Doug Andrews Heating and Ventilation Limited & Anor v DIL & Ors [2013] NZHC 333

High Court of New Zealand

Allan J

7-11, 14, 15 and 18 October, 12 December 2013

[2013] NZHC 3333 

The decision relates to a patent for a portable cooker (to replicate traditional Maori hangi or pit cooking).  The case involved constitution of claims and then a counterclaim for revocation asserting lack of novelty and obviousness.  The decision also includes some interesting observations on the availability of a claim for threats where infringement proceedings have issued.


The first plaintiff was the owner of a patent covering portable hangi  cookers, with the second plaintiff being its exclusive licensee.  
The first plaintiff was granted its patent for a portable hangi cooker on 12 January 2000 with a priority date of 21 October 1998.  The first plaintiff’s portable hangi cookers (which were first marketed from1999 onwards) became a commercial success.  The second plaintiff was incorporated in 2004 to undertake the business of selling the cookers.  
In 2008, the plaintiffs first noticed a competing cooker on the New Zealand market, being the UFO cooker manufactured and marketed by the defendants.  
The plaintiffs claimed that, since 2008, the defendants had infringed the patent by manufacturing, importing for sale, selling, promoting and using portable hangi cookers under the UFO brand name.  The first and second defendants (Dil and Mitchell) were directors of the third defendant, G & W Imports Limited (G & W).  The plaintiffs claimed that Dil and Mitchell were equally liable with G & W for the pleaded infringement.  The plaintiffs sought an injunction, an order for delivery up and damages in excess of $1.2 million.  
The defendants denied infringement, alleged unjustified threats of patent infringement (for which they sought an inquiry as to damages).  They also brought a counterclaim seeking revocation of the patent (alleging lack of novelty and obviousness).  
The first defendant, Mr Dil, was experienced in the cutting and fabricating of metal.  While working as an apprentice fitter and welder, he used to construct metal cookers out of old beer kegs.  All of these were made to steam or smoke food.  In 2008 Mr Dil decided to go into the business of making and selling cookers.  His evidence was that at the time he was not aware of the first plaintiff or its cookers or the patent.  He met the second defendant, Mr Mitchell, who agreed to invest in a proposed business (the third defendant company).  This commenced manufacturing, marketing and selling UFO cookers.  
In 2009, the plaintiffs purchased a sample of the defendants’ UFO cooker and proceedings were commenced in August 2009 alleging infringement of the patent.


Claim 1 of the patent was the only independent claim.  The defendants contended that, on a true construction, claim 1 did not extend to a cooker in which the cooking chamber or other food receptacle formed part of the lower section of the interchangeable parts.  Rather the plain language of claim 1 described a cooking apparatus in which the lower part comprised the heating source and plate means and the upper part comprised a cooking chamber.  
The plaintiffs’ argument was that claim 1 required that a cooking chamber be defined by the apparatus but that the cooking chamber need not be defined by the inter-engagement of the upper and lower parts.  
The plaintiffs’ claim (on filing the proceedings) was that the defendants’ single-tier UFO cooker (without any extension) infringed the patent.  By trial the plaintiffs accepted that the infringement occurred only when the defendants’ UFO cooker was sold with an extension or when an extension was sold for the purpose of expanding the capacity of the defendants’ single tier cooker.  The principal argument for the plaintiffs was that claim 1 was infringed once the UFO extension was added because, when that occurred, the particular cooking chamber envisaged in claim 1 arose.  The plaintiffs argued that this was because a larger chamber was formed for the inter-engaged upper and lower parts of the cooker.
The defendants contended that, even with an extension fitted, their cooker did not infringe because the lower tier of the UFO cooker comprised provision for heat source, plate means and a cooking chamber, whereas the invention as claimed omitted a cooking chamber in the lower part.  


The defendants sought revocation of the patent alleging that, so far as was claimed in any claim in the complete specification, the invention lacked novelty or was obvious and did not involve any inventive step.  
As to lack of novelty, the focus was ultimately on three pieces of prior art, the Hartwell cooker, the Richardson A6 cooker, the Hakaraia cooker and the Dil drawings.  
The pleadings as to obviousness claimed common general knowledge (as listed in the judgment).  But the defendants did not lead any expert evidence as to what common general knowledge existed as at the priority date or as to what the skilled addressee would have thought or done.
Allan J held, finding no infringement and dismissing the counterclaims:


