Hadley Industries Plc (Claimant) Metal Sections Ltd and Another (Defendants) Sadef N.v (Opponent)
| Jurisdiction | England & Wales |
| Judge | MR. JUSTICE NEUBERGER |
| Judgment Date | 21 October 1999 |
| Judgment citation (vLex) | [1999] EWHC J1021-9 |
| Date | 21 October 1999 |
| Court | Queen's Bench Division (Administrative Court) |
| Docket Number | CH 1998 H No. 3870CH 1997 H No. 3690 |
[1999] EWHC J1021-9
IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION PATENTS COURT
Royal Courts of Justice
Mr. Justice Neuberger
CH 1998 H No. 3870CH 1997 H No. 3690
MR. HENRY CARR QC and MR. GILES FERNANDO (instructed by Messrs. Wragge & Co., Birmingham) appeared on behalf of the 20 Claimant.
MR. ANDREW WAUGH QC (instructed by Messrs. Eversheds, Nottingham NG1) appeared on behalf of the Defendants.
MR. DOUGLAS CAMPBELL (instructed by Messrs. Bird & Bird, 23 London EC4) appeared on behalf of the Opponent.
Introduction.
This is an application by Hadley Industries PLC ("Hadley") for 4 permission to amend UK patent number 2095595 ("the patent in 5 suit") . The circumstances in which this application is made 6 are as follows. On 13th November 1998 I gave judgment in 7 which I held the patent in suit valid and concluded that the 8 defendants, Metal Sections Limited and Metsec (UK) Limited 9 ("Metsec") , had infringed it. The patent in suit is concerned 10 with strengthening of material, and in particular of metal, 11 and, at the same time, minimising the consequent reduction in 12 the length of the material. It contains product claims and 13 process claims.
Prior to the hearing, Hadley had applied in the action 15 to amend the patent in suit to add words to claim 6. These 16 amendments ("the first amendments") were duly advertised 17 before action. There were no opponents, other than Metsec.
When expert reports were exchanged, Prof. Rhodes, one of 19 Metsec's experts, made a point which had not appeared in 20 Metsec's statement of opposition. He stated that claim 6 and 21 certain passages, as well as Figures 3 and 4 of the patent in 22 suit referred to piercings as well as to strengthening 23 formations. He also pointed out that piercings would not 24 result in the increased strength contemplated by the first 25 amendments, and it may be said, by the description of the 26 patent in suit.
1 Hadley accepted this. Accordingly, at least on Hadley's 2 case, it was as a result of seeing and considering what Prof.
Rhodes had said, that Hadley applied at trial to make further 4 amendments ("the second amendments") by deleting the reference 5 to piercings and certain parts of the description as well as 6 figures 3 and 4 concerned with piercings.
Claim 6 of the patent in suit, as proposed by Hadley, 8 would be in the following terms: 9 "a. A method of producing formations which are strengthening 10 formations or piercings or a combination of both in 11 continuously processed metallic sheet material and in 12 continuously processed plastics sheet material, 13 b. the formations being discontinuous longitudinally of the 14 material, 15 c. wherein the material is acted on by at least one pair of 16 male and female mating components between which the material 17 passes and which are so shaped that they produce said 18 formations in the sheet material by stretching locally 19 initially plain sheet material, 20 d. one of said components having at its periphery a plurality 21 of teeth, the teeth being arranged in parallel rows with each 22 tooth having a tip with opposite margins parallel to the 23 lengths of the rows and, 24 e. with the pitch of the teeth along the rows being within the 25 range 75 per cent and 130 per cent of the pitch across the 26 rows, 2 1 f. whereby the material formed has a strength, as measured by 2 subjecting the material to an increasing bending load until 3 permanent deformation occurs which is at least 10 per cent 4 greater than the strength of the plain sheet material from 5 which it is formed and, 6 g. the length of the sheet material issuing from the male and 7 female mating components is not less than 90 per cent of the 8 length of the initial piece of plain material and, 9 h. wherein the material is then acted on by at least one 10 further device which modifies the material and wherein the 11 material moves past or through the further device and between 12 said mating components continuously and at substantially the 13 same speed.
I should explain that the italicized part (bold)
consists of the first amendments and the deletions 16 (underlined) are the proposed second amendments.
