England and Wales High Court (Patents Court) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
ON APPEAL FROM THE COMPTROLLER-GENERAL OF PATENTS, DESIGNS AND TRADE MARKS

		Royal Courts of Justice Strand, London, WC2A 2LL
		28 January 2008

MR. JUSTICE KITCHIN :

Introduction

1. This is an appeal from a decision of Mr R J Walker, the Divisional Director acting as Hearing Officer for the Comptroller, dated 8 November 2006, to revoke patent number GB 2371653 ("the Patent") in the name of the first appellant.
2. The Patent relates to "a portable data storage device" and, more specifically, a device for connecting to a computer via its Universal Serial Bus ("USB") socket and which has a solid state memory – typically a flash memory. It is based upon international patent application number PCT/SG00/00029 ("the application") filed on 21 February 2000. In due course it entered the national phase and proceeded to grant on 6 August 2003. M-Systems commenced the proceedings against the second appellant (the previous proprietor of the patent and the first appellant's parent company) but the proceedings in the Patent Office proceeded as if the first appellant was a party.
3. The respondent ("M-Systems") commenced these proceedings for revocation on 15 December 2003, contending that the Patent lacked novelty or an inventive step, that the specification did not disclose the invention completely and clearly enough for it to be performed by a person skilled in the art and that the matter disclosed in the specification extended beyond that disclosed in the application as filed.
4. On 9 March 2004, the appellants ("Trek") filed a counterstatement denying all the grounds of objection. On 24 June 2004, it filed an amended counterstatement together with an application to amend the Patent under section 75 of the Patents Act 1977 ("the 1977 Act").
5. On 7 March 2005, the matter came on for hearing before the Hearing Officer. After three days it was adjourned until 25 June 2005. Shortly before the resumed hearing, Trek made a further application to amend the Patent by introducing two new independent method claims. The issues before the Hearing Officer were, in summary:

i) whether the Patent as granted disclosed matter extending beyond that disclosed in the application;

ii) whether the two sets of amendments were allowable, both substantively because they would not involve the disclosure of additional matter and in the exercise of the Hearing Officer's discretion;

iii) whether the Patent as granted or as proposed to be amended claimed an invention which was new and involved an inventive step; and

iv) whether the Patent was insufficient.

6. The Hearing Officer found in favour of M-Systems on issues ii) and iii) but against it on issues i) and iv). As a result the claim succeeded and the Hearing Officer ordered the revocation of the Patent. All these issues, save insufficiency, arise on this appeal.
7. Underlying the issues were two fundamental differences between the parties. The first concerned the disclosure of the application. The second concerned the proper interpretation of the claims both as granted and as proposed to be amended.

The disclosure of the application

8. Trek contended the application disclosed a solid state storage device that could function as an alternative to the conventional floppy disc or CD ROM and which could be plugged into the USB socket of a computer without the use of a cable. There is no doubt that by February 2000 various devices had been proposed for transferring data which involved the use of a device connected to the host computer by a cable and a number of them were cited as prior art in this case. One called "Estakhri" (WO 99/45460) is depicted below:

9. Another was called the "Fujifilm SM-R1":

10. By contrast, Trek argued, the invention described in the application could be made as small as one's thumb, had no cable and so plugged directly into the USB socket. Such a device was placed on the market by Trek a few days after the filing of the application and met with rave reviews and enormous commercial success. It was called the "ThumbDrive" and is shown below:

11. M-Systems countered that this was an ex post facto attempt by Trek to redefine the invention. It accepted the application disclosed an invention which comprised a portable solid state storage device which could be plugged into the USB port of a host computer and function as an alternative to a magnetic disk or CD ROM but contended it was silent as to whether that connection should be made with or without a cable. The connection is described generally by the term "coupled" and, so the argument went, it could reasonably be deduced that the inventor had no interest in the form of connection and did not consider it to be part of his invention - for otherwise he would have mentioned it.
12. On this point the Hearing Officer preferred the submissions of M-Systems. Trek submits he fell into error in so doing and this forms one of the main planks of the appeal. In support of its position Trek now seeks to rely on a further argument, not taken before the Hearing Officer. Trek contends that on 12 December 2005, the Singapore Court of Appeal delivered its decision in certain infringement proceedings between Trek and M-Systems and, in doing so, decided the very same issue in favour of Trek. This, says Trek, creates an issue estoppel which binds M-Systems in this jurisdiction.

The scope of claim 1, the added matter squeeze and impact of the prior art

13. The second difference concerns the scope of the claims of the Patent as granted and as proposed to be amended. It is convenient to consider this by reference to claim 1 in its various forms:
14. Claim 1 of the Patent as filed reads:

"1. A portable data storage device comprising a coupling device for coupling to a computer serial bus, an interface device coupled to the coupling device, a memory control device and a non-volatile solid state memory device; the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the coupling device."

15. Following pre-grant amendments dated 10 December 2002, claim 1 of the Patent as granted reads (with amendments shown):

"1. A portable data storage device comprising which can be directly plugged into a USB socket of a computer and is operative to function as an alternative to a magnetic disk or CD-ROM, and which is capable of storing software for installation to the computer or of receiving and storing user's data present in the computer and which comprises:

a coupling device which is a USB plug for coupling directly to a computer serial bus USB socket on a computer;

an interface device coupled to the coupling device USB plug;

a memory control device; and

a non-volatile solid state memory device;

the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the coupling device USB plug."

16. Finally, there is claim 1 as proposed to be amended. This is set out below. Single line deletions and underlining indicate text that was removed or added pre-grant. Double line deletions and underlining indicate the proposed amendments:

"1. A portable data storage device operative to function as an alternative to a magnetic disk or CD-ROM, comprising which device is can be directly introducible into and removable from plugged into a USB socket of a computer to permit the transfer of data from one computer to another and which is operative to function as an alternative to a magnetic disk or CD-ROM, and which is capable of storing software for installation to the computer or of receiving and storing user's data present in the computer and which device comprises:

a coupling device which is a USB plug for coupling directly to a computer serial bus USB socket on a computer;

an interface device coupled to the coupling device USB plug;

a memory control device; and

a non-volatile solid state memory device;

the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the coupling device USB plug.

but subject to the foregoing disclaimer."

17. The disclaimer relates to an intermediate citation (under section 2(3) of the 1977 Act) called "Yao" (EP 1 102 172 A1) which was published on 23 May 2001. It reads:

"Since the filing of this application, we have become aware of EP-A1-1102172, a European Patent Application that designates the UK, and which has a filing date earlier than that of the present application but which was not published until after filing of the present application. That application describes a dual interface memory card and an adapter module. The dual interface memory card has two interfaces, one for interfacing with a USB port of a computer via the adapter module, and a second, host, interface for connecting to an electronic product, such as a digital camera. In use, the memory card may connect directly to the electronic product, or may be received within a receiving aperture in the adapter for connection to a computer USB socket. We disclaim the combination of a dual interface memory card and adapter module for the same."

