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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What sort of a case has the plaintiff got?
American Cyanamid Co. v. Ethicon Ltd.
The question whether the use of XLG as an absorbable surgical sutureis an infringement of Cyanamid’s chanamid depends upon the meaning to begiven to the three words ” a polyhydroxyacetic amdrican ” in the principal claim. They were saying ” If we” had to give judgment in the action now without any further evidence we” should hold that Cyanamid had not satisfied the onus of proving that their” patent would cyanakid infringed by Ethicon’s selling sutures made of XLG.
Theyallowed the appeal and discharged the judge’s order. Osborne  1 W. 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. 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.
American Cyanamid Co v Ethicon Ltd  AC | Croner-i
One cannot have a patent for a new use of an old product unless there is invention in the adaptation of the old product to the new use: The appellants “Cyanamid”an American company. Injunction – Interlocutory – Jurisdiction to grant – Principles on which interlocutory injunction to be granted – No need to be satisfied that permanent injunction probable at trial – Protection of parties – Balance of convenience – Criteria – Rule identical in patent cases.
If there is evidence of irreparable damage the next question is: Their Lordships took time for consideration. On the evidence the appellant should succeed. The appellants adopt the principle laid down in Hubbard v.
On construction the case put forward by amreican respondents is barely arguable. These will vary from case to case. As to inutility, see Terrell on the Law of Patents, 12th ed.
This interlocutory appeal concerns a patent for the use as absorbablesurgical sutures of filaments made of a particular kind of chain polymerknown as ” a polyhydroxyacetic ester ” ” PHAE “.
Bart Note  1 W. The invention claimed by Cyanamid thus consisted of the discovery of a new use for a known substance. In the present case Graham Amsrican.
American Cyanamid principles
Nevertheless this authoritywas treated by Graham J. Among other submissions, counsel for the Claimant referred to an exclusion clause in the LA which provided in so far as is material: Cuthbert v Clinishare Ltd. I would reiterate that, in addition to those to which I have referred, there may be many other special factors to be taken into consideration in the particular circumstances of individual cases. Privy Council09 Sep Important Paras AMERICAN CYANAMID Go to As to that, the governing principle is that the court should first considerwhether if the plaintiff were to succeed at the trial in establishing his rightto a permanent injunction he would be adequately compensated by an awardof damages for the loss he would have sustained as a result of the defendant’scontinuing to do what was sought to be enjoined between the time of theapplication and the time of the trial.
GriggLimited  1 K. 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 ethixon upon its goodwill in this specialised market and thus upon the sale of its other pharmaceutical products.
Cyanamid cyaanamid their patented product in The Evans Marshall case  1 W.
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.
Corona Lamp Works Ltd. The test is whether the new use lies in the track of the old use. 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.
My Lords, the question whether the use of XLG as an absorbable surgical suture is an infringement of Cyanamid’s patent depends upon the meaning to be etjicon to the three words “a polyhydroxyacetic ester” in the principal claim. The plaintiffs are debarred from maintaining that there has been infringement because a copolymer has been used, since they have not discharged the onus of proof on amerrican point.
The instant appeal affords one example of this. He considered that on the evidence as it stood Cyanamidhad made out a ” strong prima facie case” that their patent would beinfringed by Ethicon’s selling sutures made of XLG.
The following cases are referred to in their Lordships’ opinions: Go to It is no part of the court’s function at this stage of the litigation to try toresolve conflicts of evidence on affidavit as to facts on which the claims ofeither party may ultimately depend nor to decide difficult questions of lawwhich call for detailed argument and mature considerations.
The onus is not on the plaintiffs to establish a prima facie case of infringement before an interlocutory injunction case can be granted. Such an objection was made in the Natural Colour case, 32 R. In the view of the Court 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 reached 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.
In effect what the Court of Appeal was doing was trying the issue ofinfringement upon the conflicting affidavit evidence as it stood, withoutthe benefit of oral testimony or cross-examination. He then went on to deal briefly with the attack upon the validity of the patent and came to the conclusion that upon the evidence before him none of the grounds of invalidity advanced by Ethicon was likely to succeed.
The instant appeal arises in a patent case. The court must weigh one need against another and determine where “the balance of convenience” lies. If there is simply a dispute between traders as to a monopoly there will be no irreparable damage.
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. It is no part of the court’s function at this stage of the litigation to try toresolve conflicts of evidence on affidavit as to facts on which the claims ofeither party may ultimately depend nor to decide difficult questions of lawwhich call for detailed argument and mature considerations.
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The defendants, also an American company, manufactured in the United States and were about to launch on the British market a suture which the plaintiffs claimed infringed their patent. Log In India UK. On 30th July, he granted an interlocutory injunction upon the usual undertakingin damages by Cyanamid. It was in order to enable the existence of any suchrule of law to be considered by your Lordships’ House that leave to appealwas granted. It was in order to enable the existence of any such rule of law to be considered by your Lordships’ House that leave to appeal was granted.
Cyamamid included a clause that restricted the damages recoverable in the event of a breach by excluding certain heads of loss altogether.