Neutral Citation Number: [2018] EWHC 1845 (Pat)
Case No: HP-2016-000056

IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT

Royal Courts of Justice
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
19/07/2018

B e f o r e :

MR JUSTICE BIRSS
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Between:

(1) Liqwd Inc
(2) Olaplex LLC

Claimants
– and –

(1) L’ORÉAL (UK) Limited
(2) L’ORÉAL SA

Defendants

____________________


Iain Purvis QC and Katherine Moggridge (instructed by Hogan Lovells) for the Claimants
Justin Turner QC and Mark Chacksfield (instructed by Baker McKenzie) for the Defendants

Hearing dates: 9th July 2018

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HTML VERSION OF JUDGMENT APPROVED

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Crown Copyright ©

    Mr Justice Birss :

  1. This is a patent dispute about hair care products. After a trial which ran from 24th April to 2nd May 2018 judgment was handed down on 11th June 2018 ([2018] EWHC 1394 (Pat)) in favour of the patentee. In that judgment, although I found claims 1-10 were invalid, claim 11 of the patent (as amended) was valid and was infringed by L’Oréal’s Smartbond product. In this judgment the same abbreviations will be used.
  2. L’Oréal has now brought an application to admit further evidence, reopen the trial and decide one of the issues afresh taking into account the new evidence. The new evidence is a third report of Professor Law, one of the expert witnesses relied on by L’Oréal for the trial. Professor Law’s third report sets out the results of an experiment he conducted in June 2018 after the judgment was handed down. In the report the professor also explains his opinions about the significance of the result of that experiment. L’Oréal submits that the evidence proves that the patent (and including claim 11) is invalid and the decision therefore should be reversed. L’Oréal also submits that this material is evidence which was not available to it before the trial. L’Oréal contends that the applicable legal principle is the one set out in In Re L (Children) [2013] UKSC 8, namely that the discretion to be exercised when deciding whether to admit the evidence and embark on redeciding an issue already decided is governed by the overriding objective in CPR r1. It contends that at the heart of the overriding objective is the idea that justice requires the court to get the right answer; and this evidence shows that the right answer is that L’Oréal ought to have won; so it should be admitted and the outcome reversed. Whereas earlier cases had identified a need for exceptional circumstances before an application like this should be allowed, L’Oréal submits that that is no longer the law.
  3. L’Oréal seeks an order for disclosure to be given by Olaplex on three related topics and submits that once that disclosure has been given, the application to adduce the fresh evidence can be decided. So at least conceptually L’Oréal envisages three hearings will take place: (a) this one, (b) a hearing to decide whether to admit the fresh evidence and give any consequential directions, and finally (c) a hearing, which may involve further oral evidence, at which the substantive issue will be redecided. The disclosure sought by L’Oréal fall into two classes. The first two classes (draft order para 2 (a)(i) and (ii)) relate to the underlying technical issues and would be relevant if the issue was to be reopened. The third class however relates to Olaplex’s knowledge about a particular point. That third class is not relevant to the underlying technical issue. L’Oréal seeks it on the footing that it is relevant to the decision whether to reopen the issue. Thus while disclosure classes (i) and (ii) are aimed at hearing (c) and could be provided in between hearings (b) and (c), disclosure class (iii) is sought in advance of hearing (b).
  4. Olaplex resist the application. Olaplex submit it is an abuse of process and should be struck out or dismissed now without further ado. Olaplex also submit that disclosure class (iii) should not be ordered at all. It is irrelevant to any question the court has to decide. So, like L’Oréal, Olaplex also envisage up to three hearings, (a) this one, (b) if I do not strike out L’Oréal’s application as an abuse now then a second hearing to decide the application, and (c) if I allow the application then a mini trial of the issue itself.
  5. It is manifest that each side is playing for high stakes. Coming into this hearing, both sides were seeking to use it as a kind of free hit to argue out the application but, if their submission is not accepted, come back and have another go on another occasion. L’Oréal’s position is that I should order disclosure from Olaplex before deciding the application. In the course of argument however it did accept that if I refuse the disclosure I can decide the application here and now. Olaplex want me to determine that the application is an abuse of process and so should be dismissed/struck out but they contend that if I am not prepared to determine it as abusive then I should not actually decide it today even if I were to reject L’Oréal’s application for disclosure in class (iii). When pressed, the reason counsel for Olaplex gave why the matter could not be decided today was because more evidence should be filed by L’Oréal relating to L’Oréal’s knowledge and decision making process during trial. Notably Olaplex do not say they wish to file any more evidence in response to what is before the court now, in addition to the witness statements from Mr Bennett of Hogan Lovells, Olaplex’s solicitor, which had already been filed.
  6. In order to deal with this I will start by examining the issue itself and at the same time explain how the new evidence relates to it. It will be necessary to look at what L’Oréal said at trial about the issue because the way L’Oréal now puts the matter in argument seemed to imply that aspects are new which were actually advanced at trial. Then I will consider the legal principles, the disclosure issues and then decide what to do.
  7. The issue itself

