United States District Court, S. New York. May 26, Marshall, Thomas F.

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These are sutures ofa kind that disintegrate and are absorbed by the human body once theyhave served their purpose. The Appellants " Cyanamid " , an AmericanCompany, are the registered proprietors of the patent.

Its priority datein the United Kingdom is October 2nd, At that date the absorbablesutures in use were of natural origin. They were made from animaltissues popularly known as catgut. The Respondents " Ethicon " , a sub-sidiary of another American Company, were the dominant suppliers ofcatgut sutures in the U.

Cyanamid introduced their patented product in The chemical sub-stance of which it is made is a homo-polymer, i. Glycolide is the radical of Glycolic acid, which is another namefor hydroxyacetic acid. By this product had succeeded in capturingsome 15 per cent, of the U. Facedwith this competition to catgut, Ethicon who supplied 80 per cent, of themarket were proposing to introduce their own artificial suture " XLG ".

The chemical substance of which it is made is not a homopolymer but acopolymer, i. Cyanamid contend the XLG infringes their patent, of which the principalclaim is " A sterile article for the surgical repair or replacement of living" tissue, the article being readily absorbable by living tissue and being formed" from a polyhydroxyacetic ester. The invention claimed by Cyanamid thus consisted of thediscovery of a new use for a known substance.

On 5th March, , Cyanamid started a quia timet action against Ethiconfor an injunction to restrain the threatened infringement of their patent bysupplying sutures made of XLG to surgeons in the United Kingdom. Onthe same day they gave notice of motion for an interlocutory injunction. Voluminous affidavits and exhibits were filed on behalf of each party. Thehearing of the motion before Graham J. On 30th July,, he granted an interlocutory injunction upon the usual undertakingin damages by Cyanamid.

Ethicon appealed to the Court of Appeal. The hearing there took eightJays. On 5th February, , the Court of Appeal gave judgment. It was estimatedthat the hearing in this House of the appeal at which leave to adduce moreaffidavit evidence was to be sought would last twelve days. In the alternative, as commonlyhappens where the contest is between a narrower and a wider meaning ina patent specification, they attack the validity of the patent, if it bears thewider meaning, on the grounds of inutility, insufficiency, unfair basis andfalse suggestion.

These objections are really the obverse of their argumentin favour of the narrower construction. They are all different ways of sayingthat if the claim is construed widely it includes copolymers which will nothave as surgical sutures the characteristics described in the body of the patent.

Ethicon also attack the validity of the patent on the ground of obviousness. Both Graham J. As Russell L. After a detailed analysis of the conflicting experttestimony he said: —" I am not satisfied on the present evidence that on the" proper construction of this specification, addressed as it is to persons" skilled in the relevant art or science, the claim extends to sterile surgical" sutures produced not only from a homopolymer of glycolide but also from" a copolymer of glycolide and up to 15 per cent, of lactide.

That is to say" that I do not consider that a prima facie case of infringement is established. Graham J. He then went on todeal briefly with the attack upon the validity of the patent and came to theconclusion that upon the evidence before him none of the grounds ofinvalidity advanced by Ethicon was likely to succeed. He therefore feltentitled to consider the balance of convenience. In his opinion it lay infavour of maintaining the status quo until the trial of the action.

So hegranted Cyanamid an interlocutory injunction restraining Ethicon frominfringing the patent until the trial or further order. The grant of an interlocutory injunction is a remedy that is both temporaryand discretionary. It would be most exceptional for your Lordships to giveleave to appeal to this House in a case which turned upon where the balance 3 of convenience lay.

In the instant appeal, however, the question of thebalance of convenience, although it had been considered by Graham J. In the view of the Court ofAppeal the case which the applicant had to prove before any question ofbalance of convenience arose was "prima facie " only in the sense that theconclusion of law reached by the court upon that evidence might need to bemodified at some later date in the light of further evidence either detractingfrom the probative value of the evidence on which the court had acted orproving additional facts.

The instant appeal arises in a patent case. Historically there wasundoubtedly a time when in an action for infringement of a patent that wasnot already " well established ", whatever that may have meant, an interlocu-tory injunction to restrain infringement would not be granted if counsel forthe defendant stated that it was intended to attack the validity of the patent. Relics of this reluctance to enforce a monopoly that was challenged, eventhough the alleged grounds of invalidity were weak, are to be found in thejudgment of Scrutton L.

Grigg, Limited []1 K. In my view the grant of interlocutory injunctions in actions forinfringement of patents is governed by the same principles as in other actions. I turn to consider what those principles are. It was to mitigatethe risk of injustice to the plaintiff during the period before that uncertaintycould be resolved that the practice arose of granting him relief by way ofinterlocutory injunction ; but since the middle of the nineteenth century thishas been made subject to his undertaking to pay damages to the defendantfor any loss sustained by reason of the injunction if it should be held at thetrial that the plaintiff had not been entitled to restrain the defendant from doingwhat he was threatening to do.

The Courtmust weigh one need against another and determine where " the balance of" convenience " lies. In those cases where the legal rights of the parties depend upon facts thatare in dispute between them, the evidence available to the court at the hearingof the application for an interlocutory injunction is incomplete.

