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 | Mr Michael Tappin |
| Judgment Date | 28 June 2022 |
| Neutral Citation | [2022] EWHC 1666 (Pat) |
| Docket Number | Claim No. HP-2020-000024 |
| Court | Chancery Division (Patents Court) |
[2022] EWHC 1666 (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
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
James Abrahams QC and Michael Conway (instructed by Powell Gilbert LLP) appeared for the Claimant
Michael Hicks and Nicholas Zweck (instructed by Wiggin LLP) appeared for the Defendant
Approved Judgment
Mr Michael Tappin QC:
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 judgment.
I held European Patent (UK) 2 373 755 (“the Patent”) to be invalid for insufficiency on the ground that it would have required an undue burden for the skilled person to produce particles across the claimed range.
The hearing to determine the form of order to be made as a consequence of my trial judgment was arranged for today, 28th June. It was not possible to find a date within 28 days of judgment being handed down that was convenient to all concerned.
On 1st June, the Defendant (“3M”) issued an application seeking permission to amend claim 1 of the Patent in the event that permission to appeal was not granted or any appeal was dismissed.
3M asked for its application to be listed at this hearing. The Claimant (“SG”) resisted on the basis that it would not be ready to deal with it. Further, the application to amend has not yet been advertised, so third parties could yet oppose the application. However, I directed that the application should be listed for this hearing, for disposal, if that were possible, or for further directions if it was not. Apart from anything else, if 3M's application were to be allowed, that would be likely to have consequences for the arguments about costs and permission to appeal that were due to be heard at this hearing.
In Nikken Kosakusho Works v Pioneer Trading Company [2005] EWCA Civ 906 the Court of Appeal had to address an application to amend made by a patentee after trial. Jacob LJ identified three situations: (a) where the application to amend is made before trial; (b) where the application to amend is made after trial, but only to delete claims which have been held invalid, including so as to eliminate dependencies; and (c) after a trial in a case where all claims have been held invalid, but the patentee wishes to insert what it hopes are validating amendments. At [11] Jacob LJ said:
“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.”
He went on to say that where the proposed amendment would give rise to such a further battle, it would be improper to allow that to take place, referring to the principles of Henderson v Henderson, to the principle that the parties must bring before the court the issues that they seek to have resolved so as to enable the court to conclude the litigation between the parties and to the overriding objective in the CPR. Laws LJ agreed saying that in any litigation the parties are required to bring forward their whole case. Waller LJ added that patent litigation was no different from any other; in all cases it would be unfair to allow a party to amend his case post-judgment so as to allow an opportunity to succeed after a further trial, however small.
In Nokia Corp v IPCom GmbH & Co KG [2011] EWCA Civ 6 the Court of Appeal reconsidered what it had said in Nikken in the light of Johnson v Gore-Wood, and in particular the well-known statements of the law by Lord Bingham and Lord Millett, which I have well in mind. The Court of Appeal held that there was no inconsistency between that case and Nikken. At [108] Jacob LJ said:
“I accept entirely that the true test is one of abuse of process — procedural fairness — and that the burden lies on the party objecting to the second action to show this. However, where a party fails to advance a case he could have advanced much earlier and does so without any real justification, he is abusing the process and the other party is therefore entitled to object. It is not normally procedurally fair to subject the other side to successive cases when you could have readily put them all in one go.”
In Warner-Lambert Co LLC v Generics (UK) Ltd [2018] UKSC 56 at [107]–[120] Lord Briggs, with whom the other members of the Supreme Court all agreed on this point, rejected an invitation to depart from the approach set out by the Court of Appeal in Nikken and Nokia and upheld the distinction drawn between amendments to delete claims that have been held to be invalid and amendments designed to make good a claim not thus far advanced in the amended form.
Claim 1 of the Patent is set out in [93] of my trial judgment. For present purposes the important point is that integer (6) requires the thickness ratio (Tc/Ti) of the dish-shaped abrasive particles to be between 1.25 and 5.00.
I should add that the description of the Patent mentions ranges with a thickness ratio which are narrower than that in claim 1. Paragraph [0021], referred to in my trial judgment at [66], refers to ranges of 1.25–5.00, 1.30–4.00 and 1.30–3.00, while paragraph [0022], referred to in my trial judgment at [68], states:
“Triangular dish-shaped abrasive particles produced by the invention have been measured to have thickness ratios between 1.55 to 2.32 in some embodiments.”
3M's application seeks permission to amend the claim so that integer (6) requires the thickness ratio to be between 1.25 and 2.32 or, if that is refused, between 1.55 and 2.32.
In my judgment, these proposed amendments are clearly ones which, in the words of Jacob LJ in Nikken, were not under attack and could not have been under attack prior to trial, or, to use the words of Lord Briggs in Warner-Lambert, are designed to make good a claim not thus far advanced in the amended form.
3M contends that this is a case of the type of which Jacob LJ was just able to conceive, namely one which was covered by the main litigation in some way. It says that in my trial judgment I have decided that the claim as proposed to be amended is valid, and so no further trial is needed. Therefore, 3M says, there can be no abuse of process, and there is no reason to refuse to grant permission to make the amendments.
In order to address that point, it is necessary to identify what was in issue at trial. SG's pleaded case of insufficiency due to undue burden was, so far as relevant, as follows:
“The description gives no or no adequate information enabling the skilled reader to implement the invention so as to reliably obtain products either within the claim or across the scope of the claims. In particular, there is no indication in the examples of preparation of abrasive products as to what thickness ratio was achieved, let alone how to vary that thickness ratio so as to be able to perform the invention across the breadth of the claims.”
That case as developed in argument had, as I said in [198] of my trial judgment, two aspects. The first was an argument that the skilled person was faced with an undue burden to produce anything within the claims. I addressed that argument at [199]–[209] of my trial judgment and concluded that SG had failed to establish that case on the evidence.
The second was an argument that the skilled person could not, without undue burden, produce particles across the scope of the range of thickness ratios in the claims. In order to succeed on that second limb of its argument, SG only needed to show that a substantial part of the range could not be achieved without undue burden. No doubt because paragraph [0022] of the Patent reported that thickness ratios of between 1.55 and 2.32 had been achieved, the evidence and argument focused in particular on the upper end of the range. I accepted that argument on the evidence for the reasons set out in [211]–[233] of my trial judgment.
As I have said, 3M's position is that my trial judgment establishes that the Patent as proposed to be amended is valid. More specifically, Aleksander Medved, the assistant chief IP counsel of 3M, puts it this way in paragraph 5 of his statement:
“The Judgment concludes that it would not require an undue burden to make particles in the claim: see paragraph 209 of the Judgment. However, the Judgment also holds that the skilled person would not, without undue burden, be able to make dish-shaped abrasive particles with an average Tc/Ti ratio towards the upper end of the range claimed (i.e., approaching 5.00) and was insufficient in that regard: see paragraphs 211 and 233 of the Judgment. Accordingly, in the light of the conclusions reached in the Judgment, a skilled person would, without undue burden, be able to make dish-shaped abrasive particles with an average Tc/Ti ratio in the lower end of the range.”
As I understand it, the suggestion by 3M is, and indeed...
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Saint-Gobain v 3M
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