COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
The Hon Mr Justice Floyd
Strand, London, WC2A 2LL
B e f o r e :
THE RT HON LORD JUSTICE JACOB
THE HON MR JUSTICE NORRIS
| Nokia GMBH
(a company incorporated under the laws of Germany)
|Nokia UK Ltd
Nokia OYJ (Nokia Corporation)
(a company incorporated under the laws of Finland)
|- and -
|IPCOM GMBH & Co KG
(a company incorporated under the laws of Germany)
for the Appellants
Mr Richard Meade QC and Mr James Abrahams (instructed by Bird & Bird LLP)
for the Respondents
Hearing dates: 14/15/16 December 2010
Crown Copyright ©
Lord Justice Jacob (giving the first judgment at the invitation of Sedley LJ):
20th November 2009,  EWHC 3034 (Pat) ("the first amendment judgment");
18th January 2010,  EWHC 3482 (Pat) ("the main judgment");
and 31st March 2010,  EWHC 789 (Pat) ("the second amendment judgment").
A The Synch Patent
(1) Technical Background
i) The reference oscillator in the mobile may not be accurate: in that case the frequency would differ from the true carrier frequency of the received signal and phase errors (an increasing phase offset) will occur.
ii) Signal degradation caused by other radio emissions, perhaps from another mobile channel, ("interference") may mean that the amplitude of the received signal does not remain constant.
iii) The environment may produce random radio "noise" (e.g. from lighting).
iv) Buildings or hills may create radio shadows. Other buildings or objects may cause the radio waves to be reflected, so that the mobile receives a burst directly and fractionally later than (and out of phase with) the same burst which had taken the longer path. The phase difference might be such that the two signals cancel each other out.
v) The movement of the mobile towards or away from the base station may cause a Doppler shift, where the received frequency differs from the transmitted frequency.
 The disclosure of 808 is extremely sparse. The original German text (ignoring the claims) is concentrated into only 30 paragraphs spread over only 5 columns. The drawings, many of which are inaccurate or trite, do not take the disclosure much further. The first claim, on the other hand, occupies almost all of a sixth column. With so little guidance from the specification, and with such a lengthy claim, it is hardly surprising that almost every expression in the claim was the subject of dispute. To describe the document as a recipe for protracted litigation would not, I am afraid, be unfair.
 The specification starts (page 1 lines 4-9 of the translation) by saying that in the GSM system a relatively large amount of effort is required for synchronisation. After a cross reference to an article by Hodges, it states that the object of the invention is to specify a synchronisation method which satisfies all the relevant requirements with as little technical complexity as possible, an object which it claims is achieved by a method according to claim 1. This is said to be linked to the advantage that synchronisation can be achieved with high precision and relatively little effort. The description continues at page 1 lines 23 to 27 with a point (repeated later in relation to the specific embodiment at page 2 lines 24 to 27):
"The method is particularly advantageous if the synchronisation is based on evaluation of the continuous phase angles which are in each case calculated from the individual I and Q value pairs. This allows the synchronous state to be reached very quickly."
 IPCom's case is that these passages simply refer to the fact that GMSK is based on continuous phase angles, and does not exclude the possibility of maintaining operation with I and Q, at least so far as claim 1 is concerned. IPCom is correct, and the general statements about the invention are simply the obviously desirable goals: minimum complexity and high precision with little effort. There is nothing specific about how these goals are to be achieved, or about what caused the prior GSM system, if it did, to fail to achieve them.
 Apart from the global statement of advantage and the point about using phase angles calculated from I and Q, the introduction does not focus on any particular aspect of the synchronisation. This leaves the reader without much of an idea about what the patentee considered to be the inventive concept. The specification then moves (at page 1 line 29) straight into the description of a specific embodiment. At page 2 line 16 it is pointed out that, in the context of GSM:
"A distinction is drawn between three types of synchronization for the required synchronization of the mobile radio telephones.
(1) Initial synchronization,
(2) Normal operation synchronization,
(3) Lock on synchronization during normal operation."
