IN THE MATTER OF LETTERS PATENT NO. 465,045 IN THE NAME OF G. M. GIANNINI & COMPANY INCORPORATED

318 No. 14.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [1956.] In the Matter of Letters Patent No. 465,045 in the Name 01 G. M. Giannini & Company Incorporated. IN THE HIGH COURT OF JUSTICE-CHANCERY DIVISION. Before MR. JUSTICE LLOYD-JACOB. 2nd October, 1956. No. 465,045 IN THE NAME OF & COMPANY INCORPORATED. IN THE MATTER OF LETTERS PATENT G. M. GIANNINI 5 Patent-Petition for extension-Application to postpone hearing till judgment given in pending action for infringement-Form of order. On an applcation to fix a date for the hearing of a petition for extension of G. & Coy. Inc's L.P. No. 455,065 relating (inter alia) to the manufacture of nuclear-reactors the Petitioners P.E. Ld. and certain of the Opponents asked that 10 the hearing should stand over until judgment had been given in an action in which the validity and scope of the L.P. and the right of the Petitioners to recover a very large sum as damages for infringement, would be determined. Certain of the Opponents opposed this course on the ground (inter alia) that manufacturers could not fix prices for future deliveries of reactors whilst it was uncertain whether 15 royalties would be payable on such reactors. Held by Lloyd-Jacob, J. that the application should be adjourned with liberty to any party to the petition to restore it on four days notice. This application came before Lloyd-Jacob, J. on 2nd October, 1956. Graham, Q.c., and S. Gratwick (instructed by Bird & Bird), appeared for the 20 Petitioners for Extension, Philips Electrical Ld. Aldous, Q.C., and John Whitford (instructed by The Treasury Solicitor), appeared for th~ Opponents, the United Kingdom Atomic Energy Authority. Aldous, Q.C., and John Whitford (instructed by R. A. Finn), appeared for the Opponents, the Central Electricity Authority. 25 Tookey, Q.c., Kenneth Johnston, Q.c., R. A. B. Shaw and Eric Walker (instructed by Bristows, Cooke & Carpmael), appeared for the Opponents, the General Electric Coy. Ld., and the English Electric Coy. Ld, 319 [1956.] REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [No. 14. In the Matter of Letters Patent No. 465,045 in the Name of G. M. Giannini & Company Incorporated. S. 1. Levy (intructed by Lovell, White & King), appeared for the Opponents, A.E.l. John Thompson Nuclear Energy Coy. Ld. R. A. B. Shaw (instructed by Bristows, Cooke & Carpmael), appeared for the Opponents, C. A. Parsons & Coy. Ld. 5 P. J. Stuart Bevan (instructed by the Solicitor, Board of Trade), appeared for the Comptroller-General of Patents, etc. Graham, Q.C., for the Petitioners for Extension.~We say that the petition should be left until the action has been disposed of. The Atomic Energy Authority and the Electricity Authority agree; the commercial Opponents object. We say 10 that it would be unjust to reject the petition, perhaps on a ground that the Court will have to decide upon in the action, when the action is already on foot. The Patentees will in any event be willing to license the patent for reasonable royalties, so there can be no real objection to postponement. Aldous, Q.C., for the Opponents, the Atomic Energy Authority and Electricity 15 Authority.-First, it is impossible-or would be unreasonable-to dispose of the petition until the action has been tried. The Patentees are asking, in the action, as damages in respect of the manufacture of isotopes alone, some £225,000. Until this claim has been adjudicated upon, the remuneration of the Patentees cannot be assessed and therefore an extension could not be assessed. Secondly, there 20 are issues, essential to the petition, which are properly decided in the action and not in a petition. In particular, there is the issue of vatidity, and the question whether the claims cover the operation of atomic piles in itself or only the manufacture of isotopes in piles. It would be unjust that the Patentees should have an extension now on the basis that their claims exclude the mere operation 25 of piles, and should then receive royalties for the term of an extension following a Court decision that this was included; and it would be unjust to the Patentees if the case were the other way round. The same applies to all other questions. Thirdly, in view of the amount of damages claimed and the extent of the expenditure the Petitioners claim to have made upon this invention, and con30 sidering the sort of questions that must be gone into in relation to validity, the decision in the action seems certain to dispose of the petition one way or the other. As a matter of the balance of convenience, it is clear that the action ought to be tried first. Finally, there is the question of public interest. Hearing of the petition will involve canvassing of secret matters, and this should be 35 avoided if possible. If the action is heard first, this will be avoided. Tookey, Q.C., for the Opponents, G.E.C. and English Electric.-The commercial Opponents, having no recourse to public funds, want to know the extent of their liability, and cannot consent to any delay in the preparation of the petition. [Lloyd-Jacob, J.-That is not suggested; preparation of the petition 40 ought to go ahead in any case: the question is whether I should indicate now that no date will be fixed for hearing until the action is determined.] There may be questions of amendment. [Lloyd-Jacob, J.-That could be met by the usual sort of undertaking not to amend.] The Act determines precisely when a petition is to be presented. It is not good enough that the Petitioners say they are not 45 now in a position to give the necessary information. The Patentees raised in the Spring of 1948 the question of their rights against the predecessors of the Atomic Energy Authority, and were told in 1948 that they would receive no royalties by agreement. It is entirely their own fault that the action is still on foot so many years later. [Lloyd-Jacob, J.-There are two alternatives: either to 320 No. 14.J REPORTS OF PATENT, DESIGN, AND TRADE MARK CASES [1956.J In the Matter of Letters Patent No. 465,045 in the Name of G. M. Giannini & Company Incorporated. fix a day now, or to stand over with liberty to restore. As I see it, there is no question of postponing the petition without regard to what happens to the action·1 Tookey indicated that either alternative would be accepted to his clients. Levy for the Opponents, A.E.I.-John Thompson Nuclear Energy Coy.-My clients' only business is in nuclear reactors; they are already under contract to supply more 5 than one reactor and other contracts are close. In these circumstances, certainty is essential to them: they need to be able now to fix accurate prices. It is more important that they should know the extent of their liability, than that they should avoid paying royalties, for only then can they compete with suppliers of reactors from other countries where the corresponding patents have expired, or where 10 there were no such patents. [Lloyd-Jacob, J.-If you talk like that, you (...truncated)