Saint-Gobain Adfors S.A.S. (a company existing under the laws of France) v 3M Innovative Properties Company (a company existing under the laws of Delaware, United States)
| Jurisdiction | England & Wales |
| Judge | Michael Tappin |
| Judgment Date | 09 May 2022 |
| Neutral Citation | [2022] EWHC 1018 (Pat) |
| Docket Number | Claim No: HP-2020-000024 |
| Court | Chancery Division (Patents Court) |
[2022] EWHC 1018 (Pat)
Michael Tappin QC
(sitting as a Deputy Judge of the High Court)
Claim No: HP-2020-000024
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
Rolls Building
Fetter Lane
London, EC4A 1NL
James Abrahams QC & Michael Conway (instructed by Powell Gilbert LLP) for the Claimant
Michael Hicks & Nicholas Zweck (instructed by Wiggin LLP) for the Defendant
Hearing dates: 30 March – 1 April & 5 April 2022
Approved Judgment
I direct that no official shorthand note shall be taken of this judgment and that copies of this version as handed down may be treated as authentic.
This judgment was handed down by the judge remotely by circulation to the parties' representatives by e-mail and release to The National Archives. The date and time for hand-down is deemed to be 10.30 am on 9 May 2022.
The Witnesses
the Skilled Person and the common general knowledge
Abrasive products and abrasive particles
The sol-gel process
Rowenhorst
The Patent
The description
The claims in issue
Interpretation of the claims
the factual material
Validity over Rowenhorst
Invalidity as a result of practising Rowenhorst
Obvious modifications of Rowenhorst
Lack of technical contribution over Rowenhorst
Insufficiency
Uncertainty-type insufficiency
Undue burden
Undue burden to produce anything within the claims
Undue burden to produce particles across the scope of the claims
Conclusion
The Deputy Judge:
This is a claim for revocation of European Patent (UK) 2 373 755 (“the Patent”) which is registered in the name of the Defendant (“3M”). The Patent is entitled “Dish-shaped abrasive particles with a recessed surface” and claims a priority date (which is not challenged) of 17 December 2008 (“the priority date”).
The Claimant (“SG”) contends that the Patent is invalid on the following grounds:
i) lack of novelty over a 3M patent, US patent 5,366,523, published on 22 November 1994 and entitled “Abrasive article containing shaped abrasive particles” (“Rowenhorst”);
ii) lack of inventive step over Rowenhorst, including an allegation that the Patent does not disclose any plausible technical benefit associated with the products claimed compared to those disclosed in Rowenhorst;
iii) insufficiency, of both the “uncertainty” and “undue burden” types.
The Witnesses
SG's expert was Professor Alan Atkinson. Prof Atkinson currently holds the position of Emeritus Professor of Materials at Imperial College London. He graduated in Natural Sciences from Cambridge University in 1967 and completed a PhD in Physics at Leeds University in 1971, where he then held a research fellowship. Between 1975 and 1995 Prof Atkinson worked at the Harwell Laboratory, becoming Head of Materials Chemistry in 1990, at which point his research included ceramic processing including sol-gel methods. He was appointed Chair of Materials Chemistry at Imperial College in 1995, where he continued research on ceramic processing including sol-gel methods, and subsequently held various positions at Imperial College.
Prof Atkinson has published a number of papers on sol-gel chemistry, focussing on the basic science. He also has experience of using sol-gel methods in a variety of industrial applications. That included using boehmite sol-gels to produce coatings for catalyst supports for automotive exhaust systems. However, he did not have any direct experience of manufacturing abrasive particles, whether by the sol-gel process or otherwise. That meant that his evidence as to the issues which might face a skilled person seeking to implement the teaching of the Patent or of Rowenhorst was given without the benefit of such direct experience. I have taken that into account in assessing his evidence. No criticism was made of the way in which Prof Atkinson gave his evidence, and rightly so; he was straightforward and clear in his answers to the questions put to him and at all times sought to assist the court to the best of his ability.
SG also led evidence from Benjamin Rowlatt, a senior associate at Powell Gilbert. His statement explained how the Cubitron II particles referred to in Prof Atkinson's reports were obtained. He was also asked some questions about SG's experiments on the Cubitron II particles and the Rowenhorst particles (of which, more below) and about the models which had been produced based on those experiments. He was, as one would expect, entirely straightforward in his answers.
