Patents: statements made before Assistant Commissioner did not find estoppel in High Court patent infringement proceedings - NJ Phillips Pty Ltd v Forlong & Maisey Ltd

The recent procedural decision of Associate Judge Faire in NJ Phillips Pty Ltd v Forlong & Maisey Ltd is interesting for the approach which was adopted to the defendant’s pleaded defence of estoppel by representation. 

The defendants had pleaded that submissions which had been made by the plaintiff's Counsel at a hearing before the Assistant Commissioner of patents (which related to opposition to the grant of the Letters Patent in suit) raised an estoppel by representation which they could rely upon as a defence in the High Court proceeding for patent infringement.

It was alleged that the plaintiff’s former counsel, a Mr Hopkins, had made representations on behalf of the plaintiff as to the significance of a piece of prior art, namely a hand-held fluid dispenser.

It was also alleged by the defendants that Mr Hopkins's representations before the Assistant Commissioner had included a submission that the positioning of the valve in the piston of the invention was an essential integer of the patent and prior art cited by the second defendant was not relevant prior art because it failed to have a valve in the piston. 

The defendants pleaded that the decision of the Assistant Commissioner had expressly accepted that a one-way valve in the piston was part of one of the essential integers of the alleged invention. 

It was alleged that the defendants had relied on the plaintiff's c ounsel's representations in adopting its design for its Ezi-Squeeze applicator (the item alleged to infringe the patent) in which the valve is not in the piston.  And it argued that the plaintiff was therefore estopped in the High Court infringement proceedings from denying that the positioning of the valve in the piston was an essential integer of the patent and, as a consequence, from alleging that the Ezi-Squeeze applicator infringed the patent.

This amounted to a defensive pleading which alleged estoppel by representation. 

The plaintiff sought to have this pleading struck out. 

The question for Associate Judge Faire was whether submissions made by counsel in the course of a hearing can amount to a representation which, if acted upon by a party in receipt of the representation, cannot be resiled from by the party whose counsel made the submission.

Neither counsel were able to locate any authority to the effect that a counsel’s submissions at a hearing amounted to a representation on behalf of that counsel’s client in circumstances where, if the submission was relied upon by a party, counsel's client would then be estopped from acting inconsistently with what counsel had submitted. 

After considering the law in New Zealand relating to estoppel by representation, Associate Judge Faire came to the conclusion that the submissions put forward by Mr Miles QC on the matter were decisive.  Those submissions were that the submissions of Mr Hopkins did not amount to representations which could give rise to an estoppel.  Mr Miles submitted that submissions of counsel:

• are simply arguments advanced to persuade a judicial authority that a particular position should be accepted;

• are addressed to the hearing officer, not the other party;

• are not a statement of fact but are simply counsel's opinion;

• can be abandoned, altered or resile from; and

• are fundamentally different from formal undertakings which are intended to be relied upon by the parties. 

On the basis of these submissions Associate Judge Faire held that the submissions made before the Assistant Commissioner were not representations and therefore could not found a defence based upon estoppel by representation.  Having reached that conclusion, he struck out the relevant pleading.

Enquiries and information

For more information on patents or any other intellectual property issues please email Garry Williams or call Garry on 64 9 916 8661.