England and Wales High Court (Patents Court) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

		20 July 1999

MR JUSTICE NEUBERGER:

Introduction

This is an application by the defendants for permission to amend their Defence and Counterclaim and Particulars of Objections and to call further evidence to support those amendments in circumstances where, not only has the hearing of the action been completed, but judgment has been handed down, although, crucially, the order has not been drawn up.

The background

The claimant, Willis Charlesworth, is the registered proprietor of UK Patent No. 2116620 ("the Charlesworth Patent") which claims a priority date of 27th February 1982. The Charlesworth Patent claims an asphalt extrusion machine with a hydraulically driven auger and hydraulically driven road wheels, with relay linkage between the two drives which operates in such a way that, when there is insufficient material in the auger system, the wheel drive motor stops, with the consequence that asphalt kerbing can be produced without gaps. The defendants are various individual members of the Haley family and companies owned and controlled by them. The leading member of the Haley family is the second defendant ("Mr Haley"). In about 1993, he designed and manufactured another asphalt laying machine ("the defendants' machine") and, from about 1995, it was hired out for laying asphalt kerbs on various highway contracts.

In February 1993, the claimant's patent agents wrote to Mr Haley drawing his attention to the Charlesworth Patent. In November 1995, the claimant issued the instant proceedings based on the contention that the defendants' machine infringed the Charlesworth Patent, and seeking appropriate relief, including an account or inquiry as to damages, and delivery up of the defendants' machine. In their Defence and Counterclaim, as amplified in Particulars of Objections, the defendants challenged the validity of the Charlesworth Patent and also denied infringement. The challenge to the validity of the Charlesworth Patent was based on:

1. Obviousness over an Australian patent, No. 248,461, published on 6th December 1962, the inventor having been one Alvin Cheney ("Cheney One");

2. Obviousness over a UK patent, No. 1,066,320, published on 26th April 1967, also in the name of Mr Cheney ("Cheney Two");

3. Prior use based on the alleged operation of a machine constructed in accordance with the teaching of Cheney One and/or Cheney Two.

The defendants' case on these three issues was summarised in their Particulars of Objections served with their Defence and Counterclaim on 17th January 1996, amended some two weeks later, and re-amended with leave on 1st April 1998. The defendants' case on non-infringement had two limbs. First, they contended that, as a matter of fact, their machine had never had certain features which were an essential ingredient of the claims of the Charlesworth Patent. In the alternative, they contended that their machine did not in any event infringe on the proper construction of the Charlesworth Patent.

The action was due for hearing at the beginning of April 1998, but on 18th March it was adjourned for six months to enable the defendants to make a late amendment to the Particulars of Objections (the amendment being concerned with the pleading of prior use) and to enable the defendants to describe their machine properly.

The proceedings then came on for hearing in October 1998, and lasted some nine days. On 1st February 1999, I handed down a judgment ("the judgment") in which I concluded that:

1. Whilst Claims 1 and 2 of the Charlesworth Patent were obvious over Cheney One (and probably over Cheney Two) Claim 5 was not obvious, and, as Claims 1, 2 and 5 of the Charlesworth Patent were the only claims which were alleged by the claimant to have independent validity, the Charlesworth Patent was valid, but only to the extent of Claim 5;

2. The defendants' case on prior use took matters no further, because I accepted evidence called by the defendants to the effect that the machine in Australia was constructed and functioned in accordance with the teaching of Cheney One;

3. The defendants' case as to the construction and design of their machine when it was used commercially was rejected, as was their case on the construction of the Charlesworth Patent.

In these circumstances, the claimant was substantially successful on the two issues of infringement and validity.

After I handed down the judgment, there was a delay because the parties could not agree the terms of the order, and there was a hearing to resolve those issues on 30th March 1999. Shortly before that hearing, the defendants made their first application (which related to the first category of evidence referred to below) and, in those circumstances, it was agreed that the order would not be drawn up until that application was disposed of.

The present application was eventually issued on 29th June 1999, and in it the defendants seek:

1. Permission further to amend the Particulars of Objections (and to make consequential further amendments to their Defence and Counterclaim);

2. An order that "the trial be reopened" to enable further evidence to be adduced and further argument to be advanced in relation to the validity of the Charlesworth Patent;

3. An order that "the judgment given on 1st February 1999... be varied... in such manner as may be appropriate".

There are two categories of new evidence which the defendants seek to adduce. The first category is further evidence relating to machines constructed in accordance with Cheney One and/or Two in Australia. The second category relates to prior use of a machine, constructed substantially in accordance with the teaching of the Charlesworth Patent itself, between May and September 1981 in the United Kingdom, by the claimant or a business effectively owned and controlled by the claimant ("the Charlesworth machine").

I propose first to deal with the principles applicable to an application to amend pleadings and permit new evidence after judgment has been given. I will then deal with the first limb of the instant application, i.e. the proposed amendment, new evidence and argument relating to machines constructed in accordance with Cheney One and/or Two. I will then deal with the second limb of the application, namely similar considerations relating to the Charlesworth machine. I will then set out my conclusions.

The applicable principles: jurisdiction

The first question to be addressed is whether the Court has jurisdiction to accede to the defendants' present application. Mr Mark Platts-Mills QC, who appears with Mr Michael Tappin for the claimant, concedes that there is such jurisdiction. In my judgment, that concession is correct. There are a number of reported cases where it has been held that it is open to a judge who has given judgment to reconsider his conclusion and, in effect, to reverse his own decision, provided that the order recording his earlier decision has not been drawn up. Thus, in Preston Banking Co. -v- Allsup [1895] 1 Ch 141, AL Smith LJ said at 144-145:

"[S]o long as the order has not been perfected, the Judge has a power of reviewing the matter, but once the order has been completed the jurisdiction of the Judge over it has come to an end."

The principle has been approved in subsequent decisions of the Court of Appeal: see for instance Millinstead -v- Grosvenor House (Park Lane) Ltd [1937] 1 KB 717 at 722 and 726 and Re Harrison's Settlements [1955] Ch. 260 per Jenkins LJ, giving the judgment of the Court of Appeal, at 276-277, 283 and 283-284. In the last of those passages, one finds this:

"When a judge has pronounced judgment, he retains control over the case until the order giving effect to his judgment is formally completed. This control must be used in accordance with his discretion exercised judicially and not capriciously."

