Nu-World Industries (Pty) Ltd v Strix Limited

Strix Limited is the holder of patent 95/4779 under the Patents Act 57 of 1978, covering domestic kettles with specific thermally sensitive overheat controls (cut-out switches). In April 2011, Strix sued Nu-World Industries for patent infringement, alleging that Nu-World imported and sold kettles containing four specific thermally sensitive overheat controls that infringed claim 1 of the patent: Liang Ji LJ-06A, Liang Ji LJ-06, Sunlight SLD-105A IL and Jia Tai KSD688-A. The issues were separated, with the court first determining whether infringement occurred (the infringement part). Preller J dismissed the claim, finding lack of novelty. On appeal, the Supreme Court of Appeal found that three of the four controls (all except the Jia Tai KSD688-A) did infringe the patent. The SCA granted an interdict and ordered an enquiry into damages or royalties. Strix then sought to amend its declaration to include additional controls and modified controls in the damages enquiry. Nu-World objected that only the three infringing controls found by the SCA could form part of the damages enquiry. Matojane J granted the amendment, leading to this appeal.

• Whether a court order on a separated issue dealing with past infringements is final and cannot be reopened during subsequent damages proceedings
• Whether an interdict preventing future infringement of a patent permits the introduction of new alleged infringements (not previously determined) into a damages enquiry
• The proper interpretation of a court order, particularly where issues have been separated
• The scope of a damages enquiry following a finding of patent infringement on separated issues

The appeal was upheld with costs. The order of the court of first instance (Matojane J) was set aside and substituted with an order granting only paragraphs 3, 4 and 5 of the application to amend (which were uncontested), and dismissing the remainder of the application to amend with costs.

Where issues in patent infringement litigation have been separated and a court has made a final determination as to which specific products infringe a patent, a subsequent enquiry into damages or royalties is limited to quantum arising from those specific proven infringements. New allegations of infringement by other products or modified products cannot be introduced during the damages phase, as this would require the court to determine infringement issues that form part of the separated aspect already finally decided. The damages enquiry under section 65(3)(c) and section 65(6) of the Patents Act 57 of 1978 is backward-looking and confined to consequences of established past infringement, whereas interdictory relief under section 65(3)(a) is forward-looking and may extend to future potential infringements beyond those already proven. A judgment on a separated issue that definitively determines rights and disposes of a substantial portion of relief claimed is final in effect and cannot be revisited or expanded except through proper procedures such as an application to reopen (which must be brought in the phase dealing with that issue, not during subsequent phases).

The court noted that it is not necessarily impermissible to apply to reopen the infringement part of an action, stating "Depending on the circumstances of a matter, this may or may not be permissible" (para 18). However, since Strix did not seek to reopen the infringement part but instead attempted to introduce new infringement determinations into the damages phase, the court found it unnecessary to elaborate on the circumstances in which reopening might be permitted. The court cited several cases (David Hersch Organisation (Pty) Ltd and Another v ABSA Insurance Brokers (Pty) Ltd, Schmidt Plant Hire (Pty) Ltd v Pedrelli, and Tolstrup NO v Kwapa NO) in a footnote regarding this point, but declined to provide further guidance on the topic.

This case is significant in South African patent law and civil procedure for establishing clear boundaries between separated issues in litigation. It clarifies that: (1) where issues are separated and a final determination is made on past infringements, that determination cannot be reopened or expanded during subsequent damages proceedings; (2) interdictory relief preventing future infringement is forward-looking and distinct from damages arising from past proven infringement; (3) a damages enquiry following a finding of patent infringement is limited to quantum arising from the specific infringements already determined, and cannot be used as a vehicle to litigate new infringement claims; and (4) the finality of judgments on separated issues must be respected to maintain procedural integrity and the purpose of separation of issues (judicial economy and certainty). The case provides important guidance on the interpretation of court orders in patent litigation and the proper scope of damages enquiries under sections 65(3) and 65(6) of the Patents Act 57 of 1978.