 Before it turns to any aspect of any of these synchronisation stages, the specification launches into a description of some very general matters:
(i) a summary of GMSK (page 2 lines 27 to 32);
(ii) a TDMA frame, rather misleadingly described (page 2 lines 33 to 35) by reference to figure 1 by omitting various parts of the frequency correction and synchronisation bursts,
"the basic design of the reception path of a mobile radio telephone" described from page 2 line 36 to page 3 line 32, by reference to figure 2. This is reproduced below. Of especial note is the dotted line 27 labelled "equalizer unit". This surrounds something called the "synchronous processor" 28 (which it is common ground is a misnomer – the skilled person would understand it is the processor in which some aspect of synchronisation takes place) and the "equalizer demodulator processor" 29. A connection is indicated between the "central control unit" and the "equalizer unit", although it is not specific as to precisely where, within that, it goes.
(iv) The specification again emphasises (now for the third time at page 3 line 24 to 26) that all processing subsequent to the analogue to digital converter is based on the processing of phase angles calculated from the I and Q components.
 The specification then goes on to discuss the three types of synchronisation: initial, normal and lock-on.
Disclosure about initial synchronisation
 The disclosure about initial synchronisation extends from page 3 line 33 to page 6 line 11. This is said to comprise four steps:
"(1. 1) coarse frequency synchronization,
(1. 2) coarse frame synchronization,
(1. 3) fine frequency synchronization,
(1.4) fine frame synchronization."
 Each of these steps is then described in some more detail. ….. I should simply note at this stage that the specification makes it clear that one does not always have to perform the coarse frequency step. ….
 Whilst step 1.1. is therefore, at least to some degree optional, steps 1.2 to 1.4 are all accepted to be old or obvious in the light of the GSM Recommendations. ….
Disclosure about normal synchronisation
 Normal operation synchronisation is said to take place in two steps:
"2.1 frame synchronization with fine synchronization
2.2 data signal pre-processing
Error-free decoding is ensured by continuously monitoring and maintaining frame and frequency synchronism by evaluating the training sequence within the normal burst 14 (Figure 1). In this case, the frame offset is determined first of all. The determined value (clock offset) is a parameter required to mark the pattern sequence within the data set with bit accuracy. This is a precondition for the subsequent correct correlation calculation to determine the present frequency offset.
Data preprocessing (2.2)
A frequency correction value determined from the present frequency measurements by the central control unit 31 is supplied to the synchronous processor 28. This results in the data being preprocessed, as a result of which the decoder certainty is improved, since the equalizer is supplied with the present data with the frequency already corrected. Data signal preprocessing allows the limitation of error-free decoding for frequency offsets of more than 200 Hz, which could be caused by the Doppler effect and the oscillator, to be completely eliminated."
 It is common ground that the headline of step 2.1 should read "frame synchronization with fine frequency synchronization". It is also common ground that the skilled reader would realise that the term "correlation" is inappropriate terminology for the calculation of the frequency offset in step 2.1. The important point about the disclosure of step 2.1 is that the patentee is telling the reader to use the training sequence within the normal burst for this purpose. This is the subject of claim 9.
 The text I have set out above (read in conjunction with the block diagram of the receiver of figure 2) is the totality of the description in the patent about data pre-processing, step 2.2. Nevertheless the reader learns that the pre-processing is concerned with errors that arise because of the Doppler effect and because of the oscillator. The skilled person would understand that these are both long and short term effects.
Disclosure about lock-on synchronisation
 Lock-on synchronisation is said to mean "synchronization of a mobile radio telephone to surrounding adjacent cells during normal operation" and occurs in two steps:
"3.1 coarse frame synchronization
3.2 fine frame synchronization with fine frequency synchronization"
 As to the detail, one finds this at page 7 line 35:
"..during normal operation, coarse frame synchronization (frequency burst start) and fine frame synchronization together with fine frequency synchronization are carried out as a background process for lock-on synchronization…"
 The specification explains that the algorithms for this purpose correspond in principle to those in the earlier steps. At page 7 lines 26 to 32 the specification explains with less than model clarity:
"… the synchronization parameters required for going beyond the cell boundary (frame and frequency offset) for the surrounding adjacent cells are determined as a background process during normal operation – lock-on synchronization (process with a relatively low priority). The control unit 31 thus ensures that a connection is maintained when going beyond a cell boundary."
