Anan Kasei Company Ltd v Molycorp Chemicals & Oxides (Europe) Ltd
| Jurisdiction | England & Wales |
| Judge | Roger Wyand |
| Judgment Date | 23 April 2018 |
| Neutral Citation | [2018] EWHC 843 (Pat) |
| Date | 23 April 2018 |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HP-2016-000018 |
[2018] EWHC 843 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (CHD)
Royal Courts of Justice Strand, London, WC2A 2LL
Mr Roger Wyand QC
SITTING AS A DEPUTY HIGH COURT JUDGE
Case No: HP-2016-000018
Tom Mitcheson QC and Miles Copeland (instructed by Hogan Lovells International LLP) for the Claimants
Piers Acland QC and Adam Gamsa (instructed by Bird & Bird LLP) for the Defendant
Hearing dates: 16, 17, 18, 19 and 24 January 2018
Judgment Approved
Roger Wyand QC, Deputy High Court Judge:
The First Claimant (now named Solvay Special Chem Japan, Ltd., “Solvay”), is the proprietor of European Patent No. 1 435 338 entitled “Ceric Oxide and method for production thereof and catalyst for exhaust gas clarification” (the Patent) which is designated in respect of Belgium, France, Germany, Italy and the United Kingdom. The Second Claimant Rhodia, is the exclusive licensee in respect of (at least) the German and UK designations. The Claimants are companies within the Solvay group. Solvay is a global company with headquarters in Belgium. Rhodia manufactures and sells products that are used in catalysts, including a high surface area ceric oxide for use in catalysts in vehicle exhausts. I shall call the Claimants collectively Rhodia.
The Defendant is now named Neo Chemicals and Oxides (Europe) Ltd (“Neo”). Neo is a private limited company domiciled in the UK. It is the UK subsidiary of a global group of companies (the “Neo Group”) headquartered in Toronto with corporate offices in the US and China. The Neo Group includes a Chinese subsidiary, Zibo Jiahua Advanced Materials Resource Co., Ltd (“Zibo”), which manufactures products for use in catalysts, including high surface area ceric oxide products that are used in catalysts in vehicle exhausts. Neo is responsible for the sale and distribution of these products in Europe.
On 13 April 2016 Rhodia commenced these proceedings alleging that Neo had infringed the UK and German designations of the Patent. By Order dated 21 July 2016, Arnold J struck out the claim for relief in respect of the German designation of the Patent. Neo counterclaimed in these proceedings alleging invalidity of claims 1 to 5 inclusive of the Patent. The basis of the challenge to the validity of the Patent has changed several times since the original pleading, the current pleading being the Re-Re-Re-Re-Re-Amended Grounds of Invalidity. At trial, the grounds relied upon were obviousness of claims 1 to 5 over US 5,712,218 (Chopin), anticipation of claim 1 by the public availability of a Rhône-Poulenc product, cerium oxide 99.5 HSA-514 and insufficiency.
Technical Background
Engine management systems aim to control the air/fuel mixture in a car engine to achieve a stoichiometric mixture such that the oxygen and fuel are both completely consumed eliminating the noxious gases. Under normal usage conditions, this is not possible to achieve and the conditions fluctuate from net oxidising to net reducing very rapidly, particularly as driving conditions change.
Cerium is a “rare-earth element” which can exist in either a trivalent (cerous) or tetravalent (ceric) state. The tetravalent ceric oxide is also known as ceria. This case is concerned with ceric oxide or ceria.
Ceric oxide containing materials are used, and have been used for some time, in a number of different applications involving catalysis, and particularly as co-catalysts for purifying vehicle exhaust gas. They have the property of absorbing oxygen under the oxidising atmosphere and desorbing oxygen under the reducing atmosphere. This oxygen absorbing/desorbing capability of the cerium oxide containing materials enables them to purify noxious components in exhaust gases such as hydrocarbons, carbon monoxide and nitrogen oxides, by converting them to carbon dioxide and water, to carbon dioxide and to nitrogen respectively.