18. Two points of interpretation arise. The first and most fundamental is whether the claim as granted or as proposed to be amended is limited to devices which can be plugged into the host computer without a cable (or with only a very short stubby cable). Trek contended that the pre-grant amendment to introduce the words "which can be directly plugged into a USB socket" achieved this limitation, but argued that the matter is put beyond doubt by the proposed amendment to introduce the expression "which device is directly introducible into and removable from" a USB socket.
19. M-Systems contended that neither the claim as granted nor as proposed to be amended is limited to such devices but, in the alternative, and if it was right in its submission as to the disclosure of the application, then the introduction of such a limitation by amendment, whether pre or post grant, must necessarily have added to the disclosure. Accordingly, it argued, Trek must either fall victim to the Scylla of the prior art or the Charybdis of the prohibition against adding matter by amendment.
20. Once again, the Hearing Officer preferred the submissions of M-Systems. He found that claim 1 as granted and as proposed to be amended was not limited to devices which had no cable. Accordingly he found it lacked novelty over such prior art as Estakhri and Fujifilm SM-R1 – a consequence which, I should add, Trek accepts necessarily followed. Interestingly, he also found that the claim as proposed to be amended would add matter.
21. The second point of interpretation concerns memory size. Claim 1 as granted and as proposed to be amended requires the device to be operative to function as an alternative to a magnetic disk or CD ROM. This is important because prior art documents described USB devices with an integral USB plug and no cable – but with only limited memory capacity. One, the "Aladdin MacHASP", was a hardware based system used to protect Macintosh software from piracy. It provided 90 bytes of read/write memory:

22. The other, referred to as "Abbott" (WO 00/42491), another intermediate publication, described a device with 64KB of memory which could be used to store a user's security information, such as passwords. The general arrangement of Abbott is readily apparent from figure 7A of the specification:

23. The Hearing Officer found that neither publication deprived the claim of novelty because the devices did not have the necessary memory capacity to operate as an alternative to a magnetic disk or CD ROM.
24. Finally I should mention the disclaimer of Yao. This was a further and vital aspect of the application to amend because it was accepted to anticipate the claim as granted.

The application to amend made in June 2004

25. It is apparent from the foregoing that the Hearing Officer refused the application to amend on the grounds that the amended claim would be invalid for lack of novelty and added matter. However, the Hearing Officer declined to allow it on discretionary grounds too. He held that Trek had not provided him with any information which would have permitted him to exercise his discretion in favour of amendment. In so doing, Trek submits he made a fundamental error of principle – he drew an inference against Trek from its failure to disclose privileged material.

The yet further application to amend made in June 2005

26. By this application Trek sought to introduce two new independent claims to distinguish over another section 2(3) publication called "Margalit" (EP 1 001 329 A2). The Hearing Officer refused the application for the same discretionary reasons that led him to refuse the application of June 2004.

The issues on appeal - summary

27. The following issues therefore arise on this appeal:

i) Was the Hearing Officer correct in concluding that the application does not disclose to the person skilled in the art a portable data storage device for plugging into the USB port of a host computer which is integral, that is to say, it has no cable?

ii) Was the Hearing Officer correct in interpreting claim 1 as granted and as proposed to be amended:

a) as not being limited to data storage devices which have no cable?

b) as excluding devices with small memories, such as Abbott?

iii) Was the Hearing Officer correct in concluding that claim 1 as granted and as proposed to be amended:

a) was anticipated by devices such as Estakhri and Fujifilm SM-R1?

b) was not anticipated by Abbott?

iv) Was the Hearing Officer correct in concluding that the claim as granted did not add matter but that the claim as proposed to be amended would add matter?

v) Does the judgment of the Court of Appeal of Singapore give rise to an enforceable estoppel on the question of what is disclosed by the application?

vi) Did the Hearing Officer exercise his discretion in relation to his refusal to permit Trek to amend the Patent in a manner that is open to criticism?

vii) Should the Hearing Officer have found that the patent was obvious because it would have been obvious to remove or restrict the length of cable used in devices such as Estakhri? This issue is only important if Trek is entitled to claims which are limited to devices which have no cable or only a very short cable.

28. Before turning to each of these issues I should also mention the subsidiary claims. Neither Trek nor M-Systems suggested that they should lead to a different outcome on this appeal and I will say no more about them.

The disclosure of the application

29. The disclosure of the application is particularly relevant in the present case because of the impact it has upon the allegation that the claims of the Patent as granted and as proposed to be amended disclose additional subject matter. Trek accepts that it must succeed on this issue if the appeal is to succeed.
30. The correct approach to the interpretation of a patent specification was explained by Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9. Trek emphasised the following aspects of the guidance he gave, each of which I accept. The specification as a whole must be read through the eyes of the skilled person, giving the words used a purposive construction. Construction, whether of a patent or any other document, is concerned with what the skilled person would have understood the author to mean. This depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and the assumptions which one attributes to that audience. The skilled person comes to a reading of the specification with the general knowledge of the art and he reads it on the assumption that its purpose is both to describe and to demarcate an invention - that is to say, something which, at any rate in the opinion of the author, is new. What the author would have been understood to mean is highly sensitive to the context of and background to the utterance.
31. The prohibition against the addition of subject matter derives from Article 123(2) of the European Patent Convention:

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

32. The general test for examining whether an amendment involves the addition of subject matter was stated by Aldous J in Bonzel v Intervention (No3) [1991] RPC 553 at 574:

"The decision as to whether there was an extension of disclosure must be made on a comparison of the two documents read through the eyes of a skilled addressee. The task of the Court is threefold:

(a) To ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application.

(b) To do the same in respect of the patent as granted.

(c) To compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition.

The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly."

33. More recently, the Court of Appeal explained the approach to be adopted in Vector Corporation v Glatt Air Techniques Inc [2007] EWCA Civ 805. In a nutshell, the test is whether the skilled person would, upon looking on the amended specification, learn anything about the invention which he could not learn from the application filed. The Court of Appeal also referred to the following passage from the decision of this court in European Central Bank v Document Security Systems [2007] EWHC 600 (Pat) as being a helpful elaboration:

"97. A number of points emerge from this formulation which have a particular bearing on the present case and merit a little elaboration. First, it requires the court to construe both the original application and specification to determine what they disclose. For this purpose the claims form part of the disclosure (s.130(3) of the Act), though clearly not everything which falls within the scope of the claims is necessarily disclosed.

98. Second, it is the court which must carry out the exercise and it must do so through the eyes of the skilled addressee. Such a person will approach the documents with the benefit of the common general knowledge.

99. Third, the two disclosures must be compared to see whether any subject matter relevant to the invention has been added. This comparison is a strict one. Subject matter will be added unless it is clearly and unambiguously disclosed in the application as filed.

100. Fourth, it is appropriate to consider what has been disclosed both expressly and implicitly. Thus the addition of a reference to that which the skilled person would take for granted does not matter: DSM NV's Patent [2001] RPC 25 at [195]-[202]. On the other hand, it is to be emphasised that this is not an obviousness test. A patentee is not permitted to add matter by amendment which would have been obvious to the skilled person from the application.

