Corus UK Ltd v Qual Chem Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Jacob (giving the first judgment at the invitation of Lord Justice Pill) |
| Judgment Date | 29 October 2008 |
| Neutral Citation | [2008] EWCA Civ 1177 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2008/0466 |
| Date | 29 October 2008 |
[2008] EWCA Civ 1177
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE PATENTS COUNTY COURT
HHJ FYSH QC
The Rt Hon Lord Justice Pill
The Rt Hon Lord Justice Scott Baker
The Rt Hon Lord Justice Jacob
Case No: A3/2008/0466
PAT 06026
Simon Thorley QC and Michael Tappin (instructed by Freshfields Bruckhaus Deringer) for the Appellant
Roger Wyand QC and Richard Davis (instructed by Douglas-Jones Mercer) for the Respondent
Hearing date: 21 October 2008
Corus, the defendants, appeal from a judgment and order of HHJ Fysh QC sitting in the Patents County Court, [2008] EWPCC He held that Qual-Chem's patent No. 2,363,635 was valid and infringed. After hearing Mr Thorley QC open the case for Corus we concluded that it was unnecessary to hear oral argument from Mr Wyand QC. He had of course already provided a skeleton argument which we found most helpful. We indicated the appeal would be dismissed. These are my reasons for so deciding.
Although Corus pleaded many more points originally, the Judge had to deal with what, by my count, were no less than 10 discrete points or sub-points. The taking of many points is often the mark of a party which does not feel it has a single “killer”. So it proved before the Judge who rejected all of them.
On appeal, Corus have restricted themselves to just two points: a single issue of non-infringement and an allegation that the patent is invalid pursuant to the provisions of s.72(1)(d) of the Patents Act 1977.
Neither side suggests that this case involves our having to decide any question of legal principle. For that reason there is no need to write this judgment as a self-standing document for a general readership. For the same reason it is not necessary to set out here matters which are uncontroversial, were dealt with by the Judge and can be referred to by cross-reference. This judgment is to be read in conjunction with his judgment which is available at www.bailii.org.
The Patent
The patent was amended following grant. We are concerned with that amended patent which has what is known as a “C” specification. The “A” specification is the application as filed. The “B” specification (which does not matter for present purposes) is the patent as granted. The Judge describes the “C” specification uncontroversially at paragraphs [20–31].
Claim 1 of the patent was broken up into integers by the Judge as follows:
A A method of killing slag on the surface of molten steel present in a receptacle
B in which additive material comprising metallic aluminium in the form of pellets, tablets or briquettes
C is gas conveyed to the slag in a conveying gas
D in an inclined divergent stream from conveying apparatus spaced above the slag surface
E the conveying gas pressure being tailored with respect to the conveyed additive material to cause the conveyed additive material to penetrate into and remain in the slag
G said conveying gas being air.
The person skilled in the art
The Judge held that the addressee of the patent –“the person skilled in the art”– was “a person involved in process and technical management of a steel plant and, in particular, a person with hands on experience of primary and secondary steel making processes”. Mr Thorley QC for Corus accepted that.
The common general knowledge
The common general knowledge of such a person was summarised by the Judge in [12–19]. Reference may be made to those paragraphs for more detail but for present purposes it is sufficient to note the following:
i) After steel has been “tapped” from the steel making phase into a ladle it will have not only the molten steel (consisting mainly of iron) but a supernatant slag. This contains FeO and MnO.
ii) Treating slag is known by the technical term “killing”– the addition of a material to reduce the oxides, resulting in the release of free Fe or Mn and the formation of a corresponding aluminium oxide. A commonly used material is aluminium. Of particular relevance is that calcium carbonate was known for killing slag but is a material one would not want to introduce into molten iron below the slag to provide a secondary treatment of the steel.
iii) Such secondary treatment of the underlying steel is often needed particularly for the production of specialised steel.
The Added Matter Objection
This involved no question of legal principle and raised no controversy before us. The key provision is Art 123(2) of the European Patent Convention:
A European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.
The provisions of the UK Act are, typically I am afraid, in unnecessarily different and more convoluted language. Neither side suggested they had any different meaning from the Convention so there is no need to waste time going to them.
The authorities on added matter are well known and were recently summarised in this Court, in European Central Bank v Document Security Systems [2008] EWCA Civ 192 at [11–12] and Vector v Glatt [2007] EWCA Civ 805, [2008] RPC 10 at [3–8]. Since it is uncontroversial there is no point in reciting these passages here.
Mr Thorley also reminded us of what Neuberger LJ said in LG Philips v Tatung [2006] EWCA Civ 1774, [2007] RPC 21 at [28–34] He faintly suggested that Aldous J, in Southco v Dzus [1990] RPC 587 at p. 616, in referring to a comparison of the inventions of the A specification and the patent was somehow posing a different requirement than that of added subject-matter. But it is clear he was not, as his well-established test in Bonzel v Intervention (quoted in the passages I have cited) shows. In the end, as I said in Richardson-Vicks Patent [1995] RPC 568 at 576, it comes to this:
.. the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification.
So what we have to do is to ascertain what is disclosed explicitly and implicitly in the “A” specification. This must be done without hindsight, i.e. without knowing the result being sought. The same exercise must be performed on the “C” specification. We are looking to see whether there is an extension of subject matter.
Mr Thorley contended that the “A” specification is confined to the treatment of “molten iron” meaning strictly the material itself as opposed to the supernatant slag. He was prepared to accept that the specification did contemplate some treatment or effect on the slag, but, he submitted there was no disclosure of the treatment of slag alone.
There is no option at this point other than to go to the A specification to see whether this contention is made out. I set out most of the relevant passages, in an appendix to this judgment, labelling them for use in this subsequent discussion.
Mr Thorley's primary contention was based on the premise that the term “molten iron” is used in contrast to the supernatant slag and that...
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