Two more recent cases where the principle was approved by the Court of Appeal are R -v- Cripps ex p Muldoon [1984] 1 QB 686 at 695F and Pittalis -v- Sherefettin [1986] 1 QB 868 at 879D and 882C-D.

The present application could be said to involve taking the law somewhat further, because in none of the earlier cases was there any question of the judge who had delivered judgment being asked to permit pleadings to be amended and to admit fresh evidence after he had given judgment. In Harrison, the Court took into account further facts, namely a decision of the House of Lords which showed that the judgment which had been given was in fact one which the Court had no jurisdiction to give: the new fact in question was therefore incontrovertible, a point of law, indeed of jurisdiction, and it was plainly not available at the date the original judgment had been given. It is right to mention Miller's Case (1876) 23 Ch. D. 661, where, after giving judgment, Sir George Jessel MR had his attention drawn to a provision in the Articles of Association which had not been mentioned prior to his decision; consideration of that provision resulted in his effectively reversing his earlier decision. However, in that case, there was no question of amendment of pleadings, and there was no new evidence, in that the Articles of Association were already in evidence and had been considered in the first judgment.

Nonetheless, it seems to me that, as a matter of principle, if, as those cases all show, the judge retains control of the case, to the extent of being able to reconsider the matter of his own motion or to hear further argument on a point which he has decided, it seems to me that there must be power to permit pleadings to be amended, even if that involves a new argument being put forward, or further evidence being adduced, or even both, as the defendants seek here.

The applicable principles: discretion

I turn, then, to consider how the discretion should be exercised in a case such as the present where the application involves amending the pleadings and calling further evidence. Particularly in light of the Civil Procedure Rules ("the CPR"), to which I have regard in light of Rule 51.11 as this application was issued on 29th June 1999, it seems to me that this application must be approached with "the overriding objective", as set out in Rule 1.1, in mind.

As is so often the case where a party applies to amend a pleading or to call evidence for which permission is needed, the justice of the case can be said to involve two competing factors. The first factor is that it is desirable that every point which a party reasonably wants to put forward in the proceedings is aired: a party prevented from advancing evidence and/or argument on a point (other than a hopeless one) will understandably feel that an injustice has been perpetrated on him, at least if he loses and has reason to believe that he may have won if he had been allowed to plead, call evidence on, and/or argue the point. Particularly where the other party can be compensated in costs for any damage suffered as a result of a late application being granted, there is obviously a powerful case to be made out that justice indicates that the amendment should be permitted.

That view could be said to derive support from the observations of Millett LJ in Gale -v- Superdrug Stores plc [1996] 1 WLR 1089 at 1098E to 1099D, where he said this:

"The administration of justice is a human activity, and accordingly cannot be made immune from error. When a litigant or his adviser makes a mistake, justice requires that he be allowed to put it right even if this causes delay and expense, provided that it can be done without injustice to the other party. The rules provide for misjoinder and non-joinder of parties and for amendment of the pleadings so that mistakes in the formulation of the issues can be corrected. If the mistake is corrected early in the course of litigation, little harm may be done; the later it is corrected, the greater the delay and the amount of costs which will be wasted. If it is corrected very late, the other party may suffer irremediable prejudice...."

In Clarapede & Co. -v- Commercial Union Association (1883) 32 W.R. 262, 263 Sir Baliol Brett MR said:

"however negligent or careless may have been the first omission, and, however late the proposed amendment, the amendment should be allowed if it can be made without injustice to the other side. There is no injustice if the other side can be compensated by costs;"...

I do not believe that these principles can be brushed aside on the ground that they were laid down a century ago or that they fail to recognise the exigencies of the modern civil justice system. On the contrary, I believe that they represent a fundamental assessment of the functions of a court of justice which has a universal and timeless validity"."

On the other hand, even where, in purely financial terms, the other party can be said to be compensated for a late amendment or late evidence by an appropriate award of costs, it can often be unfair in terms of the strain of litigation, legitimate expectation, the efficient conduct of the case in question, and the interests of other litigants whose cases are waiting to be heard, if such an application succeeds. This latter approach seems to have found favour with the Court of Appeal in Worldwide Corporation Limited -v- GPT Limited (2nd December 1998, unreported) where Waller LJ (with whom Lord Bingham CJ and Peter Gibson LJ agreed) said this:

"We share Millett LJ's concern that justice must not be sacrificed, but we believe his view does not give sufficient regard to the fact that the Courts are concerned to do justice to all litigants, and that it may be necessary to take decisions vis-à-vis one litigant who may, despite all the opportunity he or his advisers have had to plead his case properly, feel some sense of personal injustice for the sake of doing justice both to his opponent and to other litigants.

He then went on to cite observations of Lord Griffiths in Ketteman -v- Hansel Properties [1987] AC 189 at 220A-H where he said this:

"Whether an amendment should be granted is a matter for the discretion of the trial judge and he should be guided in the exercise of the discretion by his assessment of where justice lies. Many and diverse factors will bear upon the exercise of this discretion. I do not think it possible to enumerate them all or wise to attempt to do so. But justice cannot always be measured in terms of money and in my view a judge is entitled to weigh in the balance the strain the litigation imposes on litigants, particularly if they are personal litigants rather than business corporations, the anxieties occasioned by facing new issues, the raising of false hopes, and the legitimate expectation that the trial will determine the issues one way or the other. Furthermore to allow an amendment before a trial begins is quite different from allowing it at the end of the trial to give an apparently unsuccessful defendant an opportunity to renew the fight on an entirely different defence" (emphasis added).

Even more so, where the amendment is sought to be made after judgment. Waller LJ continued:

"Another factor that a judge must weigh in the balance is the pressure on the courts caused by the great increase in litigation and the consequent necessity that, in the interests of the whole community, legal business would be conducted efficiently. We can no longer afford to show the same indulgence towards the negligent conduct of litigation as was perhaps possible in a more leisured age. There will be cases in which justice will be better served by allowing the consequences of the negligence of the lawyers to fall upon their own heads rather than by allowing an amendment at a very late stage of the proceedings."