  8. Claim 11 in the form found to be valid and infringed is set out in the judgment. Briefly, it is a claim to the use of maleic acid as an active agent to reduce or prevent hair damage by bleaching products.
  9. One aspect of L’Oréal’s case at trial had been that the patent (and claim 11 in particular) lacked novelty over a s2(3) citation known as WO 768. The matter disclosed in WO 768 which L’Oréal contended would deprive claim 11 of novelty was Example 8. That example describes a test using a diamine bismaleate salt as the relevant active agent. There were two issues. First whether Example 8 fell within claim 11 as amended and second whether the relevant matter (i.e. what was disclosed in Example 8) was entitled to claim priority which came before the priority date of the patent in suit. That date was 15th May 2014. Olaplex contended that Example 8 was only entitled to a later priority and therefore did not count as prior art to the patent in suit and could not deprive claim 11 of novelty. L’Oréal contended Example 8 was entitled to priority earlier than 15th May 2014 and so did count as prior art.
  10. The construction of claim 11 in its amended and unamended form was in dispute. In its unamended form the claim referred to maleic acid or a simple salt thereof. The ambits of both the term maleic acid and the term simple salt were in issue. In the amended form the claim was limited to maleic acid. The questions of construction were addressed in paragraphs 94-104. I held that on the true construction of the term maleic acid then Example 8 would be within the amended form of claim 11. That left the issue of priority. If Example 8 was indeed entitled to the earlier priority, then claim 11 would lack novelty.
  11. For the priority issue L’Oréal relied on two earlier priority documents, the fourth priority document US 239 and the fifth US 089. I decided that Example 8 was not entitled to priority from either US 239 or US 089 and so L’Oréal’s attack failed. This is dealt with in paragraphs 187 – 227. The problem for L’Oréal was that while Example 8 discloses an agent which is a diamine bismaleate salt, the relevant example of US 239 (Example 4) describes using an agent which is a maleimide. The same goes for US 089. Although this chemical species is related to maleic acid, it is not within the ambit of the term “maleic acid or a simple salt thereof” on any view. The diamine bismaleate salt and maleimide are shown in paragraphs 191 and 195 of the main judgment.
  12. Until shortly before the trial and in L’Oréal’s opening skeleton, L’Oréal’s case was as summarised in paragraphs 199 – 202 of the judgment. The argument was about conversion of maleimide into a diamine salt. I rejected this argument in para 203:
  13. “203. This was the argument advanced in L’Oréal’s opening skeleton. It was a thin basis on which to found an argument that Example 8 was entitled to priority from Example 4 of US 239 and it was not advanced in closing. If and to the extent it is still pressed, I reject it. I am not satisfied the diacid hydrolyses to the diamine salt to any relevant extent in relevant circumstances. That basis for the claim to priority is rejected.”

