England and Wales High Court (Patents Court) Decisions

IN THE HIGH COURT OF JUSTICECHANCERY DIVISION
PATENTS COURT
ON APPEAL FROM THE PATENT OFFICE

		Royal Courts of JusticeStrand, London, WC2A 2LL
		9 November 2001

THE HON MR JUSTICE JACOB
9 NOVEMBER 2001

Jacob J

1. This is an appeal from a decision dated 19^th August 2001 of Mr Sean Dennehey, Divisional Director acting for the Comptroller of Patents. He was asked to stay some proceedings in the Office but declined to do so. The proceedings are between a French company, Thibierge & Comar SA ("T&C") and an English company, Rexam CFP Ltd. ("Rexam"). T&C are the applicants for UK Patent No. 2,333,303, not yet granted. They are also the applicants, under number 98924408.2, for a European Patent. That application designates the UK as well as France. Finally T&C were also the applicants in France for two patents which have now been granted. For present purposes nothing turns on the French patents and I can consider the matter as if there were only the British and European applications in being. Both parties claim the rights and corresponding patents and are accordingly in litigation.
2. The first piece of litigation was these proceedings. On 28^th October 1999 Rexam filed a reference seeking, under s.8 of the Patents Act 1977, sole entitlement to the UK Patent and, under s.13, substitution of the named inventors as two of their employees, rather than employees of T&C. The tussle is: who made the invention? The same basic dispute spread to France when, on 8^th March 2000, Rexam challenged T&C's entitlement to the French Patents in the French Courts. The entitlement to the European Patent dispute was added to those proceedings in June 2000. By virtue of Art 2 to the Protocol on Jurisdiction etc. to the European Patent Convention, France is the only proper forum for that dispute.
3. Thus there are two parallel disputes, one here and one in France. Somewhat comically neither side seems to think much of the invention: in some threats proceedings a witness for Rexam said he did not believe the idea was "patentable at all" and T&C have recently, as part of an open offer of settlement, offered Rexam a royalty free licence. Be that as it may, both sides also appear to think there may just be something worth fighting over: the question is whether that dispute should take place solely in France or whether the existing UK proceedings should go ahead rather than be stayed. Since the hearing before the Office it has been revealed that the parties are in negotiation for a settlement. The French proceedings were delayed for 2 months for that purpose. However the negotiations have not proceeded speedily, though they have not broken down and are continuing.
4. It is common ground that the Office had discretion whether or not to grant a stay. On appeal Mr Speck, for T&C, submitted that I had a completely fresh discretion, exercisable completely independently of the exercise of discretion below. Mr Speck said he did not have to show that the Hearing Officer had gone wrong in principle. Alternatively, Mr Speck submitted that if he did have to show that, he could do so.

The nature of an appeal from the Comptroller.

5. Part 52 rule 11 of the CPR provides, so far as it is material:

"(1) Every appeal will be limited to a review of the decision of the lower court unless -

(a) a practice direction makes different provision for a particular category of appeal; or

(b) ...........

(2) The appeal court will allow an appeal where the decision of the lower court was -

(a) wrong, or

(b) ........

There is a Practice Direction dealing with patent appeals from the Comptroller. It is made under Part 49 of the CPR which itself provides:

"(1) These Rules shall apply to the proceedings listed in paragraph (2) subject to the provisions of the relevant practice direction which applies to those proceedings.

Paragraph (2) (2) of Part 49 specifies "Patents Court Business (as defined by the relevant practice direction)". That direction is headed "Practice Direction Patents etc." Its introduction reads:

"This practice direction supplements CPR Part 49 and replaces, with modifications, RSC Order 104 ..."

6. Paragraph 16 deals with "Appeals from the Comptroller". It is merely a re-enactment of the former RSC Order 104 r.19. Its language is virtually the same as that rule, the only differences being to accommodate the style of the new rules (e.g. changes to "Notice of Appeal" from "notice of originating motion" and "permission" for "leave"). Paragraph 16.15 is, save for the substitution of the word "permission" for "leave", in identical language to the former RSC Ord. 104 r.14. It reads:

"An appeal shall be by way of rehearing and the evidence used on appeal shall be the same as that used before the Comptroller and, except with the permission of the Court, no further evidence shall be given."

