THE SUPREME COURT OF APPEAL OF SOUTH AFRICA
JUDGMENT

Reportable
Case no: 1349/18

In the matter between:

NU-WORLD INDUSTRIES (PTY) LTD

APPELLANT
and
STRIX LIMITED

RESPONDENT

Neutral citation: Nu-World Industries (Pty) Ltd v Strix Ltd (Case no
1349/18) [2020] ZASCA 28 (26 March 2020)

Coram:
MAYA P, MBHA, VAN DER MERWE and MOKGOHLOA
JJA and GORVEN AJA

Heard:
12 November 2019
Delivered: 26 March 2020

Summary:  Court order – interpretation – infringement of patent – separation
of issues – determination of infringement – impermissible to introduce new
infringements in determination of damages or royalties enquiry.
_____________________________________________________________

ORDER
_____________________________________________________________

On appeal from:  Court of the Commissioner of Patents, Pretoria (Matojane
J, sitting as court of first instance):

The appeal is upheld with costs to the extent reflected in paragraph 2
hereof.
The order of the court of first instance is set aside and substituted by
the following order:
(a)
Paragraphs 3, 4 and 5 of the application to amend are granted.
(b)
Save for paragraph (a) hereof, the application to amend is dismissed
with costs.
_____________________________________________________________
JUDGMENT
_____________________________________________________________

Gorven AJA (Maya P, Mbha, Van der Merwe and Mokgohloa JJA
concurring)

[1] In this appeal it will be convenient to refer to the appellant as Nu-World
and the respondent as Strix. The appeal concerns domestic kettles which are
imported and sold by Nu-World. Strix has registered patent 95/4779 (the
patent) under the Patents Act1 (the Act). Claim 1 of the patent lists various
components of domestic kettles. The one material to this appeal is ‘a thermally
sensitive overheat control arranged to operate in the event of said element
overheating so as to interrupt or reduce the supply of electrical energy to the

1 Patents Act 57 of 1978.

element; said thermally sensitive overheat control comprising at least two
thermally responsive sensors arranged in good thermal contact with, and at
spaced apart locations on, the base of the container or the element, said sensors
individually being operable, in the event only of said element overheating
when the vessel boils dry or is switched on dry so as to interrupt or reduce the
supply of electrical energy to the element.’ In everyday parlance the control
is called a cut-out switch.

[2] In April 2011, Strix instituted action against Nu-World in the Court of
Commissioner of Patents, alleging that it had infringed claim 1 of the patent.
It averred that certain kettle models imported by Nu-World contained
thermally sensitive overheat controls protected by the patent. It listed four
such controls; Liang Ji LJ-06A, Liang Ji LJ-06, Sunlight SLD-105A IL and
Jia Tai KSD688-A.

[3] Two of the aspects on which Strix sought relief relate to the present
appeal. The first aspect of the relief sought was an interdict against Nu-World
preventing it from breaching the patent in these terms:
‘[A]n interdict restraining the defendant from infringing claim 1 of South African patent
95/4779 by making, using, disposing, offering to dispose of, or importing liquid heating
vessels containing Liang Ji LJ-06A, Liang Ji LJ-06, Sunlight SLD-105A IL or Jia Tai
KSD688-A thermally sensitive overheat controls . . .’.
The second aspect was:
‘as to damages
(i)   an enquiry as to the damages suffered by the plaintiff as a result of the infringement of
the South African patent 95/4779 by the defendant, alternatively as to the amount of a
reasonable royalty as contemplated in s 65(6) of the Patents Act, 1978 and payment of the
amount found to be due to it;

(ii)   an order directing that, in the event of an enquiry in terms of sub-paragraph (i) being
ordered and the parties being unable to reach agreement as to the further pleadings to be
filed, discovery, inspection or other matters of procedure relating to the enquiry, any of the
parties may make application to the court for directions in regard thereto.’
The issues were separated, with the court initially dealing only with the issue
of whether the four controls of Nu-World listed in the prayer had infringed
the patent and interdictory relief arising from any such infringement (the
infringement part of the action).