Before dealing with the facts of that particular case, Waller LJ concluded his judgment in Worldwide with the following:

"Where a party has had many months to consider how he wants to put his case and where it is not by virtue of some new factor appearing from some disclosure only recently made, why, one asks rhetorically, should he be entitled to cause the trial to be delayed so far as his opponent is concerned and why should he be entitled to cause inconvenience to other litigants? The only answer which can be given and which, Mr Brodie suggested, applies in the instant case is that without amendment a serious injustice may be done because the new case is the only way the case can be argued, and it raises the true issue between the parties which justice requires should be decided.

We accept that at the end of the day a balance has to be struck. The court is concerned with doing justice, but justice to all litigants, and thus where a last minute amendment is sought with the consequences indicated, the onus will be a heavy one on the amending party to show the strength of the new case and why justice both to him, his opponent and other litigants, requires him to be able to pursue it."

Ketteman, Gale and Worldwide were all cases where the application to amend was made before judgment. In Ketteman the application to amend was during closing speeches, and in Worldwide it was during the first half of a trial estimated to last more than 20 days. (Gale was concerned with the withdrawal of an admission which had been made before proceedings had started). Furthermore, as I understand it, they were all cases where the amendment involved points which could have been taken earlier, but had either been overlooked, or had initially been rejected, by the applicant and his advisers. Nonetheless, I believe those cases are important and relevant, because they emphasise the modern approach to amendments.

It is also germane to consider the approach laid down by the Court of Appeal to the admission of new evidence on appeal. In a well known passage in Ladd -v- Marshall [1954] 1 WLR 1489 at 1491, Denning LJ said that three conditions had to be satisfied before the Court of Appeal would be prepared to receive new evidence:

"[F]irst, it must be shown that the evidence could not have been obtained with reasonable diligence for use at the trial; secondly, the evidence must be such that, if given, it would probably have an important influence on the result of the case, though it need not be decisive; thirdly, the evidence must be such as is presumably to be believed, or, in other words, it must be apparently credible though it need not be incontrovertible."

While I think that these three factors should be in the forefront of the mind of the court when considering an application to admit new evidence after judgment has been handed down, but before the order has been drawn up, I incline to the view that the court is entitled to be somewhat more flexible, and not to proceed on the strict basis that each of these three conditions always has to be fully satisfied before fresh evidence can be admitted before judgment. Of course, in many ways, an applicant seeking to persuade the judge to receive fresh evidence and/or argument on a new point is in a very similar position to an appellant seeking similar relief from the Court of Appeal. He has had a full opportunity to collect his evidence and to marshall his arguments, and there must be a strong presumption against letting him have a second chance, particularly after he has seen in detail from the judgment why he has lost.

In relation to an application to the judge after judgment but before the order is drawn up, just as much as in relation to an application to the Court of Appeal, it can be said that "when a litigant has obtained a judgment... he is by law entitled not to be deprived of that judgment without very solid grounds" (Brown -v- Dean [1910] AC 373 at 374). So, too, it is equally apposite to bear in mind that it is a duty of every litigant "to bring forward his whole case at once and not to bring it forward piecemeal as he found out the objections in his way" (see Re New York Exchange Limited (1888) 39 Ch. D. 415 at 420), a view expressed more recently by Stuart-Smith LJ in Imperial Chemical Industries -v- Montedison (UK) Limited [1995] RPC 449 at 468 where he said:

"It is incumbent upon a party to adduce such evidence as he considers relevant and persuasive relating to the findings of fact which the judge may make. He cannot wait for the findings and then say "Oh well, I could have called more evidence on that point"."

However, although it might be seen by some as to be a somewhat technical point, it can be said that, by allowing further evidence after judgment (but before the order is drawn up) which results in the judgment being effectively reversed, the judge is not technically depriving the other party of any order in his favour: the whole reason why the judge has jurisdiction to hear the further evidence is because there is no order drawn up, and he is therefore not functus officio. Further, if the Court of Appeal admits further evidence, the Court of Appeal either has to reassess all the facts, or has to decide what effect the new evidence would have had on the judge (where in either case the judge will have seen the witnesses at the trial, whereas the Court of Appeal will not have done so), or has to take the unsatisfactory course of ordering a retrial. At least in many cases, the judge who admits further evidence after judgment will be able to look at the evidence as a whole, having heard all the witnesses. However, in many cases that exercise will be difficult, bearing in mind the passage of time between the hearing of the original witnesses and the hearing of the new evidence, and the fact that the judge has already given a judgment into which the new evidence will have in some way to be fed.

In these circumstances, I conclude that the following principles apply where a party is seeking to call fresh evidence on a new point after judgment has been given but before the order has been drawn up:

1. The court has jurisdiction to grant an application to amend the pleadings to raise new points and/or to call fresh evidence and/or to hear fresh argument;

2. The court must clearly exercise its discretion in relation to such an application in a way best designed to achieve justice;

3. The general rules relating to amendment apply so that:

(a) While it is no doubt desirable in general that litigants should be permitted to take any reasonably arguable point, it should by no means be assumed that the court will accede to an application merely because the other party can, in financial terms, be compensated in costs;

(b) As with any other application for leave to amend, consideration must be given to anxieties and legitimate expectations of the other party, the efficient conduct of litigation, and the inconvenience caused to other litigants;

4. Quite apart from, and over and above, those principles, because it is inherently contrary to the public interest and unfair on the other side that an unsuccessful party should be able to raise new points or call fresh evidence after a full and final judgment has been given against him, it would generally require an exceptional case before the court was prepared to accede to an application where the applicant could not satisfy the three requirements in Ladd -v- Marshall;

5. Almost inevitably, each case will have particular features which the court will think it right to take into account when deciding how to dispose of the application before it.

6. The court should be astute to discourage applications which involve parties seeking to put in late evidence, but cases where new evidence is found after judgment is given and before the order is drawn up will be comparatively rare.

In connection with this last point, the present case involved an unusually long period between judgment and discussion about the form of order.

Before turning to deal with the present application, it is right to mention a further point made by Mr Alastair Wilson QC, who appears with Mr Richard Hodgson and Mr Owen Keene for the defendants. He contends that the fact that the new evidence and argument may well lead to the conclusion that the Charlesworth Patent, which I have held in my judgment to be valid, is in fact invalid means that there is a degree of public interest which supports the granting of the present application. I would accept that the question of whether or not a particular patent is valid has implications, or at least potential implications, for persons other than the parties to the litigation, and for the public (bearing in mind that a patent confers monopoly rights, and the consequences of a monopoly). However, I do not regard that as necessarily having great significance in this context. First, as a general point, my decision that the Charlesworth Patent is valid would only be binding as between the claimant and the defendants in these proceedings; there is nothing to prevent a third party challenging the claimant as to the validity of the Charlesworth Patent on the grounds which the defendants seek to raise in the present application. Secondly, on the facts of this case, the Charlesworth Patent has not much further time left to run. However, in practical terms, I accept that Mr Wilson's point is one to be borne in mind when considering an application in the context of a patent case, especially where the validity of the patent is at stake.

