YOU LOST AT TRIAL – YOU ARE NOT GETTING A SECOND GO: THE JUDGMENT IS HAIR TODAY AND WILL NOT BE GONE TOMORROW…

In  Liqwd Inc & Anor v L’Oreal (UK) Ltd & Anor [2018] EWHC 1845 (Pat) Mr Justice Birss refused a defendant’s application to “reopen the trial and decide one of the issues afresh” taking into account new evidence.

“Many litigants, having chosen to advance their case in a particular way, then lost at trial, would like to call further evidence.

THE CASE

At a trial the judge had found that one of the first defendant’s hair products infringed a patent held by the claimant.

After the trial, and after judgment was handed down but before the order was sealed, one of the expert witnesses instructed by the first defendant carried out an experiment which, in his view, had some significance and showed that the claimant’s patent was invalid.

THE APPLICATION

The defendant made an application “ to admit further evidence, reopen the trial and decide one of the issues afresh taking into account the new evidence.”

THE RELEVANT LEGAL PRINCIPLES

The judge considered the relevant legal principles.

    1. 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:
“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.”
  1. 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.
  2. 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.
  3. 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.

THE JUDGE’S DECISION: DEFENDANT’S APPLICATION REFUSED: YOU COULD HAVE ARGUED THIS AT TRIAL

The judge refused the application.
  1. 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.
  2. 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.
  3. 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.
  4. 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.
  5. 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.
  6. 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.
  7. 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.
  8. 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.
  9. 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.