L'Oreal (UK) Ltd & Anor v Liqwd Inc & Anor

The judge described the disclosure of Kim in some detail in the Main Judgment at [228]-[240]. In brief summary, Kim discloses the use of maleic acid and derivatives thereof (including maleate ions) to reduce or prevent hair damage due to oxidative dyeing. There is no description in Kim of a hair lightening formulation. Thus the only difference between Kim and claim 11 of the Patent is that, whereas Kim is concerning with oxidative dyeing, claim 11 is concerned with bleaching i.e. hair lightening.

For the purposes of the appeal, three passages in Kim are particularly important. The first is at page 2 lines 13-29 of the agreed translation:

“Conventional hair dye compositions include a first agent containing one or more dye precursors, which typically form a dye on being oxidised, and one or more couplers; and a second agent which is a diluted hydrogen peroxide solution, which is mixed with the first agent before application to the hair. The purpose of using these hair dyes is to dye the hair as completely as possible while achieving a long-lasting hair dyeing effect.

However, the hair dyes currently available on the market have the drawback that the hair is damaged and becomes rough or loses its lustre after dyeing, because in order to increase the dyeing effect on the hair, the first agent has high alkalinity and the second agent uses hydrogen peroxide.

Problem the Invention is intended to Solve

Accordingly, the present inventors, upon thorough research of oxidation hair dye compositions that can reduce hair damage after dyeing, discovered that hair damage after dyeing could be further reduced by using a maleic acid derivative in combination with a hair dye composition containing an oxidation hair dye precursor …”

The second passage is at page 3 line 30 – page 4 line 3:

“These maleic acid derivatives protect the hair after dyeing according to the following mechanism: The thiol groups that are present in the hair bring about damage to the hair accompanied by a reduced tensile strength or breaking strength compared to the original hair through thiol-disulphide bond interchange reactions during a dyeing process. The thiol groups in the hair can undergo an addition reaction with a substance that has an ,-unsaturated carbonyl group, such as maleic acid. Thus, the addition reaction of the thiol groups with maleic acid can lower the possibility of a reaction among the thiols within the hair, resulting in reduction of hair damage.”

As the judge explained at [235]:

“Although this mechanism involves the disulphide bridges in the hair, an important point in the context of this case is that this concept of thiol-disulphide interchange causing damage to the hair involves a process of reduction rather than oxidation. When reduction breaks a disulphide bridge the result is two thiols, in effect [-S-S-] is turned into [-SH HS]. By contrast when oxidation breaks a disulphide bridge the result is two group known as cysteic acid groups or

sulphoxides, in effect [-S-S-] is turned into [-SO₃^--O₃S-].”

The third passage is at page 7 lines 7-14, after a table showing lower tensile strength measurements of 50 hairs for four examples in accordance with the invention compared to a comparative example:

“The degree of damage to hair is often evaluated by hair tensile strength. Lowered tensile strength indicates severe hair damage due to changes in the protein structure within the hair.

Effect of the Invention

This invention relates to a novel hair dye composition, more specifically, to a hair dye composition which contains an oxidation dye precursor and further a maleic acid derivative, thus allowing to reduce the rate of the reduction in hair tensile strength due to dyeing and accordingly reduce hair damage.”

There is no dispute as to the law concerning obviousness, which was recently reviewed by the Supreme Court in Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15, [2019] Bus LR 1318. Nor is there any dispute that obviousness involves a multi-factorial evaluation and therefore this Court is not justified in intervening in the absence of an error of law or principle on the part of the judge: see Actavis v ICOS at [78]-[81] (Lord Hodge). This is particularly so given that the decision was one of an experienced specialist patents judge after hearing oral evidence from experts in the field.

The judge concluded that claim 11 was not obvious over Kim for the following reasons:

“245.

The question in the end is whether it would be obvious to the skilled person to apply the idea disclosed in Kim of using an additive such as maleic acid to reduce or prevent hair damage due to a hair lightening treatment involving bleaching without dyeing.

246.

Despite the elaboration given to this issue at trial, in my judgment this question turns on a short and simple point. The skilled person knows as part of their common general knowledge that a hair lightening treatment involving bleaching without dyeing is a highly oxidative environment. The mixtures used generally include hydrogen peroxide and persulfate. The damage caused by that sort of treatment was known to be damage caused by that oxidative environment. For the skilled person to think it was worth using any of the additives disclosed in Kim, they have to believe that those additives might have an effect in a system in which the damage the additive is there to deal with is caused by oxidation.

247.