The application relating to the Cheney machine

I held that Claim 5 of the Charlesworth Patent was not obvious over Cheney One (the Australian patent upon which the defendants relied) essentially because Claim 5 involved a "start/stop" switch whereas Cheney One included a "dimmer" switch which, for what it is worth, operated in the opposite way. So far as prior use was concerned, the defendants based their case effectively exclusively on the evidence of a Mr David Schumacher, who was the son in law of Mr Cheney, and whose evidence was to the effect that the Australian machine, upon the use of which the defendants relied, was constructed and worked in accordance with the teaching of Cheney One ("the Cheney One machine").

The defendants wish to amend their Particulars of Objections to contend that the Cheney One machine in fact had a "start/stop" switch, and not a "dimmer" switch. They wish to plead that the Cheney One machine, used in Australia "from 1960 to 1986" and in particular "for the South Australia Highways Department in the Adelaide area between 1960 and 1968", was constructed in accordance with certain drawings to be exhibited to the amended Particulars of Objections ("the Drawings"), to call factual evidence to the effect that this Cheney One machine operated with a "start/stop" switch, and to call expert evidence to show that that would indeed have been the effect of a machine constructed in accordance with the Drawings.

The source of the factual evidence and the Drawings is a Mr Dean McDonald, who used to be the design draftsman for Mr Cheney. The defendants have provided a signed witness statement from Mr McDonald stating that the valve arrangements on the Cheney One machine were not the same as those taught by Cheney One. Mr McDonald had the Drawings which, he said, showed how the Cheney One machine was constructed, and the defendants have produced not only the Drawings, but also statements signed by two expert witnesses, both of whom conclude that a machine constructed in accordance with the Drawings would, in practice, operate on a "start/stop" basis, rather than on a "dimmer" basis. They also state that the way in which the Cheney One machine, as so designed, would have operated in this connection would have been appreciated by a relatively skilled observer.

Although Mr Platts-Mills obviously reserved his position if this evidence turned out to be admissible, nothing has been put in to contradict the accuracy of Mr McDonald's witness statement, the Drawings, or the experts' reports on the effect of the Drawings. Accordingly, given that it has not been suggested that there is anything self-evidently unlikely in this evidence looked at on its own, I think it right to proceed on the basis that it is inherently credible.

It also appears to me, at least on the present state of evidence and arguments, that, if this new evidence was accepted as correct, it would be likely to lead to the conclusion that the Charlesworth Patent was invalid. Mr Platts-Mills contends that it would be wrong to proceed on the basis that I would certainly change my view on the question of whether Claim 5 of the Charlesworth Patent was obvious over the Cheney One machine, if it transpired that, contrary to my original assumption, the Cheney One machine had a "start/stop" connection rather than a "dimmer" connection. I accept that it is not possible to be certain that, if the new evidence sought to be put in on behalf of the defendants in relation to the Cheney One machine were accepted, it would result in the conclusion that even Claim 5 of the Charlesworth Patent was invalid. First, one cannot be sure as to what the totality of the evidence (after cross examination, and any evidence called, by Mr Charlesworth) would be as to the design and method of working of the Cheney One machine as shown by the Drawings and described by Mr McDonald. Secondly, even if the only difference between the teaching of Cheney One and the Cheney One machine, as it turns out to be, is that the connection is "start/stop", it would clearly be open to the claimant to revisit the whole of the argument on obviousness, and it is conceivable that, despite the reasoning in my earlier judgment, I would still hold Claim 5 of the Charlesworth Patent to be valid. Nonetheless, it seems to me that, at the lowest, the new evidence which the defendants seek to adduce in relation to the Cheney One machine would have a good chance of persuading me that the Charlesworth Patent was invalid.

However, it is necessary to consider whether the defendants could reasonably be expected to have obtained this evidence for the hearing in October 1998. Mr Schumacher visited England around the middle of March 1998, at least partly, and possibly solely, because of these proceedings, Mr Haley, according to his own evidence, asked him whether there was anyone in Australia who might have photographs or drawings of the Cheney One machine. Mr Schumacher mentioned Mr McDonald, and telephoned him. Mr Haley spoke to Mr McDonald on the telephone, and learnt that Mr McDonald might have some relevant drawings. Mr Haley asked Mr McDonald to send him the Drawings and says in his evidence:

"I did not ask [Mr McDonald] about the operation of any specific Cheney machine as I wanted to see the drawings first."

It appears clear that the Drawings were received by the defendants' then solicitors by the end of March. It appears possible that the defendants' then solicitors and counsel took the view that the Drawings were not of assistance to the defendants' case. It seems that Mr Haley collected the Drawings on about 20th September, some ten days before the hearing, but it would appear that he did not bother to look at them until after the judgment was handed down on 1st February 1999. He then thought it might be appropriate to discuss the Cheney One machine in more detail with Mr McDonald, after having talked to Mr Schumacher. It was only then, according to Mr Haley, that he appreciated the importance of the Drawings and the value of the evidence which Mr McDonald would have been able to give.

In view of this history, I consider that it would be wrong to grant the defendants' application to amend their Particulars of Objections and call fresh evidence, in relation to the Cheney One machine. It is clear, from the short passage in Mr Haley's evidence which I have quoted, that he had asked for the Drawings with a view to looking at them and talking about them to Mr McDonald. I am not impressed by the suggestion (I certainly do not regard it as clear) that Mr Haley was told by his former solicitor and counsel that the Drawings were unhelpful to him. The value or otherwise of the Drawings was not, one would have thought, primarily a matter for lawyers, but for experts: the defendants had an expert adviser, who indeed gave evidence on their behalf, and, if the value of the Drawings was to be assessed by an adviser, he would be a more appropriate person. However, matters go a bit further than that. In my original judgment, I referred to the expertise of Mr Haley; I would certainly have expected him to consider the Drawings. That point is reinforced when one bears in mind that, as appears pretty clear from the evidence in connection with the present application, a great deal of the work carried out for the defendants in this case, which would normally have been carried out by their solicitors or expert, was in fact carried out by Mr Haley. Indeed, in relation to the very aspect I am currently considering, it was Mr Haley who talked to Mr Schumacher and to Mr McDonald, and it was Mr Haley who first asked for the Drawings. He either chose not to look, or neglected to look, at the Drawings or to follow up Mr McDonald.

