BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (CHD)
Strand, London, WC2A 2LL
B e f o r e :
SITTING AS A DEPUTY HIGH COURT JUDGE
| (1) ANAN KASEI CO. LTD
(2) RHODIA OPERATIONS S.A.S
|- and -
|MOLYCORP CHEMICALS & OXIDES (EUROPE) LTD
PIERS ACLAND QC and ADAM GAMSA (instructed by Bird & Bird LLP) for the Defendant
Hearing dates: 16, 17, 18, 19 and 24 January 2018
Crown Copyright ©
Roger Wyand QC, Deputy High Court Judge :
The Skilled Person
"I consider that the Skilled Person would be a graduate chemist with experience in the design, preparation and characterisation of metal oxide supported catalysts. He would have several years' professional experience (most likely in industry) in the synthesis and characterisation of catalytic materials either at a catalyst manufacturer, an oil company or a chemicals/materials manufacturer. The Skilled Person would have knowledge of chemistry, the synthesis of metal oxides and catalysts, the characterisation of materials in general and catalysts in particular and also how these materials (metal oxides and catalysts) are applied in their particular sector of industry."
"As discussed more fully below, the Patent is principally directed to the use of ceric oxide for purifying vehicle exhaust gas. Although the Patent explains (in ) that the invention relates to "ceric oxide that has excellent heat resistance useful for catalysts, functional ceramics, solid electrolyte for fuel cells, and the like, and particularly suitable for use as a co-catalyst material in catalysts for purifying vehicle exhaust gas…" the skilled person would understand it to be concerned principally with those applications of ceric oxide where its oxygen storage capacity and thermal stability at high temperatures are important. Rhodia contends that the skilled person would recognise that the use to which the parameters of the Patent were relevant is vehicle exhaust catalysts. Individuals not working in the field of vehicle exhausts will be less interested in the Patent and the prior art than those working in the field."
"In the case of obviousness in view of the state of the art, a key question is generally "what problem was the patentee trying to solve?" That leads one in turn to consider the art in which the problem in fact lay. It is the notional team in that art which is the relevant team making up the person skilled in the art. …"
The skilled person, if he was in automotive
12 might know, but the skilled person making all the other
13 catalysts, which there are a lot of those people as well
14 interested, I do not think they would be aware or they would
15 be able to pick out a number after calcination at 900.
16 Q. Because this patent is not really directed at them?
17 A. In their use of ceria and their preparation of ceria, they
18 would never have taken it anywhere near 900.
19 Q. Yes. So this patent is not really directed then -- claim 1 of
20 this patent is to calcination at 900, and that is why this
21 patent is not really directed at those sort of ----
22 A. They would not be interested in that, no.
The Witness of Fact
The Common General Knowledge – The Sources
4.9 I would note that industrial chemists working on well-defined projects do not tend to look far beyond their own immediate areas. Therefore they frequently miss advances in other areas that later prove to be key enabling technologies in their own areas.
4.54 A person working in an area of technology that utilises catalysts will necessarily have a specific area of interest focussing on a particular set of catalytic reactions used in their area of technology.
4.55 As such, publications and other information outside a skilled person's area of interest or involving different reactions will be of little relevance to them. In particular, publications where the reaction conditions, catalyst material, and/or type of reaction being catalysed differ to those used in the skilled person's area of interest are unlikely to be considered.
4.56 For example, catalyst technologists working on automotive exhaust catalysts will have little interest in FT catalysts, and both these would be completely uninterested in olefin polymerisation catalysts. The reactions to be catalysed and the reactor types in which they must work are very different with limited overlap in interests.
The Common General Knowledge – properties and applications of cerium oxide
i) Ceria is used in a number of catalytic applications (i) as a catalyst itself, (ii) to stabilise other metal oxides and dispersed metal particles against sintering, and (iii) to store and release oxygen;
ii) The use of essentially pure ceric oxides suffered from poor thermal stability and by 2001 mixed oxides and cerium zirconium mixed oxides in particular, were used as the oxygen storage co-catalyst in catalytic converters for petrol vehicles because of the high temperatures involved;
iii) Attempts had been made to improve the resistance to sintering of pure ceric oxide by altering its method of preparation or post-preparation but the addition of other oxides was known to be the most effective way to reduce sintering;
iv) Mixed oxides could have a lower surface area than pure ceric oxide at lower temperatures;
v) Other dopants such as silica had also been used to give thermal stability to high surface area oxides;
vi) The most commercially important application of ceric oxide at the priority date was as a component of exhaust catalysts in the form of a ceria/zirconia mixed oxide;
vii) Ceric oxides were also used in fluidised catalytic cracking in which SO2 is converted to H2S and in ethylbenzene dehydrogenation in the production of styrene. In these applications thermal stability above 8000 C was not particularly important.
