No Triumph of hindsight; Oh won't you stay? Wheels of justice

Patent amendment is a multifaceted art: patent applicants may have to jettison material during the application stage in order to sidestep objections. They may also wish to amend post-grant in order to clarify the scope of the invention. Triumph Actuation Systems LLC v Aeroquip-Vickers Ltd and another [2007] EWHC 1367 (Pat), a Patents Court decision of Mr Justice Pumfrey on Friday 15 June 2007 (available on BAILII here) is a decision that reflects both the strategic options available to the holder of a patent in terms of its pre- and post-grant amendment and on the limitations which the law imposes on amendment so as to prevent abuse.

In 1998 Triumph obtained a European patent for a power transfer unit, a piece of hydraulic equipment used in the Airbus A320 family of aircraft. The patent as originally applied for contained substantial material that was excised from the patent as granted. Triumph applied to amend the patent specification and alleged that the patent, as amended, was both valid and infringed. Aeroquip-Vickers opposed the amendment, relying on s.76 of the Patents Act 1977 (UK) and Article 123 of the European Patent Convention. The Patents Act 1977 s.76 reads, in relevant part:

"(3) No amendment of the specification of a patent shall be allowed
... if it -

(a) results in the specification disclosing additional matter,
or

(b) extends the protection conferred by the patent".

Article 123 of the European Patent Convention reads:

"(1) The conditions under which a European patent application or a European patent may be amended in proceedings before the European Patent Office are laid down in the Implementing Regulations. In any case, an applicant shall be allowed at least one opportunity of amending the description, claims and drawings of his own volition.

(2) A European patent application or a European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.

(3) The claims of the European patent may not be amended during opposition proceedings in such a way as to extend the protection conferred".

Triumph and Aeroquip-Vickers were in dispute as to the meaning of s.76(3)(a). According to Triumph, it meant that the additional matter referred to was matter additional to that disclosed in the application as filed, rather than in the specification of the patent prior to amendment. Triumph added that, on a proper analysis of the application as filed, the combination which it sought to claim had been disclosed in it. Aeroquip-Vickers disagreed: in their view the combination was additional matter in the sense that it was a new inventive concept, neither disclosed not unambiguously derivable from the specification before its amendment.

Pumfrey J refused the amendment and added that, if it were allowed, the claim would be invalid because it covered the alleged infringement. He concluded as follows:

* the provisions of Article 123 of the EPC applied during opposition proceedings which took place post-grant and in respect of a patent the specification of which might have been amended during prosecution. This being so, it would be an unjustifiable departure from the overall scheme of European patent law if s.76(3)(a) required the necessary comparison to be made with the specification prior to the amendment rather than with the application as filed.

* in this case the amendment claimed a new combination which was neither described in the application as filed nor in the text of the patent as granted.

The IPKat notes the court's comments concerning departures from the scheme of European patent law and contrasts it with the approach which the European Court of Justice took in Case C‑246/05, Armin Häupl v Lidl Stiftung & Co. KG, (noted by the IPKat here) when faced with a request to impose an overall scheme for determining the mechanics of calculating trade mark non-use where none was mandated by a harmonising Directive: these cases show how much flexibility the courts have when determining whether, and to what extent, a "scheme" and a departure from it may be tolerated. Merpel adds, some unkind people have expressed the thought that a patent, once granted, should be left as it is. If too much or too little has been claimed, it's just hard luck for the patent applicant who has every opportunity to stake out the parameters of his patent protection before he files. But then, some people wouldn't allow after-the-event amendment of lottery tickets either.

Interesting fact: Triumph used to trade as Frisby Aerospace
Legitimate amendments here


Glaxo Group Ltd v Genentech Inc and another [2007] EWHC 1416 (Pat), a Patents Court decision of Mr Justice Lewison last Friday (available here on BAILII) is the latest of a line of stay-of-proceedings cases in the UK that has been induced by the fact that the European Patent Office may not conclusively find patents valid (or invalid) until years after infringement or revocation litigation has erupted at national level.