In my judgment it would not be obvious to the skilled person that the maleic acid derivatives in Kim might (let alone would) have a protective effect against damage caused by oxidation. That is for the following reasons. First and foremost the thiol-disulphide mechanism actually proposed by Kim is concerned with reduction not oxidation. The skilled person would regard it as scientifically credible. Dr Hefford agreed that the mechanism would be viewed as credible although in cross-examination (but not in his report) he suggested that while it was credible as a phenomenon, it was not as an explanation for a reduction in tensile strength. I was not convinced by that qualification. As a matter of common general knowledge, both oxidation and reduction were known to damage disulphide bonds and were known to reduce the tensile strength of hair. Since reduction was known to cause damage, the idea that an additive might act to reduce that damage by interacting with thiol groups to prevent it is credible. There was then a point on the availability of thiol groups but I am not satisfied the skilled person’s thinking would go so far as to delve into the likely number and availability of thiol groups so as to lead to doubts about Kim’s mechanism. That degree of insight and thought is a hallmark of inventiveness (or hindsight).

248.

Second the Kim document goes out of its way to propose a mechanism. It does not simply present data and leave the reader to infer how it is working. On the face of it the inventors of Kim have done the tests they say they have done and perhaps done more tests too.

249.

Third, although oxidative dye compositions do use oxidising agents, they are known to have a much less aggressively oxidising effect than the hair lightening treatments which involved bleaching without dyeing. The latter had two aggressive oxidisers – hydrogen peroxide and persulfate. The former had hydrogen peroxide alone. Olaplex overstate the case sometimes when seeking to downplay the significance of the hydrogen peroxide in an oxidative dyeing composition. While its function was in part to oxidise the dye precursors, it is clear that the skilled person would, as a matter of common general knowledge, understand that the hydrogen peroxide would often act by bleaching the hair as well. That would not always happen to an appreciable extent but it often would. That effect of the hydrogen peroxide was understood to be the cause of hair damage with repeated use of oxidative dyeing treatments. However Kim does not say anything which purports to link the hydrogen peroxide in the oxidative dye formulations described with the damage mitigated by the maleic acid derivatives. That would be contrary to the mechanism Kim proposes.

250.

Fourth, although Kim does make clear that the proposal relates to oxidative dyes and a system with oxidative dye precursors, it does also expressly contemplate a system with direct dyes and therefore no hydrogen peroxide at all. Albeit that no results are presented for direct dyes, that suggestion is inconsistent with the effect being one associated with oxidative damage.

251.

For a skilled person to think that maleic acid would work to prevent damage in a pure bleaching system with no dye would involve that person thinking they knew better than Kim. It is not the law that the skilled person is bound to follow whatever mechanism is proposed in a prior teaching nor is it the law that it is necessarily inventive to go against or beyond such a teaching. It always depends on the facts of the particular case. I accept this is an empirical art and that the skilled person would be interested in the data in Kim ….

252.

The problem for L’Oréal is that the skilled person is aware that chemical reduction can cause damage to hair and so there is no reason for an uninventive skilled person to disbelieve Kim. For a skilled person to go ahead and test maleic acid in a hair lightening formulation involving hydrogen peroxide, persulfate and no dye would be an act of invention. …”

L’Oréal contend that the judge erred in law or principle in that he misconstrued Kim, and thus this Court can and should reconsider the matter. L’Oréal case is clearly and succinctly summarised in paragraph 96 of their skeleton argument for the appeal:

“Had the learned judge construed Kim correctly and identified that it disclosed that maleic acid was effective in treating damage caused to keratin by the presence of hydrogen peroxide he would have held it was obvious to apply that teaching to bleaching without dyeing because the mechanism of damage was known to be the same.”

Kim is undoubtedly close prior art, and L’Oréal had a very respectable case that claim 11 was obvious in the light of it. The problem for L’Oréal on this appeal is that the judge squarely addressed himself to that case, and gave a number of reasons for rejecting it. I accept that, if L’Oréal could show that the judge’s starting point was an incorrect reading of Kim, then that might well undermine his conclusion. As his reasons show, however, the question is not a matter simply of the interpretation of Kim, but of how the skilled team would react to its teaching.

L’Oréal rely upon the first and third of the passages I have cited above as showing that Kim discloses a method of reducing the oxidative damage to hair in oxidative dyeing. The problem with this argument is that, first, that is not what Kim actually says, and secondly and perhaps more importantly, what Kim says in the second passage quoted is inconsistent with that interpretation. As the judge explained at [245], the thiol-disulphide mechanism proposed by Kim in that passage is concerned with reduction, not oxidation. It therefore has no relevance to the damage caused by bleaching (hair lightening).

