rehearing, the evidence on appeal must be the same as that used before the Commissioner, and no further evidence may be given, except with the

leave of the Court.   I accept that the usual considerations govern such a leave

ASSA ABLOY NZ LTD V ALUMINIUM SYSTEMS NZ LTD HC WN CIV 2010-485-2  13 April 2010

application;  cogency, whether the evidence could have been called at first instance, and prejudice.

[3]      Mr  Elliott’s  best  efforts  notwithstanding,  I  am  not  persuaded  that  the evidence is genuinely fresh.  There is force in Mr Warburton’s submission that the appellant underestimated the hurdle confronting it with respect to proof, under s 21 of the Patents Act 1953, that the invention was obvious and clearly did not involve any inventive step having regard to what was  used in New Zealand  before the priority date.   Mr Elliott pointed out that one of the witnesses, Mr Holden, was formerly an  employee  of  the  respondent,  but  that  cannot  explain  the  failure  to procure his evidence;  after all, the appellant was able to do so within a short period after the Commissioner’s adverse decision.

[4]      Mr Warburton sought to persuade me that the evidence of the two witnesses should not be accepted.   He argued, for example, if the evidence were correct it should be supported by documentary evidence, or that the witnesses’ recollections may be unreliable, or that Mr Holden, in particular, has a conflict of interest.  The important point, however, is that he acknowledged that, if accepted, the evidence might well make a difference to the outcome of the appeal.

[5]      In the end that is the decisive consideration, in my opinion.  The Assistant Commissioner was not persuaded that there had been prior use in New Zealand of the invention.  The priority date was 2004.  The evidence of Mr Holden, who worked for the respondent until 1997, was that during his employment the respondent was visited by a representative of Interlock Industries Limited (now the appellant) with the samples of a clear plastic wedge for a window latch.  The evidence of Mr Jones, who was an employee of the appellant until 1999, was that these clear wedges were marketed to prime die holders as part of Interlock’s marketing strategy.   He characterises  this as public marketing of the product, without any obligation of confidence on any party.

[6]      Read together, these affidavits are likely, if accepted, to affect the outcome of the appeal.  One of the criticisms made by the Assistant Commissioner was that the

appellant relied heavily on hearsay evidence of an executive who was not with the appellant at the relevant time.  This evidence addresses that concern.

[7]      I accept that there is inevitably some prejudice to the respondent, because the fixture set for 5 May cannot proceed, but Mr Warburton pointed to none that was not compensable in costs.

[8]      There is some force in Mr Warburton’s point that patent law differs from trade marks in that there are numerous safeguards to prevent an invalid monopoly being placed on the Register;  there is provision for examination, opposition actions, and a revocation action.  But I respectfully agree with Ronald Young J, in Amadeus

Global Travel Distribution SA v Sabre Inc,[1] that the fact that there is a right to bring

revocation proceedings does not excuse a failure to apply proper principle when granting the patent application in the first place.

[1] Amadeus Global Travel Distribution SA v Sabre Inc HC WN AP126/02, 14 March 2003.

[9]      Having  decided  that  the  evidence  should  be  admitted,  I  gave  leave  to Mr Elliott to file any further evidence directed to the question of prior public use within one month.  Mr Warburton is to file any evidence in reply within four months. The appeal should then be called in the Judge’s Chambers List to confirm a fixture and make any necessary directions for the exchange of submissions.

Miller J

Solicitors:

Ellis Terry, Wellington for Appellant

Acacia Law, Tawa for Respondent