To function efficiently in exhaust purification devices, the cerium oxide materials need to have a high specific surface area at low temperatures and to maintain a high specific surface area at the high temperatures encountered in vehicle exhaust systems. In the prior art, ceric oxide has been used in combination with other oxides, notably zirconium oxide, to stabilise its surface area at high temperatures. Without the presence of other oxides, ceria was known to sinter at high temperatures, typically 800 °C and above, reducing its specific surface area and thus reducing its desirable characteristics for vehicle exhaust purification. The chart below shows the oxygen storage capacity (OSC) and the thermal stability of cerium/zirconium mixed oxides which were state of the art in 2001. The left hand arrow shows that the surface area of a 20/80% cerium zirconium mixed oxide after ageing at 1173K (900C) for 6 hours was about 45 m 2/g whereas the right hand arrow shows that for a 100% ceric oxide it was about 20 m 2/g.
Fig. 52. Thermal stability and OSC at 673K of “state of the art” CeO 2–ZrO 2: mixed oxides after ageing at 1173K for 6 hours under air atmosphere; OSC was measured at 673 K by alternatively pulsing 2.5% O 2 in He and 5% CO in He over the catalyst. (Cuif et al. 1997.).
Ceria has also been used in a range of other applications, but none of them require it to maintain a high specific surface area at high temperatures.
The Patent has 5 product claims, relating to specific, measurable characteristics of a ceric oxide with a high surface area. There are also 3 method claims and a product claim to a catalyst for purifying exhaust gas comprising ceric oxide of claim 1, but these are not relevant for present purposes. Infringement is alleged of claims 1 and 3 to 5. The Patent claims, in claim 1, a ceric oxide having 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 essentially the process of heating to a high temperature in the presence of air or oxygen. The ceric oxide is defined as “an oxide consisting essentially of ceric oxide”.
The claim defines an obviously desirable material for use in vehicle exhaust purification devices but the material is not limited to such use. Claims 2 to 5 define the ceric oxide in terms of other specific characteristics. The specification teaches a method for making the ceric oxide of claim 1 and this is claimed in claims 6 to 8. There is no attack on the validity of these method claims. Claims 1 to 5 are not limited to products made by the process.
The Skilled Person
There is a significant conflict between the parties as to the identity of the skilled person and this is reflected in their choices for their experts. Dr Brophy, the Defendant's expert said this:
“ I consider that the Skilled Person would be a graduate chemist with experience in the design, preparation and characterisation of metal oxide supported catalysts. He would have several years' professional experience (most likely in industry) in the synthesis and characterisation of catalytic materials either at acatalyst manufacturer, an oil company or a chemicals/materials manufacturer. The Skilled Person would have knowledge of chemistry, the synthesis of metal oxides and catalysts, the characterisation of materials in general and catalysts in particular and also how these materials (metal oxides and catalysts) are applied in their particular sector of industry.”
The Claimants' expert, Prof. Burch, agrees that the skilled person would have a background in Chemistry (most likely a graduate level qualification), would have experience in making high surface area oxides and “would be someone working in the development of high surface area oxides for use in catalytic applications, such as vehicle exhaust catalysts”. He considers the Patent to be “concerned principally with those applications of ceric oxide where its oxygen storage capacity and thermal stability at high temperatures are important; namely, the application of ceric oxide in catalysts for purifying vehicle exhaust gas… This high temperature stability would not generally be seen as important for the other uses of pure ceric oxide referred to in paragraph [0001]”.
In their skeleton argument the Claimants said:
“As discussed more fully below, the Patent is principally directed to the use of ceric oxide for purifying vehicle exhaust gas. Although the Patent explains (in [0001]) that the invention relates to “ceric oxide that has excellent heat resistance useful for catalysts, functional ceramics, solid electrolyte for fuel cells, and the like, and particularly suitable for use as a co-catalyst material in catalysts for purifying vehicle exhaust gas…” the skilled person would understand it to be concerned principally with those applications of ceric oxide where its oxygen storage capacity and thermal stability at high temperatures are important. Rhodia contends that the skilled person would recognise that the use to which the parameters of the Patent were relevant is vehicle exhaust catalysts. Individuals not working in the field of vehicle exhausts will be less interested in the Patent and the prior art than those working in the field.”
I was referred by the Claimants to the case of Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] R.P.C. 33 where Jacob LJ stated in paragraph 65:
“ In the case of obviousness in view of the state of the art, a key question is generally “what problem was the patentee trying to solve?” That leads one in turn to consider the art in which the problem in fact lay. It is the notional team in that art which is the relevant team making up the person skilled in the art. …”
The problem in the present case was to identify a ceric...
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