JUDGMENT No. val dal Boal a A.Q. IN THE FEDERAL COURT OF AUSTRALIA ) ) NEW SOUTH WALES DISTRICT REGISTRY ) No NG 811 of 1996 ) GENERAL DIVISION ) BETWEEN: PUREBRED PRODUCTS PTY LTD Applicant AND: E.D ES PTY LTD Respondent Coram: Davies J Place: Sydney Date: 5 December 1996 REASONS FOR JUDGMENT This is an application for an interlocutory injunction. I do not propose to say much about the case. It seems to me to be undesirable for a judge, early in the litigation, to express views about the matter. What is important at this particular time is whether or not a holding order should be made. The product in question, an animal grooming mitt, is a successful and valuable product. It is the subject of Australian letters patent commencing on 22 December 1992 with a priority date of 9 June 1992 ("the patent"). The mitt is used for grooming animals. It has a rubber pad along the palm and along the thumb, the pad having projections and the rubber being of a soft type which is suitable for extracting hair or fur from the animal. The applicant commenced marketing the product in about 1994 and has marketed it successfully. The product has also been sold extensively overseas. The respondent commenced marketing a like product in this country in September of 1996, and did so with knowledge of the patent. The claim, as presently brought, is for infringement of the patent and for breach of the Trade Practices Act 1974 (Cth). I need not say anything about the claim under the Trade Practices Act save this, that it seems to me that it has not been shown that, apart from the question of infringement, there is any reason why the respondent should not market its product in the manner in which it has in the past and proposes to market it in the future... As to the question of infringement, it is not put for the purposes of this present motion that the applicant does not have an arguable case for infringement. What is put is that the patent is incontestably bad. The relevant claim, claim 3, of the patent reads: "An animal grooming aid in the form of a glove or mitt, having in at least a palm region, a panel formed or faced with latex rubber or like soft rubber, optionally with an undulating surface, or bristles, or teeth." This is a broad claim which may be contrasted with the more precisely limited claim in the equivalent American patent, of which claim 1 reads: "An animal grooming mitt comprising: a mitt body made of a first material, said mitt body having a main pocket and a separate thumb pocket; and a palm portion made of rubber which is different than said first material, said palm portion including a plurality of rubber projections extending away from said mitt body, said rubber projections having a sufficient cohesion of friction to facilitate the removal of an animal's hair during grooming upon movement of said plurality of projections through the animal's hair in a manner resembling petting of the animal." Having regard to the ambit of the claim in the Australian patent, it being expressed widely in broad terms, there are plainly strong arguments for its invalidity. There are, in evidence before me, gloves and mitts which have, at least, many features appearing in claim 3. There are also, in evidence before me, other patent specifications which claim inventions with respect to animal grooming gloves or mitts. Nevertheless, it does not appear to me that I can, in these proceedings, rule that the applicant does not have an arguable case. I do not think that I should enter upon the process of determining that issue at a time when not all the evidence is on and when I have not heard the parties on all the matters that they may wish to put. The case must be very clear for a judge to say that the proprietor of a patent has no claim. The matter must, as in the case of General Steel Industries Inc v Commissioner for Railways (NSW) (1964) 112 CLR 125, be unarguable, and I do not think that I could say that in the present case. I think that I should not embark upon the task, which would obviously be quite a lengthy task, of forming any concluded view about the question of validity. Accordingly, I propose to proceed upon the footing that the applicant has a case and upon the footing that it has valid letters patent. The applicant has had the Australian patent since 1992 and it has been active since then in protecting it and in warning infringers. That brings me, then, to the question of balance of convenience. In a case such as this, the question of convenience is quite a simple matter, for the applicant has an established, valuable business. That business would obviously be greatly affected if the respondent were to compete, as the applicant markets its product at $19.95 per mitt, whereas the respondent proposes to market its glove at, I think, about $7.00 per mitt. It would obviously be necessary for the applicant to reduce its price and, once it did that of course, it would be difficult to again establish the price structure which it now maintains. It is the practice of courts, in matters such as these, to protect patent holders by the granting of injunctions, as they are the means by which inventors can ensure that they obtain value from their inventions. So, where there is an established business which has a patent of some years' standing and where there is a competitor wishing to enter the market, particularly a competitor wishing to enter the market with knowledge of the patent, the traditional view is to hold that the balance of convenience lies in maintaining the status quo; that is to say, that the patentee may continue its business and the newcomer must wait until there is a determination as to whether or not the patent is valid. For those reasons, it seems to me that, subject to the giving of an undertaking which is satisfactory to the Court, there should be an interlocutory injunction. I will also order that the case be expedited. It seems to me that this is a matter which ought to be brought on quickly, if that can be done. The matter will not be able to be given a very early hearing, but I will direct that it be put into the next long causes callover. There is no reason why preparation for trial should not proceed during the time it will take for the matter to come on for hearing. This is a case where it is desirable that the issue of validity be determined as quickly as the legal processes will permit. I certify that this and the preceding four pages are a true copy of the Reasons for Judgment herein of the Honourable Justice Davies. Associate pagel Quer Date : 5 December 1996 Counsel for the applicant : R.J. Webb Solicitors for the applicant : Holman Webb Counsel for the respondent : B.J. Hess Solicitors for the respondent : Halperin & Co Pty Ltd by their agents Henry Davis York Date of hearing : 5 December 1996 Date of judgment : 5 December 1996