In American Cyanamid Co v Ethicom Ltd  AC , the court developed a set of guidelines to establish whether an applicant’s case merited the granting of . Where an interlocutory injunction is sought, the balance of convenience will be the overriding consideration. P applied for an interlocutory injunction to prevent D . Parliamentary Archives,HL/PO/JU/4/3/ HOUSE OF LORDS. AMERICAN CYANAMID. N LIMITED. Lord DiplockViscount DilhorneLord Cross of.
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If there is a serious issue to be tried it will lead to a just result and mini-trials on the application for an interlocutory injunction would be prevented.
These are to be contrasted with expressions in other cases indicating a much less onerous criterion, such as the need to americzn that there is “certainly a case to be tried” Jones v.
American Cyanamid principles | Practical Law
Privy Council24 Jul The essence of this invention was discovering a material which would make a satisfactory suture. After a detailed analysis of the conflicting expert testimony he said, at p. An attempt had been made to reconcile these apparently differingapproaches to ethicpn exercise of the discretion by holding that the need to showa probability or a strong prima facie case applied only to the establishmentby the plaintiff of his right, and that the lesser burden of showing an arguablecase to be tried applied to the alleged violation of that right by the defendant Donmar Productions Ltd.
In the instant appeal, however, the question of the balance of convenience, although it had been considered by Graham J. Vosper  2 Q. It erred in holding that the appellants had not canamid that prima facie the patent in suit would be infringed by the marketing of the respondents’ suture. In practical experience, parties in patent litigation rarely find difficulty in reaching an agreement on damages. The first question to ask is why a plaintiff should not be left to fight his action and.
American Cyanamid Co. v. Ethicon Ltd.
Among other submissions, counsel for the Claimant referred to an exclusion clause in the LA which provided in so far as is material:. As to the contents of a specification, see Terrell on the Law of Patents, p.
The Courtmust weigh one need against another and determine where ” the balance of” convenience ” lies. It is given on affidavit and has not been tested by oral cross-examination. The likelihood of such embarrassment provides an additional reason for not adopting the course that both Graham J.
Go to It is where there is doubt as to the adequacy cyanamd the respective remedies indamages available to either party or to both, that the question of balance ofconvenience arises.
Showing top of judgment s. By this product had succeeded in capturing some 15 per cent. Duke of Buccleugh 12 L. Returning, therefore, to the instant appeal, it cannot be doubted that the affidavit evidence shows that there are serious questions to be tried.
The extent to which the disadvantages to each party would beincapable of being compensated in damages in the event of his succeedingat the trial is always a significant cynaamid in assessing where the balance ofconvenience lies; and if the extent of the uncompensatable disadvantage toeach party would not differ widely, it may not be improper to take intoaccount in tipping the balance the relative strength of each party’s case asrevealed by the affidavit evidence adduced on the hearing of the application.
The use of such expressions as ” a probability “, ” a” prima facie case “, or ” a strong prima facie case ” in the context of theexercise of a discretionary power to grant an interlocutory injunction leads toconfusion as to the object sought to be achieved by this form of temporaryrelief. At that date cyanami absorbablesutures in use were of natural origin. Where other factors appear to be evenly balanced it is a counsel ofprudence to take such measures as are calculated to preserve the status quo.
It is notorious that new pharmaceutical products used exclusively by doctors b available only on prescription take a long time to become established in the market, that much of the benefit of the monopoly granted by the patent derives from the fact that the patented product is given the opportunity of becoming established and this benefit continues to be reaped after the patent has expired.
Leave to appeal from that decision was granted by the House of Lords. It is where there is doubt as to the adequacy of the respective remedies indamages available to either americzn or to both, that the question of balance ofconvenience arises.
In every patent action money is at stake and there is some question of substance. These are sutures ofa kind that disintegrate and are absorbed by the human body once theyhave served their purpose. Even assuming that the plaintiffs are entitled to claim in this form, the question remains whether there was infringement.
