Rohm and Haas Company and Another v Collag Ltd and Another
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE ALDOUS,LORD JUSTICE ROBERT WALKER,LORD JUSTICE KEENE,LORD JUSTICE PETER GIBSON |
| Judgment Date | 29 October 2001 |
| Neutral Citation | [2001] EWCA Civ 1589,[2001] EWCA Civ 1411 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2000/2833 CHPCF,A3/2000/2833 |
| Date | 29 October 2001 |
[2001] EWCA Civ 1411
IN THE SUPREME COURT OF JUDICATURE
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE CHANCERY DIVISION
(MR JUSTICE NEUBERGER)
Royal Courts of Justice
Strand
London WC2
Lord Justice Aldous
A3/2000/2833
MR PIERS ACLAND (Instructed by Messrs McDermott Will & Emery, London, EC2N 3AQ) appeared on behalf of the Applicant.
MR JAMES ST VILLE (Instructed by Messrs Bristows, London, WC2A 3AA) appeared on behalf of the Proposed Intervener/Second Respondent.
The applicants, Rohm & Haas Company, apply for leave to introduce fresh evidence in the appeal which is due to be heard later this year.
The patent is concerned with an invention for manufacturing water dispersible granules containing a substance called propanil, which is a herbicide. The patent was alleged to have been infringed by two processes of Collag Limited called A and B. For reasons which are not material, it was ordered that the issue of infringement of process B be tried as a preliminary issue. Neuberger J, in a judgment dated 28 July 2000, decided that it did not infringe.
Claim 1 of the patent is in this form:
"Process for producing a dispersible propanil granule comprising:
a) combining one or more surfactants with propanil and milling to a particle size of less than 20 microns to form a pre-mix;
b) adding less than 25 per cent by weight water and optionally a wetting agent to the said pre-mix and mixing until a paste is obtained;
c) granulating said paste thereby producing granules; and
d) drying said granules to a moisture content of less than 2 per cent by weight."
A crucial issue, as stated by the judge in paragraph 27 of his judgment, was:
"The first dispute concerns the meaning 'surfactant' as that expression is used in the patent in suit, and in particular the meaning of the expression 'one or more surfactants' in claim 1(a). The defendant contends that the expression is limited to amphiphiles, that it is limited to substances which perform their function in relation to two media, at least one of which is liquid. The claimant, on the other hand, argues that the expression 'surfactant' can and, in the context of the patent in suit, does include non-amphiphiles and that it extends to any substance which is active at the interface of two phases to modify the surface energy of the substrate."
The judge resolved that issue in favour of the defendants. He granted declarations that two materials used in process B, paselli and china clay, were not surfactants within the meaning of that word in claim 1 and, therefore, process B did not infringe.
I do not intend to refer to substantial extracts of the judgment but, as the judge made clear, he had before him evidence of Professor Luckham and Mr Knowles for the defendants and Professor Ryan for the claimants as to the meaning of the words "surfactant". He was also referred to definitions in scientific books, one of which supported the wider meaning attributed to that word by Professor Ryan. Having referred to that evidence, the judge said in paragraph 88 of his judgment:
"While it would be wrong to ignore definitions or uses of a particular word in text books and other publications, it can obviously be dangerous to rely upon them in a case such as this. The question which has to be determined is not what the word 'surfactant' means in abstract, let alone what it means in the context of other publications directed to a different, or at any rate wider, class of person than the person to whom the patent in suit is directed. The cases to which I have referred emphasise the danger of trying to construe a word or expression acontextually, that is outside the context of the patent in which it is found. There can be even greater danger, I think, if one is seeking to construe the meaning of a word in one context by reference to how it is used in another context.
Nonetheless, where, as here, one party is seeking to give a word a significantly narrower meaning than is suggested by the other party, some assistance may well be found in passages such as those I have cited."
