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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Click to upgrade Your Package to have this feature. The notion that it is incumbent upon the court to undertake what is in effect a preliminary trial of the action upon evidential material different from that upon which the actual trial will be conducted, is, I think, of comparatively recent origin, though it can be supported by references in.

The question is whether the plaintiff would suffer irreparable injury or only an injury which cyaanamid be compensated in damages. The patent will not expire till and so the perpetual injunction, which will be granted if. A further source of damage to the defendants arises out of the great expense involved in developing and preparing to market their products over many years.

American Cyanamid Co. v. Ethicon Ltd.

At most there could only be a minor commercial set-back in the development of their business, bearing in mind their resources. If Ethicon were entitled also to establish themselves in the market for PHAE absorbable surgical sutures until the action is tried, which may not be for two or three years yet, and possibly thereafter until the case is finally disposed of on appeal, Cyanamid, even though ultimately successful in proving infringement, would have lost its chance of continuing to increase.

When the court is cyanammid whether or not to grant an interlocutory injunction the right approach is to ask first whether or not there is a serious question rthicon be tried.

IfEthicon were entitled also to establish themselves in the market for PHAEabsorbable surgical sutures until the action is tried, which may not be fortwo or three years yet, and possibly thereafter until the case is finallydisposed of on cyanamidd, Cyanamid, even though ultimately successful inproving infringement, would have lost its chance of continuing to increaseits share in the total market in absorbent surgical sutures which the continua-tion of an uninterrupted monopoly of PHAE sutures would have gained forit by the time of the expiry of the patent in Its priority date in the United Kingdom was October 2, The shackles of Harman Pictures N.


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. 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.


They are all different ways of saying that if the claim is construed widely it includes copolymers which will not have as surgical sutures the characteristics described in the body of the patent. Luck 27 Ch.

These objections are really the obverse of their argumentin favour of the narrower construction.

On an application for an interlocutory injunction the court must look at the respective situations of the two contending parties.

The court refrained from expressing any view on any of the other issues raised. They allowed the appeal and discharged the judge’s order. There are four points of defence: In view of the fact that there are serious questions to be tried upon which the available evidence is incomplete, conflicting and untested, to express an opinion now as to the prospects of success of either party would only be embarrassing to the judge who will have eventually to try the case.

They were made from animaltissues popularly known as catgut. At that date the absorbable sutures in use were of natural origin. Ethicon also attack the validity of the patent on the ground of obviousness.

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. Here, if anything, it means that the plaintiff has more than a 50 per cent. You have reach your max limit. Theyheld a dominant position in the United Kingdom market for absorbent surgicalsutures and adopted wmerican aggressive sales policy.

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These arematters to be dealt with at the trial. Voluminous affidavits and cyqnamid were filed on behalf of each party. These are to be contrasted with expressions in other cases indicating a much less onerous criterion, such as the need to show that there is “certainly a case to be tried” Jones v. Returning, therefore, to the instant appeal, it cannot be doubted that the affidavit evidence shows that there are serious questions to be tried.

The trial judge wrongly applied the test of commercial utility. Whether there are any special factors. Cyanamid introduced their patented product in If an interlocutory injunction is granted and the defendants succeed at the trial, the plaintiffs will have to pay them such damages as are attributable to the injunction.

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

There is no suggestion that they would not be good for any damages which might be awarded against them if they lost the action eventually. The essence of this invention was discovering a material which would make a satisfactory suture. In each case one must ask why damages are not a sufficient remedy. The court, however, expressly deprecated any attempt to fetter the discretion of the court by laying down any rules which would have the effect of limiting the flexibility of the remedy as a means of achieving the objects that I have indicated above.


The application can be and should be refused without the court needing to form any prima facie view as to the respective rights of the parties. The Courtmust weigh one need against another and determine where ” the balance of” convenience ” lies. The courtis not justified in embarking upon anything resembling a trial of the actionupon conflicting affidavits in order to evaluate the strength of either party’scase. Cyanamid on the other hand were in the course of establishing a growing market in PHAE surgical sutures which competed with the natural catgut sutures marketed by Ethicon.

Held, allowing the appeal, 1 that in all cases, including patent cases, the court must determine the matter on a balance of convenience, there being no rule that it could not do so unless first satisfied that, if the case went to trial on no other evidence than that available at the hearing of the application, the plaintiff would be entitled to a permanent injunction in the terms of the interlocutory injunction sought; where there was a doubt as to the parties’ respective remedies in damages being adequate to compensate them for loss occasioned by any restraint imposed on them, it would be prudent to preserve the status quo post, pp.

This is a paid feature. In the present case it could be serious for the defendants to have to put all their work into cold storage.

For the purpose of deciding whether the plaintiffs have established a prima facie case the House must decide whether on the evidence the construction for which they contend is the one. 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 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.