MMI Research v Cellxion

On an application to admit evidence after trial, an appellate court may reopen a confined issue where the new material is sufficiently strong to justify the heavy burden of introducing fresh evidence. The court should define the issues with precision and may remit them to the trial judge. Reopening is not an opportunity to re-run every issue: matters unsupported by the new material remain closed, and further amendment is viewed with the utmost suspicion and allowed only exceptionally. A limited reconsideration may be directed on the basis of existing evidence supplemented by the fresh evidence.

MMI Research appealed from a judgment of Floyd J in the Patents Court holding the patent in suit valid. The perfected order gave effect to a decision that the patent was valid and infringed. After judgment, MMI received manuals and a floppy disc which allegedly disclosed the invention before the patent’s priority date. It sought permission to appeal and admission of the fresh evidence, together with permission to reopen issues concerning prior sales, manuals supplied to security officers and an earlier supply to the Australian government. The central questions were whether the evidence should be admitted and, if so, which issues could properly be reconsidered.

The Court of Appeal, comprising Jacob LJ and Kitchin J, admitted the fresh evidence and remitted the defined issues to Floyd J. The application for permission to appeal the existing judgment was adjourned.

1. Threshold for fresh evidence. Admission of evidence after trial is a strong step and the applicant bears a heavy onus. The manuals and floppy disc disclosed the invention on their face and strongly indicated that there may have been a prior public disclosure. Evidence from Italian and German government security officers that they had received comparable training manuals before the priority date provided material support for admission.
2. Limits of the reopening. The issues had to be pleaded with considerable precision. The permitted issues were:
   • the prior sale to the customer named in the certificate of compliance, together with supply of the training manual;
   • the supply of manuals to the Italian and German security officers; and
   • the Australian supply, but only so far as concerned the inference to be drawn from the existing evidence in light of the fresh evidence.
   The question whether the machine itself enabled its workings to be understood was not reopened, and no further evidence from Australia was permitted.
3. Further amendment and remittal. Any further amendment was to be viewed with the utmost suspicion and allowed only in the most exceptional circumstances. The matter was remitted to the same judge for a further decision on the pleaded issues and no others.
4. Costs and permission. The Court of Appeal did not determine the permission application at that stage. It might become unnecessary, and any costs consequences if MMI succeeded were left to the judge below.

1. Court of Appeal (Civil Division): admitted fresh evidence, confined the issues to be reconsidered and remitted them to Floyd J. The application for permission to appeal was adjourned.
2. High Court of Justice, Chancery Division, Patents Court: Floyd J held the patent in suit valid, with the perfected order giving effect to a decision that it was valid and infringed.