"Synchronization method for mobile radio telephones in a cellular, digital mobile radio telephone network, which comprises a plurality of fixed stations and mobile radio telephones and operates with the GSM method, characterized in that, in the mobile radio telephone,
(1) initial synchronization which is used to set up a connection between a mobile radio telephone and a fixed station,
(2) normal operation synchronization, and
(3) lock-on synchronization, that is to say synchronization of a mobile radio telephone to an adjacent cell during normal operation,
are carried out in a manner
in which the initial synchronization is split into the following steps:
(1.1) coarse frequency synchronization at least if the accuracy of the carrier frequencies is not adequate, in which case the coarse frequency synchronization operates independently of bursts and determines whether the frequency of the determined carrier is within a tolerance band,
(1.2) coarse frame synchronization by approximate detection of the start of a frame with the aid of the identification of the start of a frequency correction burst
(1.3) fine frequency synchronization by phase differencing with regard to a frequency correction burst
(1.4) fine frame synchronization, that is to say bit-accuracy frame synchronization,
the normal operation synchronization is split into the following steps:
(2.1) frame synchronization with fine frequency synchronization,
(2.2) frequency-correcting data signal preprocessing using a frequency correction value which is determined from up-to-date frequency measurements
and the lock-on synchronization comprises
(3.1) coarse frame synchronization and
(3.2) fine frame synchronization with fine frequency synchronization."
(2) The points in issue
 IPCom submits that the data pre-processing must cause the frequency correction to be applied before the equaliser. They point to the fact that this is where the correction is applied in figure 2 and is so described in the specification. Nokia submit that the requirement for pre-processing allows the correction to be applied anywhere before the decoder, by which they mean the place where binary values are finally ascribed to the data.
 I prefer Nokia's construction for the following reasons:
i) IPCom's construction is simply an attempt to use the specific embodiment to limit the claim. This is not legitimate. The only restrictions imposed by the claim are that the frequency correction is properly regarded as pre-processing and that it uses up to date information.
(ii) The term "equaliser" does not itself have a clear meaning, as the experts agreed. So even if it were legitimate to read "before the equaliser" into claim 1, there would still be a question about what the term "equaliser" meant.
(iii) The skilled person would have no reason to think that the patentee was at all concerned about precisely where the correction was applied. Indeed this seems to be left deliberately vague in figure 2.
To improve decoding security, temporary frequency fluctuations during data transmission are compensated using a frequency correction value that is determined from the current frequency measurements, so that the current date can already be further processed frequency corrected (see patent specification at issue, paragraph ; feature 4.2 [This feature corresponds to element 2.2 of the claim].
A frequency correction value determined from the present frequency measurements by the central control unit 31 is supplied to the synchronous processor 28. This results in the data being preprocessed, as a result of which the decoder certainty is improved, since the equalizer is supplied with the present data with the frequency already corrected (translation 634-72)
This on its own contemplates the data pre-processing being done before the equalizer. But fig. 2 of the patent shows not only a block labelled "equaliser demodulator processor" but also a dotted line block labelled "equalizer unit" which includes the "synchronous processor." So the patent itself is none too clear as to what it regards as the equaliser. Seeing that dotted line block so labelled would not convey to the skilled reader that the patentee intended or required that the "pre-" be pre- the equaliser.
Data signal preprocessing allows the limitation of error-free decoding for frequency offsets of more than 200 Hz, which could be caused by the Doppler effect and the oscillator, to be completely eliminated
It is against IPCom's construction because it again emphases the point of signal pre-processing, namely error-free decoding which suggests that the "pre-" only needs to be pre- the decoding.
(4) Up-to-date frequency measurements
 …. There is nothing to support IPCom's rigid view in the specification. The skilled person would understand that averaging was a sensible thing to do. Using an average value of several measurements for the purposes of adjusting the oscillator was accepted to be essential. I consider that it would require a clear technical explanation in the patent to indicate that the frequency measurements (note the plural used in the specification and claims) taken for pre-processing should not be averaged. The terms "up-to-date" and "present" are simply not adequate for this purpose.
A frequency correction value determined from the present frequency measurements by the central control unit 31 is supplied to the synchronous processor 28.
