Saint-Gobain v 3M
| Jurisdiction | England & Wales |
| Judge | Michael Tappin |
| Judgment Date | 08 November 2023 |
| Neutral Citation | [2023] EWHC 2769 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HP-2020-000024 |
[2023] EWHC 2769 (Pat)
Michael Tappin KC
(sitting as a Deputy Judge of the High Court)
Case 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 KC and Michael Conway (instructed by Powell Gilbert LLP) for the Claimant
Henry Edwards (instructed by Bristows LLP) for the Defendant
Hearing date: 1 November 2023
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 remotely at 10.30 am on 8 November 2023 by circulation to the parties' representatives by email and release to The National Archives.
The Deputy Judge:
I have before me cross-applications by the Claimant (“SG”) and the Defendant (“3M”) in a claim which came before me for trial between 30 March and 5 April 2022 and in which I gave judgment on 9 May 2022 with neutral citation [2022] EWHC 1018 (Pat) (“my trial judgment”). On these applications SG was represented, as it was at trial, by Mr Abrahams KC and Mr Conway instructed by Powell Gilbert. 3M was represented by Mr Edwards instructed by Bristows; Mr Edwards did not appear at trial and Bristows replaced 3M's former solicitors in September 2023.
The claim concerned the validity of European Patent (UK) 2 373 755 (“the Patent”) in the name of 3M. The grounds of invalidity asserted by SG included lack of novelty and lack of inventive step over a 3M patent application known as Rowenhorst as well as uncertainty-type insufficiency. In the event, I rejected those grounds of invalidity, but held the Patent invalid for insufficiency on the basis that the Patent did not enable the skilled person to perform the invention across the breadth of the claim. At the form of order hearing on 28 June 2022 I rejected an application by 3M for permission to apply to amend the Patent and refused permission to appeal – see neutral citation [2022] EWHC 1666 (Pat). There has been no appeal by 3M.
The applications before me today concern electronic documents referred to as the CT Scan Files.
SG was aware, when issuing these proceedings in July 2020, that 3M had in its possession particles which are said to have been produced by Mr Rowenhorst of 3M in the 1990s in accordance with the teaching of the Rowenhorst prior art. SG sought discovery of those particles through the §1782 procedure in the United States but in the event 3M agreed, in May 2021, to provide two samples of the particles (“the Rowenhorst particles”). It did so on the basis that they would be treated as if they were disclosure documents and so subject to the provisions of CPR 31.22 and that they, and any data or images derived from analysis of the particles, would only be provided to certain classes of individuals involved in these proceedings. 3M also reserved the right to make an application under CPR 31.22(2) in respect of the Rowenhorst particles and any data or images deriving therefrom even where CPR 31.22(1)(a) applied. SG agreed to treat the Rowenhorst particles as disclosure documents and to treat the particles, and data and images deriving from them, as confidential on a pro tem basis, but reserved the right to argue that they were not in fact confidential.
SG arranged for a company called OR3D to produce computed tomography (“CT”) scans of particles from each of the two samples. The product of that process was the CT Scan Files. These are digital files which allow 3D representations of the particles to be viewed using special software. Using those files it is also possible to take measurements of the particles in question. It is also possible to use the files to generate 2D images of the particles from any angle.
On 22 October 2021 SG served a number of documents on 3M. One was a Notice of Models/Images giving notice that SG intended to rely on images of 30 particles from each of the two samples, as set out in certain exhibits to the first expert report of Professor Atkinson also served on that day, and on images of two additional particles, as set out in the annex to the Notice of Experiments again served on the same day. SG also provided 3M with the CT Scan Files. The images which were included in the exhibits to Professor Atkinson's report were 2D images derived from the CT Scan Files, rather than the CT Scan Files themselves. The annex to the Notice of Experiments contained more detail derived from the CT Scan Files relating to two of the Rowenhorst particles, namely the images which were included in paragraph 124 of my trial judgment, and close ups of certain regions of those particles, together with measurements.
