Anan Kasei Company Ltd v Neo Chemicals and Oxides Ltd (formerly Molycorp Chemicals and Oxides (Europe) Ltd)
| Jurisdiction | England & Wales |
| Judge | Lord Justice Floyd,Lord Justice Peter Jackson,Lord Justice Lewison |
| Judgment Date | 09 October 2019 |
| Neutral Citation | [2019] EWCA Civ 1646 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2018/1510 A3/2019/0550 A3/2019/0826 |
| Date | 09 October 2019 |
[2019] EWCA Civ 1646
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND & WALES
INTELLECTUAL PROPERTY LIST (ChD)
Mr Roger Wyand QC sitting as a Deputy High Court Judge
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Lewison
Lord Justice Floyd
and
Lord Justice Peter Jackson
Case No: A3/2018/1510 A3/2019/0550 A3/2019/0826
Richard Meade QC and Adam Gamsa (instructed by Bird & Bird LLP) for the Defendants
Thomas Mitcheson QC and Miles Copeland (instructed by Hogan Lovells International LLP) for the Claimants
Hearing dates: 17–18 July 2019
Approved Judgment
A patentee limits his claim by the words “consisting essentially of” a particular oxide. One issue in the first of three appeals which are before the court is whether those words give rise to such uncertainty as to lead to invalidity of the patent. The patentee also limits his claim by reference to a desirable physical characteristic for such an oxide, namely high specific surface area, and specifies that it remains the same after being subjected to a high temperature heating test. The second issue in the first appeal is whether, a claim so drawn insufficiently describes the invention, and is invalid for that reason. The judge, Mr Roger Wyand QC, sitting as a Deputy High Court Judge, held, in outline, that the “consisting essentially of” language did not give rise to objectionable uncertainty, and that the claim breadth was justified because everything covered by the claim was unified by a common principle. I will refer to the appeal from his decision dated 23 April 2018 and his consequent order as “the patent appeal”.
The proceedings below were commenced by the claimants and respondents Anan Kasei Co. Ltd and Rhodia Operations S.A.S. (together “Rhodia”) for infringement of European Patent (UK) No 1 435 338 (“the patent”). The defendant, Molycorp Chemicals and Oxides (Europe) Limited (now named Neo Chemicals and Oxides (Europe) Limited (“Neo UK”)) denied infringement and counterclaimed for revocation of the patent on the grounds of lack of novelty, obviousness and insufficiency. The lack of novelty objection was abandoned at the trial, and the judge rejected the objections of obviousness and insufficiency, holding the patent to be valid. He found that Neo UK had infringed the patent by dealing in its commercial products in the UK. Neo does not appeal the judge's rejection of the obviousness objection or his conclusion that, if the patent is valid, it is infringed. The appeal is solely against the judge's rejection of the insufficiency ground.
The remaining two appeals (which I will refer to as “the procedural appeals”) relate to events since the judgment of Mr Wyand QC. They raise issues concerning whether Neo Performance Materials Inc (“Neo Canada”), the parent company of Neo UK, can be joined to the proceedings in order to hold it responsible for any damages awarded against Neo UK. Rhodia seek to do this on the basis, first, that Neo Canada was a joint tortfeasor with Neo UK in the period (“the Neo Canada period”) when it was the parent of Neo UK, and, secondly, on the basis that Neo Canada has acquired the liabilities of Neo UK's previous parent company, Neo Cayman Holdings Inc. (“Neo Cayman”). It is alleged that Neo Cayman had also acted as a joint tortfeasor with Neo UK during the earlier period (“the Neo Cayman period”) when it was the relevant parent company of Neo UK.
In a judgment dated 18 December 2018, Mr Caddick QC, sitting as a Deputy High Court Judge, held the allegation of joint tortfeasance by Neo Canada in the Neo Canada period to be arguable but refused to allow joinder of Neo Canada in respect of any assumed liabilities of Neo Cayman in the Neo Cayman period. In a further judgment dated 19 March 2019, HHJ Hacon sitting as a Deputy High Court Judge held, on an inter partes application to set aside Mr Caddick's order, that the allegation of joint tortfeasance against Neo Canada was limited to specific acts in relation to a particular seizure of goods (“the seized goods”). Rhodia appeal against both judgments. Neo does not challenge Mr Caddick's conclusion that it is arguable that Neo Canada was jointly liable with Neo UK in respect of the seized goods, but resists the attempt to make it liable more widely or for acts of Neo Cayman. Neo contends that it is not arguable that Neo Cayman incurred any liability as a joint tortfeasor with Neo UK, and, even if it did, it is not arguable that Neo Cayman transferred that liability to Neo Canada.