When faced with this difficulty during the course of argument, counsel for L’Oréal’s response was to attack the judge’s finding that the skilled team would regard the mechanism proposed by Kim as scientifically credible as being one that was not open to the judge on the evidence. This is not one of L’Oréal’s grounds of appeal, however, nor is it a submission made in L’Oréal’s skeleton argument. In any event, the submission is a hopeless one given that, as counsel for Olaplex pointed out, L’Oréal’s own expert Dr Hefford said in paragraph 7.8 of his first report that “the mechanism would make scientific sense to the skilled addressee”. Only in his third report served the day before trial did Dr Hefford attempt to row back from this. We were shown the transcript of Dr Hefford’s cross-examination on this point, and I can well understand why the judge stated that he was not convinced by Dr Hefford’s qualification to what he had said previously. At all events, there was certainly material which entitled the judge to make the finding that he did.

Furthermore, as the judge noted at [250], the mechanism proposed by Kim makes sense of the fact that Kim says at page 3 lines 22-24 that direct dyes such as henna, which do not involve oxidation at all, may be used instead of an oxidative dye. Thus the authors of Kim evidently perceived their invention as applicable to dyes generally, not to oxidative processes generally.

Counsel for L’Oréal’s response to this point (again, not one advanced in L’Oréal’s grounds of appeal or skeleton argument) was that the relevant passage in Kim was proposing the use of a direct dye in addition to an oxidation dye. This is a bizarre suggestion, and I do not accept it.

Although the arguments on Kim ranged more widely, the central points are those I have dealt with above. In my judgment no basis has been shown by L’Oréal for interfering with the judge’s conclusion.

WO 768 is a novelty-only citation pursuant to section 2(3) of the Patents Act 1977 if, but only if, the relevant subject matter is entitled to an earlier priority date than amended claim 11 of the Patent. The subject matter relied upon by L’Oréal is Example 8 of WO 768. There is no dispute that this falls within amended claim 11. L’Oréal contend that Example 8 is entitled to priority from US 239, which is earlier in date than the priority document from which the Patent claims priority (the judge set out all the relevant dates in the Main Judgment at [188].) The subject matter in US 239 relied upon by L’Oréal is Example 4. Thus the key issue is whether Example 8 of WO 768 is entitled to priority from Example 4 of US 239.

On the face of the two Examples, they are different. Both disclose a highlighting formulation mixed with a second formulation containing a maleic acid derivative in water. In Example 8 of WO 768 the maleic acid derivative is “2,2’-(ethane-1.2diylbis(oxy))bis(ethan-1-amine) di-maleate”, which has the following structure:

In US 239, however, the maleic acid derivative is a “bismaleimide cross-linking agent” with the following structure:

The synthesis of the bismaleimide cross-linking agent is described in Example 1 of US 239.

In their expert evidence and opening skeleton argument the case advanced by L’Oréal was that Example 8 of WO 768 was entitled to priority from Example 4 of US 239 because, to put it shortly, the bismaleimide cross-linking agent would hydrolyse in storage into the corresponding di-acid which in turn would hydrolyse to the dimaleate. The judge described this is a “thin basis” for the claim to priority and rejected it on the expert evidence. There is no challenge by L’Oréal to this conclusion.

During the cross-examination of Olaplex’s expert Professor Haddleton, however, junior counsel for L’Oréal put a completely different point to the witness which had not been foreshadowed in any statement of case, evidence, skeleton argument or letter. In short, this was that the proton NMR spectrum of the product of Example 1 reproduced in Figure 1 of US 239 showed that the product described as the bismaleimide was in fact the di-maleate. This was a point which had occurred to junior counsel for L’Oréal during his preparation for trial and had been considered by L’Oréal’s second expert Professor Law on the day before trial (although it was discussed further between junior counsel and Prof Law on the first and second days of the trial). Even though L’Oréal served a further expert report from Prof Law in the evening of the second day of trial, this point was not mentioned in it.

The judge held that this point could and should have been notified to Olaplex prior to Prof Haddleton being called as a witness, and that springing the point upon the witness without prior warning, and thus without giving Olaplex the chance to adduce other evidence to rebut this new case, amounted to procedural unfairness which justified excluding the issue from consideration. Again, there is no challenge by L’Oréal to this conclusion.

For good measure, the judge also held that, based on the evidence before him, L’Oréal had not established that Example 8 of WO 768 was entitled to priority from Example 4 of US 239 anyway. The basis for this conclusion was that, although the judge found that Prof Haddleton’s evidence established on the balance of probabilities that the product shown in Figure 1 of US 239 was indeed the di-maleate, the evidence did not establish that the di-maleate was the inevitable result of following Example 1 of US 239. Again, there is no challenge by L’Oréal to this conclusion.