[4] The claim was dismissed by Preller J, sitting in the Court of
Commissioner of Patents.2 He found that Nu-World had made out the defence
of lack of novelty. On appeal, this court found that this defence should not
have succeeded. It found that the Jia Tai KSD688-A control did not infringe.3
However, the other three controls listed in the prayer did infringe the patent
(the three infringing controls). On that basis, this court set aside the order of
the court of first instance and substituted it with the following order:
‘(a) the defendant is interdicted from infringing claim 1 of South African Patent 95/4779
(the patent) by making, using, disposing, offering to dispose of, or importing liquid heating
vessels containing Liang Ji LJ-06A, Liang Ji LJ-06 or Sunlight SLD-105A IL thermally
sensitive overheat controls or any other thermally sensitive overheat controls as claimed in
claim 1 of the patent;
(b) the defendant is ordered to deliver up any product infringing the patent and any article
or product of which an infringing product forms an inseparable part;
(c) as to damages:
(i) an  enquiry is ordered as to the damages suffered by the plaintiff as a result of the
infringement of the patent by the defendant, alternatively as to the amount of a reasonable

2 Strix Limited v Nu-World Industries (Pty) Ltd [2014] ZACCP 1.
3 Strix Limited v Nu-World Industries (Pty  Ltd [2015] ZASCA 126; 2016 (1) SA 387 (SCA).

royalty as contemplated in s 65(6) of the Patents Act, 1978 and payment of the amount
found to be due to it;
(ii) in the event of the parties being unable to reach agreement as to the further pleadings
to be filed, discovery, inspection or other matters of procedure relating to the enquiry, any
of the parties may make application to the court for directions in regard thereto;
(d) the defendant is ordered to pay the plaintiff’s costs, including the costs of two counsel
to the extent that such were employed and including the qualifying and attendance fees of
the expert witness Richard Moorhouse.’4

[5] In arriving at its conclusion, this court reasoned:
(a)
‘The question was whether a Nu-World kettle with any one of these
[four] controls constituted an infringement of claim 1 of the patent in suit.’
(b)
‘The Jia Tai KSD688-A kettle . . . had a distance of 0,5 millimetres
between the two sensors … . In respect of that kettle the infringement would
not have been proved.’
(c)
‘In respect of the remaining [three] kettles, Preller J disregarded the
evidence and erred in concluding that in relation to them there was no
infringement.’5

[6] Strix thereafter sought to amend its declaration. Paragraphs 3 to 5 of the
Notice of Intention to Amend were not objected to. Paragraphs 1 and 2 did
attract opposition. Paragraph 1 sought to insert the following two new
paragraphs after paragraph 5:
‘5A
Properly interpreted the Supreme Court of Appeal order, and specifically
paragraphs 2(a) and 2(c)(i) thereof, provide that an enquiry is ordered as to the damages
suffered by the plaintiff as a result of the infringement of the patent by the defendant by
making, using, disposing, offering to dispose of, or importing liquid heating vessels

4 See para 26.
5 Strix paras 9, 22 and 24.

containing Liang Ji LJ-06A, Liang Ji LJ-06, Sunlight SLD-105A or Sunlight SLD-105 IL
thermally sensitive overheat controls or any other thermally sensitive overheat controls as
claimed in claim 1 of the patent.
5B
As a result of the aforesaid, the Commissioner is authorised and required in the
enquiry into damages to ascertain whether any controller relied upon by the plaintiff in
support of its claim for damages is a thermally sensitive overheat control as claimed in
claim 1 of the patent.’
And paragraph 2 sought to insert the following two new paragraphs after
paragraph 8:
‘8A
In addition to that which is pleaded in paragraph 8 above, the defendant imported
and sold infringing liquid heating vessels in which the thermally sensitive overheat
controller was modified during the manufacturing process by:
8A(a) Removing one bimetal sensor where the controller consisted of two discrete
bimetal sensors and no meltable fuse;
8A(b) Removing the meltable fuse where the controller consisted of a meltable
fuse and bimetal combination;
8A(c) Fitting a thermal fuse in contact with the heating element and connected to
the controller alternatively to the heating element.
8B
Liquid heating vessels containing controllers modified in the aforesaid manner fall
within claim 1 of the patent.’