7. Under the former rules, when the Patents Court heard an appeal from an exercise of discretion by the Comptroller, the settled position was that, for instance, expressed by Graham J in Owens-Corning's Patent [1972] RPC 684 at p.689:

"That being so [i.e. the question being "entirely a matter of discretion"] it is clear that, as I said in Taylor's case [1970] RPC 108, on appeal one will not normally take a view contrary that of the court below, unless it is clear that he has come to a wrong conclusion or has proceeded on some wrong principle and that is true even if one thinks that possibly one might have come to a different conclusion if one had been trying the case oneself at first instance."

8. In that regard the Patents Court acted on exactly the same principles as the Court of Appeal did when hearing an appeal from an exercise of discretion below. Appeals to that Court were "by way of re-hearing" (RSC Ord. 59 r.3). But when it came to an exercise of discretion the position was as set out, for instance, in para. 59/1/142 of the 1969 Supreme Court Practice. I quote the paragraph without the case citations:

"There are many authorities for the proposition that an appeal will not be entertained from an order which it was within the discretion of the judge to make unless it be shown that he exercised his discretion under a mistake of law, in disregard of principle or under a misapprehension as to the facts; or that he took into account irrelevant matters, or failed to exercise his discretion, or the conclusion which the judge reached in the exercise of his discretion was 'outside the generous ambit within which a reasonable disagreement is possible'".

9. Thus it was well-settled that the grounds for interference went beyond strict Wednesbury principles, but not so far as simply requiring the appeal court to exercise its own discretion as though there had never been a decision below - on the contrary considerable weight was to be given to that decision.
10. The new Rules do not define either "review" or "re-hearing". But it seems to me self-evident that "re-hearing" is not intended to be wider than it was under the former rules as Mr Speck submitted. That must be all the more so in the case of appeals from the Comptroller: clearly the re-enactment in the form of the Practice Direction of the former rule was not intended to change anything. Probably the real difference between "review" and "re-hearing" is one of emphasis - the court will be even slower to interfere with an exercise of discretion when engaged in a "review" than when engaged in a "re-hearing". That is in accordance with what Brooke LJ (with whom Lord Phillips MR and Peter Gibson LJ agreed) said in Tanfern v Macdonald [2000] 1 WLR 1316. Under the heading "The appellate approach: the general rule" he said:

30. As a general rule, every appeal will be limited to a review of the decision of the lower court. This general rule will be applied unless a practice direction makes different provision for a particular category of appeal, or the court considers that in the circumstances of an individual appeal it would be in the interests of justice to hold a rehearing: C.P.R., r. 52.11(1). The appeal court will only allow an appeal where the decision of the lower court was wrong, or where it was unjust because of a serious procedural or other irregularity in the proceedings in the lower court: C.P.R., r. 52.11(3).

31. This marks a significant change in practice, in relation to what used to be called "interlocutory appeals" from district judges or masters. Under the old practice, the appeal to a judge was a rehearing in the fullest sense of the word, and the judge exercised his/her discretion afresh, while giving appropriate weight to the way the lower court had exercised its discretion in the matter. Under the new practice, the decision of the lower court will attract much greater significance. The appeal court's duty is now limited to a review of that decision, and it may only interfere in the quite limited circumstances set out in C.P.R., r. 52.11(3).

