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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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Guidelines set out in this case to establish whether an applicant has an adequate case for the granting of an interlocutory injunction.

This interlocutory appeal concerns a patent for the use as absorbablesurgical sutures of filaments made amercan a particular kind of chain polymerknown as ” a polyhydroxyacetic ester ” ” PHAE “.

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.

American Cyanamid principles | Practical Law

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.

American Cyanamid Co v Ethicon Ltd [] AC | Croner-i

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.

American Cyanamid principles

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. Theyallowed the appeal and discharged the judge’s order. Leave to appealfrom that decision was granted by Your Lordships’ House. 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. The question whether the use of XLG as an absorbable surgical sutureis an infringement of Cyanamid’s patent depends upon the meaning to begiven to the three words ” a polyhydroxyacetic ester ” in the principal claim.

Cyanamid’s contention is that at the date of publication of the patent thosewords were used as a term of art in the chemistry of polymerisation not onlyin the narrower meaning of a homopolymer of which the units in the chain,apart from the end stabilisers, consisted solely of glycolide radicals but alsoin the broader meaning of a copolymer of which up to 15 per cent, of theunits in the chain would be lactide radicals; and that what was said in thebody of the patent made it clear that in the claim the words were used inthis wider meaning.

Ethicon’s first contention is that the words ” a polyhydroxyacetic ester “in the principal claim bear the narrower meaning only, viz. 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.

After a detailed analysis of the conflicting experttestimony he said: That is to say” that I do not consider that a prima facie case of infringement is established. 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.

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 be infringed by Ethicon’s selling sutures made of XLG.

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. 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 ethivon where the balance.


In the instant appeal, however, the question of thebalance of convenience, although it had been considered by Graham J. They considered that there was a rule of practice so well established as toconstitute a rule of law that precluded them from granting any interiminjunction unless upon the evidence adduced by both the parties on the hear-ing of the application the applicant had satisfied the court that on the balanceof probabilities the acts of the other party sought to be enjoined would, ifcommitted, violate the applicant’s legal rights.

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.

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. 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.

My Lords, when an application for an interlocutory injunction to restraina defendant from doing acts alleged to be in violation of the plaintiff’s legalright is made upon contested facts, the decision whether or not to grant aninterlocutory injunction has to be taken at a time when ex hypothesi theexistence of the right or the violation of it, or both, is uncertain and willremain uncertain until final judgment is given in the action.

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 object of the interlocutory injunction isto protect the plaintiff against injury by violation of his right for which hecould not be adequately compensated in damages recoverable in the action ifthe uncertainty were resolved in his favour at the trial; but the plaintiff’sneed for such protection must be weighed against the corresponding need ofthe defendant to be protected against injury resulting from his having beenprevented from exercising his own legal rights for which he could not beadequately compensated under the plaintiff’s undertaking in damages if theuncertainty were resolved in the defendant’s favour at the trial.

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.

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.

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. 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. 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. 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.

If damages in the measure recoverableat common law would be adequate remedy and the defendant would be ina financial position to pay them, no interlocutory injunction should normallybe granted, however strong the plaintiff’s claim appeared to be at that stage.

If, on the other hand, damages would not provide an adequate remedy forthe plaintiff in the event of his succeeding at the trial, the court should thenconsider whether, on the contrary hypothesis that the defendant were tosucceed at the trial in establishing his right to do that which was sought to beenjoined, he would be adequately compensated under the plaintiff’s under-taking as to damages for the loss he would have sustained by being preventedfrom doing so between the time of the application and the time of the trial.

American Cyanamid Co v Ethicon Ltd [1975] AC 396

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 americna 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.

Save in the simplest cases, the decision to grant or to refuse an interlocutoryinjunction will cause to whichever party is unsuccessful on the applicationsome disadvantages which his ultimate success at the trial may show he oughtto have been cyxnamid and the disadvantages may be such that the recovery ofdamages to which he would then be entitled either in the action or under theplaintiff’s undertaking would not be sufficient to compensate him fully forall of them.

The extent to which the disadvantages to each party would beincapable of being compensated in damages in the event of his succeedingat the trial is always a significant factor in assessing where the balance ofconvenience lies; and if the extent of the uncompensatable disadvantage toeach party would not differ widely, it may not be improper to take intoaccount in tipping the balance the relative strength of each party’s case asrevealed by the affidavit evidence adduced on the hearing of the application.

This, however, should be done only where it is apparent upon the facts dis-closed by evidence as to which there is eghicon credible dispute that the strengthof one party’s case is amedican to that of the other party. The courtis not justified in embarking cyaanamid anything resembling a trial of the actionupon conflicting affidavits in order to evaluate the strength of either party’scase.

I would reiterate that, in addition to vyanamid 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. Returning, therefore, to the instant appeal, it cannot be xmerican that theaffidavit evidence shows that there are ameriacn questions to be tried. 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 ethicno law. The factors which he took into consideration and, in my view properly,were that Ethicon’s sutures XLG were not yet ethicln the market; so they had nobusiness which would be brought to a stop cyanamif the injunction ; no factorieswould be closed and no work-people would be cyanaid out of work.

Theyheld a dominant position in the United Kingdom market for absorbent surgicalsutures and adopted an aggressive sales policy.