Neutral Citation Number: [2012] EWPCC 10 
Case No: 1CL70038
IN THE PATENTS COUNTY COURT

Rolls Buildings
7 Rolls Buildings
London EC4A 1NL

Date: 08/03/2012

Before :

HIS HONOUR JUDGE BIRSS QC
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Between :

	INDUSTRIAL SELF ADHESIVES LIMITED	Claimant	
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	(1) TEKNEK LIMITED
(2) SHEILA HAMILTON
(3) STEPHEN MITCHELL
(4) HARRISON GODDARD FOOTE
(5) HGF LAW	

Defendants	

TH GROUP LIMITED	
Additional Counterclaimant 	

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Christopher Hall (instructed by HGF Law) for the Additional Counterclaimant
The claimant did not appear and was not represented 

By Telephone
Hearing dates: 16th February 2012
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Judgment

His Honour Judge Birss QC : 

1.	This case concerns European Patent (UK) No 1 499 549 entitled “Sheeted Roll”.  It is concerned with adhesive rolls used in cleaning apparatus.  One application of the cleaning apparatus is to clean electronic circuit boards.  The patentee is TH Group Ltd.  The proceedings began as a claim for unjustified threats of patent infringement which the claimant alleged the defendants were responsible for.  The patentee’s position was that the threats were justified and wished to sue for patent infringement.  However since the patentee was not one of the named defendants, the patentee was joined as an additional claimant to a counterclaim for infringement. In effect the defendants and TH Group Ltd are all one camp in these proceedings.  The claimant responded inter alia alleging that the patent was invalid.  The allegation of invalidity was denied but the patentee also applied to amend the patent to limit its scope and further distinguish it from the prior art and alleged common general knowledge cited by the claimant.
2.	The claimant did not raise objections to the amendments as such but maintained that the patent in amended form was invalid. The patentee responded setting out its reasons why the amended patent was valid.  At that stage pleadings were closed.
3.	The application to amend was advertised in June 2011 and no further opponents came forward.  The Comptroller indicated in writing on 11th August 2011 that he had no comments to make in relation to the proposed amendments.  
4.	In November the parties settled their dispute.  That left the application to amend the patent outstanding.  There was a suggestion that the court might transfer the application to amend to the Comptroller but the Court has no power to do that.  The patentee was invited to appoint a hearing to determine the matter but the patentee’s solicitors indicated that they were concerned about the cost.  Accordingly I appointed a telephone hearing to consider the matter further.  At the hearing Christopher Hall appeared instructed by HGF Law for the patentee TH Group Ltd.  The claimant was not represented.  Whether formally the other defendants were before the court on this occasion does not matter.
5.	In the past there was considerable doubt about the court’s jurisdiction to deal with patent amendments after a case had settled but they were dispelled by Lars Norling v Eez-Away [1997] RPC 160 which addressed the deliberate change in language in the 1977 Patents Act as compared to the 1949 Act.  Jacob J (as he then was) held that the court retains jurisdiction to deal with an amendment under section 75 of the 1977 Act after settlement of the main proceedings.  Thus the court has jurisdiction to hear and determine this application and that applies as much to the Patents County Court as to the Patents Court in the High Court. 
6.	In ICI v RAM Bathrooms [1994] FSR 181 Aldous J (as he then was) considered an application to amend after a settlement under the practice as it then was (before the Lars Norling case) whereby the amendment was considered before the court finally approved the Tomlin order embodying the settlement which had been reached.  The learned judge held that amendments should only be permitted in actions where the parties had settled where (1) the amendments are not substantial in amount or effect, (2) there is not apparent matter of controversy and (3) no matter of public interest arises.  Aldous J’s judgment was based on the discretion which existed in relation to amendments as provided for in s75 of the 1977 Act.   Since then the Lars Norling case has been decided and more importantly s75 itself has been amended.  It is clear that the general approach to the exercise of the discretion under s75 is not the same today as it was before the amendment to the Act.  Section 75(5) now directs the court to have regard to any relevant principles applicable under the European Patent Convention.  This was considered by Floyd J in Markem v Zipher [2009] FSR 1.  He held that while the court still has a discretion, it has now been limited.  Considerations formerly considered relevant such as conduct of the patentee, are no longer relevant.  However procedural fairness is still a factor.
7.	In my judgment the essence of the point being made by Aldous J in ICI v RAM Bathrooms is still applicable today despite the change in section 75.  When a patent action has settled with an amendment application outstanding, the court should not necessarily go ahead and deal with the amendments in any circumstances.   The circumstances may be such that they can suitably and properly be dealt with by the court but there could be circumstances in which the proper course is for the patentee to apply to the Comptroller instead.  
8.	The matter will not require elaborate consideration but it seems to me that I should be satisfied that it is appropriate for the application to be heard by the court in this way.   The absence of any apparent controversy and absence of any matter of public interest will support dealing with the matter in court.  Given the change in section 75, it seems to me that I am not bound by the way Aldous J’s put his point (1) (amendments not substantial in amount or effect) and in any case I am sure Aldous J did not intend his words to be employed like a statute.   It seems to me that the way to put the matter as section 75 is drafted today is simply that all relevant circumstances fall to be considered.  The nature of the amendments will be a factor as will be other factors emphasised by the overriding objective of the CPR such as saving expense, proportionality and dealing with cases expeditiously and fairly.  The patentee should not be put to the expense and time of making a fresh application to the Comptroller without a good reason.  That seems to me to be especially so given that this case is in the Patents County Court. 
