Mexichem UK Ltd v Honeywell International Inc. (a company incorporated under the laws of the State of Delaware, USA)
| Jurisdiction | England & Wales |
| Judge | Lord Justice Floyd,Lord Justice Lewison |
| Judgment Date | 01 April 2020 |
| Neutral Citation | [2020] EWCA Civ 473 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3 2019 3124 |
| Date | 01 April 2020 |
[2020] EWCA Civ 473
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (CHD)
HHJ Hacon
[2019] EWHC 3377 (Pat)
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Lewison
and
Lord Justice Floyd
Case No: A3 2019 3124
Adrian Speck QC (instructed by Bird & Bird LLP) for the Appellant
Iain Purvis QC (instructed by Potter Clarkson LLP) for the Respondent
Hearing date: 17 March 2020
Approved Judgment
The issue in this appeal is whether the judge, HHJ Hacon, was correct, in an action for revocation of a number of patents, to refuse to strike out a claim for additional declaratory relief.
The issue arises in an action brought by the claimant and respondent, Mexichem UK Limited (“Mexichem”), for revocation of six patents owned by the defendant and appellant, Honeywell International Inc. (“Honeywell”). All six patents relate to compounds useful in refrigeration systems. In recent years there has been a focus in research to find refrigerants which are less harmful to the environment than compounds previously used. A particular focus of the patents is refrigerants for use in mobile air-conditioning systems (“MACs”) for cars, and in particular two refrigerants known as R-1234ze (“ze”) and R-1234yf (“yf”). These compounds are claimed either alone for use in MACs, or combined with a lubricant, of which there are alternatives, or other refrigerants.
Mexichem wishes to be free to market ze and yf in the UK for use in MACs. In addition to seeking to revoke the six patents in suit, Mexichem is also concerned that Honeywell has at least four other divisional patent applications in the pipeline undergoing examination in the European Patent Office. In order to protect itself against the possible impact of the grant of patents in the future on those further applications, Mexichem has sought declaratory relief aimed at establishing that the mere idea of using ze or yf in a MAC was obvious at particular dates.
All six patents in suit have a priority date of either 25 October 2002 or 29 April 2004. By 25 October 2002 both ze and yf were known compounds. By that date a Japanese patent application number H41-10388 (“Inagaki”) had been made available to the public. Mexichem accordingly sought declarations to the effect that by 25 October 2002 and/or 29 April 2004 it was obvious in the light of the teaching of Inagaki (a) to use ze in the manufacture of a product for use as a refrigerant in a MAC; and/or(b) to use yf in the manufacture of a product for use as a refrigerant in a MAC.
Honeywell applied before the judge to strike out the claim for these declarations, or alternatively for summary judgment against Mexichem on this claim, on the grounds that Mexichem had no real prospect of succeeding in obtaining such a declaration at the trial. Honeywell objects to the declarations on a variety of grounds. It complains that the declaration is not sought in relation to a specific product or process which Mexichem intends to market in the UK, that it is not sufficiently clear, and that a declaration in these broad general terms lacks any utility. It contends that this is so clear at this interim stage that the court should not even allow it to go forward to trial.
A declaration in the form sought by Mexichem has come to be called an Arrow declaration because it was in Arrow Generics Limited v Merck & Co Limited [2007] EWHC 1900 (Pat) that Kitchin J (as he then was) allowed the first such declaration to proceed to trial. Since then, the court's discretionary power to grant Arrow declarations in appropriate cases has been reviewed by this court in two cases: Fujifilm Kyowa Kirin Biologics Co Ltd v AbbVie Biotechnology Limited and another [2017] EWCA Civ 1; and in Glaxo Group Limited v Vectura Limited [2018] EWCA Civ 1496. It is now settled that such declarations may in principle be granted where justified by the circumstances.