The Main Judgment was handed down on 11 June 2018. As is usual in the Patents Court, argument over the consequential orders that should be made was adjourned, in the event until 19 July 2018. On 3 July 2018 L’Oréal issued an application seeking permission to adduce further evidence on the issue of whether Example 8 of WO 768 was entitled to priority from Example 4 of US 239, and hence deprived amended claim 11 of the Patent of novelty. The evidence in question, comprising a second

The two key points to note about this chronology are that the application was made roughly three weeks after the Main Judgment was handed down dismissing both of the cases advanced by L’Oréal on this issue at trial, but nevertheless before the order consequential upon the Main Judgment was sealed.

In a nutshell, the further experimental and expert evidence which L’Oréal seek to adduce is directed to proving that the inevitable result of carrying out Example 1 of US 239 is the di-maleate and not the bismaleimide. The evidence sets out a repetition which Prof Law carried out and his opinion that the same result would always be obtained.

It was common ground before the judge, and before us, that the applicable principles were those stated by the Supreme Court in In Re L (Children) (Preliminary Finding: Power to Reverse) [2013] UKSC 8, [2013] 1 WLR 634. In that case the Supreme Court confirmed that a judge had the power to reverse his or her decision at any time before the order was sealed and disapproved dicta in In Re Barrell Enterprises [1973] 1 WLR 19 to the effect that exceptional circumstances were required. As Baroness Hale explained at [27]:

“Thus one can see the Court of Appeal [in later cases] 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.”

Before us counsel for Olaplex placed some reliance upon the line of cases culminating in Generics (UK) Ltd v Warner-Lambert Co LLC [2018] UKSC 56, [2019] Bus LR 360 in which courts have rejected applications made by patentees to amend the claims of patents after trial on the ground of abuse of process. It should be noted that this line of authority does not depend on whether or not the order has been sealed at the time the application is made – in many of the cases it had not been. These authorities are not directly applicable to the present situation. Nevertheless a key factor in such cases is often that the application will, if granted, necessitate a second trial: see in particular Nikken Kosakusho Works v Pioneer Trading Co [2005] EWCA Civ 906, [2006] FSR 4 at [13]-[22] (Jacob LJ), [33] (Laws LJ) and [34] (Waller LJ). That factor is also present here.

The judge concluded that it would not be in accordance with the overriding objective to admit the further evidence. His reasons for reaching that conclusion are set out in detail in the Second Judgment at [47]-[67]. While those reasons should be read in full, I think they can be summarised as follows:

The judge’s decision is a case management decision applying principles which are not in dispute. It follows that L’Oréal face a high hurdle in attempting to show that he exceeded the boundaries of his discretion. L’Oréal contend that the judge erred in three principal respects:

In my judgment none of these criticisms has any substance. The first criticism is completely untenable. Plainly there has to be something about the circumstances which justifies re-opening the issue, otherwise there would be no basis for acceding to the application. Moreover, the judge’s approach is wholly in accordance with CPR rule 1.1. As counsel for Olaplex rightly submitted, the overriding objective is not simply about reaching the (allegedly) correct decision on the merits: see the discussion in Nikken v Pioneer. Contrary to the submission of counsel for L’Oréal, the judge was not re-introducing the test of exceptional circumstances from Re Barrell.

Turning to the second criticism, the judge was entirely correct to attach considerable weight to the fact that the new evidence did not amount to a knock-out blow, but rather raised issues which would require a second trial to resolve.

As for the third criticism, the judge was again entirely correct to attach weight to the fact that L’Oréal were trying to re-fight an issue on which they had lost at trial having taken the tactical decision to try to establish their case through cross-examination of Olaplex’s expert rather than seeking an adjournment to adduce further evidence of their own. In this regard, I note that counsel for L’Oréal repeatedly submitted that the issue raised by the new evidence had not yet been determined. This is not correct. As discussed above, it was determined by the judge adversely to L’Oréal on the evidence before him, albeit by way of an alternative ground for his decision that L’Oréal had not established that claim 11 lacked novelty over Example 8 of WO 768. That evidence did not include the new evidence precisely because L’Oréal did not seek an adjournment.

Counsel for L’Oréal also submitted that the judge had been wrong not to attach weight to the fact that (as the judge was prepared to assume) Olaplex had known about the error in the description of Example 1 for some time. This criticism has no more substance than the first three. The judge expressly found that there had been “no failure of disclosure or a lack of candour by Olaplex in relation to this point at trial” (Second Judgment at [62]). There is no ground of appeal challenging that conclusion, and in any event it was one that was plainly open to the judge. As counsel accepted, the relevant individual(s) might have forgotten about the matter or not appreciated its relevance. Even if they remembered it and appreciated its relevance, counsel was unable to identify any reason why they were obliged to disclose it.

