L'Oreal (U.K.) Ltd v Liqwd Inc.
| Jurisdiction | England & Wales |
| Judge | Lord Justice McCombe,Lord Justice Davis,Lord Justice Arnold |
| Judgment Date | 18 November 2019 |
| Neutral Citation | [2019] EWCA Civ 1943 |
| Date | 18 November 2019 |
| Docket Number | Case Nos: A3/2018/1958, 1959 |
| Court | Court of Appeal (Civil Division) |
[2019] EWCA Civ 1943
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE BUSINESS AND PROPERTY COURTS INTELLECTUAL
PROPERTY LIST (CHANCERY DIVISION) PATENTS COURT
MR JUSTICE BIRSS
[2018] EWHC 1394 (Pat) and [2018] EWHC 1845 (Pat)
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Davis
Lord Justice McCombe
and
Lord Justice Arnold
Case Nos: A3/2018/1958, 1959
Justin Turner QC and Mark Chacksfield QC (instructed by Baker & McKenzie LLP) for the Appellants
Iain Purvis QC and Katherine Moggridge (instructed by Hogan Lovells LLP) for the Respondents
Hearing dates: 5–6 November 2019
Approved Judgment
Introduction
These are appeals from two decisions of Birss J in patent infringement proceedings brought by the Respondents (“Olaplex”) against the Appellants (“L'Oréal”). First, for the reasons given in his judgment dated 11 June 2018 (“the Main Judgment”) he held that claims 1–10 of Olaplex's UK Patent No. 2 525 793 (“the Patent”) were invalid; but that an unconditional amendment to claim 11 applied for by Olaplex was allowable and that, as amended, claim 11 was valid and had been infringed by L'Oréal. Secondly, he dismissed an application by L'Oréal to adduce further evidence after the Main Judgment had been handed down for the reasons given in his judgment dated 19 July 2018 (“the Second Judgment”).
L'Oréal appeal against the Main Judgment on two grounds. First, they contend that the judge should have refused Olaplex permission to amend claim 11 because the amendment extended the protection conferred by the Patent. There is no dispute that granted claim 11 is not entitled to the priority claimed in the Patent, and that as a result the granted claim is invalid because of intervening use by Olaplex. Thus the amendment is necessary to validate the claim. Secondly, L'Oréal contend that the judge should have held that claim 11 was obvious over Korean Patent Application No PAT 2003-0003970 (“Kim”).
L'Oréal appeal against the Second Judgment on the ground that the judge should have admitted the new evidence since, L'Oréal contend, it demonstrates that Olaplex's International Patent Application No. WO 2015/017768 (“WO 768”) is entitled to priority from US Patent Application No 61/093,239 (“US 239”), with the result that WO 768 deprives claim 11 of the Patent of novelty.
The skilled team, the common general knowledge and the Patent
The judge found in the Main Judgment at [27]–[29] that the Patent is directed to a skilled team responsible for developing and producing hair-care products, the principal member of which would be a chemist/formulator with at least an undergraduate degree in chemistry or a related field and a few years' experience in developing and testing hair care products.
The key elements of the skilled team's common general knowledge relevant to the appeal are set out in the following passages in the Main Judgment:
“ Hair and hair structure
…
33. … Melanin is responsible for the hair's natural colour. …
35. Keratin proteins are the major contributor to hair strength at a molecular level. Keratin has a high level of cysteine residues that result in disulphide crosslinking throughout the hair. These crosslinks are formed by the two cysteine side chains which have thiol (-SH) groups reacting to form cystine (also known as a cysteine bridge), which has a disulphide (-S- S-) bond between the two chains. Going from the thiols to the disulphide is an oxidation reaction while going from the disulphide to the thiols is a reduction reaction:
…
37. One of the most common ways to bleach hair is by the destructive oxidation of the chromophores in melanin, by applying a bleaching mixture. The chromophores are the groups of atoms in the melanin molecules responsible for giving the colour.
38. … one of the issues in the case involves considering two methods of changing the colour of hair. I will call one well known method ‘hair lightening’ because it changes the colour of hair by oxidation but does not involve hair dye. The other well known method is a process of dyeing hair using oxidation dyes. There are other methods of changing hair colour involving dyes which are not oxidation dyes.
Hair lightening
39. The mixture used for hair lightening principally comprises an oxidising agent such as hydrogen peroxide and a further material such as a persulfate. … The mixture is applied at an alkaline pH. This is a very common way of changing the colour of hair. It involves no dye at all. The colour change comes entirely from the process of bleaching or oxidation. …
42. The aggressive chemistry used in bleaching causes damage. …
43. In terms of chemical mechanisms, an aspect of damage by oxidising agents was believed to be due to the conversion of the disulphide bond (S-S) to cysteic acid groups (SO 3).
