Nikken Kosakusho Works v Pioneer Trading Company
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE JACOB,LORD JUSTICE LAWS,LORD JUSTICE WALLER |
| Judgment Date | 29 June 2005 |
| Neutral Citation | [2005] EWCA Civ 906 |
| Docket Number | A3/04/2367 |
| Court | Court of Appeal (Civil Division) |
| Date | 29 June 2005 |
[2005] EWCA Civ 906
Lord Justice Waller
Lord Justice Laws
Lord Justice Jacob
A3/04/2367
IN THE SUPREME COURT OF JUDICATURE
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT
CHANCERY DIVISION
(PATENT OFFICE)
MR. JUSTICE MANN
Royal Courts of Justice
Strand
London, WC2
MR J BALDWIN QC AND MR. M. TAPPIN (instructed by DLA, Leeds) appeared on behalf of the Appellants.
MR I PURVIS (instructed by Messrs Field Fisher Waterhouse, London, EC3) appeared on behalf of the Respondents.
This is an appeal from the second judgment of Mann J in these proceedings. By the first, unappealed judgment, 8th October 2004, 2004 EWHC 2246 Ch, he held that Nikken's UK patent, No. 2332316, was invalid. By the second judgment, 19th October 2004, 2004 EWHC 2426 Pat, he refused to allow Nikken an opportunity to amend the patent in a way which they contend would save its validity. Mann J's reasons were twofold: first, by the exercise of his discretion and, second, on the basis that the proposed amendment would contravene section 76(3) of the Patents Act 1977.
The first judgment.
Mann summarised the invention of the patent in paragraphs 2–6. It is for a high speed tool chuck. The patentee's proposal was to have a groove cut into a flange as shown in the drawing in the judge's judgment. He set out the relevant part of claim 1 in his paragraph 7. The key words giving rise to the dispute before him were "an annular groove of predetermined depth" which he underlined when he set out the claim.
I am bound to say that it beggars belief that a patent agent could draft a claim in such words or that the Patent Office would accept them. "Predetermined depth" cries out for the question, by whom? And what does it mean? That has some effect on the current matter in dispute because it would or ought to have raised the possibility of amendment at an early stage.
Mann J had to make the best of these words. He decided that it meant "a groove whose depth the maker has decided in advance" (paragraph 29 of his judgment). From that there has been no appeal. In the course of reaching his decision he rejected a construction that "predetermined depth" meant "approximately 3 to 5 millimetres" (paragraphs 26 to 29). It may be noted that this construction was only advanced early on the second day of trial. No evidence was directed by either side to the claim on the basis that it had this meaning.
After the evidence had been given, Mr Baldwin for the patentees indicated that he might want to amend the patent if the judge was against him on his construction. He asked the judge to make certain findings of fact, not merely to construe the claim. The judge did not do so and said that he would not do so.
In the event, the judge construed the claim in the manner I have indicated. He then held that the claim lacked novelty over a prior patent called Diashowa 1. He went on to say that if he had been wrong on this he would have rejected an obviousness attack based on Diashowa 1 and certain other pieces of prior art. He held that claim 8 (relating to the provision of an O-ring in the groove) was obvious over Diashowa 1. Thus, by his first judgment Mann J held all the existing claims invalid.
When his judgment was received the patentees sought his permission to apply for an amendment and asked him to stay the order for revocation meanwhile. The proposed amendment is to substitute for the words "predetermined depth" the words "approximately 3 to 5mm in depth". This the judge refused the patentees permission to proceed with.
He first considered the question of discretion. This arises under section 75 of the Act:
"75(1) In any proceedings before the Court or the Comptroller in which the validity of the patent is put in issue, the court or, as the case may be, the Comptroller, may, subject to section 76 below, allow the proprietor of the patent to amend the specification of the patent in such a manner and subject to such terms as to advertising the proposed amendment and to costs, expenses or otherwise as the Court or Comptroller thinks fit."
There are different situations in which the exercise of the discretion to allow amendment of a patent may be sought: (a) before a trial; (b) after trial, at which certain claims have been held valid but other claims held invalid, the patentee simply wishing to delete the invalid claims (I would include here also the case where the patentee wishes to re-write the claims so as to exclude various dependencies as in Hallen v Brantia [1990] FSR 134. There the patentee is in effect continuing to claim which he had claimed before but in a much smaller way); and (c) after a trial in which all claims have been held invalid but the patentee wishes to insert what he hopes are validating amendments.
Clearly, if the amendment is proposed in sufficient time before trial the defendant has a full opportunity to attack the proposed amended claims, not only on their allowability or in the exercise of discretion, but on their ultimate validity. The existing procedure for an application to amend the patent specification is governed by CPR Part 63.10. The procedure is by way of an application notice, service on the Comptroller, subsequent advertisement and so on. The procedures can, in appropriate circumstances, be gone through quickly or gone through provisionally on the basis that probably no third party will ever come in to oppose. It may be noted that the rules specifically require by Part 63.10 that the patentee must state whether he will contend that the claims prior to amendment are valid. That means that in advance of trial everyone knows where they stand. The patentee is either saying that the original claims are all right or not, and he is plainly also saying that the proposed amendment claims are all right.
In case (b), after trial but where effectively no more than claim dependency is being dealt with, again the position is clear. Following a conclusion that some claims are valid and others are not, the patentee is normally entitled to relief pursuant to section 63 of the Act. Normally the court will impose as a condition of relief that the invalid claims be amended by deletion. Problems may arise if it were held that the patentee had been covetous in some way or other and ought not to be allowed to amend at all. Nothing of the question arises here.
Class (c) involves something different, a proposed claim which was not under attack and could not have been under attack prior to trial. If the court is to allow such a claim to be propounded after trial, there is almost bound to be a further battle which would arise in the proposed amendment proceedings. That battle will be over whether or not the proposed amended claim is valid. I say "almost bound" because I can just conceive a case where the point was covered by the main litigation in some way or other.
That is not the case here. Mr Baldwin frankly accepted that if the proposed amendment proceedings were to go ahead, it would be open to Pioneer to advance a case on obviousness, a different case from the one they were advancing before. This would be a case that one obvious way to implement Diashowa 1 would be to make one an embodiment with a groove of 3 to 5mm, not for the patentee's purpose but for Diashowa's purpose. He gave no explicit purpose except that he wanted to put something in the groove. No evidence was directed to whether or not it was obvious to implement Diashowa in that way and there was no need to put any such evidence in because it was not an...
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