For the reasons given above, I would dismiss both appeals.

I agree. I also agree with the judgment of Davis LJ, which I have read in draft.

I also agree. I add a few observations of my own, if only because of the evident importance of this case to the parties.

As a matter of language, it seems somewhat counter-intuitive that deletion of a disjunctive proposition (“or a simple salt thereof”) can operate not to narrow the claim but to enlarge it. However, I do accept that that cannot of itself be a determinative point: one has also to consider the science of the matter.

At trial it was (ultimately) common ground, and the judge found, that “maleic acid” included both the molecule and the ions, maleate and hydrogen maleate, which it forms in aqueous solution. On that basis, construing the disjunctive words as extending to simple salts in solid form on the face of it makes sense: particularly where the patent had in terms stated that the active agent may be provided as a dry powder. Mr Turner protested that, even if it could be provided as a dry powder, nevertheless it had to be applied simultaneously with the bleaching agent; and both experts had contemplated that that would in practice be done in (normally aqueous) solution in order for the desired effect to be achieved. However, I accept the submission of Mr Purvis that a patentee, with an eye to the future, may well have wished to extend its protection to cover simple salts in solid form: and the wording of the patent is consistent with that.

It is true that Olaplex only formulated its ultimate position on this point very late in the day: inevitably, therefore, exposing it to the kinds of forensic criticism which Mr Turner forcefully deployed. But Olaplex was not precluded on the pleadings from so arguing: and at all events the judge was entitled to proceed to decide this point as he did, without unfairness to L’Oréal arising.

As to obviousness over Kim, the repeated references in Kim to oxidation lent, in my view, considerable prima facie support to L’Oréal’s position. Nevertheless, as I understand it, the approach required in this context is one of multi-factorial evaluation, as it is styled. That being so, the circumstances in which the appellate court can interfere are limited. Mr Turner appreciated this, of course. But he said that this court could interfere: because the reasoning of Birss J was, he said, flawed by his misinterpretation of the Kim patent application and that was a matter of law.

I understand the argument but do not accept it. The undeniable fact is that Kim was entirely focused on dyeing: bleaching, as such, does not feature at all. True it is that there are repeated references to oxidation in the dyeing process (although not, I note, exclusively so). But even then the mechanism advanced in Kim is focused solely on reduction, not oxidation. That is flat against L’Oréal’s argument: and the judge found as a fact (as he was entitled to, on the evidence) that the mechanism there advanced was scientifically credible.

Overall, there is in my opinion no sufficient basis for this court, applying conventional principles, to interfere with the conclusion of the trial judge on obviousness over Kim.

As to the fresh evidence appeal, here too I can see no proper basis for this court interfering with the judge’s decision: a decision, indeed, which constituted an exercise of judicial discretion.

L’Oréal had, at trial, identified the potential issue here. It did not, for doubtless understandable tactical reasons, seek an adjournment to investigate the matter further: instead, it pursued it in cross-examination. The trial having proceeded, and L’Oréal having in the result lost on the interpretation and obviousness over Kim issues, L’Oréal could not readily be permitted to then reopen this self-same point in reliance on proposed further evidence. Given that, and given the judge’s finding that there had been no want of candour or want of disclosure (by reference to the pleaded issues) on the part of Olaplex, the decision of the judge not to permit the proposed fresh evidence to be adduced at that particular stage is unassailable.

Mr Turner submitted that the paramount consideration of justice is that the court should reach the right result. But he was in no position to assert that the proposed fresh evidence of Professor Law would inevitably bring about a conclusion in favour of L’Oréal. In any event, fresh evidence applications (and it is established that patent cases are in this respect to be treated no differently from other civil cases) cannot be decided solely by reference to arguments that the proposed fresh evidence might well lead to a different outcome. If that were the test, then many fresh evidence applications would succeed without more. The truth is that a more wide-ranging approach, by reference to the overriding objective and established general principles relating to fresh evidence applications, is needed. There is no requirement of exceptionality as such; but a number of factors will have to be addressed. These may include, among others, the importance of finality in litigation, the reasons advanced for not adducing the proposed fresh evidence earlier, whether a further trial will be needed, fairness to other parties concerned, whether a party has acted to his detriment in the interim and so on. Ultimately, however, all such decisions are fact and circumstance specific.

I am in respectful agreement with the reasoning and conclusion of Arnold LJ. I too would dismiss both appeals.