The judge went on to analyse the definitions given in the books and he also drew attention to the statement in the Royal Society's "Chemistry Handbook" "Surfactants Europa" that "there are many definitions of 'surfactant' depending on personal preference and field of usage". The judge's conclusion was set out in paragraph 106 to 108 as follows:
"106. With the exception of the claimant's reliance on other Claims of the patent in suit, all the other factors relied on by the parties appear to me to have some force. In the end, while there are features of each factor upon which the claimant can justifiably rely, it appears to me that the balance of advantage on each factor lies with the defendant. So far as the body of the specification is concerned, the claimant does get some assistance from the fact that the draftsman says that the word 'surfactant' is used in the patent in suit 'in the broad sense'. However, the reference to surfactants being 'dispersing agents and wetting agents', particularly in light of the subsequent definitions and explanations of those terms in the specification, significantly assists the defendant. So too is the statement that the surfactant should be 'selected from the anionic, cationic and non-ionic type'. The reference to surfactants acting as dispersing agents, particularly in light of the definition and explanation of 'dispersing agents' in the patent in suit also supports the defendant's case.
107. I consider that the defendant's case is further assisted by the expert evidence. While not in any way questioning the expertise of the other three witnesses, it appears to me that Mr Knowles was the only witness who had the experience and discipline of the notional addressee, whose identity is somewhat unusually expressly suggested in the specification. He was an honest witness, whose evidence was entirely consistent and stood up to cross examination. It would be unfair on Mr Carr not to accept that he made some valid points to and about Mr Knowles, but, viewing matters overall, they do not cause me to doubt his evidence as to the understanding of formulation scientists in the agrochemical field of the word 'surfactant' and how that word would be understood at Claim 1(a) of the patent in suit, namely as an amphiphile.
108. The two text books pointed in somewhat different directions, but, particularly when one remembers the contents of the publication of the Royal Society of Chemists, it seems to me that the balance is in favour of the defendant, albeit mildly, on this score also. As I have already said, this is a comparatively minor aspect."
The judge went on to conclude that the defendant succeeded on the point of construction.
The fresh evidence sought to be introduced is in the third expert report of Professor Ryan. In that report he refers to a patent application of the defendants which was published on 27 July 2000. The inventor named is Mr Misselbrook, who was the managing director of Collag Limited and is closely associated with Agform Limited. Due to the date of publication, it did not come to the attention of the claimants until after the judgment of the judge.
That application relates to an invention for a process for the production of granules, in particular water dispersible and water soluble granules. It is said to be especially useful in the production of granules containing biologically active compounds and other substances, and in particular other agrochemical products, for example pesticides. Propanil is mentioned as one of those substances.
The perceived importance of that application is set out in Professor Ryan's report. He states:
"3. The Collag application (on page 7, lines 16–17) describes formation of a 'premix' by mixing together an active ingredient and an excipient. It goes on (on page 9, line 14) to suggest that 'suitable excipients include surface active agents (surfactants) including wetting agents and dispersing agents .'. On page 9, line 18, the Collag Application states that 'Examples of dispersing agents include .copolymers, random and block, of ethylene oxide and propylene oxide .'.
4. Copolymers of ethylene oxide and propylene oxide in block form are well known to be amphiphilic, forming micelles in water. Copolymers of ethylene oxide and propylene oxide in random form are not amphiphilic because the repeat lengths of the ethylene oxide and propylene oxide units are not normally sufficiently long to confer micelle forming properties. Random copolymers of ethylene oxide and propylene oxide are either water soluble or water insoluble depending on the relative proportions of each monomer and do not form micelles.
5. The statements contained in the Collag application support my views (expressed in paragraphs 15–25 of my Expert Report and paragraph 2 of my Second Expert Report) that a) the term 'surfactant' is synonymous with 'surface active agent' meaning any substance which segregates to a surface and alters the surface energy and b) the term 'surfactant' is not restricted to amphiphilic substances. The definition of surfactant did not change between the dates of the Patent and the Collag Application (ie between 1990 and 1999) nor has it changed to date."
In essence it is sought to introduce evidence of fact that copolymers of ethylene oxide and propylene oxide in random form are not amphiphilic. Further, it is...
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