32. The first ground for interference speaks for itself. The epithet "wrong" is to be applied to the substance of the decision made by the lower court. If the appeal is against the exercise of a discretion by the lower court, the decision of the House of Lords in G. v. G. (Minors: Custody Appeal) [1985] 1 WLR 647 warrants attention. In that case Lord Fraser of Tullybelton said, at p. 652:

"Certainly it would not be useful to inquire whether different shades of meaning are intended to be conveyed by words such as 'blatant error' used by the President in the present case, and words such as 'clearly wrong,' 'plainly wrong,' or simply 'wrong' used by other judges in other cases. All these various expressions were used in order to emphasise the point that the appellate court should only interfere when they consider that the judge of first instance has not merely preferred an imperfect solution which is different from an alternative imperfect solution which the Court of Appeal might or would have adopted, but has exceeded the generous ambit within which a reasonable disagreement is possible."

33. So far as the second ground for interference is concerned, it must be noted that the appeal court only has power to interfere if the procedural or other irregularity which it has detected in the proceedings in the lower court was a serious one, and that this irregularity caused the decision of the lower court to be an unjust decision.

11. Brooke LJ recognised that the old "re-hearing", although in principle raising the exercise of discretion afresh required that "appropriate weight" should be given to the decision below. That was done in accordance with the above-quotation from the Supreme Court Practice. It may be noted that that quotation forms part of the speech of Lord Fraser which was quoted by Brooke LJ.
12. Thus I conclude that although the appeal is by way of "re-hearing" I must give great weight to the decision below which is, in essence, one of case management.

Did the Hearing Officer err in principle?

13. Mr Speck submitted that he did. His main submission was that the Hearing Officer overlooked, or failed to give sufficient weight to, the effect of s.73(2) of the Patents Act 1977. Broadly the purpose of this provision is to stop a man getting two patents for the same invention, one via the national route and the other via an application filed in the European Patent Office. The provision reads:

"(2) If it appears to the comptroller that a patent under this Act and a European patent (U.K.) have been granted for the same invention having the same priority date, and that the application for the patents were filed by the same applicant or his successor in title, he shall give the proprietor of the patent under this Act an opportunity of making observations and of amending the specification of the patent, and if the proprietor fails to satisfy the comptroller that there are not two patents in respect of the same invention, or to amend the specification so as to prevent there being two patents in respect of the same invention, the comptroller shall revoke the patent."

14. Suppose, said Mr Speck, the Comptroller decides the case in favour of his clients and then the French court does likewise. When the European application (which designates, inter alia, the UK and France) matures into grant, there will be two patents, the UK patent and the European Patent (UK) for the same invention. The UK patent the subject of the pending proceedings will simply be revoked, or, as Mr Speck colourfully put it, the European Patent will trump the UK patent. Moreover, he added, the European application is the more commercially significant of the two applications, potentially covering all the designated countries (France, the UK and I know not what others). So the commercial centre of the dispute lies with the European rather than British application.
15. Mr Speck submitted that there was a close analogy with the decision of the Court of Appeal in Kimberley Clark v Proctor & Gamble [2000] RPC 422. In that case the Court of Appeal indicated that where there were co-pending proceedings concerning the validity of a European Patent (UK) in the European Patent Office and here, the preferred option is to stay the proceedings here. As Aldous LJ put it at p. 431:

"It is not sensible for a court in this country to allow proceedings to be heard in this country which duplicate those in the EPO unless justice requires that to happen."

Similarly, submitted, Mr Speck, with the French proceedings in this case. Indeed, he went on, the position in the present case is stronger because, whatever the result of the proceedings here, the decision concerning the European application, which is solely for the French court, will trump it.

