Patents - Anan Kasei Co Ltd and another v Neo Chemicals and Oxides Ltd.
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| Ceric Oxide
Author Walkerma Reproduced with kind permission of the copyright owner
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Jane Lambert
Court of Appeal (Lords Justices Lewison, Floyd and Jackson) Anan Kasei Co Ltd and another v Neo Chemicals and Oxides Ltd and another [2019] WLR(D) 553, [2019] EWCA Civ 1646 Patents Court (Roger Wyand QC) Anan Kasei Co. Ltd and another v Molycorp Chemicals & Oxides (Europe) Ltd. [2018] EWHC 843 (Pat)
In Anan Kasei Co. Ltd and another v Molycorp Chemicals & Oxides (Europe) Ltd. [2018] EWHC 843 (Pat), Anan Kasei Co. Ltd the proprietor of European patent 1435338 and Rhodia Operations SAS, its exclusive licensee, sued a distributor of catalytic products for infringement of claims 1 to 5 of the patent. The defendant, which changed its name to Neo Chemicals and Oxides (Europe) Ltd., denied infringement and counterclaimed for revocation on grounds of anticipation, obviousness and insufficiency.
The action and counterclaim came on before Mr Roger Wyand QC sitting as a deputy judge of the High Court. A trial that took place on 16, 17, 18, 19 and 25 January 2018. The defendant abandoned its want of novelty objection at trial but continued its counterclaim on the other grounds. In his judgment of 23 April 2018, the learned deputy judge found for the claimants. He said at paragraph [113]:
"1. The Patent does involve an inventive step.
2. The Patent is not insufficient.
3. The proposed amendments are not necessary.
4. The Defendant's products infringe claims 1, 3, 4 and 5 of the Patent."
After Mr Wyand had delivered judgment, Rhodia Operations feared that the defendant would be unable to pay damages. It applied for permission to join the defendant's Canadian parent, Neo Performance Materials Inc., as a second defendant on two grounds first, that it had been a joint tortfeasor in its own right and, secondly, that it had acquired the liabilities of the defendant's previous parent company which had also infringed the patent. The application was heard by Nicholas Caddick QC sitting as a deputy High Court judge on 18 Dec 2018. Mr Caddick held that the argument that the Canadian company was a joint tortfeasor was just about tenable but not the argument that it had acquired the liabilities of the previous parent company. He allowed the Canadian parent to be joined to the action. In a further hearing before His Honour Judge Hacon sitting as a judge of the High Court on 18 March 2019, the Canadian company's liability was limited to certain goods that had been seized temporarily by the Border Force.
The defendant appealed against Mr Wyand's finding on insufficiency. Rhodia Operations, the second claimant, appealed against the orders of Mr Caddick and Judge Hacon limiting Neo Performance's liability. Both appeals came on before Lords Justices Lewinson, Floyd and Jackson on 17 and 18 July 2019. Their lordships delivered judgment on 9 Oct 2019. They dismissed the appeals from Mr Wyand's judgment but allowed the appeals from Mr Caddick and Judge Hacon.
The defendant appealed against Mr Wyand's finding on insufficiency. Rhodia Operations, the second claimant, appealed against the orders of Mr Caddick and Judge Hacon limiting Neo Performance's liability. Both appeals came on before Lords Justices Lewinson, Floyd and Jackson on 17 and 18 July 2019. Their lordships delivered judgment on 9 Oct 2019. They dismissed the appeals from Mr Wyand's judgment but allowed the appeals from Mr Caddick and Judge Hacon.
S.14 (3) of the Patents Act 1977 requires that:
If it does not to that, the Patents Court or the Comptroller may revoke a patent on the ground that the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art pursuant to s.72 (1) (c).