As he himself says, Mr Haley asked for the Drawings not only with a view to looking at them, but with the intention thereafter of talking to Mr McDonald. I have no explanation as to why he did not look at the Drawings or talk to Mr McDonald thereafter. Mr Haley apparently looked at the Drawings very briefly at some point during the ten days before trial, and formed the view that they were not helpful. I accept that he may well have been under some pressure, because he was at that time expecting to be acting in person. However, he (and his advisers, and indeed the other defendants) had over six months before the hearing to consider the Drawings, and indeed to do that which he had said he intended to do, namely to discuss matters further with Mr McDonald.

Mr Wilson argues that the failure of Mr Haley and his advisers to spot the importance of the possible existence of a "start/stop" feature in the Drawings and in the evidence of Mr McDonald is not as blameworthy as might appear. I accept that the possible importance of the "start/stop" feature might well have been thought by the defendants and their advisers not to be as significant as it turned out to be, according to the judgment. First, as in almost any case, and particularly a patent case, there are many issues at the beginning of a case, and rather fewer at the end, and the relative importance of issues varies from time to time: the present case was no exception. Secondly, I concluded that the "start/stop" feature was only present in Claim 5, and the claimant did not specifically contend for Claim 5 having independent validity until closing speeches. There might, therefore, at least at first sight appear to be something in Mr Wilson's point. However, it seems to me that it ought to have been quite clear from the expert evidence served on behalf of the claimant in advance of the hearing that, whatever the arguments with regard to construction of the various claims of the Charlesworth Patent (and in this connection it is to be noted that the claimant contended that Claim 1 included the "start/stop" feature), the "start/stop" feature was contended on behalf of the claimant to be an important part of the overall inventive concept of the Charlesworth Patent.

In these circumstances, at least in the absence of special factors, I consider that it would be wrong to allow the defendant's application in relation to the Cheney machine. I believe that to allow the application, would fall foul of the approach embodied in the observation of Stuart-Smith LJ in Imperial Chemical. As I see it, it would also be inconsistent with the approach to allowing late amendments adopted by the Court of Appeal in Worldwide. The claimant's position is in a sense stronger than that of the successful respondent in Worldwide, because in that case the amendment was being sought halfway through trial, whereas in this case it is after judgment. Of course, each case turns on its own particular facts, and to compare the facts of one case with another can be dangerous. However, I think it would be wrong not to bear in mind the approach in the cases to which I have referred, and I believe that that approach is consistent with the conclusion I have reached.

Mr Platts-Mills points out that, if I hear the further evidence of Mr McDonald, it would also be necessary for Mr Schumacher to be recalled, in order for his evidence to be reassessed. It may be that there would be a conflict between the evidence of Mr Schumacher (to the effect that the Cheney One machine was constructed in accordance with the teaching of Cheney One) and that of Mr McDonald (that, at least in relation to the switch, the machine differed from the teaching): the defendants would then be in the odd position of seeking to persuade me that the evidence of one of their own witnesses, which they have previously contended should be accepted in full and which was largely accepted, namely that of Mr Schumacher, should in fact be rejected on one crucial point. Or it may be that Mr Schumacher modifies his evidence, so that he agrees with Mr McDonald, or least does not disagree with him. That would involve Mr Schumacher effectively changing evidence which I have accepted. Or it may transpire that there were a number of Cheney One machines, and at least one was constructed in accordance with the evidence of Mr Schumacher and at least one was constructed in accordance with what I understand to be the evidence of Mr McDonald. Depending on which of the three possibilities is correct, there could be a degree of inconsistency between the defendants' case as it was and the defendants' case as it will be, and there could be a degree of difficulty in terms of my having to reconsider evidence on which I have already made findings. It seems to me that this is a point which carries some weight, and if, for instance, the question of whether or not to allow the defendants' application in relation to the Cheney machine was very finely balanced, a consideration of this sort might be sufficient to tip that balance against allowing the application. In the event, however, even assuming this factor should be given no weight, I would still think it right to dismiss the application so far as it relates to the Cheney One machine for the reason I have given.

I have mentioned that this is my conclusion, subject to there being any special factors. I do not consider that there are any special factors which justify a different conclusion. Certainly, the fact that this is a patent case is not, in my view, powerful enough to tilt the balance in the defendants' favour.

Finally, it is right to mention that the defendants would also wish to call further evidence on the question of whether a machine constructed in accordance with the teaching of Cheney Two ("the Cheney Two machine") was in fact an extrusion machine. In the judgment, I concluded that the teaching of Cheney Two was not directed towards an extrusion machine, and Mr Schumacher was not able to give any evidence about any Cheney Two machine. Mr McDonald, it is now said, is able to give such evidence (and would apparently also say that the Cheney Two machine included a "start/stop" switch). Mr Wilson realistically accepted that the defendants' case for permitting the Particulars of Objections to be amended to reflect, and Mr McDonald to be called to support, that point was certainly no stronger (and indeed weaker) than in relation to the Cheney One machine.

The Charlesworth machine

The defendants' case is that Maltby Engineering ("Maltby"), a business of which the claimant was sole proprietor, carried out some asphalt kerbing work on the south bound carriageway of the M3 Motorway in 1981, and that the machine used for this purpose was the same as a machine used by Maltby the following year, 1982, on the northbound carriageway of the M3 Motorway, and that on each occasion the machine laid good quality kerb, stopped when the asphalt supply to the auger was interrupted, that it is therefore very likely that the machine so used had the essential inventive features of the Charlesworth Patent, and that it is also clear from the evidence produced in support of this application that this prior use of the Charlesworth machine revealed that inventive concept prior to the priority date in 1982.