[7] Nu-World objected that it is impermissible to amend so as to include in
the enquiry into damages or royalties (the damages part of the action) any
controls other than the three infringing controls. Sunlight SLD-105A and
Sunlight SLD-105 IL, referred to in paragraph 5A, were not considered in the
infringement part of the action. However, Strix clarified that the second of
these two arises from an error in the Notice. It ought to have referred to
Sunlight SLD-105A IL which is one of the three infringing controls. The only
one not dealt with in the infringement part of the action and sought to be

introduced in paragraph 5A is thus Sunlight SLD-105A. Further, Nu-World
complained that paragraph 5B would allow Strix to attempt to prove that other
controls not even identified in the Notice also infringe claim 1 of the patent.
Finally, the complaint of Nu-World lay against the proposed inclusion of
modified controls dealt with in paragraphs 8A and 8B for similar reasons.
These, too, did not form part of the infringement part of the action. Apart from
this, Nu-World asserted that at least part of any claim relating to any of these
(if proved to have infringed) would have prescribed because the period of the
claim runs from 2008 to 2015.

[8] The nub of the objection, however, is that the judgment on the separated
issue of the infringement part of the action is final. This court made no finding
on any of the controls sought to be introduced. The damages part of the action
is limited to damages or royalties arising from infringement by the three
infringing controls. It cannot consider any further infringements. All that is
left to determine is the quantum of damages or the reasonable royalties
payable to Strix arising from the three infringing controls and those controls
only.

[9] Strix squarely bases its right to the amendment on the words in
paragraph (a) of the order of this court. This interdicts against use of the three
infringing controls ‘or any other thermally sensitive overheat controls as
claimed in claim 1 of the patent’ (the additional words). As a result, it says it
is entitled to bring controls other than the three infringing controls into
account in the damages part of the action. Strix concedes that if the
amendment is allowed, this ‘would require the court hearing the damages

enquiry to determine whether thermally sensitive overheat controls other than
the three controls already found to infringe the patent, are also infringing’.

[10] The application to amend came before Matojane J in the Court for the
Commissioner of Patents. He granted the application to amend. It is this order
which is before us on appeal, with the leave of Fourie J since Matojane J was
not available to hear the application for leave to appeal. It is clear that the
appeal is directed only against that part of the order allowing paragraphs 1 and
2 of the Notice of Intention to Amend.

[11] The appeal hinges on the interpretation of the order of this court. It is
this on which Strix relies for its contention that controls other than the three
infringing controls can be brought into account. The law relating to the
interpretation of court orders is set out in Finishing Touch 163 (Pty) Ltd v
BHP Billiton Energy Coal South Africa Ltd and Others:6
‘The starting point is to determine the manifest purpose of the order. In interpreting a
judgment or order, the court’s intention is to be ascertained primarily from the language of
the judgment or order in accordance with the usual, well-known rules relating to the
interpretation of documents. As in the case of a document, the judgment or order and the
court’s reasons for giving it must be read as a whole in order to ascertain its intention.’

[12] The order is premised on a positive finding that the patent was infringed
by the three infringing controls. For present purposes, there follow two,
discrete aspects to the order. Paragraph (a) grants interdictory relief.
Paragraph (c)(i) relates to an enquiry into the damages or royalties payable as
a consequence of the controls found by the court to have infringed.

6 Finishing Touch 163 (Pty) Ltd v BHP Billiton Energy Coal South Africa Ltd and Others [2012] ZASCA
49; 2013 (2) SA 204 (SCA) para 13.

[13] This is the standard approach in infringement claims and is based on
s 65(3) of the Act, which provides:
‘A plaintiff in proceedings for infringement shall be entitled to relief by way of—
(a) an interdict;
(b) delivery up of any infringing product or any article or product of which the infringing
product forms an inseparable part; and
(c) damages.’
And s 65(6) provides:
‘In lieu of damages the plaintiff may, at his or her option, be awarded an amount calculated
on the basis of a reasonable royalty which would have been payable by a licensee or sub-
licensee in respect of the patent concerned.’
It will be noted that the relief in the order of this court is based on these
provisions.

[14] The interdictory relief which was granted is not limited to the three
infringing controls. It includes the additional words. It goes beyond what was
sought by Strix in its prayer. But interdictory relief is essentially forward-
looking and geared to prevent future unlawful conduct. The patent affords
Strix, as holder, a clear right to prevent any infringement, past or future,
established or not. Infringements not yet committed frequently form the basis
of interdictory relief. It is designed to protect against any future infringement,
both by the three infringing controls and by any other controls. Paragraph (a)
of the order of this court is accordingly widely framed. It is unremarkable that
the interdict goes beyond the three infringing controls to include the additional
words.