The Common General Knowledge – Metal Ion Hydrolysis and 'Free Acidity'
" It is therefore an object of the present invention to provide ceric oxide that has excellent heat resistance and oxygen absorbing and desorbing capability useful as a co-catalyst material suitable for purifying exhaust gas, that is capable of maintaining a large specific surface area even in use in a high temperature environment, yet capable of exhibiting high oxygen absorbing and desorbing capability also in a lower temperature range, a method for preparing such ceric oxide, and a catalyst for purifying exhaust gas utilizing such ceric oxide.
 ….Thus the inventors, have made intensive efforts to increase the crystallinity of the precursor, and found out a reaction method for improving the crystallinity of the precursor at a high temperature under an oxidizing atmosphere, to thereby complete the invention."
4 Q. Do you agree that the characteristics of the materials claimed
5 in claims 1 to 5 would have been of considerable interest to
6 the skilled person at the priority date?
7 A. Yes.
8 Q. Because up until then the skilled person would have had no
9 idea how to make ceric oxide which retained such a high
10 surface area following calcination at high temperatures
11 without the addition of a dopant?
12 A. At that time, probably, yes.
13 Q. So, this was a significant contribution to the art?
14 A. Yes.
i) providing a cerium solution not less than 90 mol% of which cerium ions are tetravalent;
ii) holding said cerium solution prepared in step (a) at 60 to 220°C under heating;
iii) cooling said heated cerium solution;
iv) adding a precipitant to said cooled cerium solution so as to make the pH of the solution not lower than 7, to thereby obtain a precipitate; and
v) calcining said precipitate.
 A ceric nitrate solution not less than 90 mol% cerium ions of which were tetravalent was taken so that 20g of cerium in terms of cerium oxide was contained, and the total volume was adjusted to 1 liter with pure water. Here, the concentration in terms of cerium oxide was 20 g/L. The solution was placed in an autoclave reactor, heated to 100 °C, held at this temperature for 24 hours, and allowed to cool in an atmosphere to room temperature.
 Then an aqueous ammonia solution was added to neutralize to pH 8 to obtain cerium oxide hydrate in the form of a slurry. The slurry was then subjected to solid-liquid separation with a Nutsche filter, followed by separation of the mother liquor, to obtain a filter cake. The filter cake was calcined at 300 °C for 10 hours in a box-type electric furnace under air atmosphere to obtain ceric oxide, which was then ground in a mortar into ceric oxide powder (referred to as powder (A) hereinbelow). The specific surface area of powder (A) was measured by the BET method. Further, the specific surface areas of powder (A) after calcination at 800 °C for 2 hours, at 900 °C for 5 hours, and at 1000 °C for 5 hours, respectively, were measured by the BET method. The tap density and total pore volume of powder (A) were also measured. Further, powder (A) was calcined at 900 °C for 5 hours, and then the OSC of the resulting ceric oxide powder was measured at 400 °C. The results of these measurements are shown in Table 1.
 Powder (A) was calcined at 1000 °C for 5 hours, and then the TPR measurement was made. The results are shown in Fig. 1. Further, from the TPR curve taken after calcination at 1000 °C for 5 hours, the ratio of the area (S1) defined by the baseline and the TPR curve in the temperature range of 200 to 600 °C to the area (S2) defined by the baseline and the TPR curve in the temperature range of 600 to 1000 °C, i.e., the S1/S2 ratio, was determined. The results are shown in Table 1."
Obviousness – The Law
(1) (a) Identify the notional "person skilled in the art"
(1) (b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
Obviousness – Applying the Pozzoli test
The Prior Art Relied On
"Cerium oxide and zirconium oxide are known compounds
that are particularly useful constituents, either alone or in
combination, in a wide variety of catalyst compositions, e.g.,
multifunctional catalyst compositions, especially catalysts
suited for the treatment or conversion of exhaust gases
emanating from internal combustion engines."
"Accordingly, a major object of the present invention is the provision of novel Ce02/Zr02 mixed oxides of the solid solution type, having large specific surface areas, and this over a wide range of compositions, in particular at high contents of zirconium.
Another object of the present invention is the provision of such novel Ce02/Zr02 mixed oxides which retain a large specific surface area even after calcination(s) at elevated temperatures.
Still another object of this invention is the provision of particular synthetic technique for the preparation of said novel Ce02/Zr02 mixed oxides."
i) providing a mixture, in aqueous solution, in the required stoichiometric proportions, of soluble compounds of cerium and of zirconium, and optionally of yttrium;
ii) heating the mixture thus formulated;
iii) recovering the reaction product thus obtained; and
iv) if appropriate, calcining the reaction product thus recovered.
i) Column 6, lines 18 to 22 describe the optional addition of aqueous ammonia solution to permit the recovery yields to be increased.
ii) Column 6, lines 23 to 26 describe the option of repeating the heating stage one or more times in cycles of thermal treatments. The product is recovered, optionally washed and dried in air between 80 and 350°C until a constant weight is attained.
iii) An optional calcination step is described in column 6, lines 34 to 46, with conditions depending on the subsequent application of the material, taking account of the fact that the specific surface area of the product is so much the lower because the temperature of calcination employed is higher.