Claim 1 (feature 2.2) likewise uses "value" (in the singular) and "measurements" (in the plural), confirming that the usage is no accident.
Data signal preprocessing allows the limitation of error-free decoding for frequency offsets of more than 200Hz, which could be caused by the Doppler effect and the oscillator, to be completely eliminated.
Eizenhöfer explained it well:
As I have previously pointed out, the accuracy of the frequency offset determination from the training sequence in a single Normal Burst is unlikely to be very high. It may also differ from burst to burst due to the Doppler effect. Quite apart from the GSM Recommendations, I think the skilled person would expect to average a number of frequency offset determinations in order to obtain a sufficient accuracy to reliably adjust the reference oscillator, which should already be accurate to about 0.1ppm (2nd report, para. 14)
As Mr Meade QC (for Nokia) put: "generically speaking, doing things very quickly, making lots of very fast adjustments to something that is actually changing slowly, is not a good idea".
In order to obtain statistically rather reliable estimates of the frequency offset, it is advantageous to form a mean value of plurality of calculations of the frequency offset. This especially holds for radio channels affected by fading, for which single estimates may be highly unreliable (419-21).
(5) Obviousness of lock-on synchronisation
 IPCom submits that all that is required for lock-on synchronisation is that the mobile determines and stores the frame and frequency offsets as a background process in preparation for a smooth handover.
 Mr Gould accepted that the idea of storing the frequency offset in advance might occur to the skilled person if he thought that the window on handover was too tight. Professor Eizenhöfer thought that storing the offsets was an attractive and obvious thing to do, because he did think that the window would be very tight. He accepted that some people might not do it if they thought they could manage it in the handover window.
 In my judgment the step of storing the frequency offset was a plainly obvious one. I think the skilled team would perceive the window available on handover as being tight, and would understand that it was prudent to prepare by storing the frequency offset at the same time as the timing offset is obtained.
Q Assuming that the skilled person thought the time for getting transmit synchronisation on handover was on the tight side.
A Right, okay. The tight side I think we could potentially come up with different understandings of what the tight side means. If you are saying he would look at it and say, well, I cannot possibly do it within that window, is that the assumption?
Q No, because we agree it is in fact possible.
A It is possible, yes.
Q But that it is demanding. It is tight.
Q So the skilled person has that understanding on board. I am asking you to assume that.
A Assuming that they look at this and say this is going to be quite difficult to do, yes.
Q Yes, and the skilled person knows that they are reading BSIC regularly in the neighbouring cell.
Q And they know that they will be storing timing offsets as a result.
Q Because the standard points explicitly to that.
Q In those circumstances, it would be obvious, would it not, to derive and store frequency offsets during, for example, the long window and then keep them for when you wanted them on a handover?
A Yes, I think it would certainly be an avenue that the skilled person would explore. If they have really come to the conclusion that this is bordering on impossible, it might cause them to look in other directions. I suppose the other direction they could look in would be to try and sort of get a bit more prepared before entering that window, yes.
Q You characterised this a couple of times as a trade off. I think you may have said 'design choice' as well. We agree with you to an extent that it is a trade off or design choice, but it is a design choice that the skilled person could identify and resolve without any invention.
A I think, given this assumption that the ability to do it in those four bursts" -- that is the 120 milliseconds -- " might be wavering between possible and impossible, the idea of becoming more prepared and, as you say, you are already looking at the synchronisation burst, I think would dawn on them.
"When an arrangement for correcting the frequency position is used, the oscillators need not be adjusted. This is especially advantageous when a receiver alternately receives signals with different receive frequencies [i.e. when the mobile phone is listening to all the surrounding base stations to get the frequency offset.]
In such a case the frequency offset may be separately determined and stored for each receive frequency. With such a solution the otherwise inevitable transient times necessary for readjustment of the oscillators are dispensed with completely."
B The Access Rights Patent
(1) The First Amendment Judgment
4.9.2008 Nokia commenced revocation proceedings. The Grounds of Invalidity identified a number of items of prior art said to render the claims old or obvious. These consisted of versions of the GSM Recommendations and four particular prior art patents. Although the Grounds of Invalidity were amended on 6th July 2009, the amendments related only to the attack on the Synch Patent.