(1)Claim 1 extended protection to a hangi cooker in which only the second part comprised a cooking chamber.  Although there were references in the specification to the use of the hot plate (in the lower portion) for direct cooking purposes, no claim based on that function found its way into claim 1.  It was the claims themselves that were crucial [55] and [57].
Peterson Portable Sawing Systems Limited v Lucas [2006] 3 NZLR 721 applied; Lucas v Peterson Portable Sawing Systems [2003] 3 NZLR 361 referred to (as to construction principles); Unilever Plc v Chefaro Proprietaries Limited [1994] RPC 567, 580; Kirin Amgen Inc v Hoechst Marion Roussel Limited [2004] 1 All ER 667 referred to.
(2)The second part (or extension) of the UFO cooker did not create or comprise a cooking chamber at all.  Rather it extended the cooking chamber which formed part of the first part – so it acted as an extension to the food housing already defined by the first part.  A purposive reading of claim 1 made it clear that it was confined to cooking apparatus in which the cooking chamber in its entirety was comprised within the second upper part. [62]  The UFO cooker, inclusive of one or more extensions, did not infringe claim 1.  Further, it had not been argued that any one or more of the remaining claims were capable of justifying an infringement finding.  The plaintiffs therefore failed to make out their infringement claim. [67]  
Revocation counterclaim: lack of novelty
(3)The Court was not satisfied that the Hartwell cooker, the Richardson A6 cooker or the Hakaraia cooker constituted prior art. [111], [123] and [129].  Further the Dil drawings and Mr Dil’s evidence about having built multi-tier cookers were of negligible evidential value.  Much more was required of a party who sought to revoke a patent on the ground of want of novelty. [137]
Peterson Portable Sawing Systems Limited v Lucas [2006] 3 NZLR 721 applied.
Revocation counterclaim: obviousness
(4)Applying the four-step approach to determining obviousness:
(a)The inventive concept in the patent was the element of interchangeability which separated the cooking chamber in the upper part from the heat source and plate means in the lower part with consequential practical advantages as set out in the complete specification. [151]
(b)There was no reliable evidence that it was common general knowledge that cookers had one or more removable stacks and that they were able to be assembled and disassembled. [153].  There was no evidence to suggest that, as the priority date, any of the witnesses felt the need to redesign their cookers. [154] or that anyone was contemplating research or investigations that might lead down a path similar to that trodden by the inventor, Mr Andrews. [155]
(c)The principal difference between the common general knowledge and the patented invention was the separation of the cooking function from the remainder and the provision of interengageable parts. [157]
(d)As to whether the differences were obvious or required any degree of invention, the Court was satisfied that a degree of invention was required and that obviousness had not been made out. [158].  The Court was entitled to take into account as secondary evidence the commercial success of the invention.  There was substantial evidence that this had been markedly successful. [160]
Ancare New Zealand Limited v Cyanamid of NZ Limited [2000] 3 NZLR 299 applied.
(5)Ordinarily the Court would need to consider each individual claim.  It was not feasible to undertake such an exercise in this case because:
(a)The necessary element of inventiveness was found in claim 1.
(b)The plaintiffs did not suggest that any of the remaining claims, standing alone, required an inventive step. [166]
In any event, claim analysis required the assistance of expert evidence and it would not be satisfactory for the Court to undertake an obviousness assessment for claims 2 – 20 on the basis of what would be little more than judicial impression.

Groundless threats

(6)The legislative purpose behind s 74 Patents Act 1953 is to enable an alleged infringer (or other party aggrieved) to bring the question of an alleged infringement to a head by issuing proceedings and thus avoiding a situation in which a threat is hanging over its head for a significant period. [173] and [177]
Skinner & Co v Perry [1893] RPC 1; Townsend Controls Pty Limited v Gilead (1989) 1A IPR 443; Lucas v Peterson Portable Swimming Systems Limited (In Liq) (HC Auckland CIV 2001-404-3668, 2 December 2009) referred to.
(7)If the threat to issue proceedings is made good and proceedings actually issue then the predecessor threats are of historical interest only. [177].  Here proceedings were issued by the plaintiff and the right to take proceedings for threats under s 74 therefore lapsed.  It made no difference that the plaintiff might have changed tack in mid-stream with respect to the ambit of the alleged infringement.  Once proceedings commenced the in terrorem element dissipated.  
(8)On the facts
(a)A notice placed in The New Zealand Herald was long after proceedings commenced. [182]
(b)Threats made to customers of the third defendant were after proceedings commenced. [183] and [184]
(c)A statement in a letter from the plaintiffs’ patent attorney was a threat. [187] and [188]
However, given that the plaintiffs had actually issued proceedings, no claim under s 74 was established. [191]

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