9.	Having heard Mr Hall I decided that, in the circumstances of this case, (a) it was appropriate to deal with the amendments in the Patents County Court rather than require the patentee to apply to the Comptroller and (b) the most proportionate way forward was to go on and hear the application to amend then and there.  This was for the following reasons.  The Comptroller had indicated he had no comments to make and no opponent had come forward following advertisement of the amendments.  The claimant had made no objection to the amendments per se.  Although the claimant contended that the patent was invalid, that claim had been compromised.  There is no apparent controversy and no matter of public interest arising.  As regards the amendments themselves, they are more than simply amending down to an existing dependent claim but nevertheless they seem to me to be appropriate to deal with here and now.  The amendments can be readily understood.  They consist of adding further limitations to claim 1 and claim 8 (now 7) as well as a short addition to the specification itself.
10.	I heard Mr Hall’s submissions and decided that I would allow the amendments with my reasons to be given later.  This judgment deals with those reasons. 
The amendments 
11.	The proposed amendments are set out in Annex A to this judgment.  In the annex claim 1 as granted and as proposed to be amended can be seen.  In summary the amendments are : 
i)	To collapse claim 2 into claim 1, delete claim 2 and renumber.
ii)	To insert into claim 1 the requirement for a release coating.
iii)	To change “characterised in that” in claim 1 into “wherein”.
iv)	To insert into claim 1 a requirement that the claimed roll is for use in contact cleaning apparatus for cleaning a workpiece with a corresponding amendment to paragraph 22 of the specification to clarify what contact cleaning apparatus is.
v)	To insert into claim 8 (now 7) the words “contact cleaning” before “apparatus”.
12.	In summary, amendments will be allowed provided they: 
i)	do not add matter (s76(3)(a)); 
ii)	do not extend the scope of protection (s76(3)(b)); and
iii)	are supported by the description and do not introduce a lack of clarity (s14(5) of the 1977 Act).  
13.	Since there is not now before me any live attack on the validity of the patent, it seems to me that it would be neither necessary nor proportionate to consider in detail the question of whether the amendments do or do not cure the invalidity which had been alleged by the claimant and I will not do so.  Having read the pleadings it is sufficient for present purposes to say that the patentee had articulated what is on the face of it a properly arguable case that the amended patent is valid.
14.	I will deal with the amendments in turn.  
(i) To collapse claim 2 into claim 1, delete claim 2 and renumber.
15.	Claim 2 provided for “The sheeted roll (100) of claim 1, wherein each sheet is greater in length than the circumference of the roll core (110).”  In order to collapse this claim into claim 1, the words “wherein the length of each sheet is greater in length than the circumference of the roll core” are to be inserted as shown in Annex A. 
16.	No issue of extension of the scope of protection arises since the amendment introduces a clear limitation.  Although there is a slight change in wording between old claim 2 and the feature inserted into claim 1, there is no question of added matter or lack of support.  The skilled person would not learn anything new from the amended patent than they would derive from the granted patent (or the application as filed).  The feature was at claim 3 of the PCT application [WO 03/091138] at p18 line 17-19.  The amendment is clear and I will allow it.
(ii) To insert into claim 1 the requirement for a release coating.
17.	This amendment involves inserting the words “wherein the non-adhesive surface of each sheet is coated with a release coating to facilitate the removal of each sheet” into claim 1. No issue of extension of the scope of protection arises since the amendment introduces a clear limitation.
18.	This feature was disclosed at p3 ln 29-30 of the PCT application and can be found in paragraph 18 of the granted patent.  It is amply supported, clear and its introduction does not add matter.  I will allow that amendment.
(iii) To change “characterised in that” in claim 1 into “wherein”.
19.	The patentee wishes to change the words “characterised in that” to “wherein”. I was at first puzzled by this amendment but Mr Hall explained its purpose as follows.   Under EPO practice the words “characterised in that” can be taken to mark a break between features acknowledged to be prior art by the patentee in the pre-characterising part of the claim and features said to be novel in the post-characterising part.  As a result of the other amendments to claim 1, which were to the pre-characterising part, the patentee did not accept that that pre-characterising part as amended represented the prior art.  Accordingly the patentee wishes to change the phrase “characterised in that” to “wherein” to clarify and reflect the fact that it did not accept that the drafting convention based on the words “characterised in that” applied. 
20.	The only risks would be whether the change in wording, which is not an addition of a further limitation to the claim, would extend the scope of protection or lack clarity.  In my judgment the amendment is clear and does not extend the scope.  I will allow it.  
(iv) To insert into claim 1 a requirement that the claimed roll is for use in contact cleaning apparatus for cleaning a workpiece with a corresponding amendment to paragraph 22 of the specification to clarify what contact cleaning apparatus is.
21.	By this amendment the patentee seeks to insert a form of functional limitation into claim 1.  The sheeted adhesive roll claimed must be “for use in contact cleaning apparatus for cleaning a workpiece”.  In this phrase “for” plainly means “suitable for”.  The difficulty is that the term “contact cleaning apparatus” does not appear in the unamended patent (or in the patent application).  It is to be inserted by the amendment to paragraph 22.  A definition is to be inserted into the paragraph as follows “The apparatus herein described for cleaning a workpiece is referred to in the claims as “contact cleaning apparatus” and then the term “contact cleaning apparatus” is to be used in the amendment to claim 1.   The live issues are whether these amendments add matter and/or lack support and whether they introduce a material lack of clarity.
22.	The skilled reader of the patent as amended would understand that the term “contact cleaning apparatus” refers to the apparatus in figure 1 and described in paragraphs 22 to 28 of the patent.  Figure 1 is as follows:

