L'Oreal (UK) Ltd & Anor v Liqwd Inc & Anor

Deleting an alternative from a patent claim does not extend protection where the remaining wording already covers the allegedly new subject matter. A chemical formula is construed in its technical and specification context. Where the claim concerns use in solution, the formula may cover the ions formed on dissociation, including ions released from salts. Obviousness remains a multifactorial assessment, and an appellate court should not interfere with an experienced patent judge’s conclusion absent an error of law or principle. A judge may revisit a decision before the order is sealed, but fresh evidence after trial is governed by the overriding objective and the circumstances of the case. Finality, delay, fairness, the need for a further trial and interim detriment are relevant.

L’Oréal appealed from two decisions of Birss J in patent infringement proceedings brought by Olaplex. In [2018] EWHC 1394 (Pat), claims 1–10 were held invalid; amendment to claim 11 was allowed, and the amended claim was held valid and infringed. In [2018] EWHC 1845 (Pat), the judge refused L’Oréal permission to adduce further evidence.

The appeals concerned whether deleting the words “or a simple salt thereof” extended protection, whether amended claim 11 was obvious over Kim, and whether further evidence could establish priority for WO 768 and thereby make it a novelty-only citation. The central issues were claim construction, obviousness and reopening a decision before the consequential order was sealed.

Both appeals were dismissed. Arnold LJ gave the leading judgment, with McCombe LJ and Davis LJ agreeing. Davis LJ added observations on obviousness and fresh evidence.

1. Claim construction and amendment. The formula in claim 11 was understood, in its technical and specification context, to include maleic acid and the hydrogen maleate and maleate ions formed in aqueous solution. Consequently, any solution made by dissolving a maleate salt, whether simple or complex, was already within the unamended claim. The word “or” was disjunctive and identified two alternatives. Deleting “or a simple salt thereof” therefore did not extend protection. The court rejected the submission that the phrase described one composite class of compounds. For completeness, “simple salt” ordinarily meant a solid in which ions were bound in a crystal lattice; a salt solution was not itself a salt. That construction was not necessary to the conclusion on extension. Claim construction was a question of law, and the court was not bound by either party’s construction. The late construction advanced by Olaplex did not cause procedural unfairness.
2. Obviousness. Obviousness involved a multifactorial evaluation, and appellate intervention required an error of law or principle: Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15. Kim was focused on oxidative dyeing, not hair lightening. Its proposed mechanism concerned reduction rather than oxidation, and its reference to direct dyes was inconsistent with L’Oréal’s interpretation. The skilled team would not regard Kim as making it obvious to use maleic acid in a pure bleaching system. No basis existed to interfere with the judge’s conclusion.
3. Further evidence. Under In Re L (Children) (Preliminary Finding: Power to Reverse) [2013] UKSC 8, a judge may revisit a decision before the resulting order is perfected or sealed; exceptional circumstances are not required. The overriding objective under the Civil Procedure Rules 1998 required a fact-sensitive assessment. Relevant matters included finality, the reasons for delay, fairness, any need for a second trial, and interim detriment. The judge was entitled to refuse the application because L’Oréal had chosen to pursue the point by cross-examination rather than seek an adjournment, the proposed evidence was not a knock-out point, and admission would require a further trial. Davis LJ confirmed that patent cases were not subject to a different fresh-evidence standard.

1. Court of Appeal (Civil Division). Both appeals dismissed.
2. Patents Court. In [2018] EWHC 1394 (Pat), Birss J held claims 1–10 invalid, allowed amendment to claim 11, and held the amended claim valid and infringed. In [2018] EWHC 1845 (Pat), he dismissed L’Oréal’s application to adduce further evidence.