Marine 3 Technologies Holdings (Pty) Ltd v Afrigroup Investments (Pty) Ltd

Marine 3 Technologies Holdings (Pty) Ltd (Marine 3) was the patentee of South African Patent Number 2008/10778, issued on 30 June 2010 for a 'surface active ingredient composition' (a surfactant). The invention found application in mining (dust control), fire fighting (wetting enhancement), and agriculture (wetting and fertilizer penetration). Marine 3 had applied for patents in various jurisdictions including the USA, European Community, Australia and New Zealand, with patents issued in Australia and New Zealand. The second respondent, Hendrik du Toit, was previously associated with Marine 3. On 14 November 2008, Du Toit, his company Afrigroup Investments (Pty) Ltd (first respondent), and Marine 3 entered into a distribution agreement making Afrigroup the sole distributor of Marine 3's product range. The relationship soured in late 2009 or early 2010 when Du Toit wanted to market competitors' products. The deteriorating relationship led to litigation. Marine 3 launched an Anton Piller application and an application for interim relief to interdict alleged infringement of the patent. Afrigroup opposed these applications and counter-applied for revocation of the patent under s 61(1) of the Patents Act 57 of 1978 on various grounds including inutility, lack of novelty and inventiveness, incomplete specification, and unclear claims. At the hearing, Afrigroup abandoned all grounds except inutility. The Court of the Commissioner of Patents (Tuchten J) found for the respondents, ruling that the invention could not be performed because sodium chloride and SLES (sodium alkyl ether sulphate) could not be dissolved in the base liquid in the claimed proportions. The court granted leave to appeal. Subsequently, the parties settled most matters, but Marine 3 proceeded with the appeal because the judgment affected a public register (judgment in rem).

• Whether the patent was invalid on grounds of inutility under s 61(1)(d) of the Patents Act 57 of 1978
• Whether the composition claimed in claim 1 of the patent could be performed or manufactured
• The proper interpretation of the words 'dispersed' and 'dissolved' in the context of claim 1 of the patent
• Whether the evidence established that it was impossible to create the composition in the proportions claimed
• The standard of proof required to establish inutility and invalidate a granted patent

The appeal was upheld. The order of the court below in the revocation application was set aside and substituted with the following order: 'The application for the revocation of South African Patent No. 2008/10778 is dismissed.'

1. In construing patent claims, courts must adopt a purposive approach that considers the context of the invention as a whole, rather than engaging in excessive textual analysis of individual words in isolation. 2. Technical words in patent claims must be given their ordinary meaning as understood by a person skilled in the particular art or science to which the patent relates. 3. The onus of establishing invalidity on grounds of inutility rests on the party challenging the patent, to be discharged on a balance of probabilities. 4. Purely theoretical objections to the utility of a patent are insufficient to establish inutility where there is factual evidence that the invention has been commercially manufactured and used. 5. The best evidence of the utility of an invention is actual commercial use, particularly where the alleged infringer has themselves used or manufactured the invention. 6. An invention satisfies the requirement of utility if, from the perspective of the skilled person, its utility is demonstrated or soundly predicted. 7. Judgments affecting public registers (judgments in rem) cannot be simply abandoned by settlement between parties and must be appealed to correct the public record.

The court made observations about the nature of judgments in rem affecting public registers, citing Rembrandt Fabrikante en Handelaars (Edms) Bpk v Gulf Oil Corporation that the existence of exclusive rights to intellectual property flows from and is dependent upon registration, and the nature and extent of such rights is determined by entries in the register. Such rights are effectively assigned, transferred, modified or terminated by such entries. This necessitated Marine 3 proceeding with the appeal despite settlement. The court also noted the permissibility of referring to subsequent claims for purposes of interpreting a preceding claim, as pointed out by Nugent JA in Aktiebolaget Hässle v Triomed (Pty) Ltd. The court referenced Turner v Bowman for the proposition that perverse attempts to show failure, or the choice of unusual combinations which will not succeed, is not generally sufficient to support a plea of non-utility, citing Halsbury and Transvaal and Orange Free State Chamber of Mines v General Electric Co.

This case is significant in South African patent law for establishing important principles regarding: (1) the interpretation of patent claims using purposive construction rather than overly textual approaches; (2) the proper understanding of technical terms in patents by reference to the meaning understood by a person skilled in the art; (3) the standard for establishing inutility - that theoretical objections are insufficient when there is factual evidence of commercial manufacture and use; (4) the principle that the best evidence of utility is actual commercial use, particularly by alleged infringers; and (5) the application of the principle that judgments affecting public registers (judgments in rem) cannot simply be abandoned by settlement and must be appealed to correct the public record. The case reinforces the approach established in cases such as Gentiruco, Monsanto, Roman Roller, and Aktiebolaget Hässle regarding patent claim construction.