"8.17… Examples 1 and 3 involve neutralisation of the initial free acidity of the cerium (IV) solution and the addition of further base according to a formula which gives "a ratio of neutralisation, r" not exceeding 0.5… In examples 2, 4 and 5 the initial free acidity is not neutralised and no further base is added at this stage.
8.18. Example 1 involves a single autoclave step at 160ºC for 4 hours followed by filtration, washing with ammonia and drying at 80ºC.
8.19. Examples 2 and 3 involve a first autoclave step at 150ºC for 4 hours followed by addition of base to pH 9.5, recovery of the product by filtration, re-suspension of the solid product in water, heating to 100ºC for 1 hour and filtering off the product.
8.20. Examples 4 and 5 involve a first heating of the solution to 100ºC for 2 and a half hours, a cooling step and addition of base to pH 9 to 9.5 followed by a second heating step at 100ºC for 1 hour, cooling and recovery of product by filtration."
"[In Hallen v Brabantia  RPC 195] the prior art disclosed a type of corkscrew to which PTFE (the well-known non-stick plastic) had been applied to make it easier to penetrate the cork. It was obvious that the same advantage would apply to all corkscrews. What was not foreseeable was that there was an extra advantage for a "self-puller" type of corkscrew. But a PTFE coated self-puller was obvious nonetheless."
n1 is the number of moles of cerium added to water, n2 is the number of moles of OH- ions required to neutralise the initial free acidity contributed by the solution of salt of cerium IV and n3 is the total number of moles of OH- contributed by the addition of the base. It explains that for total precipitation of the hydroxide species Ce(OH)4, r=4. Thus n2 must be referring to the acidity coming from any additional acid and cannot be acidity coming from hydrolysis of the cerium ions.
i) That the Patent is directed to producing pure ceria with the properties previously only obtained using mixed oxides;
ii) That the one example in Chopin directed to producing pure ceria does not give the concentration of the starting solution and does not identify the relevant properties of the ceria produced;
iii) The attempt by Neo to rely on the results obtained in the examples of the Patent to establish that the method of Chopin would produce ceria with the required properties fails because the evidence fails to establish that the skilled person would have adapted the method of Chopin to fall within the parameters of the examples in the Patent;
iv) The skilled addressee in the automotive catalyst field would not have seen Chopin as teaching the possibility of obtaining improved thermal stability for ceria but only for mixed oxides;
v) The skilled addressee in the more general catalysis field would not have been interested in Chopin as it was directed to obtaining improved thermal stability for mixed oxides and, although it used the method to produce ceria without other oxides, it gave no indication that the resulting product was of any interest save as a means to identify the crystal structure of the mixed oxides of the invention.
Insufficiency – Consisting Essentially of Ceric Oxide
1.2.3 As regards the wording "consisting essentially of", which is also part of claim 1, it was not contained in any of the granted claims. Therefore, the alleged lack of clarity of this term raised by Appellant II can be objected in opposition appeal proceedings.
However, as reported in the Case Law of the Boards of Appeal of the EPO, 6th edition (2010), II.B.5.2, referring to decisions T 759/91 and T 522/91, the wording "consisting essentially of", at variance with the wording "comprising substantially", has a defined meaning because of the unequivocal character of the words "consisting of"; therefore, the use of the unequivocal words "consisting of" in combination with "essentially" has been found to solve all interpretation problems of the unclear claims examined in such previous cases. The cited decisions T 759/91 (point 2.2. of the reasons) and T 522/91 (point 2.2. of the reasons) both refer to the decision T 472/88, wherein it was decided that the term "consisting essentially of" was clear and allowed the presence of other components in a claimed composition in addition to the components mandatory in the claim, provided that the essential characteristics of the claimed composition are not materially affected by their presence (see point 3 of the reasons).
The Board agrees with these previous decisions. Therefore, even though the word "essentially" does not identify precisely the amounts of additional components which could still be contained in the claimed viscoelastic fluid, the wording "consisting essentially of" allows in the present case that the composition of claim 1, which must be viscoelastic, consists of the mandatory components listed in the claims and can contain additionally only other components which do not materially affect the essential viscoelastic characteristics of the composition, e.g. minor amounts of impurities as submitted by Appellant I during oral proceedings.