At the PTR on 10 March 2022 I made an order by consent in the following terms:
“Until the first day of the trial of these proceedings or pending further order in the meantime the Claimant may only use the Protected Documents for the purposes of these proceedings notwithstanding that any of the Protected Documents may have been read to or by the court or referred to at a hearing which has been held in public or put in evidence at a hearing held in public.”
The Protected Documents were defined as the annex to the Notice of Experiments, the exhibits to Professor Atkinson's first report in which the images of the Rowenhorst particles were set out, the annexes to Professor Atkinson's first report and to the first report of Dr Schwabel for 3M in which the experts considered those images and the annex to the Notice of Experiments, certain extracts from 3M technical notebooks and “the parts of any transcripts of any hearing held in public and any skeleton arguments or other documents provided to the court for any hearing held in public which directly or indirectly reproduce material from” the other Protected Documents.
Shortly before trial the parties each produced scaled-up 3D printed models of certain of the particles, based on the CT Scan Files, and agreed that those models could be used at trial. Measurements of one of those particles were also introduced at trial by SG without objection from 3M.
On 29 March 2022 (the day before the trial started) SG's solicitors sent me a letter, copied to 3M's solicitors, enclosing a USB stick containing the CT Scan Files. The letter referred to the images relied on by SG, as referred to in the Notice of Models/Images, and to the 3D printed models that were to be used at trial. It then stated that the USB stick containing the CT Scan Files was being provided so that I could see the shape of all the particles and provided a link from which software could be downloaded to enable that.
In the run up to trial the parties had been corresponding in relation to the confidentiality of the materials covered by the order which I had made at the PTR and whether that order should be extended beyond the first day of trial. On 25 March 2022 3M's solicitors indicated that an order would only be sought in relation to the 3M technical notebook extracts and any documents which reproduced materials therein. SG agreed to such an order being made pending the final order following trial. At the start of the trial I was asked to make such an order and duly did so. A permanent order in relation to those documents was included in the final order which I made on 28 June 2022. There was therefore no order made at or after trial in respect of the CT Scan Files or, indeed, any of the documents which included images or measurements derived from the CT Scan Files.
Following the trial, SG took the view that, as a result of events at the trial which I will discuss below, it was under no restrictions on the use of the CT Scan Files. It therefore provided them to its external US lawyers and to its European patent attorneys, Zimmermann and Partners. Zimmermann and Partners have filed images and measurements derived from the CT Scan Files (which were not images or measurements themselves deployed at trial) on the publicly accessible EPO register as part of submissions made by SG in three sets of opposition proceedings against various 3M patents. The first submission was filed on 24 January 2023, the second on 21 March 2023 and the third on 12 July 2023. 3M also made use of measurements derived from the CT Scan Files in a responsive submission filed with the EPO on 29 August 2023 in the third of those oppositions.
On 3 August 2023 3M's previous solicitors wrote to SG's solicitors to complain about SG's use of data from the CT Scan Files in the EPO oppositions. Correspondence between the parties' solicitors did not resolve the dispute and on 6 September 2023 SG issued the first application before me, seeking declarations that the CT Scan Files were read by the Court or were referred to within the meaning of CPR 31.22(1)(a) at the trial, that SG's use of the CT Scan Files in the EPO opposition proceedings does not contravene CPR 31.22(1) and that SG is free to use the CT Scan Files in any other proceedings. 3M responded with its application dated 18 September 2023 seeking an order pursuant to CPR 31.22(2) prohibiting SG from using the CT Scan Files for purposes other than these proceedings, in the EPO opposition proceedings or otherwise. Accordingly I need to decide whether CPR 31.22(1)(a) applies to the CT Scan Files and, if so, whether an order should be made under CPR 31.22(2).
CPR 31.22(1)(a)
CPR 31.22(1) provides:
“A party to whom a document has been disclosed may use the document only for the purpose of the proceedings in which it is disclosed, except where –
(a) the document has been read to or by the...
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Saint-Gobain v 3M
...representatives by email. The Deputy Judge: 1 I now have to deal with the costs of the applications addressed in my judgment [2023] EWHC 2769 (Pat). It is agreed that 3M should pay SG's costs of the applications on the standard basis and that I should summarily assess those costs. The part......