The defendants' new evidence in this connection consists of a video cassette (which, I am told by Mr Wilson, and did not understand Mr Platts-Mills to dispute, shows the construction, including the laying of asphalt by a machine, on the northbound carriageway of the M3 Motorway in 1982) and witness statements from six different witnesses (plus the photographer, a Mr Russ Abbott). As I understand it, the video cassette strongly suggests that the machine being filmed was the Charlesworth machine, and five of the six witnesses (all five of whom were on site in 1981 and 1982), say in their witness statements that the machine used in 1981 on the southbound carriageway was the same as that used in 1982 on the northbound carriageway, and that Maltby carried out the work on each occasion for the contractors, Associated Asphalt Limited ("AAL"). The six witnesses all comment in some detail in their respective statements of the improved performance of the machine in question over other asphalt laying machines, in a way which supports the contention that it was the Charlesworth machine.

Of these six witnesses, five worked for AAL at the time, and one worked in the Highways Design Office of Surrey County Council the relevant highways authority. On the face of it, their evidence looks consistent and fairly compelling, both on the issue of whether the Charlesworth machine was used for laying asphalt on the southbound carriageway in 1981, and on the issue of whether such user would have operated as a prior disclosure, thereby invalidating the Charlesworth Patent. However, it does appear possible that, with the passage of time, memories could have got confused between different years, particularly as AAL carried out work to the M3 in 1983 and 1984, as well as 1981 and 1982, and in 1982, 1983 and 1984 it is common ground that the Charlesworth machine was used for laying asphalt.

The fact that there are six witnesses who are apparently prepared to give evidence which, at least on its face, strongly suggests that the Charlesworth machine was used for laying asphalt on the M3 Motorway in 1981 cannot, in my view, be dismissed out of hand. There is no suggestion that these witnesses have, or have had, any connection with the defendants, other than for the purpose of their statements being obtained for the purpose of this application, although it is fair to say that, in light of the nature of the business being carried on by the defendants, it is conceivable that there has been some previous commercial connection between some of the defendants and some of the potential witnesses. However, quite rightly in my judgment, Mr Platts-Mills did not suggest that I should proceed on the basis that there could be anything sinister in this new evidence, at least at this stage. What he did suggest, to my mind with a degree of justification, was that, as the statements had been taken by Mr Haley personally, rather than by the defendants' solicitors, it is possible that he felt more able to put ideas and thoughts into the minds of the witnesses than a professional solicitor might have felt. While that is a point, it nonetheless remains the case that six witnesses have signed statements which are mutually consistent, detailed and, on the face of it at any rate, convincing.

More particularly, Mr Jim Shannon, the general foreman working on the M3 contract for AAL in 1981, says that he could not have been confused between 1981 and 1982, because he was not involved on the M3 Motorway project in 1982. It is true that he says nothing about any involvement in 1983 and 1984, and I accept that it is possible that, as Mr Platts-Mills suggests, he was thinking about 1983 and 1984 when he referred to 1981 and 1982. However, it is fair to say that, on the basis of his statement, Mr Shannon does appear clear and confident in his recollection.

Further, Mr Robin Kerridge, the Surrey County Council employee, who was approached (perfectly properly) by the claimant's solicitor after his witness statement had been provided, says that he kept a "rolling" curriculum vitae, which enables him to be relatively precise about the dates. He says that he had been Surrey County Council's resident engineer on the M3 Motorway construction contract on three occasions (one of which was in 1981), and that on each occasion the same machine, which on his evidence would appear to be the Charlesworth machine, had been used with the same operative, a Mr Leo Needham, who is referred to by a number of the other five new witnesses.

It is submitted on behalf of the defendants that all this amounts to compelling evidence which seriously calls into question the validity of the Charlesworth Patent, and that it would be a denial of justice to shut the defendants out from producing such evidence, even at this late stage.

The first point advanced on behalf of the claimant is that, although the evidence relied on by the defendants may look strong at first sight, it has been effectively and decisively rebutted by the evidence which the claimant has marshalled in the short time available to him. The claimant has produced a witness statement in which he says, in summary:

1. In the early 1980s he was "fully aware of the importance of maintaining the secrecy of an invention and not "going public" with it until a patent application was in place" and that there was no way in which he would ever have "gone public" with an invention he believed to be patentable;

2. While he has "no direct recollection of any particular contract performed with my machine in the early 1980s" he has produced evidence from the records kept by him and his companies (including Maltby) at the time, and these records show that neither he nor his companies were ever engaged in 1981 by AAL to lay kerbing, or do anything else, on the M3 Motorway;

3. He is "absolutely certain that at no time before the priority date of my Patent did any machine operate commercially with either of the [essentially relevant features for the purposes of the Patent]".

The records produced by the claimant in this connection are impressive and substantial, and include a large number of quotations for work and job books. These appear to be extensive and, so far as one can tell, comprehensive records, and there is indeed no reference to any work being quoted for, let alone carried out, on the M3 Motorway in 1981, although there is a record of work having been carried out for AAL on the M3 Motorway in 1982 and 1983. This evidence appears clear and unequivocal, and it is right to record that my recollection of the claimant as a witness is such that there is no reason to suspect his honesty. It is also right to say that the books and records relied on by the claimant have been subjected to forensic testing at the request of the defendants, and that nothing suspicious has been revealed.

It is also right to mention that I have no statement or letter supportive of the claimant on this issue from Mr Needham, who is stated by a number of the new witnesses to have been the driver of the Charlesworth machine in 1981 and who I understand is still employed by the claimant. I should also mention that at the trial, in October 1998, the defendants asked whether the claimant had any records of the work he and his companies had carried out since before 1983, and the claimant (or more accurately, the claimant's wife who keeps his records) said that no such records could be found. However, there could conceivably have been a misunderstanding as to whether the request extended to the types of records which the claimant has now produced.

The second point advanced on behalf of the claimant is that the defendants could have obtained the evidence relating to the Charlesworth machine for the original hearing. In this connection, the defendants suggest that Mr Haley's evidence as to how he was led to discover the alleged use of the Charlesworth machine in 1981, is unconvincing, indeed suspicious, particularly bearing in mind the fact that I did not find his evidence at the trial reliable. He says that he discovered the alleged use of the Charlesworth machine in 1981 as a result of carrying out research to ascertain the likely measure of damages which would be awarded against the defendants as a result of the judgment. He said that it seemed odd that the claimant claimed not to have retained his business records prior to 1983, and that he knew that various machines had been used by the claimant or his companies on sections of the M25 Motorway between 1963 and 1986. Mr Haley obtained a list of the contractors who had been responsible for constructing various sections of that Motorway, and although he was told that virtually all the contractual documentation had been destroyed many years ago, Mr Haley discovered that there were still employees or former employees of the contractors or of the highway authorities who might be able to assist. The first of the relevant witnesses with whom he made contact was Mr Kerridge. He then spoke to the present managing director of AAL who remembered the two relevant contracts of 1981 and 1982 (albeit vaguely) and supplied him with the video tape, which then enabled him to make contact with the photographer. Mr Abbott told him that the project manager in 1981 and 1982 was a Mr Brock (one of the witnesses whose statement is relied on by the defendants) who in turn put him in touch with four other former employees of AAL who had worked on the project and each of whom provided a witness statement.