25.9.2009 Nokia served the first expert report of Prof. Eizenhöfer.
19.10.2009 Nokia served the second expert report of Prof. Eizenhöfer and Dr Cooper's report.
10.11.2009 Nokia applied to amend its Particulars to cite additionally an earlier version of the GSM recommendations, v6.1.0. This was only 9 days before the date which had long been fixed for trial.
16.11.2009 IPCom launched its application to amend the Access Rights Patent. The stated reason for the application was in order to further distinguish the Patent from the disclosure in Version 6.1.0. Note that no other reason was offered.
19.11.2009 On the first day of the trial Nokia withdrew its application to cite the fresh prior art.
 Mr Meade, who appears for Nokia, says that these further claims present difficulties of allowability and alter the targets which it would be necessary to shoot at for the purpose of his validity attacks. He asserts, and Mr Alexander reluctantly accepts that if these amendments go ahead in the present trial, then Nokia would be prejudiced and would not be in a position to deal with them adequately. An adjournment therefore would be necessary of the issues relating to the validity at least of the [the Access Rights Patent] and probably the whole of the trial on [it].
 Nobody wants an adjournment of any nature. Both parties want certainty in relation to these patents which are put forward by IPCom as their lead patents in the disputes which are to follow.
 It seems to me therefore that no question can possibly arise of these matters being dealt with at this trial.
 Once the triggering event for the amendment to the patent goes, it seems to me that the amendment should go as well. It seems to me that it is impossible for the present case to accommodate the amendment. The trial will have to go ahead on the basis of the existing claims and existing prior art.
(2) The Second Amendment Judgment
(1) Nikken, if read strictly, would be inconsistent with the House of Lords case of Johnson v Gore Wood  2 AC 1 which laid down a broad "misuse or abuse of process" test.
(2) The context of this case – part of an international patent licensing struggle – took it out of the normal and warranted the allowability of the amendments being considered even after the whole patent had been invalid as it stands.
(3) Moreover at the time of the Judge's decision the proceedings concerning the divisional patent (due to be heard in April) were not on foot, whereas now one can see a very convenient slot for the amendments to be considered.
(4) Nokia did not develop its arguments on invalidity until shortly before trial (see the dates of Prof. Eizenhöfer's and Dr Cooper's reports above) and so the amendments, responsive to that, should not have really been considered late. Alternatively Dr Cooper gave evidence at the trial which took IPCom by surprise and, although adjournment was not asked for, the amendments should be regarded as responsive to that.
(5) Art. 138 of the European Patent Convention 2000 liberalises the possibilities for patent amendment and was not taken into account in Nikken.
(6) Likewise Nikken took no account of the Enforcement Directive (Directive 2204/48/EC on the enforcement of intellectual property rights).
(3) Procedure for Amendment of a European Patent in Proceedings before the Patents Court
 …..The procedure is by way of an application notice, service on the Comptroller, subsequent advertisement and so on. The procedures can, in appropriate circumstances, be gone through quickly or gone through provisionally on the basis that probably no third party will ever come in to oppose. It may be noted that the rules specifically require by Part 63.10 that the patentee must state whether he will contend that the claims prior to amendment are valid. That means that in advance of trial everyone knows where they stand. The patentee is either saying that the original claims are all right or not, and he is plainly also saying that the proposed amendment claims are all right.
(4) The Decision in Nikken
There are different situations in which the exercise of the discretion to allow amendment of a patent may be sought: (a) before a trial; (b) after trial, at which certain claims have been held valid but other claims held invalid, the patentee simply wishing to delete the invalid claims (I would include here also the case where the patentee wishes to re-write the claims so as to exclude various dependencies as in Hallen v Brabantia  FSR 134. There the patentee is in effect continuing to claim which he had claimed before but in a much smaller way); and (c) after a trial in which all claims have been held invalid but the patentee wishes to insert what he hopes are validating amendments.
 Class (c) involves something different, a proposed claim which was not under attack and could not have been under attack prior to trial. If the court is to allow such a claim to be propounded after trial, there is almost bound to be a further battle which would arise in the proposed amendment proceedings. That battle will be over whether or not the proposed amended claim is valid. I say "almost bound" because I can just conceive a case where the point was covered by the main litigation in some way or other.