Both the first and the second amendments were opposed 18 vigorously at trial by Metsec and I was urged to exercise my 19 discretion (which it was commonly assumed that I had) not to 20 allow them. I gave unconditional leave to make the first 21 amendments, which had been advertised. Although I rejected 22 the arguments put forward by Metsec in relation to the second 23 amendments, I was not prepared to dispense with the 24 advertising of the second amendments.
The order pursuant to that judgment was entered in 26 January 1999, following a hearing in December 1998 to finalize 3 1 the form of the order. The order included an undertaking by 2 Hadley to advertise the second amendments as soon as 3 practicable, and certain orders were granted against Metsec in 4 relation to the infringement of the patent in suit, and in 5 particular claim 6. Hadley was granted leave to make the 6 first amendments, unconditionally, and was granted leave to 7 make the second amendments subject to advertisement 8 and any resulting objections to the second amendments being 9 unsuccessful.
The second amendments were advertised on 17th March 11 1999. As it happens, the advertisement could not be in 12 standard form because, of course, the standard form 13 contemplates that no trial has taken place. The 14 advertisements specifically reserved Hadley's right to contend 15 that the issue of whether or not the second amendments be 16 allowed was res judicata as between the parties in the action.
The matter now comes before me. At this hearing, 18 Metsec, through Mr. Andrew Waugh QC, seek to oppose the second 19 amendments and have served a statement of opposition. Another 20 party, Sadef NV ("Sadef") , has served a statement of 21 opposition which raises effectually identical points to those 22 raised by Metsec plus an additional point. Sadef, which is 23 represented in these proceedings by Mr. Douglas Campbell, is a 24 company with the same ownership as Metsec. The second 25 amendments are opposed, first, by Metsec and Sadef, on the 26 basis of the court's alleged discretion and, secondly, by 4 1 Sadef, on the basis of lack of support.
As I see it, there are five issues I have to decide.
First, do Metsec and/or Sadef have locus standi? Secondly, is 4 the second amendment as proposed an amendment to validate an 5 invalid claim as opposed to an amendment involving a deletion?
Thirdly, do I have a discretion to refuse the second 7 amendments? Fourthly, if so, ought I to exercise such 8 discretion against allowing the second amendments? Fifthly, 9 is claim 6 as proposed to be re-amended invalid for lack of 10 support? Hadley contends that the answer to each question is 11 no, and Metsec and/or Sadef say that the answer to each 12 question is yes. I shall deal with each point in turn.
Locus standi.
Metsec argued at trial against allowing the second amendments.
I held that the second amendments should be allowed subject to 16 advertising. Accordingly, Hadley contends that, as Metsec 17 have had a full opportunity to make their submissions on the 18 second amendments, it is now res judicata between Hadley and 19 Metsec that the second amendments should be allowed subject 20 (a) to advertising and (b) to any other party raising 21 objections.
This point was raised at the time that the formal order 23 following my judgment was discussed in December 1998. In my 24 decision then I held that the form of order should be as 25 sought by Hadley in the following terms, so far as relevant: 26 "Hadley be permitted to delete those parts of the 5 1 specification and claims of [and I put in the words 'the 2 patent in suit'; these are the second amendments] subject to 3 advertising the said further amendments and to any resulting 4 objections to the said further amendments being unsuccessful."
In a short judgment in December 1998, having said that 6 this was a form of order opposed by Metsec and favoured by 7 Hadley, I made the following observations: 8 "First, the question of res judicata or Henderson v 9 Henderson estoppel will have to be a matter for the tribunal 10 which in due course considers the formal re-amendment 11 application for the patent, be it the Patent Office or the 12 court. Secondly, it appears to me in light of recent 13 authority that Henderson v. Henderson estoppel and res 14 judicata are to some extent maters of policy to achieve 15 justice in each case. Thirdly, I would be reluctant to 16 penalise the Defendants for having adopted a constructive and 17 reasonable attitude to rather a late re-amendment by shutting 18 them out from being able to argue good points which could not 19 reasonably have come to their attention because of the late 20 re-amendment at the hearing. Fourthly, it is right to say 21 that had Miss McFarland asked to be able to reserve the 22 position along those lines or had she applied for discovery or 23 an adjournment, I would have held that she should do her best 24 in the circumstances, but that, if any point subsequently 25 occurred to her which could not reasonably have occurred 26 during the trial, her clients should not be prevented from 6 1 raising them in due course."
In relation to the present application, some of the 3 arguments raised by Mr. Waugh on behalf of Metsec in relation 4 to discretion were arguments based on...
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