The patent appeal
It is convenient to deal first with the patent appeal. In this section I will refer to Mr Wyand QC as “the judge”.
The patent and the invention
The patent is concerned with ceric oxide or ceria, which is an oxide of the element cerium, and is a catalyst known for use in a variety of applications. The particular use with which the patent is concerned is as a catalyst for purifying vehicle exhaust gases. It was well known to use ceric oxide in combination with another oxide catalyst (co-catalyst) for this purpose. Zirconium oxide (zirconia) was a well known co-catalyst.
In order to function effectively in exhaust gas purification devices, the oxide material needs to have a high specific surface area (SSA) at low temperatures and to maintain that high specific surface area at the high temperatures encountered in vehicle exhaust systems. The high SSA maximises the available physical surface on which the gases can interact with the catalyst. It was well known to add zirconia to ceric oxide to stabilise the SSA of the ceric oxide at high temperatures. Without the presence of added oxides such as zirconia, ceric oxide was known to undergo sintering at high temperatures, thus reducing its SSA, and thus its otherwise desirable characteristics. A ceric oxide which was resistant to sintering at high temperatures, thus maintaining its high SSA, but which did not require the use of a co-catalyst was desirable, but no such product was known.
The patent has five product claims relating to specific characteristics of a ceric oxide with a high surface area. It is sufficient to consider claim 1, because Rhodia do not seek to uphold any of the other product claims if claim 1 is, contrary to the judge's finding, invalid. It is in these terms:
“A ceric oxide consisting essentially of a ceric oxide, and wherein said ceric oxide has a specific surface area of not smaller than 30.0 m 2/g when subjected to calcination at 900°C for 5 hours.”
Calcination is high temperature heating. The claim has some implicit limitations in addition to the express ones. As calcination will not increase SSA, it is implicit that the ceric oxide has a SSA of not less than 30.0 m 2/g before the calcination test as well, i.e. in the product as supplied. Further, it is implicit that the ceric oxide is in solid form (i.e. not in solution): if it were otherwise there could be no measurement of SSA, and the calcination test would not make sense either.
The fact that the ceric oxide of the claim “consists essentially of ceric oxide” might be thought to be a tautology, but would be understood as being specified in order to exclude from the claim mixed oxides such as ceria/zirconia mixtures. The requirement for a specific surface area not smaller than 30.0 m 2/g after the specified calcination step is thus a test for the performance of the essentially ceric oxide material under high temperature conditions.
Other claims of the patent are directed to methods of making the ceric oxide of claim 1. These methods are described in examples in the specification. There is no attack on the validity of the method claims. The product claims are of course potentially broader as they are not limited to ceric oxide made according to the methods so described and claimed. Patentees prefer product claims because they are easier to enforce, as the defendant is unlikely to have made public the details of the process by which its product is made.
The specification contains a grid of worked examples of the patentee's method, showing the achievement of the desired SSA after calcining over a wide range of values above 30.0 m 2/g. There is no insufficiency attack on the basis that the promise of these highly desirable properties is not met across a large range of values. Rather it is complained that the claim extends to ceric oxide products having the desirable characteristics of the claim, but which are not made by the patentee's process, or any process which owes anything to it.
Construction
It is necessary to say something about the words “consisting essentially of”. In patent jargon there is a distinction between a claim for a composition of matter which “consists” of something and a claim for such a composition “comprising” something. The first formulation will normally be taken to impose a requirement that nothing else is present, while the latter formulation is simply a minimum requirement, agnostic as to whether other things are present as well. So a claim to a cake mix “consisting of sugar, eggs, butter and flour” is not infringed by one containing chocolate chips, but that would not be the case if the word “comprising” was substituted for “consisting of”.
The words “consisting essentially of” are something of a hybrid of these two formulations. The words obviously do not restrict the claim to the specified ingredient alone, and might be said to give rise to some uncertainty in the absence of some further guidance as to what it means. The parties are agreed, however, that the skilled person...
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