Posted: July 11th, 2022
Saint-Gobain Adfors SAS v 3M Innovative Properties Co  EWHC 1666 (Pat), 28 Jun 2022
A recent decision by Michael Tappin QC, sitting as a deputy judge of the High Court, has confirmed that post-judgment amendment in the UK remains very difficult to achieve and could even be viewed by the court as an abuse of process. The ruling was made during a consequential hearing. The substantive case concerned a claim for revocation of European Patent (UK) 2 373 755 (“the Patent”) by Saint-Gobain (“SG”). 3M was the holder of the patent, which was titled “Dish-shaped abrasive particles with a recessed surface” and had a priority date of 17 December 2008.
The Claimant (SG) argued:
• Lack of novelty over another 3M patent (US 5,366,523, referred to as “Rowenhorst”);
• Lack of inventive step over Rowenhorst; and
• Insufficiency (uncertainty and undue burden to produce something within the claims)
Whilst the judge held that the patent was not invalid on these grounds specifically, he said the Patent should be revoked on grounds of insufficiency because “the skilled person could not without undue burden, make dish shaped abrasive particles within an average Tc/Ti ratio towards the upper end of the claim.”, i.e. it would require an undue burden to produce particles across the scope of the claims (see paragraphs 233 and 234 (iii) of the substantive judgment).
3M subsequently sought permission to appeal. It also applied to amend the patent (should its permission to appeal the substantive judgment be rejected or any appeal be dismissed), and asked for the amendment application to be dealt with at the same time as the costs hearing and appeal application. Given the possible knock-on effects to arguments in these areas, the judge agreed to hear the issues on the same date.
SG argued against the application to amend, stating that it would not be ready to deal with it.
Regarding the consequential judgment, the claim integer subject to amendment was integer 6 of Claim 1, which stated that the thickness ratio (Tc/Ti) of the dish-shaped abrasive particles was to be between 1.25 and 5.00. The requested amendment was to change this ratio to between 1.25 and 2.32 or, if this was refused, to between 1.55 and 2.32.
Michael Tappin QC began by summarising the case law, noting that the Court of Appeal had considered applications to amend a patent after trial in both Nokia Corp v IPCom GmbH & Co KG  EWCA Civ 6 and Nikken Kosakusho Works v Pioneer Trading Company  EWCA Civ 906.
• In Nikken, Jacob LJ identified several distinct scenarios concerning applications to amend a patent. One of these situations was where said claims had not been under attack, nor could they have been prior to trial. On this category, Jacob LJ said it would be improper to allow amendment because all issues to be brought before the court must be brought up prior to trial, in accordance with the CPR and the overriding objective.
• Similarly, in IPCom Jacob LJ reconsidered a related point from Nikken and reaffirmed that the true test for considering a post-trial application to amend a patent was deemed to be “abuse of process – procedural fairness”. It was held that this would occur if a party did not advance a case that it could have advanced much earlier as the whole case should be put forward in the interests of procedural fairness.
Continuing, he noted that in Warner-Lambert Co LLC v Generics (UK) Ltd (t/a Mylan)  UKSC 56, the Supreme Court “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”, confirming that the approach taken in IPCom and Nikken had been correct.
After summarising 3M’s proposed amendment request, the judge used the same wording as Lord Briggs in Warner-Lambert and concluded that the proposed amendments to the range of thickness ratios were clearly “designed to make good a claim not thus far advanced in the amended form” (paragraph 13). He then outlined 3M’s position, which was that in the trial judgment, he (Michael Tappin QC) had established that the Patent as proposed to be amended was valid; that no further trial would be required and consequently there could be no abuse of process; and that the present case would fall into the category of being covered in the main litigation (which was another of the categories identified by Jacob LJ in Nikken). He countered this, saying that this was not the case and that 3M was incorrect in how it had interpreted his ruling. In fact, the subject of the proposed amendment had not been an issue in the trial, and a further trial would have been required in order to address this point.
As a result he refused the application, stating that 3M could and should have made the application before trial had it wanted to contend that the claims would be valid in an amended form. If he had allowed the application, then it would have been unfair to SG and would have been an abuse of the process of the court (see paragraph 30).
Both SG and the court had no prior warning that 3M would seek to contend that “the skilled person could, without undue burden make particles across the range of the proposed claims”. It was also noted that even if 3M’s contention that the patent was valid subject to the amendment had been correct, “it would still have been an abuse of process to apply to amend the Patent after judgment”. One of the reasons that a party is required to bring forward its whole case is to allow the opposition to appropriately address any issues (in the interests of fairness).
It is clear that amending a patent post judgment remains a very difficult thing to do. Any requests for amendments to a patent should be made as soon as possible in order to avoid any abuse of process. 3M argued that had it applied sooner, then there would have been procedural objections. However, at paragraph 27 of the judgment it was stated that had this been the case, then the court would have been able to consider the matter and decide on case management directions as required. This would have been preferable to the situation which it was instead presented with.
In keeping with the overriding objective of enabling the court “to deal with cases justly and at proportionate cost”, the court holds the view that bringing all issues for dispute forward with sufficient notice for both the opposing side and the court itself remains of the utmost importance. Based on this judgment and those which have been considered by the court of Appeal, it is important that the timeline for any amendment applications is carefully considered.
Headnote: Claire Wilson, Bristows LLP