In support of the argument that the defendants were really on notice of the possibility of prior use of the Charlesworth machine, Mr Platts-Mills points out that, at the hearing in October 1998, Mr Wilson, in his cross examination of two of the claimant's witnesses, had suggested that at least some of the allegedly novel features for the Charlesworth Patent had been incorporated in earlier machines designed and built by the claimant which had been used before the priority date. Mr Platts-Mills also says that one of the defendants' witnesses, Mr Glyn Jones, a former employee of the claimant, had suggested that, prior to 1980, the claimant had fixed motors to the front wheels of one of his machines (which should have put the defendants on notice of the possibility of a prior use).

Apart from relying on the general principle that the court should be very slow to permit a party to raise a new argument and call new evidence after judgment has been given, Mr Platts-Mills also relies upon the further delay this application would cause, if it was allowed. He points out that the final determination (subject to any appeal) of the issues between the parties was already delayed by virtue of the adjournment between March and October 1998, which was entirely due to the defendants' defaults. He also contends that the defendants were slow in providing the claimant with the evidence upon which they rely in relation to the application.

I have found the question of whether or not to allow the defendants' application in so far as it relates to the Charlesworth machine difficult to determine. In the end, I have come to the conclusion that the balance comes down in favour of allowing the application. First, it seems to me that it is one of those puzzling cases which, at any rate on the present state of the evidence, each side appears to have a powerful, almost unanswerable, case if one looks at the evidence it has adduced. Cross examination may well establish that the six witnesses, who have provided witness statements for the defendants, were all mistaken in their recollection, or do not really have as clear a memory as their signed statements suggest. However, one cannot sensibly proceed on the assumption that six individuals with no apparent bias so far as these proceedings are concerned, are mistaken in their recollection, even allowing for the facts that they are recalling something that happened 20 years ago, and that their statements were put together by Mr Haley, a person with an interest, who is not a solicitor, and whose evidence in this case was not reliable. Although 1981/1982 is a long time ago, it seems likely that the defendants' witnesses had their memories assisted by the video cassette, a point which I suppose could cut both ways to some extent. Further, there are reasons to think that two of the witnesses have reasons for not confusing 1981 with 1982.

Equally, it would be quite unwarranted to conclude that the evidence put forward by the claimant, who I have no reason to believe is anything other than honest, supported in a very significant way by documentation, is anything other than correct. Of course, the claimant has an interest, indeed a strong interest, in casting doubt on this new evidence produced by the defendants, and, it may be said to his credit, the claimant does not pretend that he specifically remembered what happened in 1981. It may be that errors or inconsistencies could be shown to exist in Maltby's records. Furthermore, until this point was raised by the defendants, it had been the claimant's case that he and his company had no relevant documentation relating to work carried out prior to 1983. It may also be that other witnesses, such as Mr Needham, would be able to throw light on the matter.

The second of the three conditions laid down in Ladd -v- Marshall has been expressed in slightly different ways in different cases. Thus, in Brown -v- Dean Lord Loreburn LC suggested that new evidence "must at least be such as is presumably to be believed, and if believed will be conclusive". However, in the same case Lord Shaw said that the new evidence had to be merely "so gravely material and so clearly relevant as to entitle the court to say that that material... should have been before the jury in giving its decision". Subsequent decisions do not speak entirely with one voice, and perhaps this is not surprising, given that each case may, at least to an extent, turn on its own particular facts. The precise height of the hurdle which has to be cleared by an applicant to the Court of Appeal may therefore vary somewhat depending on the precise facts of the particular case. Given that the present application is made in relation to the validity of a patent and at a time before the order has been drawn up, it seems to me that the hurdle should, if anything, be treated as being at the lower, rather than at the higher end of the range which applies where a party is seeking to put in further evidence to the Court of Appeal after the order had been drawn up.

As to the argument that Mr Haley could and should have got this evidence before the hearing, it appears to me that the onus is on Mr Haley to show that he could not have obtained the evidence for the hearing in October, had he exercised reasonable diligence, bearing in mind once again the observations of Stuart-Smith LJ in Imperial Chemical.

While I must admit to a degree of scepticism about the reasoning that is said to have resulted in Mr Haley finding out about the possibility of the Charlesworth machine having been used on the M3 Motorway in 1981, he has satisfied me, on the balance of probabilities, that the evidence which he wishes to put before the court (and the associated proposed amendment to the Particulars of Objections) on the use of the Charlesworth machine in 1981 would not have been discoverable with reasonable diligence. It seems to me that Mr Wilson is correct in submitting, as a starting point, that the question of whether or not the patentee himself has been responsible for a prior use is peculiarly within the knowledge of the patentee. While an alleged infringer is obviously not exonerated from making reasonable investigations as to the possibility of a prior use, let alone from shutting his eyes against the possibility of a prior use, if he subsequently wishes to raise a prior use in defence, there is a limit to the degree of investigation he can be expected to carry out in relation to prior uses by the patentee himself, once he is faced (as in this case) with an unequivocal pleading by the patentee to the effect that the patent is valid.

As I see it, one has to examine what evidence or "leads" were available to the defendants to suggest that there might have been a prior use by the patentee himself. The cross examination relied on by Mr Platts-Mills does not impress me: in the relevant passages of cross examination, Mr Wilson appears to have been going off on something of a frolic of his own, if he will forgive me for saying so, and when Mr Platts-Mills objected to the line of questioning, which he did after a short time, it was abandoned. The evidence of Mr Jones appears to me to be a very weak peg on which to hang an argument that the defendants should have been on notice of the possibility of prior use by the claimant. His relevant evidence was very short and unspecific, was not directed to the relevant period, namely 1981, was not concerned with a machine with all the necessary attributes to give effect to a prior use, and in any event was not of itself in any way suggestive of a prior disclosure.