101. Fifth, the issue is whether subject matter relevant to the invention has been added. In case G1/93, Advanced Semiconductor Products, the Enlarged Board of Appeal of the EPO stated (at paragraph [9] of its reasons) that the idea underlying Art. 123(2) is that that an applicant should not be allowed to improve his position by adding subject matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application. At paragraph [16] it explained that whether an added feature which limits the scope of protection is contrary to Art 123(2) must be determined from all the circumstances. If it provides a technical contribution to the subject matter of the claimed invention then it would give an unwarranted advantage to the patentee. If, on the other hand, the feature merely excludes protection for part of the subject matter of the claimed invention as covered by the application as filed, the adding of such a feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties.

102. Sixth, it is important to avoid hindsight. Care must be taken to consider the disclosure of the application through the eyes of a skilled person who has not seen the amended specification and consequently does not know what he is looking for. This is particularly important where the subject matter is said to be implicitly disclosed in the original specification."

34. There is no dispute on this appeal as to the identity of the skilled person. He is someone who makes a living by designing peripheral equipment for computers.
35. As to the common general knowledge, Professor Kim, Trek's expert, explained that conventional mass storage devices fell into two categories, those which were permanent, such as hard drives, and those which were portable. The second category comprised floppy disks, compact disks (CD-ROMs), including the rewritable compact disk (CD-RW), and devices based upon flash memory. Flash memory was used for easy and fast information storage in such devices as digital cameras and home video game consoles. One of its first uses in a removable storage device was the PCMCIA hard drive. This was essentially a flash memory card (with a controller) which plugged into a specially built-in PCMCIA slot located inside a computer. However, it was not established that the common general knowledge included devices such as Estakhri or the Fujifilm SM-R1. Nor, obviously, could the common general knowledge have included the ThumbDrive, which was not introduced to the market until after the filing of the application.
36. The second aspect of the common general knowledge to which I should refer was the USB. This was developed to address the difficulties associated with the expansion of the capabilities of personal computers by the use of "add-on" devices. The USB was developed jointly by a number of large computer companies with the aim of providing a standard interface between the personal computer and a whole host of peripheral devices such as printers, scanners, telephones, keyboards and mice. As of February 2000, all USB devices were connected to the host computer using a captive or detachable cable designed in accordance with a protocol set forth in Revision 1.1 of the USB Specification. As Professor Kim explained, according to the USB Specification two types of connectors are provided, called Series A and Series B. Series A plugs are received within Series A sockets and are always oriented upstream, towards the host computer. Series B plugs are received within Series B sockets, and are always oriented downstream, towards the USB device. Hence, if a detachable USB cable is used the USB device will include a Series B socket that receives a Series B plug on one end of the cable and the USB host will include a Series A socket that receives a Series A plug on the opposite end of the cable. As Professor Kim further explained, the USB Specification does not at any point suggest the connection of a USB device to a USB host other than by the use of a captive or detachable cable.
37. I turn then to consider the disclosure of the application. It begins by explaining that the invention relates to a portable data storage device and, in particular, a portable data storage device for a computer. It then proceeds to describe the conventional data storage devices in much the same terms as did Professor Kim. It explains that they generally fell into two categories. The first comprised devices such as ROM and RAM which were generally fitted within the computer and were not intended to be removable or portable. The second comprised surface based data storage device exemplified by magnetic disks and CD ROMs. It explains that these devices suffered from a number of limitations. They required a mechanical drive mechanism to be installed in or coupled with the computer to permit the data on the storage device to be read by the computer, their capacity was limited by their surface area, and the combination of the storage device and the drive mechanism was generally bulky or delicate due to the moving parts that were required within the drive mechanism or the storage device itself.
38. The invention is then said to provide a portable data storage device comprising a coupling device for coupling to a computer serial bus, an interface device coupled to the coupling device, a memory control device and a non-volatile solid-state memory device; the memory control device being coupled between the interface device and the memory device to control the flow of data from the memory device to the coupling device. The advantage of such a system is explained on page two of the application:

"…. by providing a portable data storage device comprising a coupling device with an interface device, memory control device and a non-volatile solid-state memory device, it is possible to provide a portable data storage device which may be coupled to a computer having a serial bus port and which does not include moving parts or require a mechanical drive mechanism to read data from the data storage device."

Preferably, it continues, the device may incorporate a flash memory.

39. This description of the advantage of the invention is, to my mind, of some importance. There is no suggestion that the invention disposes of the need for a cable described in the USB Specification or depicted in Estakhri and Fujifilm SM-R1. To the contrary, the advantage is said to be the provision of a portable device which does not include moving parts or require a mechanical drive mechanism. It is not concerned with how the device is coupled to the host computer.
40. The application then proceeds to describe an example of the device of the invention by reference to Figures 1 to 4. Figure 1 is shown below:

41. The application explains that this Figure shows the data storage device 10 which includes a USB plug 1 which is coupled to a USB interface device 2. The USB interface device 2 is coupled to a micro-controller 3 which is coupled to a flash memory 4. The micro-controller 3 includes a read only memory (ROM) 5 which stores a program to control the operation of the micro-controller 3. It is to be noted that there is again no mention here of how the coupling is to be effected.
42. On page five of the application the following passage appears:

"The device 10 also includes a USB socket 8 that is coupled directly to the USB plug 1 and permits other USB devices to be coupled to the USB via the device 10. For example, if a user wishes to increase memory space, a USB plug 1 of a second memory device 10 may be connected to the USB socket 8."

43. This passage is of some interest because it contains the only reference in the application to any two components being coupled "directly" together. Yet, as the Hearing Officer found in paragraph 38 of his decision, there must be intervening circuitry between the socket 8 and the plug 1 which provides something in the nature of a hub. The skilled person would therefore understand the use of the term "directly" to refer to the way in which the host computer "sees" other USB devices rather than denoting a physical connection of one component and another without anything in between.
44. Figures 2, 3 and 4 are each flow diagrams showing, respectively, the set up procedure for the device 10, the initial set-up of a password for zone 2 of the flash memory 4 by an end user and the establishment by the computer of a communication with the device 10. The application describes how the device 10 is "plugged into" the USB socket on the computer and how, once installation of software is complete, the device 10 may be "removed" from the USB socket on the computer. Finally, it concludes on page nine with the following further description of an advantage of the invention:

"An advantage of the device 10 described above is that it provides a portable data storage device for a computer which does not require a mechanical operated reading/writing device. In addition, the device 10 has no moving parts. This enables [the] data storage device 10 be more compact than conventional portable data storage devices."

45. Once again, I believe this description of an advantage of the invention is important. Two particular features are identified. The first is that no mechanical reading or writing device is required. The second is that the device of the invention has no moving parts and can therefore be more compact than the conventional portable storage devices such as magnetic disks and CD ROMs. Again, there is no suggestion that the invention can be implemented without a cable.
46. The Hearing Officer considered the disclosure of the application in considerable detail from paragraphs [23] to [29] and [34] to [58] of his decision. He concluded at [58]:

"I can therefore conclude that the skilled addressee would not read the application as teaching a unitary device without a cable or with just a stubby cable. He would read the various references to the components of the device being "coupled" to one another at the corresponding level of generality to embrace any suitable means for connecting the components. Moreover, in my view the skilled addressee would also take from the application an appreciation of a USB data storage device which is portable and compact and which addresses the acknowledged shortcomings associated with conventional data storage devices, such as magnetic disks and CD ROMs. However, he would not expect the requirement of compactness to mean that the device has to fit within the footprint of a floppy disk."