23.	The apparatus consists of a sheeted adhesive roll (item 12 in fig 1 is the roll core of that roll) carrying sheets of adhesive material (14).  The sheeted adhesive roll is in contact with a cleaning roll (item 16 in fig 1) and the cleaning roll is also in contact with a workpiece (20).  The cleaning surface (18) of the cleaning roll may be an elastomer.  The apparatus works in the following way.  The cleaning surface on the cleaning roll contacts the workpiece so that, as the workpiece is conveyed, the cleaning roll rotates and the cleaning surface picks up impurities from the workpiece.  The cleaning roll continues to turn and the dirt on the cleaning surface now reaches the other contact point, where the adhesive material is in contact with the cleaning surface.  The adhesive picks up the impurities from the cleaning surface.  All this avoids the adhesive material contaminating the workpiece. 
24.	The difficulty faced by the patentee is that they wish to limit claim 1 to a sheeted adhesive roll suitable for use in this sort of apparatus in order to narrow the claim but there is no ready language in the patent to use.  Accordingly the proposal is to define this apparatus and then use the definition in the claim.  In my judgment the amendment is properly supported and does not add matter either over the granted patent or the application as filed.  The idea that the claimed adhesive sheet roll should be suitable for use in the apparatus of fig 1 and as described in the relevant paragraphs is clearly and unambiguously disclosed in the patent.  The idea is also clearly and unambiguously disclosed in the PCT application.  The text corresponding to paragraphs 22 to 28 of the granted patent appears at p7 ln 4 to p8 ln 16 of the PCT application.  Figure 1 is the same in both.  Calling this apparatus a “contact cleaning apparatus” is an apt description which does not teach the skilled reader anything extra.  It is supported and does not add matter.
25.	In terms of clarity, I have considered whether the amendment introduces ambiguity in that the skilled reader may not know what features are supposed to characterise the relevant contact cleaning apparatus.  In another case this sort of question might preclude an amendment of this general form but in my judgment in this case it does not.  The essential nature of the apparatus is clear from fig 1 and paragraphs 22 to 28 and the amendment does not make claim 1 unclear.   I will allow it.
(v) To insert into claim 8 (now 7) the words “contact cleaning” before “apparatus”.
26.	This amendment stands or falls with amendment (iv).  Having allowed (iv) I will allow this one as well. 
Conclusion 
27.	I will allow all the amendments sought by the patentee in this case.