I should have added that a further battle may also arise about the allowability of the amendments. In this case if IPCom were allowed to apply for the amendments, there would indeed be battles both about allowability (and clarity) and validity.
(a) It would breach the general procedural rule laid down as long ago as 1843. in Henderson v Henderson (1843) 3 Hare 100, that a party should normally not be allowed to advance in a second proceeding matter he could have advanced in the first.
(b) That rule had been applied in patent cases by this Court in Windsurfing v Tabur Marine  RPC 59 and Aldous J in Lubrizol v Esso  RPC 727. I said Aldous J had epitomised the position when he said, at p.790:
I believe it is a fundamental principle of patent litigation that a party must bring before the court the issues that he seeks to have resolved, so as to enable the court to conclude the litigation between the parties.
(c) The general court rules were "dead against" allowing amendment proceedings requiring a second trial after a first trial had determined the patent was invalid. I put it this way:
 … The whole code is governed by the overriding objective contained in Part 1.1.1. 1.1.2 specifies some examples of cases of dealing with a case justly. 2(b) is "saving expense". Plainly a second trial would cause increased expense. 2(d) is ensuring that it is "dealt with expeditiously and fairly". Having two bites of the cherry is doing neither of those things.
 The rules descend into more detail. Under the court's duty to manage cases, 1.4 requires the court actively to manage cases and 1.4.2 says that active case management includes "identifying the issues at an early stage and dealing with as many aspects of the case as it can on the same occasion".
 In the real world patentees, faced with a real problem about the construction of their claims, ought to face up to them early and decide whether they need an amendment or might need an amendment. That is one of the purposes of the rule, to make people face up to their cases at an early stage, not at a late stage.
That of course also applies to the validity of the claims.
 I agree. I wish only to underline my firm support for the view, which is a major and emphatic theme of my Lord, Jacob LJ's judgment, that the result of this appeal is driven by the principle of the general law given by Henderson and clothed with renewed vigour by the overriding objective of the CPR, that in any given litigation the parties are required to bring forward their whole case. It provides [the report says "provokes"] certainty and [the report says "of"] economy and minimises expense, and it applies as powerfully in this area of the law as any other.
And Waller LJ:
 In one sense the question is whether there should be some special rule in patent cases. In any other litigation it would be unfair to allow a party to amend his case post judgment so as to allow an opportunity to succeed after a further trial, however small. The question is whether there is something special about patent litigation. The authorities do not support the proposition that there is something special. Indeed, those authorities cited both by the judge and by my Lord go to the opposite effect. Those are reinforced, as I would see it, by the new CPR. I am relieved to find the position to be so.
Should Nikken be relaxed or watered down?
(1) Johnson v Gore-Wood
The underlying public interest is the same: that there should be finality in litigation and that a party should not be twice vexed in the same matter. This public interest is reinforced by the current emphasis on efficiency and economy in the conduct of litigation, in the interests of the parties and the public as a whole. The bringing of a claim or the raising of a defence in later proceedings may, without more, amount to abuse if the court is satisfied (the onus being on the party alleging abuse) that the claim or defence should have been raised in the earlier proceedings if it was to be raised at all. I would not accept that it is necessary, before abuse may be found, to identify any additional element such as a collateral attack on a previous decision or some dishonesty, but where those elements are present the later proceedings will be much more obviously abusive, and there will rarely be a finding of abuse unless the later proceeding involves what the court regards as unjust harassment of a party. It is, however, wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. That is to adopt too dogmatic an approach to what should in my opinion be a broad, merits-based judgment which takes account of the public and private interests involved and also takes account of all the facts of the case, focusing attention on the crucial question whether, in all the circumstances, a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before. As one cannot comprehensively list all possible forms of abuse, so one cannot formulate any hard and fast rule to determine whether, on given facts, abuse is to be found or not. Thus while I would accept that lack of funds would not ordinarily excuse a failure to raise in earlier proceedings an issue which could and should have been raised then, I would not regard it as necessarily irrelevant, particularly if it appears that the lack of funds has been caused by the party against whom it is sought to claim. While the result may often be the same, it is in my view preferable to ask whether in all the circumstances a party's conduct is an abuse than to ask whether the conduct is an abuse and then, if it is, to ask whether the abuse is excused or justified by special circumstances. Properly applied, and whatever the legitimacy of its descent, the rule has in my view a valuable part to play in protecting the interests of justice.