47. Trek submitted the Hearing Officer fell into error in reaching this conclusion because he failed to assimilate material aspects of the disclosure and the background and was drawn into a meticulous analysis of diagrams and text which only served to mask, rather than assist, an understanding of what the skilled addressee would gather from the application. It was further contended that by the process which he adopted, the Hearing Officer prevented himself from interpreting the specification as a whole through the eyes of a designer of computer peripherals. Unlike a person skilled in the art, he was striving to find what the document did not disclose.
48. If these submissions are well founded then I would accept that the Hearing Officer must have fallen into error. I must therefore consider the basis for them in some detail.
49. First, it was submitted that the Hearing Officer failed to have regard to the fact that the application teaches the skilled reader about a data storage device that can be made more compact than conventional portable storage data devices. I accept this is so. But it is only a portion of the description of the advantage of the invention which appears on page nine of the application. The description taken as a whole explains the device may be more compact because it has no moving parts. There is nothing here to suggest to the skilled person that the device may be more compact because it does not include a cable.
50. Secondly, it was said that in Figure 1 of the application, the device 10 is labelled as the whole device, including the USB plug 1. The skilled person would therefore understand the plug 1 shown in the figure to be a Series A plug capable of coupling directly with a Series A socket on the host computer. Moreover, in Figure 1 the plug 1 is shown connected by a signal line to the additional USB port 8. This part of the diagram would only make sense to the skilled person if the USB connector is an integral part of the device. Trek asked rhetorically, if the USB plug 1 is not part of the device as a whole, but on a captive cable, how would the second cable coming back from the USB connector be provided? Further, it was argued, Figure 1 shows the components laid out in the way they would be mounted on a circuit board and, as such, is clearly inconsistent with the notion there might be a cable between the plug 1 and the driver 2.
51. I accept these submissions, to a point. The device 10 clearly does include the USB plug 1. Moreover, I have no doubt that the skilled person reading the application would understand the plug 1 to be a Series A plug capable of coupling directly to a Series A socket on the host computer. However, it does not follow from either of these points that the skilled person would understand that the plug 1 must be integral with the driver 2 rather than being connected to it by a cable. I also accept that the plug 1 is shown in Figure 1 as being connected by a signal line to an additional USB port 8. However, once again, it does not follow that the plug 1 is an integral part of the device. As I have already explained, the skilled person would understand there must be some intermediate electronic circuitry between the plug 1 and the port 8 because there is no possibility of connecting two inputs in parallel without such circuitry under the USB protocol. For this reason too, I am unable to accept the submission that Figure 1 shows the components laid out in the way they would be mounted on a circuit board. The Hearing Officer had no evidence from Professor Kim to suggest that was how Figure 1 would be interpreted and, while it is true that Mr Sawyer, one of the witnesses called upon behalf of M-Systems, accepted under cross examination that an explanation for the different box sizes in Figure 1 was that they represented pieces on a circuit board, the Hearing Officer was right to place little or no weight upon this in the light of his finding that Mr Sawyer's experience was largely related to software.
52. Thirdly, it was submitted that the application uses phrases such as "the device 10 has been plugged into the USB socket" and "the device 10 may then be removed from the USB socket" in order to refer to the device as a whole being plugged into and removed from the USB socket, which submission was supported by the evidence of Professor Kim. It is true that the specification uses these phrases but, as the Hearing Officer found, they are equally appropriate to describe connecting to a host computer a device which has, for example, a captive cable and, for my part, I did not find Professor Kim's evidence on this issue persuasive.
53. Fourthly, it was submitted that the application makes it clear that the device is a portable data storage device comprising a coupling device (the plug 1) and that this device as a whole is more compact than conventional data storage devices. A device without a cable, so it was said, would fulfil this requirement but a device with a cable would probably not. I am unable to accept this submission for two reasons. The first is that the description of the prior art on page one of the application suggests that, in the case of magnetic disks and CD ROMs, it is the combination of the device and the drive mechanism for reading data from the device that is generally bulky or delicate due to the moving parts that are required. Against this background, the advantage of the invention described on page two of the application is that it does not include moving parts or require such a drive mechanism. Secondly, the advantage of compactness described on page nine of the application is said to derive from the fact that the device itself has no moving parts. There is no suggestion that this advantage is derived from the absence of a cable.
54. Finally, it was submitted that the skilled person reading the application would know that the patentee was trying to describe something which was new and would have therefore understood it to be describing a device which had a plug as part of the device itself. I reject this submission for like reasons to those I have already given. The application does indeed describe a device which purports to be new but its novelty is said to derive from the provision of a storage device which does not include moving parts or require a mechanical drive mechanism, not from the provision of a device which does not use or require a cable.
55. Overall, I have no doubt that the Hearing Officer came to the correct conclusion. The skilled person would approach the application with his knowledge and understanding that the USB Specification describes the connection of USB compliant devices to host computers by the use of either a detachable or a captive cable. He would know the USB protocol calls for two types of socket/plug connections, namely Type A and Type B and that these are incompatible in the sense that a Type A plug cannot physically connect to a Type B socket and a Type B plug cannot connect to a Type A socket. He would be expecting the peripheral to be plugged into the host computer by means of a type A plug at the end of a cable, not without a cable at all. In all these circumstances I believe a skilled person would be rather surprised to be told an essential feature of the invention of the application is the absence of a cable altogether. Nowhere does the application state that this is the case. To the contrary, it suggests that the merit of the invention is that it has no moving parts and does not require a mechanical drive mechanism, and consequently is more compact. In my judgment it is simply not possible to conclude that the skilled person would take it for granted that the invention has, at its heart, the provision of a device which does not need a cable.