  14. However during trial a new argument emerged. The new argument was that the test on hair swatches in Example 8 was in fact entitled to priority from US 239 because although that document describes the active agent as maleimide, the active agent is in fact the diamine bismaleate salt, it had just been misdescribed. The new argument was that Example 8 was entitled to priority because the diamine bismaleate salt active agent was the inevitable result of following the teaching of US 239 (citing Synthon v SmithKline Beecham [2005] UKHL 59). Thus Example 8 was entitled to priority and amended claim 11 was invalid.
  15. The synthesis of the maleimide agent used in the test on hair swatches in Example 4 of US 239 is described in Example 1. The new argument was that although Example 1 states it is a method for making maleimide, in fact this experiment makes a diamine bismaleate salt and in fact it is that salt which was tested in Example 4. Two points were put at trial in support of L’Oréal’s new argument.
  16. The first and main point was about Example 1 and the NMR spectrum at Figure 1. L’Oréal argued that the NMR spectrum for the product of Example 1, which is Figure 1 of US 239, in fact shows a diamine bismaleate salt. One aspect of the argument was about the presence of a signal from a labile proton in the NMR. Maleimide does not have a labile proton but the diamine bismaleate salt would explain it. There was also said to be something odd about the reaction scheme of Example 1 if it was supposed to produce maleimide, noting that it involved refluxing in water. When that was put to the professor he said that when he first read this part of US 239 he thought it was a bit weird. The main thrust of the argument was the comparison between Figure 1 of US 239 and an NMR spectrum taken by Juniper and referred to in Professor Law’s second report served mid-trial. That Juniper spectrum showed what the NMR for a diamine bismaleate salt looked like. So, L’Oréal argued, when it is put side by side with Figure 1 from US 239 you can see the similarity and draw the conclusion. L’Oréal put this to Prof Haddleton in cross-examination which counsel for Olaplex described as an ambush.
  17. Second, L’Oréal took me through the various priority documents for WO 768 starting with the fourth priority document US 239. The submission was that the realisation by the patentee that the active agent was really the diamine bismaleate salt and not maleimide explained the way the prosecution file for WO 768 developed and the priority documents filed after US 239 were written. In US 239 filed on 12th November 2013 the hair test in Example 4 states it uses a maleimide active agent and Example 1 gives a synthesis which purports to be maleimide along with an NMR spectrum which purports to be maleimide. The fifth priority document US 089 filed on 21st April 2014 still describes the active agent in the hair test example as maleimide but the synthesis example has been deleted and the examples renumbered. The hair test example still cross-refers erroneously to a synthesis in (now missing) Example 1. The priority document filed on 19th May 2014 (US 340) goes further. It was referred to at trial as the sixth priority document but is in fact the eighth. In the hair test example it confusingly refers to a “maleimide active agent” but gives a full chemical name which is a diamine bismaleate salt. The full chemical name is set out in paragraph 191 of the main judgment. Finally in WO 768 itself the active agent is consistently described as a diamine bismaleate salt (see e.g. Example 8 of WO 768).
  18. Before me now L’Oréal’s submissions appeared to be on the footing that the point on reflux in water in Example 1 and the inference from the drafting of the various priority documents were new, or had a new significance, but as the explanation above shows, these points were advanced fully at trial.
  19. In any case, at trial Olaplex objected to this new argument both on procedural grounds and also submitted that if it was considered at all it should be rejected on the facts. I dealt with all this in paragraphs 204-227. I accepted Olaplex’s submission that the new argument should be excluded from consideration applying the court’s case management powers (CPR Part 3 r3.1(2)(k)). In case the matter went further and since I had heard Professor Haddleton’s cross-examination I addressed the issues on the material available and held that if I had had to decide the issue, I would have decided the NMR spectrum point in L’Oréal’s favour, on the basis that the peaks in the spectrum indicated that the sample contained appreciable amounts of the diamine bismaleate salt. However I would have rejected the argument that Example 8 of WO 768 was supported by US 239 for various reasons. The relevant paragraphs are 226 and 227:
  20. “226. Would that mean Example 8 of WO 768 is entitled to a priority derived from US 239? Not in the least. This sort of priority argument is a variant of the “rose by any other name” type of case (cf Synthon v SmithKline Beecham [2005] UKHL 59). To found priority it must be inevitable that the skilled person given US 239 would make the maleate salt even though the disclosure is telling the skilled person in terms to make the maleimide. The text identifies one molecule and the spectrum identifies another one. There is no obvious way to resolve the issue without repeating the experiment and seeing what happens. That has not been done. Moreover the fact that (if true) a maleate salt was produced on one occasion does not prove it is inevitable, all the more so when the skilled person will be aiming to make an imide not a salt. Maybe the synthesis actually undertaken by the inventors was not done strictly in accordance with what is written in Example 1, we do not know. Perhaps there was a muddle with the spectra and the wrong one was used as figure 1. Perhaps the further experiments required by Prof Haddleton for definitive proof would turn out to show that the broad peak is not from the salt at all but from something else.

    227. All this goes to show that the argument to support a claim to priority for Example 8 of WO 768 from US 239 supported by conclusions drawn from the NMR spectrum at figure 1 is US 239 is too speculative. If I had to decide it I would reject it.”