[15] The proposed paragraph 5A claims that the entitlement to damages
from other infringements arises from an interpretation of this court’s order

and ‘specifically paragraphs 2(a) and 2(c)(i)’ thereof on the basis of the
additional words. There are at least two insurmountable difficulties with this
assertion. First, paragraph 2(c)(i) of the order does not use those words. They
are only used in paragraph 1. Secondly, it ignores the wording of paragraph
2(c)(i) of the order which limits the enquiry into damages or royalties
claimable ‘as a result of the infringement of the patent by the defendant’.7
What infringement is implicated? It can only refer to that which had been
found in the infringement part of the action. The enquiry directed to be held
into damages or royalties is firmly based on, and limited to, the finding of
actionable past conduct. The infringement which has given rise to the order in
paragraph 2(c)(i) is that of the three infringing controls and those alone. There
is no suggestion in the judgment that damages for any other infringements can
form part of the damages part of the action.

[16] This interpretation is buttressed by the fact that a separated issue has
been finally decided. As I have noted, Strix concedes that, if granted, the
amendment will require the court to determine whether controls other than the
three infringing controls also infringed. The purpose of separating the issues
in a suit is to deal finally with a discrete part of it. This is because that issue
might be dispositive of the entire matter. If it proves to be dispositive, the
additional time and expense of dealing with the other issues is saved. Other
than on appeal, the judgment cannot be revisited. This is why such a judgment
is appealable. It is final in effect, despite not having disposed of all of the
issues in the action.

7 My emphasis.

[17] The effect of an order made on a separated issue is similar to that
explained by Innes J in Steytler NO v Fitzgerald:8
‘It is sufficient for the purposes of this case to say that when an order incidentally given
during the progress of litigation has a direct effect upon the final issue, when it disposes of
a definite portion of the suit, then it causes prejudice which cannot be repaired at the final
stage, and in essence it is final, though in form it may be interlocutory.’
This approach has not changed. The general principle of when an order has
final effect (and is thus appealable) was explained again in Marsay v Dilley:9
‘[W]here a trial Court has under some competent procedure (such as an application under
Rule 33(4)) made an order which has the effect of being a final decision (ie one which
cannot be corrected or altered or set aside by the trial Judge at a later stage of the trial) and
the decision is definitive of the rights of the parties and has the effect of disposing of a
substantial portion of the relief claimed by the plaintiff in the main action, then this order
is a judgment (as understood in s 20(1) of the Supreme Court Act 59 of 1959) and is
appealable, despite the fact that the main action has not been concluded.’10
The order concerning infringement disposed of that portion of the action
concerning which of the controls of Nu-World infringed claim 1 of the patent.
This has been finally determined. Not only that, but the initial order was
appealed and resulted in the order now under consideration being granted on
appeal. To allow an enquiry into whether Nu-World has infringed by other or
modified controls amounts to dealing with material which belongs under the
infringement part of the action on which a final judgment has been given. This
is impermissible.

8 Steytler NO v Fitzgerald 1911 AD 295 at 313.
9 Marsay v Dilley 1992 (3) SA 944 (A) at 962C-F.
10 The repeal of the Supreme Court Act 59 of 1959 and its replacement by the Superior Courts Act 10 of 2013
has not altered the principle involved.

[18] It is not as if Strix applied to reopen the infringement part of the action.
Depending on the circumstances of a matter, this may or may not be
permissible.11 Because Strix does not seek to do so, it is unnecessary to say
anything further on this score. Instead, Strix seeks to argue that the enquiry as
to whether additional controls infringe the patent can take place during the
damages part of the action. But in that part, all that is to be determined is the
damages or royalties which should accrue as a consequence of the
infringement which this court determined had taken place. Strix admits that
this strays beyond the territory of the damages part of the action, saying that
it ‘would require the court hearing the damages enquiry to determine whether
thermally sensitive overheat controls other than the three controls already
found to infringe the patent, are also infringing’. This, too, is not permissible
and militates against the interpretation contended for by Strix.

