Liqwd v L’Oréal: admissibility of evidence after trial
In Liqwd v L’Oréal, the English Patents Court has offered a salutary lesson for litigants: their arguments and evidence must be marshalled and collated in advance of trial. In particular, the ability to re-open proceedings after judgment on the basis of new evidence is limited.
Here, Liqwd and others had brought a claim for patent infringement against L’Oréal in relation to the latter’s Smartbound product. The trial took place between 24 April to 2 May 2018 and judgment was subsequently handed down on 11 June 2018.
The court held that Liqwd had been successful in establishing that amended claim 11 of its patent (a claim to the use of maleic acid as an active agent to reduce or prevent hair damage by bleaching products) was valid and infringed.
At the trial, L'Oréal had argued that claim 11 lacked novelty over example 8 of a piece of prior art, WO ‘768 (a novelty only (s2(3)) citation), which “... describe[d] a test using a diamine bismaleate salt as the relevant active agent.”
The court held that if example 8 was entitled to priority from example 4 of the priority document, US ‘239, then it anticipated claim 11. However, it concluded that example 8 was not so entitled as example 4 referred to maleimide as the active agent, not diamine bismaleate salt. The attack, therefore, failed. In particular, the court reasoned as follows:
"This [an argument about the conversion of maleimide into a diamine salt]
was ... 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."
During the trial, however, a new argument emerged. This was that, although US ‘239 described the active agent as maleimide, this was a misdescription, and the active agent was diamond bismaleate salt. The court explained that “[t]he 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.” L’Oréal reasoned that example 8 of WO ‘768 was, therefore, 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  UKHL 59).
The trial judge, Mr Justice Birss, held that the new argument should be excluded from consideration, applying the court's case management powers (CPR Part 3 r3.1(2)(k)).
Following judgment, L'Oréal's solicitors gave one of the experts, a Professor Law, a copy of example 1 of US ‘239 and asked him to conduct 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, concluding that in his opinion the diamine bismaleate salt was the inevitable result of following example 1 of US 239.
L'Oréal, therefore, brought an application to admit further evidence, reopen the trial and decide the issue afresh taking into account the new evidence.
The leading authority in this situation is a decision of the Supreme Court in In Re L (Children), where Baroness Hale explained that it was available to the Court to revisit its judgment before the Court order was sealed:
“This court is not bound 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  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."
Considering the circumstances of the case Mr Justice Birss concluded that, while he had jurisdiction to grant the application, he would not do so. In explaining his decision he identified the controlling consideration to be the overriding objective, which explains that cases should be dealt with justly and at proportionate cost. He reasoned, among other things, that L’Oréal could and should have raised the issue properly during the trial but failed to do so. Further, he reasoned that the new evidence did not show why the outcome of trial would have been different (there is a difference between an inevitable result of following the teaching of US 239 and a clear and unambiguous disclosure). He also pointed to the fact that allowing the application would lead to a series of other hearings and costs.
 EWHC 1845 (Pat)
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