It is givenon affidavit and has not been tested by oral cross-examination. 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 think, 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.

Luck 27 Ch. GriggLimited [] 1 K. These are to be contrastedwith expressions in other cases indicating a much less onerous criterion, suchas the need to show that there is " certainly a case to be tried " Jones v. An attempt had been made to reconcile these apparently differingapproaches to the 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.

Bart [] 1. Osborne [] 1 W. The suggested distinction between what the plaintiff mustestablish as respects his right and what he must show as respects its violationdid not long survive. It was rejected by the Court of Appeal in Hubbard v. Vosper [] 2 Q. The Court, however, expressly deprecated anyattempt to fetter the discretion of the court by laying down any rules whichwould have the effect of limiting the flexibility of the remedy as a means ofachieving the objects that I have indicated above.

Nevertheless this authoritywas treated by Graham J. Your Lordships should in my view take this opportunity of declaring thatthere is no such rule. 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. The court no doubt must be satisfied that the claim is not frivolousor vexatious; in other words, that there is a serious question to be tried.

These arematters to be dealt with at the trial. One of the reasons for the introductionof the practice of requiring an undertaking as to damages upon the grantof an interlocutory injunction was that " it aided the court in doing that" which was its great object, viz.

Duke of Buccleugh[] 12 L. So unless the material available to the courtat the hearing of the application for an interlocutory injunction fails 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 relief that is sought. If damages in the measure recoverable under such an undertaking would bean adequate remedy and the plaintiff would be in a financial position to paythem, there would be no reason upon this ground to refuse an interlocutoryinjunction.

It is where there is doubt as to the adequacy of the respective remedies indamages available to either party or to both, that the question of balance ofconvenience arises. It would be unwise to attempt even to list all thevarious matters which may need to be taken into consideration in decidingwhere the balance lies, let alone to suggest the relative weight to be attachedto them.

These will vary from case to case. 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. 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 of 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.

I would reiterate that, in addition to those to which I have referred, theremay be many other special factors to be taken into consideration in theparticular circumstances of individual cases. The instant appeal affords oneexample of this. As Patent Judge he has unrivalled experience ofpharmaceutical patents and the way in which the pharmaceutical industryis carried on.

Lacking in this experience, an Appellate Court should behesitant to over-rule his exercise of his discretion, unless they are satisfied thathe has gone wrong in law.

Theyheld a dominant position in the United Kingdom market for absorbent surgicalsutures and adopted an aggressive sales policy. Cyanamid on the other handwere in the course of establishing a growing market in PHAE surgical sutureswhich competed with the natural catgut sutures marketed by Ethicon. IfEthicon were entitled also to establish themselves in the market for PHAEabsorbable surgical sutures until the action is tried, which may not be fortwo or three years yet, and possibly thereafter until the case is finallydisposed of on appeal, Cyanamid, even though ultimately successful inproving infringement, would have lost its chance of continuing to increaseits share in the total market in absorbent surgical sutures which the continua-tion of an uninterrupted monopoly of PHAE sutures would have gained forit by the time of the expiry of the patent in It is notorious that newpharmaceutical products used exclusively by doctors or available only onprescription take a long time to become established in the market, that muchof the benefit of the monopoly granted by the patent derives from the factthat the patented product is given the opportunity of becoming establishedand this benefit continues to be reaped after the patent has expired.

In addition there was a special factor to which Graham J. In view of the fact that there areserious questions to be tried upon which the available evidence is incomplete,conflicting and untested, to express an opinion now as to the prospects ofsuccess of either party would only be embarrassing to the Judge who willhave eventually to try the case. The likelihood of such embarrassmentprovides an additional reason for not adopting the course that both GrahamJ.

I would allow the appeal and restore the order of Graham J. I agree with it and that this appeal should beallowed and the Order of Graham J. Please subscribe to download the judgment.


American Cyanamid Co (No 1) v Ethicon Ltd

Contains public sector information licensed under the Open Government Licence v3. Such an objection was made in the Natural Colour case, 32 Americn. The plaintiffs must be able to show that the strength of their case is such that in the circumstances there should be an interlocutory injunction. Go to Lord Salmon Go to. The observations of the Lords were not confined to claims for processes.


American Cyanamid principles

These are sutures ofa kind that disintegrate and are absorbed by the human body once theyhave served their purpose. The Appellants " Cyanamid " , an AmericanCompany, are the registered proprietors of the patent. Its priority datein the United Kingdom is October 2nd, At that date the absorbablesutures in use were of natural origin. They were made from animaltissues popularly known as catgut. The Respondents " Ethicon " , a sub-sidiary of another American Company, were the dominant suppliers ofcatgut sutures in the U. Cyanamid introduced their patented product in


American Cyanamid

Its Consumer Products division included Shulton products, primarily Old Spice cologne and after-shave lotion, Breck shampoo, and Pine-Sol household cleaner. A variety of fine fragrance products were made and sold by Shulton under license, including products under labels Nina Ricci, Pierre Cardin, Tabac, and others. In its last years, the company was involved in numerous legal issues related to its earlier environmental pollution. Tens of millions more were spent in efforts to clean up large wastewater pools which had decades of accumulation of toxic, carcinogenic, and teratogenic chemicals. These are considered by the U.

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