Genentech owned a second medical indication European patent that claimed the use of an anti-CD20 antibody, including an antibody with the international non-proprietary name rituximab - usually branded MabThera or Rituxan, in the manufacture of a medicament for treatment of rheumatoid arthritis in (mainly human) mammals. Glaxo, who were co-developing with Genmab an anti-CD20 antibody (ofatumumab) as a therapy for rheumatoid arthritis, argued that Genentech's patent was invalid and sought to revoke it. Having filed post-grant oppositions in the European Patent Office in August 2006, Glaxo launched UK revocation proceedings in February of this year. Genentech applied to stay the UK proceedings, pending the decision of the EPO in the opposition proceedings.

Lewison J refused the application to stay the UK proceedings. Following a lengthy and structured review of the relevant law, he considered that there was a presumption - though not a strong one - in favour of a stay, it being for the party resisting the stay to overcome that presumption. In this case, balancing all the relevant factors both in favour of and against a stay, the balance of justice was favour of allowing the proceedings to go to trial. Having refused the application for a stay, he said:

"67. I would, however, add that the practice now adopted in patent cases does seem to be to some extent out of line with the more usual commercial case which comes before our courts. The guidance has stemmed largely from obiter observations of Aldous LJ. It may well be time for the Court of Appeal to examine the current practice to see whether it is justified and if it is, to say so definitively, once and for all".

Says the IPKat, I can almost hear the judge singing "Please appeal me ..." - we know that patents are different, but it would be good to hear a strong and authoritative expression to this effect. Merpel adds, I like the bit where Lewison J says

"At the time of making of the Treaty it was thought that opposition proceedings would be relatively quick. But that has not proved to be so. It would be possible to compile an anthology of judicial expressions of regret at the slowness of opposition proceedings in the EPO".

Heeling Sports Ltd and another v Youngsters Ltd and others, the third in this trilogy of Friday's Patents Court decisions, has not made it to BAILII - but it was picked up on subscription-only service LexisNexis Butterworths. This time the judge was Mr Justice Patten.

Heeling patented a type of shoe, the heel of which contained a wheel, enabling the wearer to skate by standing back on the heel. Youngsters sold 'flying shoes' which were similar to the patented ones. Heeling and its exclusive licensee sued for patent infringement and sought an interim injunction to stop sales of the 'flying shoes' pending trial. Youngsters counterclaimed for invalidity of the patent. However, their accounts for the year ending 31 March 2007 indicated that they had made an overall loss of some £2.5 million before tax, while their balance sheet indicated a credit balance of just £2 million. In these proceedings the question arose as to whether damages would be an adequate remedy for Heeling: after all, Youngsters' potential liability was estimated to amount to approximately £700,000, so it wasn't clear that they'd be able to pay. Youngsters said that, even if they ceased to trade, they still had £2 million assets from which to satisfy an adverse judgment.

Patten J dismissed the application. In a case such as this, interim injunctive relief would not normally be granted if damages would be an adequate remedy for the infringement and the defendant was in a financial position to pay up. This was the case however strong the patent owner's infringement claim might appear. What's more, the question whether a judgment could be satisfied had to be answered not simply by reference to the trading position of a company but by reference to what the position would be on a balance sheet basis. In this case there were £2 million worth of assets available to meet an adverse judgment. On that basis, damages would be an adequate remedy for Heeling, to cover the position until trial.

The IPKat says that may be all very well, but the brief note on LNB says nothing about the cost of the litigation (which may in many instances easily exceed the quantum of damages): the more that rises, the more the claimant must be quaking in its boots in fear of the defendant's purse emptying out before any damages are paid. Merpel says, I've heard talk of the "wheels of justice", but this is the first time I've ever seen them in court.



Cats on wheels here; puss in boots here