Re Norton Health Care Ltd (Irish patent nos. 1121375 and 1499278)

• Jurisdiction: Ireland
• Judge: Mr. Justice Kelly
• Judgment Date: 01 December 2005
• Neutral Citation: [2005] IEHC 411
• Court: High Court
• Docket Number: [2005 No. 3/PAP],No. 3/PAP/2005
• Date: 01 December 2005

[2005] IEHC 411

THE HIGH COURT

COMMERCIAL

No. 3/PAP/2005

NORTON HEALTHCARE LTD, IN RE

NORTON HEALTHCARE LTD, IN RE

IN THE MATTER OF IRISH PATENT NUMBER 1121375 FILED ON 11th OCTOBER, 1999, REGISTERED IN THE NAME OF AKZO NOBEL N.V. IN RESPECT OF AN ALLEGED INVENTION CALLED "HIGH PURITY COMPOUND (7 ALPHA, 17 ALPHA) - 17 - HYDROXY - 7/ METHYL - 19 - nor - 17 - pregn - 5 (10) - EN - 20 - YN - 3 - ONE"

AND

IN THE MATTER OF IRISH PATENT NUMBER 1499278 FILED ON 19th MAY, 2004, REGISTERED IN THE NAME OF AKZO NOBEL N.V. IN RESPECT OF AN ALLEGED INVENTION CALLED "IMMEDIATE-RELEASE PHARMACEUTICAL DOSAGE FORM COMPRISING POLYMORPHOUS TIBOLONE" AND IN THE MATTER OF THE PATENTS ACT, 1992NORTON HEALTHCARE LIMITED

PETITIONER

PATENTS ACT 1992 S38

PATENTS ACT 1992 S50PATENTS ACT 1992 S32(1)

PATENTS ACT 1992 S38(2)

NIKKEN KOSAKUSHO WORKS v PIONEER TRADING CO 2005 EWCA CIV 906

PATENTS ACT 1977 S75PATENTS ACT 1977 S76(3)

HENDERSON v HENDERSON 1843 3 HARE 100

CIVIL PROCEDURE RULES 1998 PART 63.10 (UK)

RSC O.63(A)RALEIGH CYCLE CO LTD v H MILLER & CO LTD 1950 67 RPC 226

LUBRIZOL v ESSO PETROLEUM 1998 RPC 727

SMITH KLEIN & FRENCH LABORATORIES LTD v EVANS MEDICAL LTD 1989 SFR 561

INTELLECTUAL PROPERTY

patents

Amendment - Revocation proceedings - Amendment of patent after grant - Whether permissible to consent to amendment only in event that patent invalid - Whether court can amend patent found invalid - Whether abuse of process to allow amendment after finding of invalidity - Henderson v Henderson (1843) 3 Hare 100; Smith Klein and French Laboratories Ltd v Evans Medical Ltd [1989] FSR 561; Hallen v Brantia [1990] FSR 134 and Nikken Kosakusho Works v Pioneer Trading Co [2005] EWCA Civ 906 followed - Patents Act 1964 (No 12 ), s 32(1) - Patents Act 1977 (UK), ss 75 and 76(3) - Patents Act 1992 (No 1), ss 38 and 50 - Rules of the Superior Courts 1986 (SI 15/1986), O 63A - Respondent ordered to bring amendment application pre-trial (2005/3PAP - Kelly J - 1/12/2005) [2005] IEHC 411

Norton Healthcare Ltd v Akzo Nobel NV

Facts: The petitioner (Norton) sought the revocation of two Irish patents held by the respondent, alleging that they were invalid. Prior to the hearing of the petition the respondent maintained that the patent was valid but also indicated that in the event that the claims set forth in the patent were held to be invalid, it would apply to amend the claims of that petition. At the hearing, the respondent clarified that its intention was to seek leave at that juncture pursuant to section 38(2) of the 1992 Act to make the necessary amendment, which would then be pursued at trial only if the petitioner was successful in having the patent in its present form revoked. The petitioner submitted that there was no jurisdiction for the respondent to proceed in that manner.

Held by Kelly J. in favour of the respondent:

1. That section 38(2) conferred a discretion on the court, in proceedings in which the validity of a patent was in issue, to allow the proprietor of the patent to amend the specification on such terms as the court thought fit.

2. That it was permissible for the respondent to defend the action for revocation by maintaining that the claims as granted were valid whilst simultaneously seeking to amend the claims in the event that the original claims were struck down.

Reporter: L.O'S.

1 JUDGMENT of Mr. Justice Kellydelivered the 1st day of December, 2005

Introduction

2 Norton Health Care Limited (Norton) petitions for the revocation of two Irish patents held by the respondent, Akzo Nobel N.V. (Nobel). They are Irish patent number 1121375 (the 375 patent) and Irish patent number 1499278 (the 278 patent).