The judge rejected Honeywell's attack on the claimed declarations. He dismissed Honeywell's contention that an Arrow declaration had to be sought in relation to a specific product or process. Declarations sought in more general terms could still serve a useful purpose. He said
“23. … If the Arrow declarations sought by the claimant were made by the trial judge, then … those declarations would determine precisely what the declarations state, namely that, as of one or both of the priority dates, it was obvious to the skilled person, who has read Inagaki, to use ze and/or yf in the manufacture of a product for use as a refrigerant in an MAC. The declarations would foreclose any further argument in this jurisdiction on that point, but would go no further…
25. The declarations sought by the claimant are not … directed at clearing the path for the marketing of a particular product or for the use of a particular process. Rather they are aimed at providing a finding of obviousness which can serve as an unchallenged foundation for argument on the inventive step of inventions claimed in patents which may be granted to the defendant in the future.”
The judge concluded that the declarations were “entirely clear”. The trial judge would simply have to apply established principles of patent law to decide whether the use of the products for the stated purpose was obvious. Even though not directed at a specific (i.e. fully specified) product or process, it was possible that the declarations would serve a useful purpose beyond the court's findings in relation to the six patents.
In paragraph 6 of his skeleton argument for Honeywell, Mr Speck QC made five points about the judge's reasoning:
i) The judge had been wrong not to require any product or process to be identified.
ii) A declaration in the broad general terms countenanced by the judge was deprived of any real utility because there would be no resolution of anything until a second round of contested proceedings.
iii) The judge had been wrong to treat the question of inventive step as something which can be sliced up into a series of steps and dealt with step by step.
iv) The judge had made completely uncertain what was contemplated as being in issue in the proceedings in respect of the claimed declarations.
v) The judge had failed to keep clear the distinction in the patent system between instances where a class of products was being defined and instances where a specific product or process was being dealt with.
Mr Speck developed some of these points at the hearing more fully than others. One theme of his submissions was that the rationale for the utility of the grant of an Arrow declaration was the approach taken to the issues of infringement and validity in the well-known case of Gillette Safety Razor Co v Anglo-American Trading Co Ltd (1913) 30 RPC 465. Instead of analysing the issues of infringement of a patent and its validity as separate issues, Lord Moulton had taken a short cut. He concluded that, on the facts before him, there was nothing inventive in the defendant's razor blade. Having reached that conclusion about a specific product, it could be established that the product could not be covered by the claims of a valid patent. Either the product must be excluded from the scope of the claims, or alternatively, if within the claims, the patent must be invalid. It was not difficult to see why an Arrow declaration would be of utility in such circumstances, because in any future proceedings the holder of such a declaration could simply establish that it was doing no more than was specified in the declaration, and the subsequent proceedings would be struck out. Whilst Mr Speck accepted that there were of course limits as to the amount of detail which an applicant for such a declaration must be required to give of a product, to grant declarations of the extreme breadth of those sought by Mexichem lacked that sort of utility.
Another theme of Mr Speck's submissions was to attack the judge's view that the declaration could provide a “platform” from which Mexichem's arguments on inventive step could be launched. To provide such a platform was contrary to the warning, given in cases such as Technograph Printed Circuits Limited v Mills & Rockley (Electronics) Ltd [1972] RPC 346, against “step-by-step” arguments of obviousness. It was wrong in principle to decide at the outset that a particular part of the gap between the prior art and the invention was obvious, and then to use that as a bridgehead for subsequent steps. The task for the court was to decide whether the invention as a whole involved an inventive step. That might be so even where each of the steps which the skilled person is required to take, viewed in isolation, might be described as obvious. To grant a declaration in respect of one step was wrong in principle. It lacked real utility because a second action would not be struck out. Moreover, such a declaration positively distorted the exercise which the court was later required to perform.
Mr Purvis QC, who appeared for Mexichem, supported the judge's reasoning and contended further that the scope and generality of the declaration sought in the present case was entirely appropriate given the breadth of the inventive concept which Honeywell was endeavouring to protect. He sought to make this good by an examination of the claims of the patents in suit, and by the fact...
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