  21. The post-trial application is aimed at this reasoning.
  22. After being circulated to the parties in draft, on 11th June 2018 the judgment was handed down and the matter adjourned to deal with consequences in due course. On 15th June 2018 L’Oréal’s solicitors gave Professor Law a copy of Example 1 of US 239 and discussed with him carrying out an experiment to determine if the product produced by carrying out Example 1 was the diamine bismaleate salt or maleimide. Professor Law undertook the experiment, as explained in his third expert’s report dated 5th July 2018.
  23. Professor Law’s opinion is that a comparison with the resulting NMR spectrum from his experiment and Figure 1 of US 239 shows that they are the same compound. He explains his opinion that the compound is the diamine bismaleate salt and that only one compound is produced by the reaction. He also explains his opinion that the method is complete and has no significant variables that would be expected to lead to a chemist carrying out the reaction differently in a way which could produce a different result. His view is that the diamine bismaleate salt is the inevitable result of following Example 1 of US 239.
  24. Self-evidently therefore this is not an entirely new ground of attack on validity. It is new evidence to support an attack which was raised at trial, albeit late. L’Oréal puts this application on the footing that the new evidence proves that the patent (and including claim 11) is invalid and the decision therefore should be reversed. However that overstates the matter. L’Oréal is correct that, on the face of it, this evidence makes a strong case to rule out administrative error as an explanation for Figure 1 of US 239 although nevertheless the disclosure sought by L’Oréal in document class (i) relates to that issue. But even assuming Figure 1 does represent the result obtained by the inventors when they ran the experiment, it does not resolve the issue of priority, there is more to the issue than that.
  25. At the hearing Olaplex raised three points which would all have to be addressed in any event: (i) the ‘inevitability’ of the result of following the synthesis steps referred to in Example 1 of the 239 priority document, including by experimentation; (ii) how the skilled synthetic chemist would respond to the steps referred to in Example 1, given the teaching that it was a method of making the maleimide; (iii) whether (even if L’Oreal was right on ‘inevitable result’) there was a ‘clear and unambiguous’ disclosure of the invention of Example 8 of WO 768 in the US 239 priority document to the skilled reader given the mismatch between the result and the actual teaching of the document, in the context of US 239 read as a whole.
  26. In my judgment all three of these points are properly arguable. Point (iii) is a significant one in any case. It is primarily a point of law and a point of construction.
  27. On points (i) and (ii), even if I assume that Professor Law’s experiment produces the same result on a witnessed repeat (which is not always the case), in many cases it turns out to matter a great deal what the chemist is trying to do when they approach an example. Professor Law approached the instructions on Example 1 expressly open to the possibility that despite its wording, it might make the diamine bismaleate salt instead of maleimide, but the skilled person would not be in that state of mind. My instinct at this stage is that this may well not turn out to be a strong point but it could be. In any case these issues will depend on expert evidence from both sides. The disclosure sought by L’Oréal in document class (ii) relates to this question of what is in fact produced by Example 1 of US 239.
  28. After the hearing on 9th July I received a supplementary note from Olaplex which indicated that if the application to reopen the trial was successful they also wished to advance a further conditional amendment to claim 11 to disclaim the active agent in Example 8 of WO 768. Olaplex submitted that an amendment of this kind, which would be by disclaimer of matter not previously disclosed in the patent, is an acceptable approach to overcoming a s2(3) attack under the rules established by the Enlarged Board of the EPO in G1/03. The precise form of any proposed conditional application to amend has not yet been resolved.
  29. I conclude that if the new evidence is admitted, there will most likely need to be a further full trial of the issue to redecide the point. There will be disclosure, probably witnessed repeats of the new experiment, further expert evidence, cross-examination and argument not only about priority but about amendments. I estimate that trial would take at least two and possibly three days. At this stage each side has a properly arguable case. It may be that L’Oréal is right but there is plenty to be said on the side of Olaplex and even if L’Oréal is right, the result might turn out to be that a further amendment to claim 11 is permitted, preserving its validity.
  30. The legal principles applicable to the application

  31. The applicable legal principle is the one set out in In Re L (Children). The judgment is one of Baroness Hale with whom the other members of the Supreme Court agreed. Baroness Hale dealt with the jurisdiction at paragraphs 16-19 and confirmed that the jurisdiction exists until the order is perfected by being sealed by the court. The principles governing the exercise of the jurisdiction were considered at paragraphs 21-27. Baroness Hale expressly considered In re Barrell Enterprises [1973] 1 WLR 19 and the authorities following it which grappled with the idea that exceptional circumstances were required. She held that exceptional circumstances were not required and said at paragraph 27:
  32. “27. Thus one can see the Court of Appeal struggling to reconcile the apparent statement of principle in Barrell [1973] 1 WLR 19, coupled with the very proper desire to discourage the parties from applying for the judge to reconsider, with the desire to do justice in the particular circumstances of the case. This court is not bound by Barrell or by any of the previous cases to hold that there is any such limitation upon the acknowledged jurisdiction of the judge to revisit his own decision at any time up until his resulting order is perfected. I would agree with Clarke LJ in Stewart v Engel [2000] 1 WLR 2268, 2282 that his overriding objective must be to deal with the case justly. A relevant factor must be whether any party has acted upon the decision to his detriment, especially in a case where it is expected that they may do so before the order is formally drawn up. On the other hand, in In re Blenheim Leisure (Restaurants) Ltd, Neuberger J gave some examples of cases where it might be just to revisit the earlier decision. But these are only examples. A carefully considered change of mind can be sufficient. Every case is going to depend upon its particular circumstances.”

  33. I take it therefore that the decision is one made by applying the overriding objective as set out in CPR Part 1 r1.1. Every case will depend on its particular circumstances. A relevant factor must be whether any party has acted upon the decision to his detriment before the order has been formally drawn up.
  34. In support of their case on abuse of process, Olaplex cited the judgment of the Court of Appeal in Warner-Lambert v Generics (UK) [2016] EWCA Civ 1006. That case considered an attempt by a patentee to advance claim amendments after the judgment had been handed down. At trial Arnold J rejected that application as a Henderson v Henderson type abuse of process based on Johnson v Gore Wood [2002] AC 1 and, in the specific context of patent claim amendments Nikken v Pioneer [2005] EWCA Civ 906 and Nokia v IPCom [2011] EWCA Civ 6. This decision was upheld by the Court of Appeal. The Supreme Court has heard an appeal in that case, which includes the issue of abuse of process. Nevertheless neither side invited me to wait for the outcome in the Supreme Court.
  35. Olaplex specifically drew my attention to para 177 of the judgment of Floyd LJ in the Court of Appeal in Warner-Lambert. The point being made was to support a submission, relevant to abuse of process, that one does not know how a party would have presented their case in relation to other aspects of the dispute if the material now sought to be included had been present at trial.
  36. Disclosure

  37. L’Oréal seeks an order that Olaplex gives disclosure of documents “evidencing the claimants’ knowledge as to the identity of the product prepared by following the process of Example 1 of [US 239]”. This is class (iii). L’Oréal contends this should be provided before the court rules on its application because part of its case is that throughout this litigation Olaplex have known that in truth Example 1 produces the diamine bismaleate salt. It contends that this can be inferred from the prosecution file for WO 768 which I have been through above and is made even plainer by the result of the new experiment. L’Oréal points out that in Olaplex’s solicitor’s evidence for the application, there is no statement denying that Olaplex have known about this issue.
  38. L’Oréal is also suspicious that Olaplex deliberately did not show the fourth priority document (US 239) to Professor Haddleton (which has the supposed synthesis involving reflux in water) but only showed him the fifth priority document (US 089) for him to prepare his evidence relating to priority.
  39. Olaplex submit that I have decided the issue of knowledge already, by reference to paragraph 219 of the judgment. That is not a good point. Apart from anything else, necessarily on an application to reconsider, the findings in the judgment cannot be binding. That would defeat the entire exercise.
  40. Olaplex do not suggest I have no jurisdiction to order this disclosure. The matter is one of discretion exercised in accordance with the overriding objective. An important factor in my judgment is that this disclosure is of no relevance to the substantive merits of the priority issue the court would have to decide if the application was allowed. It is only advanced on the footing that it is relevant to the procedural circumstances and the exercise of the court’s discretion under In re L (Children).
  41. The state of either party’s knowledge of a point is capable of being relevant to the court’s discretion under In re L (Children) but while that is a necessary step, it is not a sufficient reason to order disclosure. The position is that in the evidence of L’Oréal’s solicitor Mr Sheraton for this application, the point is made that it is reasonable to infer that the claimants and the inventors have been aware that Example 1 produces the diamine bismaleate salt (Sheraton V, 3rd July 2018, paragraph 10). Olaplex have not suggested on this application that they need more time to respond to that allegation. I am not surprised. The point was raised at trial. I called it a hint in paragraph 219, which was a charitable expression referring to the elliptical way junior counsel put it in his oral submissions. Given that it was raised at trial and given the multinational nature of patent disputes of this kind, it is a fair inference that after trial Olaplex looked into the matter. If they had something to say in response to Mr Sheraton’s evidence, I infer they could have done so in Mr Bennett’s fifth witness statement dated 6th July 2018.
  42. Therefore it is no hardship to approach this application on the footing that Olaplex have known that the active agent which was actually made when the experiment reported as Example 1 of US 239 was performed, was a diamine bismaleate salt. On that footing there is no need for disclosure in class (iii). It would be disproportionate.
  43. I note that L’Oréal, rightly, does not suggest that (or seek disclosure whether) Olaplex know or have always known that the diamine bismaleate salt is the inevitable result of the disclosure of US 239 nor that Olaplex know or have always known that Example 8 of WO 768 is entitled to priority from US 239. Those are a different issues. Nor in my judgment does it mean necessarily that Olaplex’s team at trial (including an inventor Dr Pressly) had time during the proceedings to check the records in California and become fully appraised of all this when the point was raised.
  44. In terms of the way the case was conducted up to trial, two important points should be noted. First L’Oréal does not contend that there has been a failure of disclosure before trial. L’Oréal accepts that none of the disclosure it now seeks – classes (i), (ii) or (iii) – ought to have been given before trial given the state of the pleadings and the way the case was managed. A point on inevitable result from Example 1 of US 239 was not in issue. The scope of the existing priority point relating to WO 768 did not mean that Olaplex ought to have addressed inevitable result. Second, and in my judgment following from the first point, I can see no basis for criticising Olaplex’s conduct of these proceedings up to trial for a focus on US 089 rather than US 239. The point was simply not in issue. From Olaplex’s point of view addressing the case advanced by L’Oréal, there was no relevant difference between US 239 and US 089 until 26th April 2018 when questions were put to Professor Haddleton.
  45. What should be done

  46. L’Oréal’s submission is that if I refuse the disclosure in class (iii), I should decide the application. Olaplex submit I should strike it out but if I cannot I should not decide it without further information from L’Oréal about the circumstances in which the point emerged. I will turn to that.
  47. Mr Sheraton’s evidence gives a brief explanation of how the point emerged, starting on 23rd April 2018, the day before the trial. L’Oréal’s counsel’s skeleton argument gives an expanded explanation and it was expanded further in oral submissions. In summary the point on Example 1 making the diamine bismaleate salt started with junior counsel on the 23rd April. Contact was made with Professor Law. On that day, he expressed the view that the NMR in US 239 was inconsistent with maleimide. The trial started on 24th April. On that day, after the openings, the oral evidence was confined to fact witnesses. Internally within the L’Oréal team there were further discussions about the point.
  48. On 25th April a meeting took place between junior counsel and Professor Law at lunchtime. Also on that day the second expert’s report of Professor Law was served by L’Oréal on Olaplex. That expert’s report refers to the Juniper NMR spectrum for the diamine bismaleate salt. It does not mention his view about Figure 1 nor anything about priority. Also on that day Professor Haddleton had gone into the witness box. At the lunchtime meeting the point which junior counsel put to Professor Haddleton in cross-examination, based on a comparison between Figure 1 of US 239 and the Juniper NMR spectrum, was developed. Professor Haddleton’s cross-examination did not finish on 25th April.
  49. On 26th April, when Professor Haddleton was recalled, leading counsel put the point on the labile proton and reflux to him and then junior counsel put the comparison between Figure 1 of US 239 and the Juniper NMR spectrum.
  50. In closing L’Oréal advanced its new case on why Example 8 of WO 768 was entitled to priority. It had all the elements described above.
  51. L’Oréal notes that, in excluding the issue from consideration, the judgment at paragraph 217 had observed that the point was obviously not thought of during the cross-examination of Professor Haddleton and therefore could and should have been raised before Professor Haddleton went into the witness box. L’Oréal accepts on this application that by the time Professor Haddleton started giving evidence on the morning of the Wednesday 25th April Professor Law had said (to L’Oréal) that there was an apparent error in Figure 1 of US 239 but L’Oréal seeks to excuse this on the footing that its case on this issue was not properly developed and it had not yet had a meeting with Professor Law to fully understand his analysis. This excuse will not do. It is true that the meeting with Professor Law happened at lunchtime after Professor Haddleton was already in the witness box but this does not justify the failure by L’Oréal to raise the matter before it was put to Professor Haddleton. If L’Oréal needed more time to consider a matter, it could and should have asked for time first, rather than just putting a new case in cross-examination.
  52. The reason Olaplex contends that a fuller explanation should be given by L’Oréal about these circumstances is to test L’Oréal’s contentions about what happened on 23rd-25th April. If so much depended on a temporal analysis of exactly what L’Oréal’s legal team thought of these issues at what time during the day on 25th April then I agree with Olaplex that more detail about what happened would need to be provided to make good L’Oréal’s case. I also note that L’Oréal must have waived at least some privilege in putting these matters before the court. However the merits of the application should not and do not turn on a minute analysis of the timing of decisions made during trial. Accordingly I reject Olaplex’s submission that L’Oréal should be required to produce more information before this application can be decided.
  53. Both sides argued the application to admit the new evidence fully before me. I am in fact in a position to decide the application on its merits and that is what I will now do. There is no need to consider whether to strike out the application as an abuse of process.
  54. The decision on its merits