Oxidation dyes
44. Oxidation dyes are used in the majority of hair dye treatments in the US and Europe. The process uses intermediate colouring agents which require the intervention of an oxidation agent (usually hydrogen peroxide) to react with them in order to produce permanent coloured compounds through oxidative condensation. The chemical processes involved are complex.
45. … the skilled person knew, as a matter of common general knowledge, that oxidative damage was something which could occur in oxidation dye systems, especially with repeated dyeing. It was less severe than the damage caused in hair lightening owing to the less aggressively oxidising formulations used in dyeing as compared to those used in hair lightening. So it was known that oxidation could be a cause of damage but looking at the matter the other way round, it was not the case that the skilled person necessarily would assume that any damage seen must have been caused by oxidation rather than having some other cause.
…
Trying to treat or prevent hair damage
48. The damage to hair caused by oxidation was known and those in the art had to deal with it. Professionals tried not to bleach hair too often but that was not always possible. For example actresses in film and television might have to undergo treatments which involved oxidation of hair very frequently.
…
Chemistry
52. When an acid reacts with a base the result is a salt plus water. In solid form salts are crystalline ionic compounds made up at least one cation (positively charged ion) and at least one anion (negatively charged ion). When the crystals are dissolved in water to make an aqueous solution the crystal lattice is lost and the solution is a mixture of separate cations and anions.
53. Maleic acid … is a diprotic acid, i.e. it has two protons which could dissociate. When one comes off the result is a proton and a hydrogen maleate ion in solution. When the second proton comes off the hydrogen maleate the result is two protons and a maleate ion in solution. Maleic acid has a pK a1 of 1.94 and pK a2 of 6.22. Therefore at low pH (e.g. pH 3 or 3.5) the majority ionic species is hydrogen maleate and there will be some undissociated maleic acid; whereas at high pH (e.g. pH 8 or above) both protons will dissociate and the predominant species is maleate ion. In the context of hair care, before the priority date the skilled team would only have been aware of maleic acid's potential use as a chelating agent or pH buffer/modifier.”
The patented invention is based on the discovery that maleic acid prevents or reduces damage to hair during bleaching i.e. hair lightening. The judge summarised the disclosure of the Patent at [62]–[84] of the Main Judgment. It is not necessary to repeat that exercise for present purposes. I shall refer to certain passages from the specification below.
Claim 11
Claim 11 as amended is in the following terms:
“The use of an active agent which is
or a simple salt thereof simultaneously with a bleaching agent to reduce or prevent hair damage due to a treatment to provide bleached hair.”
The chemical formula in the claim is the formula for maleic acid. It is common ground that it makes no difference to the issues arising in this case that the claim sets out the formula rather than the name of the compound. For convenience, I shall follow the example of the parties and the judge of proceeding as if the claim said “maleic acid”.
Interpretation of claim 11
Claim 11 is to the use of an active agent simultaneously with a bleaching agent for the stated purpose. It was common ground at trial that it was therefore the state of the active agent in that use that mattered. It was also common ground at trial (although not prior to trial) that the reference to maleic acid embraces both maleic acid itself and the anions it forms in aqueous solution (depending on pH), namely hydrogen maleate and maleate ions. The judge held that, read in context and with the common general knowledge, “a treatment to provide bleached hair” referred to hair lightening and did not include an oxidation dyeing process. There is no challenge to that conclusion.
Although the Patent contains six pages of definitions and about 10 pages describing the constituent elements of formulations for implementing the claimed invention, there is no definition of the term “simple salt” nor any passage throwing any light on what the inventors meant by this term. Nor is it a term commonly used in hair care.
The judge held at [102] that the adjective “simple” would be understood by the skilled team in one of two ways suggested by L'Oréal's main expert Dr Hefford which the judge summarised at [98] as follows:
“The opposite of a simple salt could be a double salt such as NaKCl 2 which as a solid would have a different lattice from either NaCl or KCl. Or the opposite could be a complex salt in the sense of a salt in which one of the ions is a complex such as...
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Docklock Ltd v C Christo & Company Ltd
...was genuinely new and whether it could have been made available at the trial in more detail below. 17 In L'Oreal (UK) Ltd v Liqwd Inc [2019] EWCA Civ 1943 the Court of Appeal dismissed an appeal against the decision of Birss J. The case provides useful guidance in relation to applications ......