Saint-Gobain Adfors S.A.S v SM Innovative Properties Company

After judgment, a patentee should not ordinarily be permitted to advance amendments which introduce a new validating claim and require a further trial on validity. The fact that the court’s earlier findings may appear favourable to the proposed narrower claim does not establish that the claim is valid where that issue was not litigated or decided. The application may constitute an abuse of process because the opposing party lacked notice of the case it had to meet and the court lacked notice of the issue it had to determine. The court may also make an issue-based costs order where the successful party failed on distinct issues, while declining to order it to pay the opponent’s costs absent additional justification.

The claimant succeeded at trial in establishing that the patent was insufficient because the skilled person would face an undue burden in producing particles across the claimed range. The defendant then applied, after judgment, for permission to amend the patent by narrowing the claimed thickness-ratio range. The claimant opposed the application on grounds of abuse of process, lack of notice, prejudice and the need for a further trial, including on added matter.

The court considered whether its trial findings had already established the validity of the proposed amended claims, whether the timing of the application was procedurally fair, and the consequential costs and permission-to-appeal applications.

1. Application to amend refused. The proposed amendments fell within the post-trial category identified in Nikken Kosakusho Works v Pioneer Trading Company [2005] EWCA Civ 906: claims not previously under attack and intended to make good a claim in a form not previously advanced.
2. The trial judgment did not establish that either proposed narrower range was valid. The court had rejected the argument that the skilled person could produce anything within the granted claims, but that finding did not decide whether particles could be produced across any particular sub-range. The court had also found insufficiency towards the upper end of the granted range, without deciding the validity of the proposed amended ranges.
3. The governing question was abuse of process and procedural fairness. Under Nokia Corp v IPCom GmbH & Co KG [2011] EWCA Civ 6, as informed by Johnson v Gore-Wood, it is ordinarily unfair to subject a party to successive cases where the later case could readily have been advanced earlier. The defendant knew, at least from the claimant’s first expert report, that insufficiency across the whole range was in issue. It could and should have applied before trial. Allowing the application after judgment would have deprived the claimant of notice and required further evidence and argument, thereby vexing it twice.
4. That conclusion would have been the same even if the trial judgment happened incidentally to contain findings favourable to the amended ranges. The purposes of requiring parties to bring forward their whole case include defining the issues for the opposing party and the court.
5. The claimant recovered its costs, subject to a 40% deduction for distinct issues on which it failed, including Rowenhorst, lack of technical contribution, uncertainty-type insufficiency and related construction questions. The defendant was ordered to pay the claimant’s costs of the amendment application and the claimant was awarded £475,000 on account of costs.
6. Permission to appeal was refused. The proposed grounds either lacked a real prospect of success or invited reconsideration of factual findings rather than raising an issue of principle.

First-instance judgment. The court referred to its earlier trial judgment, Saint-Gobain Adfors S.A.S v 3M Innovative Properties Company [2022] EWHC 1018 (Pat), which had held the patent invalid for insufficiency. The present judgment refused the defendant’s post-judgment amendment application and refused permission to appeal.