[19] Therefore, on the basis that the order, properly interpreted, did not open
the door to new claims of infringing controls, on the finality of the separated
aspect of the suit dealing with past infringements, and on the fact that the
amendment would result in the enquiry into damages or royalties to stray
beyond those arising from the three infringing controls, the amendment should
not have been allowed. In the result, the court of first instance erred in doing
so. The appeal must be upheld and that order must be set aside.

[20] The following order issues:

11 In this regard see David Hersch Organisation (Pty) Ltd and Another v ABSA Insurance Brokers (Pty) Ltd
1998 (4) SA 783 (T) at 787C-G; Schmidt Plant Hire (Pty) Ltd v Pedrelli 1990 (1) SA 398 (D); Tolstrup NO
v Kwapa NO 2002 (5) SA 73 (W) at 77I-J&78A.

The appeal is upheld with costs to the extent reflected in paragraph 2
hereof.
The order of the court of first instance is set aside and substituted by
the following order:
(a)
Paragraphs 3, 4 and 5 of the application to amend are granted.
(b)
Save for paragraph (a) hereof, the application to amend is dismissed
with costs.

________________________
GORVEN AJA
ACTING JUDGE OF APPEAL

Appearances

For appellant:
AJ Bester SC
Instructed by:
Bouwers Inc, Johannesburg
Phatshoane Henney, Bloemfontein

For respondent:
P Ginsburg SC, with him KD Iles

Instructed by:
Spoor & Fisher, Pretoria
Matsepes Inc., Bloemfontein.

THE SUPREME COURT OF APPEAL
REPUBLIC OF SOUTH AFRICA

MEDIA SUMMARY – JUDGMENT DELIVERED IN THE SUPREME COURT OF APPEAL

From:
The Registrar, Supreme Court of Appeal
Date:
March 2020
Status:
Immediate

Please note that the media summary is intended for the benefit of the media and
does not form part of the judgment of the Supreme Court of Appeal.

Nu-World Industries (Pty) Ltd
v
Strix Ltd

Today the Supreme Court of Appeal upheld an appeal from the Court of the
Commissioner of Patents, Pretoria. Strix Ltd (Strix) had sued Nu-World Industries
(Pty) Ltd (Nu-World), alleging that Nu-World had infringed claim 1 of patent 95/4779
(the patent) registered in favour of Strix under the Patents Act. Claim 1 related to
controls used in kettles which would cut the power supply to the element if the kettle
boils dry or is switched on when empty. It was alleged that Nu-World was using
controls in its kettles which infringed the patent.

At the initial hearing, the parties separated the issues in the suit, initially proceeding
only to determine if four named controls of Nu-World infringed and, accordingly
whether an interdict should be granted to prevent future infringement. The question
of damages or royalties arising from any infringement was held over (the damages
part of the action). Preller J determined that the patent had not been infringed and
dismissed the claim. On appeal, however, this court held that three of the named
controls (the infringing controls) had infringed while the fourth did not. It accordingly

interdicted Nu-World from using the three infringing controls and added to the
interdict the words, not  requested by Strix, ‘or any other thermally sensitive overheat
controls as claimed in claim 1 of the patent’ (the additional words).

Strix thereafter claimed to have discovered infringements by controls other than the
three infringing controls and that certain modified controls of Nu-World infringed the
patent. On the basis that the order of this court included the additional words, Strix
sought to amend its declaration to include, in the damages part of the action, an
enquiry into whether the additional controls infringed the patent and damages which
accrued from any such infringement along with the claim for damages arising from
the three infringing controls. Nu-World objected to the amendment which prompted
an application to amend by Strix. The opposition was to the effect that the court order
did not allow for further infringements to be determined during the damages part of
the action. Matojane J, sitting in the Court of the Commissioner of Patents, allowed
the amendment but granted Nu-World leave to appeal his order doing so.

This court held that the inclusion in the order of this court of the additional words was
limited to the interdictory relief. This was forward looking and was geared to prevent
future infringements. As such, it was appropriate to interdict any infringement of the
patent in order to protect Strix from any future infringement. The order referring the
damages part of the action did not include the additional words. It referred an enquiry
into damages arising from the found infringements, ie the three infringing controls.
Because the issues in the action had been separated, the judgment on the
infringement part was final and determinative of the controls for which Strix could
claim damages. It was accordingly impermissible to have a further enquiry into
infringements during the damages part of the action.