I consider that what the claimant is really left with is the seductive and not unreasonable argument that, if the defendants were able to discover the relevant facts fairly shortly after judgment, it would seem that there is no good reason why they could not have discovered them before October 1998. On the one hand, it seems to me that that argument has force on the face of it, and in may cases could be decisive. Quite apart from having a rather logical simplicity about it, the argument is also supported by policy. If a party who has lost a case is prompted into carrying out investigations which dig up further facts, public policy would support the view that he should not normally be permitted to reopen the case in order to put the further facts before the court.

On the other hand, one has to look at each case on its merits. It may happen in a particular case that, for one reason or another, someone has carried out investigations after the judgment which he could not reasonably have been expected to carry out for the purpose of the original hearing, and those investigations have unexpectedly resulted in the discovery of further evidence, which would or could have proved crucial in connection with the determination of all or some of the issues at the hearing. In such a case, the mere fact that the person concerned has carried out the investigations after the hearing does not of itself mean that he could reasonably have been expected to carry such investigations before the hearing.

In the present instance, albeit not without hesitation, I have reached the conclusion that, while the investigations carried out by Mr Haley which resulted in the six witness statements self-evidently could have been carried out before the hearing, they were not the sort of investigations which one would have expected to have been carried out by the defendants or their solicitors, assuming that they employed reasonable diligence. Before the hearing, there was no evidence or reason to think that the claimant had been responsible for a prior use. The reason Mr Haley gives for carrying out the investigations after the trial is, I accept, a little surprising, but it is not absurd. In the end I come back to the point that, irrespective of the surprising nature of his explanation, the evidence which he and the other defendants now wish to put before the court is not evidence which, in all the circumstances, one can fairly say they should have been expected to discover with reasonable diligence before the hearing.

Further, it appears that his suspicions to some extent were aroused by the fact that, at trial, he was led to believe (wrongly as it now turns out) that the claimant had no records for work carried out before 1983. While there is no suggestion of an intention as to mislead on the part of the claimant, Mr Haley's suspicions were understandable and prompted by what happened at the hearing. I accept that it is hard to know how significant a factor this was in causing Mr Haley to dig into the history of the use of the Charlesworth machine. I believe him to the extent of accepting that it was a factor.

The fact that there was delay between the 30th March hearing and the actual issue of the application on 29th June is explained in part by Counsel's advice as to the need to get all the evidence together in relation to both parts of the application. In any event, it has not significantly delayed the hearing of this application.

Although the fact that my conclusion will involve further delay to the determination of these proceedings, which have already been held up by six months due to the adjournment last year for which the defendants were solely responsible, I do not consider that that is enough to tip the scales the other way. Certainly, there is no specific prejudice other than costs and the sort of (perfectly legitimate and relevant) prejudice of the kind identified in Ketteman and Worldwide, cited by Mr Platts-Mills, if this application is allowed. However, if the new evidence is to be heard, I should give directions with a view to any hearing taking place as soon as possible.

A point raised by Mr Wilson is that, as the claimant will have to apply to amend the Patent, the question of the claimant's good faith at the time that the Charlesworth Patent was applied for will arise - see Section 63(2) of the Patents Act 1977. This section disentitles a patentee, whose patent is found to be only partially valid, from being awarded any damages or costs unless he can establish that "the specification for the patent was framed in good faith and with reasonable skill and knowledge". In those circumstances Mr Wilson says that the issue of the prior use of the Charlesworth machine can be raised in any event by the defendants, to show absence of good faith on the part of the claimant in claiming the patent at all. It seems to me a not altogether easy question as to whether or not it would be open to the defendants to raise the issue of the prior use of the Charlesworth machine at that stage in light of Section 74(2) of the 1977 Act as discussed in Organon -v- Hoffmann La Roche [1996] FSR 383, and in light of the rule in Henderson -v- Henderson [1843] 3 Hare 100. In the event, I do not think that the point need be decided, because, even if it has no weight, I would still be minded, subject to one condition, to allow the defendants' application so far as it relates to the Charlesworth machine.

The one condition to which my conclusion is subject relates to the question of costs. The defendants have presented a somewhat inconsistent case on their financial position. They opposed the hearing being adjourned on 18th March 1998, on the basis that they would not have sufficient funds to fight the action, and, as I have mentioned, they appear to have assumed that they would be without legal representation until a few days before the hearing started on 1st October 1998. However, throughout the nine day hearing of the action, and also on the present application, they have been represented by solicitors and three counsel. Nonetheless, I accept that there is a real risk of the claimant not being able to recover any costs which the defendants are ordered to pay him.

Although the final order is not yet drawn up, and the matter may be reconsidered, there are already substantial costs orders in the claimant's favour, and, even if they succeeded in their argument that there was prior use of the Charlesworth machine, they would still be at significant risk on costs, bearing in mind that a significant proportion of the trial was concerned with the question of infringement, an issue upon which the defendants not merely lost, but were found by me not to have been telling the truth. To permit the trial to be reopened on the defendants' application at yet further expense to the claimant without any protection for him in respect of costs, currently appears to me to be unfair. In these circumstances, I would be sympathetic to an argument that any order I make in relation to reopening the case, to enable the defendants to plead, call evidence on, and argue about prior use of the Charlesworth machine, should be on terms that the defendants pay an appropriate amount into court. Furthermore, bearing in mind the delays that have already taken place, I would also envisage giving fairly stringent directions with a view to the issue being determined relatively promptly. Those are matters upon which I should hear counsel.

Conclusion

In these circumstances, I propose to dismiss this application in so far as it relates to prior use of any Cheney machine, and, subject to terms, to allow the application in so far as it relates to the Charlesworth machine.

I should deal with one final point. It was suggested by Mr Wilson that, if I allowed the application in relation to the Charlesworth machine and would otherwise have disallowed the application in relation to the Cheney machines, I should nonetheless allow the application in relation to the Cheney machines, because once I had permitted the case to be reopened on one aspect, the extra cost, delay and inconvenience attributable to the other aspect would be comparatively slight. I reject that contention. It seems to me that, in reality, I have here two applications, each of which should be treated on its respective merits. It is not even as if there is any evidential or legal connection between the two aspects of the application.