Corona Lamp Works Ltd. So unless the material available amfrican the courtat the hearing of the application for an interlocutory injunction fails to Go to Lord Diplock Go to disclose that the plaintiff has any real prospect of succeeding in his claim fora permanent amerian at the trial, the court should go on to consider whetherthe balance of convenience lies in favour of granting or refusing the inter-locutory relief that is sought.
This was that, once doctors and patients had got used to Ethicon’s product XLG in the period prior to the trial, it might well be commercially impracticable for Cyanamid to deprive the public of it by insisting on a permanent injunction at the trial, owing to the damaging effect which this would have upon its goodwill in this specialised market and thus ethickn the sale of its other pharmaceutical products. The suggested distinction between what the plaintiff must establish as respects his right and what he must show as respects its violation did not long survive.
Voluminous affidavits and exhibits were filed on behalf of each party. So unless the material available to the courtat the hearing of the application for an interlocutory injunction ethicob to 5 disclose that the plaintiff has any real prospect of succeeding in his claim fora permanent injunction at the trial, the court should go on to consider whetherthe balance of convenience lies in favour of granting or refusing the inter-locutory cyananid that is sought.
In the view of the Vv of Appeal the case which the applicant had to prove before any question of balance of convenience arose was “prima facie” only in the sense that the conclusion of law cyanami by the court upon that evidence might need to be modified at some later date in the light of further evidence either detracting from the probative value of the evidence on which the court had acted or proving additional facts.
Tata Consultancy Services Ltd v Sengar. The notion that it is incumbent upon the court to undertake what is in effecta preliminary trial of the action upon evidential material different from thatupon which the actual trial will be conducted, is, I cyanaimd, of comparativelyrecent origin, though it can be supported by references in earlier cases to theneed to show ” a probability that the plaintiff is entitled to relief ” Preston v.
In this case, the Claimant applied under s.
Ethicon also attack the validity of the patent on the ground of obviousness. This interlocutory appeal concerns a patent for the etyicon as absorbablesurgical sutures of filaments made of a particular kind of chain polymerknown as ” a polyhydroxyacetic ester ” ” PHAE “.
In those cases where the legal rights of the parties depend upon facts that are in dispute between them, the evidence available to the court at the hearing of the application for an interlocutory injunction is incomplete.
The test is whether the new use lies in the track of the old use. The question whether the use of XLG as an absorbable surgical sutureis an infringement of Cyanamid’s patent depends upon the meaning to begiven to the three words ” a polyhydroxyacetic ester ” in the principal claim. Theyallowed the appeal and discharged the judge’s order.
American Cyanamid principles
In b action for an injunction the plaintiffs applied for an interlocutory injunction which was granted by the judge at first instance with the usual undertaking in damages by the plaintiffs. If, however, the specification bears the wider meaning alleged, it is invalid for inutility, insufficiency, unfair basis and false suggestion, since the copolymers will not have, as surgical sutures, the characteristics described in the body of the patent.
Paterson for the respondent company. The respondents “Ethicon”a subsidiary of another American company, were the dominant suppliers of catgut sutures in the United Kingdom market. If the defendant is enjoined temporarily from doing something that he has notdone before, the only effect of the interlocutory injunction in the event of hissucceeding at the trial is to postpone the date at which he is able to embarkupon a course of action which he has not previously found it necessary toundertake ; whereas to interrupt him in the conduct cysnamid an established enter-prise would cause much greater inconvenience to him since he would haveto start again to establish it in the event of his succeeding at the trial.
Glycolide was the radical of glycolic acid, which was another name for hydroxyacetic acid. Decision of the Court of Appeal  F. If the defendant is enjoined temporarily from doing something that he has not done before, the only effect of the interlocutory injunction in the event of his succeeding at the trial is to postpone the date at which he cyanqmid able to embark upon a course of action which he has not previously found it necessary to undertake; whereas to interrupt him in the conduct of an established enterprise would cause much greater inconvenience to him since he would have to start again to establish it in the event of his succeeding at the trial.
My Lords, I have had the advantage of reading the speech of my noble and learned friend, Lord Diplock.