The interpretation of claim 1 as granted and as proposed to be amended

56. I have set out claim 1 as granted in paragraph [15] of this judgment. Two issues arise. The first is whether or not the use of the phrases "A portable data storage device which can be directly plugged into to the USB socket of a computer" and "a coupling device which is a USB plug for coupling directly to a USB socket on a computer" limit the claim so as to exclude devices which use a cable. The Hearing Officer concluded they did not. Once again, I agree with him. The device comprises the plug 1 which can be plugged directly into a USB socket of a computer. But that tells the skilled person nothing about whether or not the plug 1 is connected to the interface device by a cable. The claim simply requires the interface device to be "coupled" to the plug. The skilled person would understand these words are entirely appropriate to describe the case where the two components are connected by a cable and there is nothing in the application to teach him otherwise.
57. The second issue concerns the meaning of the phrase "and is operative to function as an alternative to a magnetic disk or CD-ROM, and which is capable of storing software for installation to the computer or of receiving and storing user's data present in the computer".
58. The Hearing Officer found this phrase did not import a specific limitation in terms of the size of the memory of the device but it nevertheless imposed a practical limitation that people should be able to use the device as an alternative to the conventional surface based storage devices such as the magnetic disks or CD-ROMs acknowledged in the application. I agree with the Hearing Officer. Despite submissions by M-Systems to the contrary, I have no doubt that the skilled person would consider that for the device to be used as a real and practical alternative to a magnetic disk, it would need something in the order of 1.4 MB of memory, that is to say substantially greater than the 64 KB of memory possessed by Abbott. It is of course true that, on occasion, only 64 KB of the memory on a magnetic disk might be used. However, it does not follow, as M-Systems sought to argue, that the skilled person would regard Abbott as being a sensible, useful or realistic alternative to a magnetic disk and I have no doubt that he would not.
59. The claim as proposed to be amended is set out in paragraph [16] of this judgment. As I have mentioned, it contains a further attempt by Trek to limit the claim to exclude devices which are connected to the USB plug by means of a cable. Specifically, it now includes the phrase "which device is directly introducible into and removable from a USB socket of a computer". The Hearing Officer was evidently in two minds as to whether this object was achieved. At paragraph [115] of his judgment, he said this:

"The reason Trek gives for making this amendment is that it enhances the clarity of the claim and the distinguishing features over the prior art. Thus, it seems that Trek considers that there is some difference in meaning between the expression "directly introducible into" and the original expression "directly plugged into". In my view there is a difference in meaning between these two expressions but it is perhaps a subtle one. It seems to me that the expression "directly introducible into" carries with it the suggestion of an integrated device, such as a key, which does not arise from the expression "directly plugged into". Whether or not I am right about this, I cannot derive directly and unambiguously from the patent disclosure of portable data storage device being coupled to a computer other than by being "plugged into" a USB socket of the computer. I have also already noted that the expressions "removed" and "plug out" are used in the patent to describe the same operation and this strengthens my view that the apt expression to describe the reverse operation is "plugged into", as used consistently in the patent. Thus, in so far as there is a difference in meaning between the expressions "directly introducible into" and "directly plugged into", I find that this amendment results in the disclosure of additional matter and so is not permitted under section 76(3)(a) of the Act. However, if I am wrong on this and there is no difference in meaning, I would still not allow the amendment because I can see no point in it. If this were the case, the bar would then be on the grounds of discretion and not because the new expression would not be permitted by the Act."

60. Despite observing that it seemed to him that the expression "directly introducible" carried with it the suggestion of an integrated device, the Hearing Officer nevertheless proceeded on the basis that the claim was not so limited. I agree with the Hearing Officer that there is a difference in meaning of the two expressions. I do not believe that the skilled person would describe a device which can only be coupled to the USB socket on a computer by means of a plug on the end of a cable as "directly introducible into that USB socket". As a matter of ordinary English it would not be appropriate way to describe such a device and there is nothing in the evidence to suggest the skilled person would so understand it. In my judgment the Hearing Officer fell into error in failing to follow his reasoning to its logical conclusion. He ought to have decided that the proposed limitation would be effective to exclude a device connected to the plug by means of a cable.

Anticipation

61. In light of the foregoing, I can express my conclusions on this issue relatively shortly. Claim 1 as granted was anticipated by Estakhri and Fujifilm SM-R1. But it was not anticipated by Abbott. The Hearing Officer was correct to so find.
62. Claim 1 as proposed to be amended was not anticipated by devices such as Estakhri and Fujifilm SM-R1 and the Hearing Officer fell into error in concluding that it was. But once again, it was not anticipated by Abbott and the Hearing Officer was right to so hold.

Added matter

63. I have set out the legal test to be applied in considering whether or not an amendment results in the specification disclosing matter which extends beyond that disclosed application for the patent as filed. In the light of the foregoing I can once again set out my conclusions on this issue quite shortly.
64. In my judgment the Hearing Officer was correct in concluding that the pre-grant amendments to claim 1 did not add matter. The amendment to introduce the phrases "A portable data storage device which can be directly plugged into the USB socket of a computer" and "a coupling device which is a USB plug for coupling directly to a USB socket on a computer" did not limit the claim to integrated devices without a cable. There was therefore no added matter in this respect. The second aspect of the pre-grant amendment was to limit the claim to devices operative to function as an alternative to a magnetic disk or CD-ROM and which were capable of storing software for installation to the computer or of receiving and storing user's data present in the computer. This was undoubtedly taught by the application as filed, as the Hearing Officer correctly found.
65. As to claim 1 as proposed to be amended, this does involve a specific disclosure of and limitation to devices which have no cable. Although the invention described in the application as filed no doubt included such devices, they were not clearly and unambiguously disclosed. The Hearing Officer was right to conclude that the proposed amendment was therefore inadmissible because it would result in the specification disclosing additional matter.

Issue estoppel

66. The Grounds of Appeal attached to the Appellant's Notice dated 6 December 2006 raised for the first time a contention that the question of what the application disclosed to a skilled person was a question of fact which was now the subject of an issue estoppel created by a final judgment of the Singapore Court of Appeal dated 30 December 2005 in FE Global, Electec and M-Systems v Trek Technology [2005] SGCA 55.
67. It was said that Singapore Patent No. 87504 [WO 01/61692] ("the Singapore Patent") consists of a photocopy of the application. Further, paragraphs [7] to [21] of the judgment of Mr Justice Lai Kew Chai (Trek Technology v FE Global, Electec and M-Systems [2005] SGHC 90) and paragraph [22] of the judgment of the Singapore Court of Appeal upholding his decision, finally determine as between M-Systems and Trek that:

i) "the skilled addressee would interpret [the Singapore patent] and conclude that the portable storage device contains a USB "A" plug that is integrated into the body of the device to form a single, unitary device that can be plugged directly into the USB port of a computer" (Judgment of Mr Justice Lai Kew Chai at paragraph [21]); and

ii) "the [Singapore patent] discloses a unitary data storage device with an integrated USB plug to enable direct connection to the USB points of computers without the need for a captive or detachable cable" (Singapore Court of Appeal, paragraph [22]).

68. More recently, in its supplemental skeleton for this appeal, served on 18 October 2007, Trek recognised that the issue of interpretation of the Singapore Patent was a mixed question of fact and law. More recently still, indeed at the actual hearing of the appeal, Trek modified its position again. It submitted that there is an issue estoppel but it is one that binds M-Systems alone. The Hearing Officer had a duty to consider whether the amendment should be allowed. This court is now hearing an appeal from that decision and should allow the appeal only if satisfied it is appropriate to do so. Accordingly, as Trek accepted, the estoppel point can only go to the question of whether or not M-Systems is properly resisting the appeal, and hence to costs.
69. The application of the doctrine to a foreign judgment was explained by the House of Lords in The Sennar (No. 2) [1985] 1 WLR 490. Lord Diplock said at page 493:

"Issue estoppel operates regardless of whether or not an English Court would regard the reasoning of the foreign judgment as open to criticism."