The insufficiency issues in this appeal were summarized neatly by Lord Justice Floyd at paragraph [1] of his judgment:
"A patentee limits his claim by the words "consisting essentially of" a particular oxide. One issue in the first of three appeals which are before the court is whether those words give rise to such uncertainty as to lead to invalidity of the patent. The patentee also limits his claim by reference to a desirable physical characteristic for such an oxide, namely high specific surface area, and specifies that it remains the same after being subjected to a high temperature heating test. The second issue in the first appeal is whether, a claim so drawn insufficiently describes the invention, and is invalid for that reason."
"A patentee limits his claim by the words "consisting essentially of" a particular oxide. One issue in the first of three appeals which are before the court is whether those words give rise to such uncertainty as to lead to invalidity of the patent. The patentee also limits his claim by reference to a desirable physical characteristic for such an oxide, namely high specific surface area, and specifies that it remains the same after being subjected to a high temperature heating test. The second issue in the first appeal is whether, a claim so drawn insufficiently describes the invention, and is invalid for that reason."
The claim in question was Claim 1:
Lord Justice Floyd noted at paragraph [9] that "calcination" in this context meant high temperature heating.
The technical problem that the invention was intended to solve was how to maintain in the catalytic converter of a vehicle exhaust system a high specific surface area of the ceric oxide catalyst at high temperature without sintering. At paragraph [10] Lord Justice Floyd explained that the words "consisting essentially of a ceric oxide" were intended to exclude from the claim mixed oxides such as ceria/zirconia mixtures and that the requirement for a specific surface area not smaller than 30.0 m2/g after the specified calcination step was thus a test for the performance of the essentially ceric oxide material under high temperature conditions.
The technical problem that the invention was intended to solve was how to maintain in the catalytic converter of a vehicle exhaust system a high specific surface area of the ceric oxide catalyst at high temperature without sintering. At paragraph [10] Lord Justice Floyd explained that the words "consisting essentially of a ceric oxide" were intended to exclude from the claim mixed oxides such as ceria/zirconia mixtures and that the requirement for a specific surface area not smaller than 30.0 m2/g after the specified calcination step was thus a test for the performance of the essentially ceric oxide material under high temperature conditions.
The defendant had complained in its grounds of invalidity that the specification did not contain any directions or explanation as to the meaning of the term "consisting essentially of ceric oxide". It alleged that "in the premises, the skilled person would be unable to implement the invention or determine whether he was working the same without undue effort or at all." Mr Wyand had not been impressed with that argument at trial. He noted that a skilled addressee would know that a mixed oxide containing zirconium could affect the surface area after calcination, depending on the amount present but he or she would not necessarily know the precise concentration needed. In the deputy judge's view that did not matter. He observed that there is often a limit at the edge of a claim where the precise limit is difficult to ascertain. That does not lead to a finding of invalidity.
Lord Justice Floyd upheld the deputy judge. The claim specified that the invention would be a mixture of ceric oxide and some other component or components which will maintain a specified surface area subjected to 900 degrees calcination for 5 hours. In his lordship's view, this was not a case where there was any argument about the criterion which one needed to apply once the argument about the construction of the claim had been resolved. It was simply whether the added ingredient had a material effect on the essential characteristics of the product. The argument that the meaning of the claim would not be clear to a purchaser was irrelevant. The test was whether the claim had disclosed the invention for it to be performed by a skilled addressee and the evidence was that it could.
In a concurring judgment, Lord Justice Lewison distinguished between a claim where the limits are not easy to determine (which is sometimes called a "fuzzy boundary") and one where they are impossible to discern. A claim having a fuzzy boundary might be valid but one that was impossible to determine could not.
Lord Justice Floyd upheld the deputy judge. The claim specified that the invention would be a mixture of ceric oxide and some other component or components which will maintain a specified surface area subjected to 900 degrees calcination for 5 hours. In his lordship's view, this was not a case where there was any argument about the criterion which one needed to apply once the argument about the construction of the claim had been resolved. It was simply whether the added ingredient had a material effect on the essential characteristics of the product. The argument that the meaning of the claim would not be clear to a purchaser was irrelevant. The test was whether the claim had disclosed the invention for it to be performed by a skilled addressee and the evidence was that it could.