  55. There has been limited publicity associated with the judgment (Mr Bennett refers to the Financial Times) but Olaplex did not suggest that it had acted to its detriment in reliance on the judgment. That is a significant point in L’Oréal’s favour.
  56. The overriding objective is to deal with cases justly and at proportionate cost. L’Oréal’s case is that the heart of the overriding objective is to get the right answer. However, as explained above, the new evidence does not give L’Oréal a knock out point. Each side has an arguable case and if the new evidence is admitted then there is likely to be a further two or three day trial, and a further judgment.
  57. Of course the court adjudicating any dispute strives to get the right answer. However the overriding objective cannot be summarised in that way. Put in L’Oréal’s terms, the overriding objective is more accurately summarised as being to get the right answer in the right way. That is why CPR r1.1 refers to factors such as proportionate cost, ensuring parties are on an equal footing, dealing with matters expeditiously and fairly, allotting an appropriate share of the court’s resources, and procedural compliance. These procedural factors are there to do justice between the parties and to administer justice as a whole.
  58. L’Oréal refers to Olaplex’s submissions at trial which are summarised in paragraph 212 of the judgment. That records Olaplex’s submission that if L’Oréal had raised its new case on US 239 at trial in a report of Professor Law (referred to there as the second report but nothing turns on that), it would have given rise to serious objections and could not have been run without an adjournment, which Olaplex contended would have been unlikely to have been allowed.
  59. L’Oréal contends that if L’Oréal had put in evidence from Professor Law during the trial we would still be in the same position as we are now because there would not have been time to check the records in California and because there would have been no adjournment. So, the argument goes, on any view the experimental evidence L’Oréal now wants to rely on never would have been available at the trial and that supports its admission now.
  60. I do not accept that logic. For one thing we simply do not know what would have happened if L’Oréal had raised the new priority issue properly at trial and a debate had ensued about adjournment. If L’Oréal had offered to pay the costs thrown away as a result, perhaps an adjournment would have been granted even though Olaplex resisted it, perhaps not. Olaplex could have argued that an experiment of the kind now carried out was an obvious approach. Any competent team of patent litigators would know that one way forward to prove the case L’Oréal first advanced on 26th April would be to perform that experiment. So although the result was not available, the idea that such a test could be performed could and should have been contemplated. L’Oréal’s approach at trial was to eschew an adjournment altogether.
  61. The argument that we would still be in the same position is one way of addressing a consideration that even before one gets to think about an application to reconsider the merits of the priority issue in the light of the new evidence, it may be necessary to ask whether the priority issue to which the evidence is relevant ought to be admitted into the proceedings at all. After all the priority issue was excluded under r3.1(2)(k). Or to put the matter a different way, is this an application to reconsider a case management decision excluding an issue from consideration or to simply side step that decision altogether?
  62. Considering the application in that way, the only relevant difference between the position now and the position at trial is the point, which I have assumed, that Olaplex have in fact always known that the active agent which was actually made was a diamine bismaleate salt. That means the last sentence of paragraph 219 of the judgment is wrong. However most of the points in paragraphs 219 and 220 remain. They are that the timing during trial was far too short to expect Olaplex to have investigated this, and that since the point had not been raised before there was no reason to infer anything sinister about an absence of evidence from Olaplex about US 239.
  63. The full reasons for excluding the priority issue were given in paragraphs 214-222. The fundamental reason why the point was excluded was because L’Oréal could and should have raised it properly during the trial. It failed to do so. If anything the explanation I have now been given just serves to reinforce that view. The new evidence does not show why the outcome of the decision to exclude the issue would have been any different.
  64. Nevertheless in my judgment it would not be right simply to consider this application in that way. I should examine whether to allow the application as an application to consider the issue afresh, irrespective of the case management decision at trial.
  65. On its merits the new experimental evidence proves that Figure 1 of US 239 was the NMR spectrum for the diamine bismaleate salt and that the Example 1 produces the diamine bismaleate salt. However the judgment already found on the balance of probabilities that the former proposition was true (that Figure 1 was the spectrum for the salt). Moreover in paragraph 226, the judgment took into account the possibility that the latter proposition was true too, making the point that “the fact that (if true) a maleate salt was produced on one occasion does not prove it is inevitable, all the more so when the skilled person will be aiming to make an imide not a salt.” That sentence illustrates that there always was more to the priority issue than can be proved by the new experimental result. The opinions now expressed in Professor Law’s third report – that the conditions in the example do not make it likely that anything else will be produced and that the salt is not just a result but the inevitable result – were always going to matter.
  66. Putting it the other way round, the reason L’Oréal lost the substantive priority issue at trial was not merely because of the lack of the new experimental evidence. Rather it lost because the evidence it chose to acquire and advance to prove that case at trial and the arguments deployed in support of the point, did not succeed. Now L’Oréal seeks to deploy more evidence on the same point.