70. Lord Brandon outlined the essential requirements of the doctrine at page 499:

"In order to create an estoppel of that kind, three requirements have to be satisfied. The first requirement is that the judgment in the earlier action relied on as creating an estoppel must be (a) of a court of competent jurisdiction, (b) final and conclusive and (c) on the merits. The second requirement is that the parties (or privies) in the earlier action relied on as creating an estoppel, and those in the later action in which that estoppel is raised as a bar, must be the same. The third requirement is that the issue in the later action, in which the estoppel is raised as a bar, must be the same issue as that decided by the judgment in the earlier action."

71. Trek's substantive argument focused on the decision of the Singapore Court of Appeal and is beguilingly simple. All three requirements laid down by the House of Lords in The Sennar are, says Trek, satisfied in this case. First, the Singapore Court of Appeal is a court of competent jurisdiction, its decision is final and conclusive, and it was on the merits. Secondly, the parties or their privies are the same. Finally, the issue was the same, namely what the application - being identical to the Singapore Patent - disclosed to the skilled person. Accordingly, the decision of the Singapore Court of Appeal created an estoppel.
72. M-Systems' response is that the argument must be rejected for a large number of reasons, some of which are procedural and some substantive. The most material are these:

i) Procedural objections:

a) Trek has not made the necessary application to amend its pleadings, nor adduced essential evidence to support the argument.

b) Trek has raised the estoppel argument far too late to be permitted to rectify these failings.

ii) Substantive objections:

a) The issue considered by the Singapore courts was not the issue which arose in the UK Patent Office or on this appeal.

b) Trek put forward different arguments on construction in Singapore with the result that the Singapore courts have reached a conclusion as to the proper interpretation of the Singapore patent which is inconsistent with the construction of the application for which Trek itself is contending in this jurisdiction.

c) The judgment of the Singapore Court of Appeal is poorly reasoned and inconsistent with the fully reasoned decision of the Hearing Officer. This constitutes a special reason for not recognising any issue estoppel which might otherwise arise.

Procedural objections

73. It is well established that the fact that a judgment may be overturned on appeal is irrelevant when it comes to determining whether it is "final and conclusive" for the purposes of establishing an estoppel: see e.g. Nouvion v Freeman (1889) 15 App. Cas. 1 (at pages 9-10 per Lord Herschell, and at page 13 per Lord Watson). This is a proposition I understood Trek to accept. Mr Justice Lai Kew Chai gave his decision in the High Court of Singapore on 12 May 2005, that is to say before the conclusion of the hearing before the Hearing Officer which, it will be recalled, resumed in June 2005. Accordingly, Trek could have raised the issue estoppel argument at that hearing but chose not to do so.
74. Moreover, the Singapore Court of Appeal gave its decision on 30 December 2005, some 10 months before the Hearing Officer gave his decision. Once again, therefore, Trek had an opportunity to raise the argument before the conclusion of the Patent Office proceedings. I recognise that Trek may have anticipated the decision would be given rather sooner than it was. Nevertheless it took no steps to attempt to take the point until 6 December 2006, when it filed its grounds of appeal.
75. In these circumstances M-Systems says that it is simply too late to take the point now on appeal. Moreover, Trek has not, even now, made any attempt to amend its counterstatement to plead the estoppel or particularise the relevant foreign law; nor has it adduced any evidence in support.
76. In my judgment these are material failures. If a party intends to rely upon an estoppel he should plead it as soon as possible. That avoids the risk of the other party being taken by surprise and the injustice that may occasion. Furthermore, the general rule is that a party who wishes to rely upon foreign law must plead it in the same way as any other fact. It is of course true that if a party declines to do so then the court may decide a case containing foreign elements as though it were a purely domestic English case, on the presumption that, absent evidence to the contrary, foreign law is to be treated as the same as English law. That presumption may be entirely appropriate where it is evident or may be presumed that the parties are content to proceed on that basis. However, the presumption should not be allowed to work an injustice. In the present case, as will be seen, there is a substantial issue between the parties as to whether the law of Singapore is the same as the law of England when it comes to the interpretation of a patent specification. In these circumstances it would, in my judgment, be wrong for this court simply to apply the presumption, particularly since Trek has served no pleading and acknowledged only in October of this year that the issue decided in Singapore was one of mixed fact and law.
77. The injustice faced by M-Systems is compounded by the fact that the estoppel point has been raised for the first time on appeal. As the Court of Appeal explained in Jones v MBNA International Bank (unreported, 30 June 2000), in general the court expects a party to advance its whole case at trial. In the interests of fairness an appeal court should be slow to allow new points which were available to be taken at trial, but which were not taken, to be advanced for the first time on appeal. Parties are entitled to know where they stand. They are entitled to know what the issues are. Upon this will depend many decisions, including how they choose to run the case at trial.
78. I accept that Trek did not know of the decision of the Singapore Court of Appeal at the close of the hearing. But it did know of the decision of the High Court of Singapore and that was enough to plead the issue estoppel. It must also have known that that decision was the subject of an appeal and it knew of the decision of the Singapore Court of Appeal before the Hearing Officer gave his decision. In my judgment Trek could and should have raised the issue estoppel point before the Hearing Officer and it has no proper justification for failing to so so. Further, as M-Systems explained to me during the course of the hearing, had it been raised then it is likely M-Systems would have conducted the case before the Hearing Officer differently. In particular, it would have given serious consideration to cross examining Trek's expert, Professor Kim, far more extensively on the issue of obviousness than it did. M-Systems frankly accepted that it could not say for sure what it would have done. However, I am quite satisfied that further cross examination would have been, at the least, a very real possibility and I believe that the failure to raise the estoppel point has caused M-Systems real prejudice.
79. For all these procedural reasons I have concluded that it would be unjust to allow Trek to rely upon the estoppel point on this appeal.

Substantive objections

80. The starting point is to consider the relevant statutory frameworks. By virtue of section 89 of the 1977 Act, the Hearing Officer was required to treat the application before him as an application for a patent under that Act. On the other hand, the Singapore courts had to apply the relevant Singapore statute. Specifically, under section 85(1) of the Singapore Patents Act:

"An international application for a patent (Singapore) for which a date of filing has been accorded under the patent Co-operation Treaty shall, subject to sections 86 and 87, be treated for the purposes of this Act as an application under this Act."

81. Thus the courts of the UK and of Singapore each apply their own law when construing international patent applications. Nevertheless, Trek submitted that this case is unusual in two ways:

i) the UK and Singapore proceedings turn on what was disclosed to the skilled addressee by identical text in the application; and

ii) in addressing that issue as part of its essential reasoning, the Singapore Court of Appeal explained that it was applying precisely the same law as applies in England.

82. The submission continued that because identity of issue is established on the face of the Singapore Court of Appeal's judgment, there is no need for expert evidence on the law of Singapore. It does not matter whether that issue is characterised as a question of law (because it is said to be one of construction), a mixed question of fact and law (the skilled person's understanding of the application against the factual matrix of his common general knowledge) or a technical question of fact (what the application in fact taught a person skilled in the field of technology addressed by the patent). That issue was specifically determined by the Singapore Court of Appeal.
83. Attractively though this submission was presented, I find myself unable to accept it. The Singapore courts do not consider they are applying UK patent law although they will certainly consider submissions based upon it. As the Singapore Court of Appeal explained in Re Platts-Mills Mark Fortescue QC [2006] 1 SLR 510 at paragraph [16]:

"The mere fact that there is no local decision on a particular issue does not, however, per se turn that issue into a complex or difficult one: Re Howe Martin Russell Thomas QC. In the present context, the issue of amending a patent after it has been granted has been previously decided by the UK courts and there is a whole body of foreign case law in this area. It would therefore be open to local counsel to submit on the relevant foreign case law and for our courts to then decide whether such case law should apply in Singapore."

84. Similarly Mr Justice Lai Kew Chai said at paragraph [141] of his decision:

"Having considered these latest developments in the UK and the EPO, I am unable to accept that they add any real significance to the outcome of the case. The principle of territoriality allows this court to independently determine the outcome of the Patent and its amendments. The court is aware that patent practice, procedure and prosecutions vary from country to country. Trek should be expected to take whatever decisions necessary to secure patent rights in each country that it requires protection."

85. I must now consider the decision of the Singapore Court of Appeal. The court identified the issues it had to determine at paragraph [11] as being first, whether the ThumbDrive device was within the ambit of the patent; second, whether the amendments proposed by Trek to the patent were properly allowed during the trial; and third, whether the patent was invalid for lack of novelty and inventiveness.
86. I would note at the outset that the particular paragraph upon which Trek relies to found its estoppel, namely paragraph [22], falls within the consideration by the Court of Appeal of the first issue. This is of some significance. Whilst the question of whether the ThumbDrive fell within the scope of the Singapore patent might have been relevant to the issues rising in Singapore, it was and is of no relevance to any issue requiring determination in the UK, for two reasons. First, it was not made available until after the filing of the application. Secondly, and more importantly, it was not disputed before me that devices which have no cable fall within the scope of the claims of the application. But this does not mean to say they were disclosed by it. As I reiterated in European Central Bank, not everything which falls within the scope of the claims is necessarily disclosed and, as a matter of UK law, it is important to maintain this distinction. However, as I shall explain, it is not clear to me that the law of Singapore is, in this respect, the same.
87. The Court addressed the first issue in paragraphs [12] to [22] of its decision. It began in paragraphs [12] and [13] with an observation that, when Trek applied for the Singapore patent on 21 February 2000, it had already invented the ThumbDrive device, a matter which it considered should be "borne in mind". The Court then recorded, with apparent approval, a submission made by Trek's counsel that it was most unlikely that, having invented the ThumbDrive device, Trek would fail to describe its essential features in a patent application that was intended to protect its rights in relation to this device. This is very different to the approach mandated by UK law which prohibits a consideration of the disclosure with any such preconception. But perhaps more importantly, it indicates an elision of the two different concepts of scope of claims and disclosure.
88. In paragraph [14] of its decision, the Court cited the well known UK authorities on the question of interpretation, concluding with Kirin-Amgen and a reference to the Protocol to Article 69 of the European Patent Convention, which is, I would add, primarily concerned with the scope of protection, before turning to the original claims of the application. It then observed at paragraph [16]:

"It is evident that the features of the ThumbDrive device are adequately covered in the claims."

89. After citing passages of the Singapore patent outlining the disadvantages of the prior art and the advantage of the invention, the Court recited in paragraphs [18] and [19] a contention apparently advanced by M-Systems that the invention required a cable, a contention which the Court proceeded to reject because of the presence in the market of the Aladdin MacHASP device. But this device was never established to be part of the common general knowledge in the UK proceedings; nor is it referred to in the Singapore patent. Once again the Court took into consideration material which, as a matter of UK law, is not a legitimate aid to interpretation.
90. After citing aspects of evidence from the parties' respective experts, the Court then expressed its conclusion in paragraph [22] of the decision:

"In our view, the trial Judge …….. rightly accepted that the patent discloses a unitary data storage device with an integrated USB plug to enable direct connection to the USB points of computers without the need for a captive or detachable cable. That being the case, appellant's argument that the ThumbDrive is not a device protected by the patent is clearly unacceptable."

91. Here the Court was primarily addressing the question of scope of claims and, in the light of its earlier reasoning, it is far from clear to me that it ever specifically considered whether the Singapore patent disclosed an integral device without a cable, or whether it merely encompassed it.
92. Turning to the second issue, concerning the allowability of certain amendments (which correspond to those sought by Trek pre-grant in the UK) the Court summarised the effect of section 84(3) of the Singapore Patents Act as prohibiting amendments which would result in the specification disclosing additional matter. It then recited the test set out in Bonzel, which it described as "helpful". The rival submissions are set out in paragraph [23]:

"The appellants contended that the amendments added subject matter. On the other hand Trek contended that its proposed amendments, which concerned claims 1 and 8, were properly allowable because they fell within the four corners of the patent."

93. These once again reveal an elision by Trek of the concepts of scope of claim and disclosure and, without any further reasoning, its submission was accepted by the Court at paragraph [28] of its decision.
94. To summarise, I reject the submission advanced by Trek that it is apparent from the decision of the Singapore Court of Appeal that the law it applied was identical to UK law. To the contrary, the reasoning of the Court suggests that Singapore law may not distinguish between the concepts of disclosure and scope of claim. Moreover Singapore law permits matters to be taken into account in considering the interpretation of a patent which would not be admissible as a matter of UK law. For these reasons I am not satisfied that the Singapore Court of Appeal was applying precisely the same law as applies in England or that there is an identity of issues.
95. I can deal with the second and third points more shortly. The decision of the Court of Appeal of Singapore reveals that Trek argued that the Singapore patent disclosed and claimed an integral, unitary device. By contrast, in the UK Trek recognised Yao as a novelty destroying reference although it had a dual interface memory card which could be removed from the rest of the device – called the adapter module. Hence, M-Systems argued, Trek has adopted inconsistent positions in the two jurisdictions. In my judgment this is further support for the conclusions I have reached. I do not believe it would be just to allow Trek to adopt different positions in Singapore and the UK whilst constraining M-Systems to respect the decision of the Singapore Court of Appeal.
96. Finally, M-Systems invite me to disregard the decision of the Singapore Court of Appeal on the grounds it is poorly reasoned. I decline to do so. I have no evidence before me as to the law of Singapore and in all the circumstances it is not appropriate for me to comment upon the quality of the reasoning of that decision.
97. In conclusion and for the procedural and substantive reasons I have given, I reject the submission that M-Sytems is bound by any estoppel.

Discretion to amend

98. I have found the proposed amendment is not allowable because it would result in the specification disclosing additional matter. However, the Hearing Officer also rejected it for a further reason, namely that he had not been provided sufficient information to permit him to allow the amendment in the exercise of his discretion.
99. On 13 December 2007, after the conclusion of the appeal hearing before me, the Patents Act 2004 came into force. Section 2(5) amends section 75 of the 1977 Act and reads:

"(5) In section 75 of that Act (amendment in infringement or revocation proceedings), after subsection (4) there is inserted-

"(5) In considering whether or not to allow an amendment proposed under this section, the court or the comptroller shall have regard to any relevant principles applicable under the European Patent Convention.""

100. Section 75(5) applies to all patents (whether UK patents or European patents (UK)) and whether granted before or after 13 December 2007 and it undoubtedly radically alters the approach to be adopted to amendment applications. However, this is an appeal by way of review and not rehearing. Accordingly, it cannot possibly have any impact upon the outcome of this appeal unless I conclude that, under the old law, the Hearing Officer wrongly exercised his discretion so that the exercise of that discretion must be set aside.
101. On 24 June 2004, Trek served a Statement of Reasons in which it set out its reasons for seeking the amendment. First, it sought to enhance the clarity of the claim and distinguish the prior art by specifying that the invention "is directly introducible into and removable from" a USB socket of a computer. Secondly, it sought to clarify the distinction of the invention from prior art "such as" Aladdin MacHASP (which, I would note, had already been achieved by the pre-grant amendment). Thirdly, and importantly, it sought to disclaim Yao.
102. The Statement of Reasons included a section entitled "Exercise of Discretion". Here Trek stated that it had "recently become aware" of Yao but provided no other details. Yao, it will be recalled, was published on 23 May 2001, some six months before the pre-grant amendment dated 10 December 2002 and over two years before the grant of the Patent. Trek also noted that in the course of prosecuting the application and other corresponding applications, and in the course of litigation in Singapore, it had had drawn to its attention a considerable body of prior art, which it proceeded to list. But it nowhere explained its relevance. Nor was the application supported by any evidence.
103. Faced with this dearth of material the Hearing Officer concluded he would have had no alternative but to refuse the application to amend even if he had otherwise been disposed to allow it. His reasoning is contained in paragraphs [107] to [112] of his decision:

"107. Mr. Platts-Mills argued that there is no basis for me to exercise discretion to allow the amendment because Trek has failed to provide any information relevant to the exercise of discretion. In his view Trek has not set out the proper reasons for seeking the amendment and it has not identified all of the prior art which it says gives rise to the need to amend. Moreover, according to Mr. Platts-Mills, Trek's conduct, in relation to the disclosure and evidence provided, has been positively misleading. On this latter point he submitted that Trek sought to muddy the water with its long list of other prior art.

108. Mr. Prescott was unwilling to assist me by putting in any evidence to support the request to amend because in his view this evidence would inevitably turn on when Trek first realised that the claims needed amending and that would inevitably turn on what advice Trek received from its patent attorney and counsel. This was a point of principle for Mr. Prescott. He regarded this element of the law anachronistic and not compliant with the Human Rights Act 1998. Mr. Prescott did not develop this argument but I am conscious of and feel bound by the considerable body of law that requires a patentee to put forward the correct reasons and to explain anything that requires explanation when seeking discretion. I accept that following Oxford Gene Technology there is no need to disclose privileged documents and that it would be wrong for me to draw any adverse inference from the maintenance of privilege. However, it seems to me that Trek could have put in evidence to assist me without disclosing privileged information but it has decided not to

109. Thus, all I have to go on is the information contained in Trek's statement of reasons for seeking the amendment and my decision on whether to exercise discretion in Trek's favour will depend upon what I can glean from this statement, although as Mr. Platts-Mills pointed out this statement has no evidential value.

110. Considering first the reason or reasons for the amendment, what I have from Trek are statements that the amendment is required (a) to enhance the clarity of the distinctions between the claimed portable data storage device and the prior art, such as a device described as the "Aladdin MacHASP device" and (b) to overcome section 2(3) prior art in the form of Yao. It seems that the first reason goes wider than the "Aladdin MacHASP device" in that this device is given as a mere example of the prior art which the amendment seeks to distinguish. There is the long list of other prior art, provided by Trek, but it was not suggested to me that the listed prior art, with the possible exception of an item relating to advertising material for "Aladdin MacHASP USB" (sic) software protection keys, constitutes the prior art which the requested amendment seeks to address. Therefore, the reasons given are incomplete and I am also at a loss in the absence of any explanation to understand Trek's purpose for providing the extensive list of other prior art in its statement of reasons

111. What then of the facts relevant to the reasons? I have been told nothing concrete. For example, I do not know when Trek first became aware of the need to distinguish its claimed device from the Aladdin MacHASP device and from the disclosure in Yao, although I note the statement of reason states that Trek had "recently" become aware of this European patent, published in May 2001. Moreover, the fact that the amendment was requested approximately ten months after the patent was granted does not in my view help Trek or excuse it from the need to disclose those facts which are relevant to the exercise of discretion. Yao was published on 23 May 2001 and so it is possible that Trek could have been aware of it even before the patent was granted. Indeed I note that the disclaimer itself states generally that Trek became aware of Yao sometime after filing the application.

112. Mr. Platts-Mills anticipated that I would be at a complete loss on how I would be able to exercise my discretion. He was correct. I cannot even begin to assess, for example, whether the amendment was sought promptly in the public interest or whether there was a culpable delay. It follows that I am unable to exercise discretion to allow the amendment because Trek has not discharged the onus upon it to establish that the amendments should be allowed. I should add for avoidance of doubt that whilst I have some sympathy for the point made by Mr. Platts-Mills that the list of other prior art provided by Trek muddies the water, Trek's conduct on this matter is not such that I would have refused discretion on that ground alone."

104. On this appeal, Trek submitted that the Hearing Officer here fell into fundamental error. Trek recognised that the old law conferred on the court a discretion to allow an amendment but argued that it could never be a judicial exercise of that discretion to refuse permission to amend a patent unless the patentee disclosed when he first became aware of the need to do so, because that would be tantamount to demanding that he disclose the upshot of the privileged advice he had received together with its date.
105. I accept there was no obligation upon a patentee in amendment proceedings to waive privilege in any document and that no adverse inference could be drawn against him if he declined to do so. This was made clear by the Court of Appeal in Oxford Gene Technology Ltd v Affymetrix [2001] RPC 310. However, subject to that qualification, he was still required to place before the court the true reasons for the amendment and any facts of which he was aware which were relevant to the exercise of the discretion for those reasons. In this case they were not. As the Hearing Officer explained, his difficulty was that Trek put forward no facts at all; nor did it claim privilege in any particular communication. Instead it took its stand that, as a matter of principle, it was not required to disclose anything. As a result, the Hearing Officer was given nothing upon which to exercise his discretion. In these circumstances I do not think he can be criticised for reaching the conclusion he did and for refusing to allow the amendments to claim 1. His refusal to allow the amendment to introduce new claims 7 and 8 necessarily followed.

Obviousness

106. M-Systems argued that it was obvious to remove or restrict the length of cable used in devices such as Estakhri and Fujifilm SM-R1. The Hearing Officer declined to consider this issue and made no findings in relation to it. In the light of this judgment it is not necessary for me to consider this issue and in all the circumstances I prefer not to do so.

Conclusion

107. This appeal must be dismissed. I will hear argument as to the form of order if it cannot be agreed.