In a concurring judgment, Lord Justice Lewison distinguished between a claim where the limits are not easy to determine (which is sometimes called a "fuzzy boundary") and one where they are impossible to discern. A claim having a fuzzy boundary might be valid but one that was impossible to determine could not.
The defendant had also attacked the claim on the ground that it was a wish list, that is to say, that it covered all sorts of products with the properties specified in the claim that were different from the first claimant's. There was, however, no evidence that such was the case. Lord Justice Lewison agreed observing at paragraph [105] that in the case of the first insufficiency attack, the attack failed in principle and in the case of the second, it failed on the evidence.
Turning to Rhodia Operations's appeal against Mr Caddick's decision, the Court of Appeal held it was arguable that the defendant's previous parent company, Neo Cayman Holdings Inc, and the defendant had infringed the patent in pursuance of a common design. Neo Cayman had become insolvent and sought protection under Chapter 11 of Title 11 of the US Bankruptcy Code. By what appeared to have been a court supervised arrangement dated 30 Nov 2017 Neo Performance Materials Inc. acquired the assets and liabilities of Neo Cayman Holdings Inc. It was at least arguable that Neo Performance could be sued for Neo Cayman's wrongdoing.
Turning to Rhodia Operations's appeal against Mr Caddick's decision, the Court of Appeal held it was arguable that the defendant's previous parent company, Neo Cayman Holdings Inc, and the defendant had infringed the patent in pursuance of a common design. Neo Cayman had become insolvent and sought protection under Chapter 11 of Title 11 of the US Bankruptcy Code. By what appeared to have been a court supervised arrangement dated 30 Nov 2017 Neo Performance Materials Inc. acquired the assets and liabilities of Neo Cayman Holdings Inc. It was at least arguable that Neo Performance could be sued for Neo Cayman's wrongdoing.
As for Judge Hacon's order, the Court could see no reason for limiting Neo Performance's liability to the value of the seized goods and no further.
Interestingly, neither the defendant nor its Canadian parent raised the defence of res judicata or Mr Justice Pumfrey's dicta in Kooltrade Ltd v XTS Ltd. (No, 2) [2002] F.S.R. 49. Following a trial and inquiry, the defendant to a threats action disposed of its assets and went into creditors' voluntary liquidation. The claimant applied unsuccessfully to join the defendant's directors and solicitors as defendants. The application failed on the grounds that the court had no jurisdiction under CPR 19.2 to join parties to an action after judgment. However, his lordship added at paragraph [33]:
"In my judgment, were it necessary to decide this point, I would have come to the conclusion that I would not allow this amendment on the basis that to do so would be to facilitate an abuse of the process of the Court by continuing the proceedings in the context of the original proceedings, in such a manner as potentially to deprive the newly introduced defendants of defences which were available to them, or at least, if no defence was available to them, of the opportunity to defend themselves."
Interestingly, neither the defendant nor its Canadian parent raised the defence of res judicata or Mr Justice Pumfrey's dicta in Kooltrade Ltd v XTS Ltd. (No, 2) [2002] F.S.R. 49. Following a trial and inquiry, the defendant to a threats action disposed of its assets and went into creditors' voluntary liquidation. The claimant applied unsuccessfully to join the defendant's directors and solicitors as defendants. The application failed on the grounds that the court had no jurisdiction under CPR 19.2 to join parties to an action after judgment. However, his lordship added at paragraph [33]:
"In my judgment, were it necessary to decide this point, I would have come to the conclusion that I would not allow this amendment on the basis that to do so would be to facilitate an abuse of the process of the Court by continuing the proceedings in the context of the original proceedings, in such a manner as potentially to deprive the newly introduced defendants of defences which were available to them, or at least, if no defence was available to them, of the opportunity to defend themselves."
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