3 The grounds on which it is contended that the 375 patent is invalid can be summarised as (a) lack of novelty, (b) lack of inventive step and (c) insufficiency of disclosure.

4 Insofar as the 278 patent is concerned the sole ground relied upon by Norton is lack of inventive step.

5 The petition was presented on 4th August, 2005. On 15th September, 2005, a motion was issued seeking to transfer the proceedings into the Commercial List. I heard that motion on 10th October, 2005 and granted the application. In considering what further directions ought to be given it emerged from correspondence which had been exchanged between the parties that an issue had arisen upon which a direction of the court would be necessary. Accordingly, I directed that that issue be listed for hearing on 24th October, 2005 and this is my judgment in respect of it.

The Issue

6 The issue arose as a result of Nobel's solicitors indicating, by letters dated 5th and 7th October, 2005, that in the event that claims set forth in the 375 patent as it currently stands are held to be invalid, Nobel would apply to amend the claims of that patent in the manner set forth in a draft which accompanied the letter of 5th October, 2005.

7 In Nobel's solicitor's letter of 5th October, 2005, the following was said:-

"Please be advised that our clients intend to bring an application for leave to amend the 375 patent. We enclose a copy of the proposed amended claim. You will note that these are precisely the same amendments for which our clients have sought leave in the Scottish proceedings,... We would emphasise that our clients maintain that the Irish patent 1121375 as unamended is valid. It would seem appropriate that the application for leave to amend be heard at the trial of the action."

8 Norton's solicitors replied the following day. They said:-

"We note that your client intends to bring an application for leave to amend the 375 patent in the form attached to your letter. Such amendments to the 375 patent would deal with our client's objections to the validity of the patent in its current form thus removing all issues between our clients in relation to this patent. Indeed we note that if they had been proposed following our letter of 10th August, 2005, considerable costs could have been saved in these proceedings. The issue of costs will however have to be addressed and we reserve our rights in this regard.

This obviously leaves the issue of the validity of the 278 patent to be dealt with separately.

In such circumstances it would seem most efficient and cost effective for all parties concerned for your client's motion for amendment to be dealt with by the court as soon as possible. Please confirm that your client will be agreeable to such a course of action in which case we suggest that the position be explained to Mr. Justice Kelly on Monday, and a time table in respect of the motion sought."

9 Next day Nobel's solicitors replied stating:-

"As mentioned in our letter our clients maintain that Irish patent 1121375 as unamended is valid and our clients will so contend at the hearing of your clients petition to revoke. We also mentioned that it would seem appropriate that the application for leave to amend be heard at the trial of the action. It is only if the court finds that the original claims are unallowable that our clients shall seek leave to amend in the form of the proposed amended claims enclosed with our letter."

10 This correspondence left Norton under the impression that Nobel was proposing that in the event of its original claims being disallowed an application would be made after the trial for leave to amend the patent. A good deal of Norton's argument in opposition was based on this supposition. I confess that having read the correspondence prior to the hearing I was left under the same impression myself.

11 On the hearing, counsel on behalf of Nobel made it clear that was not what was envisaged. Rather it is Nobel's intention to seek leave at this juncture to make the necessary amendment which will then be pursued at trial only in the event that Norton is successful in having the 375 patent in its present form revoked. What is envisaged is that there will be a single trial but the judge will only have to consider the amendment in the event of Norton being successful in having the 375 patent revoked.

12 Even though this course would undoubtedly be preferable to the course which it was thought Nobel was proposing (which would have involved two trials) it is nonetheless objected to by Norton.

13 Norton contends that even this approach means that it will be forced to a hearing in respect of the 375 patent which, even if successful, will not result in the revocation of that patent. Rather it will result in an amendment to the patent to a form to which it is prepared to consent now. By proceeding as Nobel proposes it is contended that there will be much waste of time and costs. In any event Norton contends that there is no jurisdiction to proceed in the manner suggested.

The Amendments Proposed

14 Nobel's proposed amendments deal with all of the objections raised by Norton to the 375 patent in its present form.

15 In this petition Norton objects to claims 1-3, 7 and 9-14 of the 375 patent. It is contended that these claims lack novelty and inventive step. The proposed amendments seek to limit the relevant claims of the patent. The proposed amendments address completely the present complaints of Norton. Norton may well challenge the validity of the amended claims of the patent if such are allowed.

The Arguments

16 In the written submissions which were exchanged prior to the hearing, Norton complained (and in my view with justification) that it was not at all clear how Nobel intended to proceed in relation to the proposed amendments. Four possibilities were identified. They were that-

17 (a) Nobel intended to issue a motion now seeking an amendment of the patent if, and only if, it is unsuccessful in defending the revocation proceedings,

18 (b) Alternatively Nobel might defer issuing any motion and only issue it if the revocation proceedings are successful,

19 (c) Nobel might issue a motion...