  67. To make an order requiring the court to redecide an issue on the basis of fresh evidence, when the issue to which it is relevant was addressed and decided, does not require exceptional circumstances (Re L (Children)), it requires the application of the overriding objective. For such an order to be in accordance with the overriding objective there must be something about the circumstances to justify that course given its inevitable consequences in terms of cost and trouble to the parties of a further trial but also the allocation of the court’s resources to these litigants as opposed to others. Although it recognises the impact on costs on Olaplex, L’Oréal’s approach to this application ignores the impact on the court’s resources and other litigants.
  68. The fact that the counterparty has not acted to their detriment in response to the judgment is very important in the sense that if they have done, then it will make such an application all the harder, but that factor alone cannot justify making the order in this case. No doubt the circumstances will vary infinitely but obvious factors are the strength of the case taking into account the new evidence and reasons why the new evidence was not deployed at trial. I also bear in mind that this is a commercial dispute between substantial undertakings (I know Olaplex complain that their resources are stretched) in which finality may well have more weight than, for example, a case concerning the long term welfare of a child.
  69. In its skeleton argument L’Oréal has submitted that the refusal of this application will leave an invalid patent on the register, that the refusal will lead to enforcement of an invalid patent, that the refusal will lead to Olaplex enforcing a patent which they “know (and certainly ought to have known) is lacking in novelty”, and that the refusal will cause immense prejudice to L’Oréal. These are all overstatements. Considering the strength of the new case, the new evidence does plug one hole in L’Oréal’s case at trial (assuming the repeat is successful) but real arguments about this priority point remain, as they always did.
  70. Turning to the reasons why it was not deployed at trial, L’Oréal emphasises repeatedly that this is evidence which was not available to it before the trial and that L’Oréal is not at fault in failing to adduce the evidence before trial. That is true but it is also capable of confusing the issue. The real reason this evidence was not available to L’Oréal before the trial is because the point to which it was relevant was only thought of by L’Oréal at trial. L’Oréal was never going to call this evidence until it had thought of the point on Example 1 of US 239 and that was always and only a matter for L’Oréal to advance. There has been no failure of disclosure or a lack of candour by Olaplex in relation to this point prior to trial.
  71. I am entirely confident that if L’Oréal had thought of this priority point months before trial, it could have acquired this experimental evidence well in advance (subject to the Patents Court’s usual safeguards concerning experimental evidence) and could have put forward Professor Law’s opinions about inevitability at the same time.
  72. Moreover, as I have said already, once L’Oréal saw the point on Example 1 of US 239, mid-trial, the possibility of an experiment to prove the point and the fact that such an experiment is not conclusive of inevitability but will depend on further expert evidence could and should have occurred to its legal team. In truth this application is an attempt by L’Oréal to extricate itself from the consequences of its own decisions made during the trial. That does not mean it should necessarily be refused but it puts the matter in its proper light.
  73. L’Oréal also submitted that the inventors have brought this problem on themselves by filing a priority document with an incorrect description of the active agent. Of course the inventors (which for this purpose I will equate with Olaplex) have to take responsibility for and the consequences of the wrong description of the agent as maleimide in the early priority documents for WO 768. Mistakes of this kind are not uncommon and generally patentees prefer to acquire earlier priority if they can although of course in this case it is the other way round. However this submission is an attempt to blame Olaplex for the late stage at which the issue occurred to L’Oréal even though, as I have said already, there has been no failure of disclosure or lack of candour by Olaplex. The important thing is that the prosecution file for WO 768 is public. L’Oréal have been able to scrutinise it throughout this litigation and have manifestly done so.
  74. L’Oréal argues that there will be no delay in the overall scheme of the litigation if a provisional order is made on the other issues now such that the appeal process can be set in motion, or alternatively that a few months delay is a relatively small prejudice compared to the risk of reaching the incorrect result. If the new evidence made all the difference between success and failure on the issue of priority itself and therefore on validity of claim 11 and if it was something which came out of the blue after trial when the priority point had been in issue for months, then I would take a different view. Many litigants, having chosen to advance their case in a particular way, then lost at trial, would like to call further evidence. L’Oréal must have positively decided not to put in an expert’s report from Professor Law and not to seek an adjournment. If a report had been put in at trial it would, at least, have explained Professor Law’s view that Figure 1 of US 239 was wrong, that it seemed that Example 1 actually produced the diamine bismaleate salt, and no doubt he would have expressed a view about inevitability. No doubt his view on inevitability is more strongly expressed now with the benefit of the experimental result than without it, but if Professor Law had needed the experimental result to express any view about inevitability at all he could have said so at the time. It is the expert evidence on inevitability which is the real evidence which was lacking from L’Oréal’s case.
  75. I recognise that this is not a case in which the winning party has acted to their detriment in reliance on the judgment. Nevertheless an order to direct a reconsideration of the issue of priority of Example 8 of WO 768 over US 239 would not be in accordance with the overriding objective. The application is dismissed.



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