"124. The claim appeared to assume that all uEPOs had effectively the same molecular weight, irrespective of source and method of isolation. This had been shown not to be the case. So which uEPO did the claim require to be used for the test? Simply to use the first uEPO which came to hand would turn the claim into a lottery. On the other hand, it would be burdensome to have to work one's way through several specimens of uEPO (which were, as I mentioned at the beginning of my speech, extremely hard to come by) and even then the result would be inconclusive because non constat that some untried specimen did not have a different molecular weight.
125. The judge decided that the lack of clarity made the specification insufficient. It did not merely throw up the possibility of doubtful cases but made it impossible to determine in any case whether the product fell within the claim. The invention was not disclosed "clearly enough and completely enough for it to be performed by a person skilled in the art": section 72(1)(c).
126. The Court of Appeal disagreed. They said that it was sufficient that some uEPO could be tested against eEPO by SDS-PAGE. The fact that it did not specify which uEPO and that choosing one uEPO would bring the product within the claim and another would not was "lack of clarity dressed up to look like insufficiency." For my part, I do not think that can be right. If the claim says that you must use an acid, and there is nothing in the specification or context to tell you which acid, and the invention will work with some acids but not with others but finding out which ones work will need extensive experiments, then that in my opinion is not merely lack of clarity; it is insufficiency. The lack of clarity does not merely create a fuzzy boundary between that which will work and that which will not. It makes it impossible to work the invention at all until one has found out what ingredient is needed."
Insufficiency – Biogen Free Beer
121 I recently reviewed the authorities on this topic, and in particular the decisions of the House of Lords in Biogen Inc v Medeva Plc  R.P.C. 49 ; Kirin-Amgen v Hoechst and Generics (UK) Ltd v H. Lundbeck A/S  UKHL 12,  RPC 13 , at length in MedImmune Ltd v Novartis Pharmaceuticals UK Ltd  EWHC 1669 (Pat) at –. For convenience, I shall briefly repeat the main points of that analysis.
122 The main points which I drew from Lord Hoffmann's opinion in Biogen v Medeva were as follows:
(i) A claim will be invalid for insufficiency if the breadth of the claim exceeds the technical contribution to the art made by the invention. It follows that it is not necessarily enough to disclose one way of performing the invention in the specification.
(ii) The breadth of the claim will exceed the technical contribution if the claim covers ways of achieving the desired result which owe nothing to the patent or any principle it discloses. Two classes of this are where the patent claims results which it does not enable, such as making a wider class of products when it enables only one and discloses no principle to enable the others to be made, and where the patent claims every way of achieving a result when it enables only one way and it is possible to envisage other ways of achieving that result which make no use of the invention.
(iii) The patent in Biogen v Medeva was invalid because it was an example of the second class of objectionable claim.
123 The key point which emerges from Lord Hoffmann's opinion in Kirin-Amgen v Hoechst is his explanation at  of what he had meant by "a principle of general application" in Biogen v Medeva :
"In my opinion there is nothing difficult or mysterious about it. It simply means an element of the claim which is stated in general terms. Such a claim is sufficiently enabled if one can reasonably expect the invention to work with anything which falls within the general term."
124 I summarised the reasoning of the House in Generics v Lundbeck as follows:
(i) The House agreed with Lord Hoffmann in Biogen v Medeva that it was important for United Kingdom patent law to be aligned, so far as possible, with the jurisprudence of the EPO. Furthermore, the House also agreed with Lord Hoffmann that the statement of principle which he quoted from Exxon/ Fuel oils correctly stated the law.
(ii) The House considered that the instant case was to be distinguished from Biogen v Medeva because it was concerned with a claim to a single chemical compound whereas Biogen v Medeva concerned a product-by-process claim of broad scope.
(iii) It was a mistake to equate the technical contribution of the claim with its inventive concept. In the instant case, the technical contribution made by claims 1 and 3 was the product, and not the process by which it was made, even though the inventive step lay in finding a way to make the product. It followed that the breadth of the claim did not exceed the technical contribution which the invention made to the art.
"61 So, for example, if a man finds a particular way of making a new substance which is 10 times harder than diamond, he cannot just claim "a substance which is 10 times harder than diamond." He can claim his particular method and he can claim the actual new substance produced by his method, either by specifying its composition and structure or, if that cannot be done, by reference to the method (see Kirin-Amgen at [90-91]) but no more. The reason he cannot claim more is that he has not enabled more – he has claimed the entire class of products which have the known desirable properties yet he has only enabled one member of that class. Such a case is to be contrasted with the present where the desirable end is indeed fully enabled – that which makes it desirable forms no part of the claim limitation."
Biogen – Numerical Limits
Application to Amend
"none of the other constituents listed on the certificates of analysis are present at a level that would have a significant effect on the specific surface area of the product when measured after calcining it at 900°C for 5 hours. In particular, the amount of silicon in the Commercial Samples is less than 0.005% for C100 and less than 0.02% for C100N. These amounts of silicon are insignificant and consistent with silicon being incorporated into the Material from the original source Minerals."