It is one thing to refuse to allow a party to relitigate a question which has already been decided; it is quite another to deny him the opportunity of litigating for the first time a question which has not previously been adjudicated upon. This latter (though not the former) is prima facie a denial of the citizen's right of access to the court conferred by the common law and guaranteed by article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms (1953). While, therefore, the doctrine of res judicata in all its branches may properly be regarded as a rule of substantive law, applicable in all save exceptional circumstances, the doctrine now under consideration can be no more than a procedural rule based on the need to protect the process of the court from abuse and the defendant from oppression. In Brisbane City Council for AG for Queensland  AC 411, 425 Lord Wilberforce, giving the advice of the Judicial Committee of the Privy Council, explained that the true basis of the rule in Henderson v Henderson 3 Hare 100 is abuse of process and observed that it "ought only to be applied when the facts are such as to amount to an abuse: otherwise there is a danger of a party being shut out from bringing forward a genuine subject of litigation". There is, therefore, only one question to be considered in the present case: whether it was oppressive or otherwise an abuse of the process of the court for Mr Johnson to bring his own proceedings against the firm when he could have brought them as part of or at the same time as the company's action. This question must be determined as at the time when Mr Johnson brought the present proceedings and in the light of everything that had then happened. There is, of course, no doubt that Mr Johnson could have brought his action as part of or at the same time as the company's action. But it does not at all follow that he should have done so or that his failure to do so renders the present action oppressive to the firm or an abuse of the process of the court. As May LJ observed in Manson v Vooght  BPIR 376, 387, it may in a particular case be sensible to advance claims separately. In so far as the so-called rule in Henderson v Henderson suggests that there is a presumption against the bringing of successive actions, I consider that it is a distortion of the true position. The burden should always rest upon the defendant to establish that it is oppressive or an abuse of process for him to be subjected to the second action.
(2) The context argument
We agree that we have to lop the tentacles of the Hydra one at a time or sometimes two at a time. That is what happens when you are facing somebody with a large patent portfolio. What we object to is every tentacle re-growing after we lop it off.
(3) The convenient slot point
(4) The application to amend was not late point
(5) Art 138 of EPC 2000
(1) Subject to Art. 139 a European patent may be revoked with effect for a Contracting Sate only on the grounds that [the grounds are specified]
(2) If the grounds for revocation affect the European patent only in part, the patent shall be limited by a corresponding amendment of the claims and revoked in part
(3) In proceedings before the competent court or authority relating to the validity of the European patent, the proprietor of the patent shall have the right to limit the patent by amending the claims. The patent as thus limited shall form the basis of the proceedings.
(6) The Enforcement Directive
1. Member States shall provide for measures, procedures and remedies necessary for the enforcement of the intellectual property rights covered by this Directive. Those measures, procedures and remedies shall be fair and equitable, and shall not be unnecessarily complicated or costly or entail unreasonable time-limits or unwarranted delays.
2. Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.
I am seeking to enforce the relevant patent and amendment is part of and parcel of enforcement of that patent.
Art. 13 Amendment to a party's case
(1) Any amendment to a party's case after it has filed its grounds of appeal or reply may be admitted and considered at the Board's discretion. The discretion shall be exercised in view of inter alia the complexity of the new subject-matter submitted, the current state of the proceedings and the need for procedural economy.
(3) Amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.
Similarly in Germany, s.83 of its Patent Act brought in last year entitles the court to reject inter alia a defence to a revocation claim by an amended version of the patent presented after expiration of a deadline set by the court before the date for the oral hearing. It can do so if "the consideration of the new pleading would make necessary a postponement of the already scheduled date for the oral hearing and the respective party does not give sufficient excuse for the delay and it has been made aware of the consequences of missing the deadline."
Mr Justice Norris:
Lord Justice Sedley: