IN THE HIGH COURT OF NEW ZEALAND AUCKLAND REGISTRY

CIV-2013-404-4178 [2015] NZHC 1775

UNDER	Patents Act 1953	

IN THE MATTER	
of New Zealand Patent No. 526262	

BETWEEN	
ASSA ABLOY NEW ZEALAND LTD First Plaintiff

ASSA ABLOY IP AB Second Plaintiff	

AND	
ALLEGION (NEW ZEALAND) LTD Defendant	

Hearing:	29 July 2015	

Counsel:	
C L Elliott QC and B M Peacock for Plaintiffs
M C Sumpter and J W J Graham for Defendant	

Judgment:	
30 July 2015	

JUDGMENT OF BREWER J

This judgment was delivered by me on 30 July 2015 at 11:30 am pursuant to Rule 11.5 High Court Rules.

Registrar/Deputy Registrar

Solicitors:	Terry IP Law (Wellington) for Plaintiff
Chapman Tripp (Auckland) for Defendant

Counsel:	Clive Elliott QC

ASSA ABLOY NEW ZEALAND LTD v ALLEGION (NEW ZEALAND) LTD [2015] NZHC 1775 [30 July
2015]

Introduction

[1]       The plaintiffs sue the defendant for infringement of a patent for a sliding door lock.   The defendant denies the infringement and counterclaims that the patent is invalid. The trial is imminent (17 August 2015).  Five days have been allowed.

[2]       The defendant now applies for leave to file an amended statement of defence and to file amended particulars of objection.  The plaintiffs oppose.  This judgment determines the defendant’s application.

The law

[3]       The High Court Rules require leave of the Court to file an amended pleading after the close of pleadings date1 and to file amended particulars.2   In this case I do not see any difference  to the approach  I should take to the components of the defendant’s application. They are interdependent and the same principles apply.

[4]       The leading case in this area is Elders Pastoral Ltd v Marr.3   It concerns an appeal from a decision of Tompkins J to allow a plaintiff to amend its statement of claim during final submissions. The Court of Appeal upheld the decision.

[5]       Tompkins J’s general approach, approved by the Court of Appeal, was that amendments should be made, even at a late stage, “if they are necessary for the purpose of determining the real controversy between the parties”.4   This was subject to the proviso that amendments should be declined if to make them is likely to result in an injustice to the defendant.

[6]       The  Court  of  Appeal  drew  the  principles  together  when  considering  a submission by counsel for the appellants on the supervisory role of the Court:5

[Counsel] argued for what may be called a disciplinary approach to belated applications for amendments: to penalise dilatoriness and to discourage opportunism.  In  our  opinion,  if  an  applicant  can  surmount  the  three

1	High Court Rules, r 7.7(1).
2	Rule 22.25.
3	Elders Pastoral v Marr (1987) 2 PRNZ 383 (CA).
4	At 384.
5	At 385.

formidable hurdles of showing that the amendment is in the interests of justice and will not significantly prejudice defendants or cause significant delay, very little if any weight should be given to the suggested desirability of something akin to the denunciation which is an established factor in criminal sentencing. We find it difficult to envisage a case in which the relevant considerations are not all comprehended in the three just mentioned.

[7]       I will decide the application on this basis.

Background

[8]       The defendant, on 2 July 2015, in the course of preparing evidence, became aware  for  the  first  time  of  a  lock  known  as  the  “Securicraft  MC  1120”.    The defendant claims that this lock is prior art, belongs to the plaintiffs, should have been disclosed by them, and it invalidates the patent in question.

[9]       The plaintiffs respond:

(a)       It is not in the interests of justice to amend the pleadings at such a late stage.

(b)       Amendment would cause significant prejudice.

(c)       The addition of the new lock under the grounds of lack of novelty and obviousness, along with the new ground of insufficient description, would mean that the trial date would have to be vacated.  Five days would be insufficient to deal with the new situation.  There would be significant delay in determining the plaintiffs’ claim.

Discussion

[10]     Like Tompkins J, my general approach is that I should allow the amendments if they are necessary for the purpose of determining the real controversy between the parties.   However, even if they are, I will not allow them if the likely result is injustice to the plaintiffs.

[11]     The defendant argues that the amendments are absolutely necessary.   If the patent is invalid then the claim of infringement falls away.   If the defendant can

prove that the newly discovered lock is prior art, then that alone would be sufficient to invalidate the patent.   It would be unjust to allow the plaintiffs to pursue their claim of infringement while denying the defendant the ability to put before the Court evidence which might persuade it that the patent is invalid.

[12]     I accept that argument, subject to analysing the plaintiffs’ position.  I note that the plaintiffs have done enough work on the newly discovered lock to be able to assert in affidavit that it does not invalidate the patent.  That means that there is a conflict of evidence which would have to be resolved at trial.  It is not a conflict on which I can, realistically, form a view on the material before me.

[13]     I note also that, since inspecting the lock on 7 July 2015, the plaintiffs have been working through written records, not searched previously, to see if anything pertains to the lock. The work is ongoing.

[14]     So, I have to look at whether, having regard to the plaintiffs’ position, the

overall interests of justice require the case to proceed without the amendments.

[15]     First,  the  plaintiffs  point  to  the  public  interest  in  protecting  intellectual property rights and running litigation efficiently.   The defendant says that the amendments do not really change the shape of the case.  There is no new cause of action.   This is merely an expansion of what is already pleaded.   The plaintiffs submit that the opposite is true.

[16]     I do not need to delve into the pleadings and the details of the particulars. That is because I accept that the amendments reshape the factual basis of the case. This is new evidence.  It could be decisive evidence.  Mr Elliott QC for the plaintiffs estimates that without the amendments the issue of validity would take two days of the five days allocated for the trial.  If the amendments are made, his estimate is that the issue of validity will take three weeks to argue.

[17]     Mr Sumpter, reporting the estimates of Mr Miles QC, submits that seven or eight days will be required for the trial without the amendments.   The amended pleadings could add perhaps three days to the estimate.

[18]     Mr Elliott submits that the lateness of the application adds to the plaintiffs’ prejudice.  It cannot be expected to respond, in the time available before trial, to this changed pleading.

[19]     The  prejudice,  Mr Elliott  submits,  is  compounded  by  delay.     If  the amendments are granted then the trial will have to be adjourned, probably until the middle of next year.  The plaintiffs are entitled to their day in Court, and it is nothing of their doing which has led to the situation.

[20]     I record that on the issue of blame, there is a significant dispute between the parties.   The defendant submits that the newly discovered lock belongs to the plaintiffs.  They should have discovered the prior art.  It was only fortuitous that the defendant found out about it on 2 July 2015.  The defendant points to the affidavit of Mr Weyermayr filed in support of the plaintiffs’ opposition as describing discovery activities which should have been performed before.   Mr Elliott responds that the tailored discovery order, and the common law, do not require the plaintiffs to go hunting for prior art.   He submits that the defendant has been dilatory, is being opportunistic,  and  has  provided  no  evidence  as  to  how  it  discharged  its  own obligation to justify its pleading in this area.

[21]     I accept there is prejudice to the plaintiffs if the amendments are allowed:

(a)       They will have to answer a counterclaim with a substantially different factual basis. This will involve work and expense.

(b)       There will be substantial delay because Mr Elliott is adamant that resolving the issues raised by the amendments cannot be accommodated in the allocated trial period.  However, he does submit that the issue of infringement could be dealt with.

[22]     My view of the overall interests of justice is that the amendments must be permitted.  Invalidity has been pleaded.  Now there is a new basis for it.  It could be determinative of the dispute between the parties.  It would be wrong, both from the point of view of the public interest in upholding intellectual property rights and from

the point of view that justice means resolving the actual disputes between parties, for the Court to embark on a trial which would produce a result without considering evidence of real import.

[23]     Usually, I would now ameliorate the prejudice to the plaintiffs by adjourning the trial to enable them to recover from their surprise, and awarding costs in their favour.  I am not going to do so:

(a)      The defendant, at the close of the hearing, itself applied for an adjournment.  Mr Sumpter submits that an adjournment is necessary because the case – with or without the amendments – cannot be heard within the allocated five days.  Mr Elliott opposes an adjournment.  In his submission, the infringement claim can be heard in the five days. Mr Sumpter opposes this.   His submission is that validity must be determined before infringement.  This is an issue outside the scope of the defendant’s application and it needs separate consideration in the context of the case overall.

(b)       There is a significant dispute as to whether the plaintiffs should have discovered the claimed prior art.  I think that the trial Judge will be best placed to decide that issue having heard the evidence, and to take the finding into account when determining costs.

Decision

[24]     The  application  is  granted.    Leave  is  given  to  the  defendant  to  file  the amended statement of defence and amended particulars.

[25]     I direct the registry to refer the case to the Civil List Judge so that he can determine:

(a)	Whether there should be an adjournment or whether the time should

be used to resolve the plaintiffs’ infringement claim; and

(b)	Arrangements, including date and time allocation, for the resolution of

either the case as a whole or the defendant’s counterclaim on validity.

[26]	Costs are reserved.

Brewer J