16. However things are not quite the same as in Kimberly Clark. Thus the possibility of amendment of the patent and the different rules applied to that by the EPO to those applied here was an important part of that case. The point simply does not arise here. Again there is no third party involved here, as there was in the EPO opposition of that case. Finally this application for a stay is made very late - when the case is ready for hearing. For a year the two proceedings were allowed to run in parallel.
17. I have some sympathy with the s.73 argument, though it is not quite as simple as Mr Speck contends. It is not certain that s.73(2) will apply at all - the European Office may refuse the patent outright or the patent may end up with different claims from those of the British Patent - the European Patent Office have indicated objections to the present proposed claims. It may be possible to overcome the objections by argument or amendment. One cannot at present say. If the claims are different from those of the British Patent it seems likely that s.73(2) will not bite at all. During the hearing there was discussion about whether the form of claim mattered - was the section met by any pair of patents based on the same disclosure. Upon reflection the better view must be that one compares the claims for two reasons: first s.125(1) prima facie equates "invention" with what has been claimed; and second s.73(3) disapplies s.73(2) if, during opposition in the EPO the patent "is amended so that there are not two patents in respect of the same invention." The only inference from that must be that it is a comparison of claims which matters. Those of us old enough to remember may have a slight feeling of déjà vu - the old objection to validity of "prior claiming" involved a similar comparison and it was not without difficulty - see Kromshroder's Patent [1960] RPC 75.
18. Thus it is not certain that the European patent (UK) will "trump" the British. Mr Speck suggested alternatively that the case should be approached on the basis that it probably will. Even if one does, it has to be accepted that, as a factor in the discretion, the point is weakened. Moreover there can be no doubt that the Hearing Officer had the s.73(2) point well in mind - he discusses it in detail from paragraphs 35 to 45. He accepted that the provision may "bite" if the proceedings in both countries go all the way. In the end he thought that factor was "neutral". I might have given it more weight but certainly not so much as Mr Speck suggests - effectively that it was determinative.
19. What swayed the Hearing Officer were timing and the best estimate he could make as to the realities of the litigation. He particularly thought that one battle would probably be enough for both sides to reach a settlement. If anything that seems to me to be even more likely on the present evidence than was before the Office. The Hearing Officer was not told expressly of negotiations, as I was. Nor had the offer of a royalty free licence to Rexam been made.
20. The point on the timing was that the UK proceedings at first instance were ready for a hearing (indeed would have been over before the current application had been made if a witness had not been unavailable in April). The French proceedings lagged. When the matter was before the Hearing officer the expected date for a UK decision was Oct/Nov this year. Owing to this appeal (which itself was adjourned in September because of the possibility of settlement) that date has slipped to early January. The French proceedings have slipped too - the French court was told of the possibility of settlement and put back the next procedural stage to the end of November to allow negotiations to take place. So the position is much the same now as it was before the hearing officer, with an expected French decision now having gone back to May/June next year.
21. Mr Speck made the point that the French proceedings would be a lot cheaper since there was no cross-examination. I was told that the proceedings here were likely to last up to 5 days. That may well be an overestimate if the Hearing Officer is firm about preventing cross-examination from straying or being repetitious. But even so the point is valid. Moreover there will be a greater burden on T&C, whose witnesses will have to travel here. T&C are the smaller company. The Hearing Officer was not given any information about finances, but one can infer that it is probably less well able to afford the proceedings here from the fact that it has only 5 or 6 staff whereas Rexam is a substantial company. Expense is a material factor - but it is one which the Hearing Officer considered.
22. Mr Speck also submitted that the Hearing Officer was wrong to conclude that the British decision was likely to be determinative. It was conceded before him that very frequently when there are parallel proceedings, the first to be decided is the basis for resolution of the dispute overall. That accords with general experience. Mr Speck submitted that that concession did not apply here because the French proceedings were potentially so much more important commercially, and, if the trumping effect came into play, legally too. That to my mind goes only to weight.
23. Moreover there is this further consideration: the parties are in negotiation. General experience shows that the settlement of litigation often happens at the last minute. It is the Dr Johnson effect: "there is nothing like a hanging to concentrate a man's mind wonderfully." "Bargaining on the steps of the Courthouse" is a near inevitable consequence of litigation in most, if not all, countries. What is of major important is a date by which the parties should "put up or shut up". The sooner such a date is set the sooner is a dispute likely to be settled. Here there is a date set for the hearing in late November. There are good reasons for retaining it.
24. Overall I have come to the firm conclusion that the decision of the hearing officer has not been shown to be "wrong". His careful and well-reasoned decision was well within the "generous ambit" within which reasonable men might differ. I dismiss this appeal.