Application to amend nappy patent not so watertight - IPEC holds nappy patent invalid for added matter and lack of clarity

The only time Kats experience added matter

What is the new trend for attacking a patent?  If you ask the AmeriKat, it would be added matter.  The "shove it in" pleading point that no one (including judges) really want to deal with lest they have to understand the metaphysical case law is becoming increasingly fashionable.  The latest decision on added matter comes via His Honour Judge Hacon sitting in the IPEC.  Reporting on this decision for the IPKat is new Kat friend, Robyn Trigg (A&O).  Take it away Robyn:  

"This KatFriend was reminded of the infamous 1980s nappy wars when reviewing HHJ Hacon’s judgment in Curt G. Joa, Inc. v Fameccanica Data SpA [2017] EWHC 1251 (IPEC).  HHJ Hacon sitting in the Intellectual Property Enterprise Court (IPEC) held that the conditional and unconditional amendments proposed by a patent owner rendered its patent concerning disposable absorbent garments invalid for added matter and lack of clarity. 

This case concerned a European Patent (EP (UK) No. 1 355 604) (the Patent) owned by Fameccanica Data SpA (FDS) with the title “Disposable Absorbent Garment such as a Diaper or Training Pants and a Process of Making the Same”.  Curt G Joa, Inc. (Joa) sought to have the patent revoked on basis that the Patent lacked both novelty and inventive step over prior art.  During the course of the revocation proceedings FDS submitted both an unconditional and a conditional application to amend the Patent – claiming that they both meant the same thing but the conditional amendment more clearly expressed what was claimed.  Joa objected to these amendments again claiming that they lacked novelty and inventive step, that they resulted in the specification disclosing additional matter contrary to s 76(3)(a) Patents Act 1977 (the 1977 Act), and that they lacked clarity contrary to s 14(5)(b) 1977 Act. 

The invention disclosed in the proposed amendments was a disposable garment with side panels made of “breathable, stretchable layer assembly” so as to be more comfortable than products formerly available.  The side panels were to consist of an inner and outer material layer and a stretchable material layer in-between the inner and outer layers.  The proposed amendments also claimed a method for making such a garment by ultrasonically bonding the inner and outer material layers through the stretchable material layer whereby an aperture larger than the bond site would be formed through the stretchable material to provide a breathable passage, but no apertures would be formed in the inner or outer layers.

In the usual course of FDS filing its proposed amendments pursuant to s 75 1977 Act, the Intellectual Property Office (IPO) issued a report containing its views on the permissibility of the proposed amendments.  The IPO stated that the proposed amendments would introduce two requirements, each of which would have resulted in the specification disclosing additional matter.  Joa endorsed these objections. 

The law on added matter was not disputed, having been recently reviewed by Floyd LJ (with Longmore LJ and Lewison LJ both in agreement) in AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40 (reported on by this blog here).  It is clear that the prohibition on added matter in s 76(3)(a) 1977 Act relates to an amendment which results in the disclosure of matter additional to that disclosed in the application for the patent as filed rather than the specification of the patent being amended (Triumph Actuation Systems LLC v Aeroquip-Vickers Ltd [2007] EWHC 1367 (Pat) [36]-[41] (reported on by this blog here) a Pumfrey J decision which he referred to and endorsed in Monsanto Technology LLC v Cargill International SA [2007] EWHC 2257 (Pat) at [156] (reported on by this blog here)).

HHJ Hacon held that the application as filed disclosed an invention comprising side panels formed of an inner and outer material layer and a stretchable material layer in-between with vent sites having holes in all three layers.  He said that there was no disclosure of bond/vent sites with no holes in the inner and outer layers, as the proposed amendments sought to claim. 

The parties’ experts disagreed about the disclosure concerning the vent sites and whether the inner and outer layers contained holes or not.  FDS sought to rely on photographs of a product it said was made in accordance with the patent specification.  FDS gave Joa notification of these photographs, however, it did not do anything further to establish their provenance.  Joa was not present when the photographs were taken, no evidence was given by the photographer regarding what was done, and no specific details of the photographed product, where it was obtained and how it was treated to create the photographs were given.  HHJ Hacon said that because nothing further was done to prove provenance, they could not be taken at face value.  As a result of this, HHJ Hacon held that Joa’s construction of the disclosed product was accurate and that the proposed amendments would result in the disclosure of additional matter contrary to s 76 1977 Act. 

The IPO also raised objections as to the clarity of the proposed amendments to the skilled person, which HHJ Hacon found to be meritorious.  HHJ Hacon did, however, go on to say that had the proposed amendments been lawful, the amended claims would have been novel over the prior art and would have contained an inventive step.  Ultimately though, the unlawfulness of the proposed amendments meant that the applications to amend the Patent were dismissed and the Patent was revoked."