Annex

[Proposed additions are underlined and proposed deletions are struck through]

Description

[0022]	Referring to the drawings, conventional apparatus 10 for cleaning a workpiece 20 advantageously comprises at least one cleaning roll 16 having a cleaning surface 18, and a roll core 12 having a continuous length of adhesive material 14 with an adhesive surface.  The apparatus herein described for cleaning a workpiece is referred to in the claims as “contact cleaning apparatus”.

Claim 1
A sheeted adhesive roll (100) for use in contact cleaning apparatus for cleaning a workpiece comprising a roll core (110) having at least one sheet (112) of adhesive cleaning material removably attachable thereon and subsequent sheets (114, 116) of said material then being removably attachable on previous sheets of said material on the roll core, wherein the length of each sheet is greater in length than the circumference of the roll core, said at least one sheet (112) and subsequent sheets (114, 116) of adhesive cleaning material having a first adhesive surface covering the outwardly facing side of the sheet and a second non-adhesive surface on the other side of the sheet, the adhesive surface (118) of each sheet (112, 114, 116) holding the said sheets to one another on said roll core (110), wherein the non-adhesive surface of each sheet is coated with a release coating to facilitate the removal of each sheet, the end of each sheet being adhered to the adhesive surface of that or the previous sheet on the roll (100), characterised in that wherein the adhesive sheets are all of the same length such that their respective ends (122, 124, 126, 128, 130) are offset circumferentially to provide a continuous adhesive surface.
Claim 2
The sheeted roll (100) of claim 1, wherein each sheet is greater in length than the circumference of the roll core (110).
Claim  3  2
The sheeted roll of claim 1 or 2 wherein one end of each sheet is abutted to an end of another sheet.
Claim  4  3
The sheeted roll of any of claims 1 to 3 or 2, wherein the adhesive is a pressure sensitive adhesive.
Claim  5  4
The sheeted roll of any one of claims 1 to  4  3, wherein the sheets are adapted to be dispensed.
Claim  6  5
The sheeted roll of any one of claims 1 to 5 4 wherein the material is dry-film photopolymer laminate.
Claim  7  6
The sheeted roll of claim 6 5, wherein the laminate is a backing film having an acrylic photosensitive emulsion.
Claim  8  7
Contact cleaning apparatus for cleaning a workpiece comprising a sheeted adhesive roll (100) according to any one of claims 1 to 7 6 and at least one cleaning roll (16) having a cleaning surface (18), the cleaning roll (16) being rotatably mounted adjacent to a workpiece (20), the sheeted adhesive roll (100) being rotatably mounted adjacent the cleaning roll (16) relative to the workpiece (20).
Claim  9  8
Apparatus as claimed in claim  8  7, wherein the workpiece (20) is an electronic circuit board.