Hammar Maskin AB v Steelbro New Zealand Limited

[2010] NZCA 132

IN THE COURT OF APPEAL OF NEW ZEALAND

CA692/2008
[2010] NZCA 132

BETWEENHAMMAR MASKIN AB

First Appellant

ANDBENGT-OLOF HAMMAR

Second Appellant

ANDHAMMAR NEW ZEALAND LIMITED

Third Appellant

ANDSTEELBRO NEW ZEALAND LIMITED

Respondent

Hearing:17 and 18 February 2010

Court:Glazebrook, Ellen France and Baragwanath JJ

Counsel:B W F Brown QC and A J Evans for Appellants

J G Miles QC and G W Hall for Respondent

Judgment:24 March 2010 at 11.00 am

Date of Orders:         20 April 2010

ORDERS OF THE COURT

AWe make the following orders:

(a)An injunction until the expiry of the term of New Zealand Patent No. 331591 restraining the defendant by itself or any of its associated companies, employees, servants, contractors, agents or distributors from manufacturing, selling, distributing, offering for sale or marketing in New Zealand, including manufacturing in New Zealand for subsequent sale overseas, a structure as claimed in any one of claims 1, 2, 4, 6 or 7 of New Zealand Patent No. 331591.

(b)An order for the delivery up or destruction on oath by the defendant of all the support structures in the possession, power or control of the defendant, which are structures as claimed in any one of claims 1, 2, 4, 6 or 7 of New Zealand Patent No. 331591.

BThe matter is referred back to the High Court on the terms set out at [4] below.

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REASONS OF THE COURT

(Given by Glazebrook J)

[1]        On 24 March 2010 we allowed the above appeal and dismissed the cross-appeal.[1]

[1]      Hammar Maskin AB v Steelbro New Zealand Ltd [2010] NZCA 83.

[2]        The parties were directed to file a joint memorandum setting out agreed orders to give effect to the judgment.

[3]        By memorandum of 9 April 2010, the parties indicate that they have agreed the following orders (on the basis that the respondent reserves all rights in relation to an appeal):

(a)An injunction until the expiry of the term of New Zealand Patent No. 331591 restraining the defendant by itself or any of its associated companies, employees, servants, contractors, agents or distributors from manufacturing, selling, distributing, offering for sale or marketing in New Zealand, including manufacturing in New Zealand for subsequent sale overseas, a structure as claimed in any one of claims 1, 2, 4, 6 or 7 of New Zealand Patent No. 331591.

(b)An order for the delivery up or destruction on oath by the defendant of all the support structures in the possession, power or control of the defendant, which are structures as claimed in any one of claims 1, 2, 4, 6 or 7 of New Zealand Patent No. 331591.

(c)A certification pursuant to s 73(1) of the Patents Act 1953 that the validity of claims 1, 2, 4, 6 and 7 of New Zealand Patent No. 331591 were contested and the claims were found to be valid in this proceeding.

[4]        We are prepared to make the orders set out at [3](a) and (b).  We are not prepared to make the order at [3](c).  That was not an order sought in the statement of claim.

[5]        The appellants note that the High Court trial was solely concerned with liability issues.  Consequently the issue of damages or account will now need to be pursued in the High Court including any interlocutory processes, in particular discovery of manufacture and sales.  The respondent agrees with that course save that, if leave to appeal against our judgment is granted, the respondent reserves its rights to seek a stay of the High Court proceeding pending determination of the appeal.  The matter is remitted to the High Court on that basis.

Solicitors:

Henry Hughes & Co, Wellington for Appellants

Buddle Findlay, Auckland for Respondent