3M's expert was Dr Mark Schwabel. Dr Schwabel holds a BSc in Ceramic Engineering from the New York State College of Ceramics at Alfred University and a PhD in Ceramics from the same institution. In 1977 he began work as a Senior Research Chemist in the Abrasive Systems Division (“ASD”) of 3M Company (the parent company of the Claimant). In about 1980 he started working on 3M Company's sol-gel abrasive grains project (which focussed on crushed grain, rather than shaped abrasive grain) and continued working on that project until after his promotion to Technical Manager within ASD in 1990. He held that position until 1997, during which time his focus shifted from the development of the grain itself to developing applications for the grain, including in cut off wheels and other abrasive articles. In 1997 he moved away from working on abrasive grain technology, apart from a period of about a year in 2005–2006 when he once more acted as Technical Manager. However, he continued to work on cut off wheels which used the abrasive grain. He retired from 3M Company in 2016.
Until mid-1993, Mr Rowenhorst had worked for the Automotive Aftermarket Division (“AAD”) of 3M Company (during which period the Rowenhorst patent was filed). Following the merger of AAD into ASD, Dr Schwabel supervised Mr Rowenhorst as he worked to evaluate the commercial value of the triangular shaped abrasive grain described in Rowenhorst. However, for practical and economic reasons related to the scale up of the production process, neither the grains themselves nor any products using the grains were commercialised, and the project was abandoned in 1995. Dr Schwabel was not involved in the research conducted by 3M Company in the 2000s into shaped sol-gel abrasive grain which led to the Patent and the other 3M patents discussed below.
Dr Schwabel had more experience of manufacturing abrasive particles from boehmite using the sol-gel process than did Prof Atkinson. He also had some indirect knowledge of the issues faced by Mr Rowenhorst when seeking to make triangular shaped abrasive particles. However, I did not understand him to have been closely involved with that work, nor to have any direct experience of seeking to manufacture shaped abrasive particles using the sol-gel process. Again, I have taken that into account in assessing his evidence.
Dr Schwabel, as a former long-serving employee of 3M Company, holding shares and stock options and receiving a pension from its pension fund, ran the risk of being accused of failing properly to fulfil the role of an independent expert. No such accusation was made, and again rightly so; Dr Schwabel gave his evidence in an entirely fair and balanced manner and without any hint of partiality. At points he acknowledged that he knew certain facts about what Mr Rowenhorst had done when working on his triangular shaped abrasive grains project, but I am satisfied that he was able to put that out of his mind when answering questions about how the skilled person would have proceeded given Rowenhorst.
I am grateful to both experts for their evidence and the assistance they gave me, and to the legal teams on both sides for the way in which they prepared and presented this case.
the Skilled Person and the common general knowledge
There was no real dispute as to the nature of the skilled person. The skilled person (who may in reality have been a team of people) would have had knowledge and experience of abrasives, including the production and testing of abrasive articles, and of the fabrication of ceramics, in particular of abrasive particles from boehmite using the sol-gel process, and the characterisation of such particles.
The parties produced a document which set out the matters agreed by the parties to be within the common general knowledge (“CGK”) of the skilled person at the priority date. That document also indicated certain matters which one of the parties contended were part of the CGK, but which were not agreed to be CGK by the other party. In fact, by the end of the trial there was no dispute about any material aspect of the CGK. What follows is an edited version of the document produced by the parties, including those aspects which are material to the dispute or necessary to understand this judgment.
Abrasive products and abrasive particles
Abrasive products made from abrasive particles are used to abrade, cut, grind, finish or polish a wide variety of materials and surfaces and have applications in a wide range of industries.
In order to grind, the abrasive particles used in the abrasive product have to (i) penetrate the workpiece (i.e. there needs to be a sufficient initial force per abrasive particle contact to push the particles into the workpiece) and (ii) wear in such a way during use that removal of material from the workpiece is sustained (i.e. the force per area has to remain sufficiently high in use).
During use (i.e. when force is applied), the abrasive particles can wear down by attritious wear (the particles interact with the workpiece to form dull, flat areas on the surfaces of the particles known as “wear flats”) and/or by fracture wear...
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Saint-Gobain Adfors S.A.S (a company existing under the laws of France) v 3M Innovative Properties Company (a company existing under the laws of Delaware, United States)
...QC: 1 Following the trial of this claim between 30th March and 5th April 2022, I gave judgment on 9th May, with neutral citation [2022] EWHC 1018 (Pat). I will refer to that as my trial 2 I held European Patent (UK) 2 373 755 (“the Patent”) to be invalid for insufficiency on the ground tha......