David Parsons v Convatec Limited

This is a procedural hearing in patent entitlement proceedings between Dr. David Parsons and Convatec Limited, the action having been before various judges of the Chancery Division previously and having been begun in 2022. Most significantly, for present purposes, the matter was before Ms. Pat Treacy, sitting as a Deputy Judge of the Chancery Division in 2024, and she gave a judgment dated 12th August 2024: [2024] EWHC 211 (Pat). The background to the proceedings, the parties and the nature of the claim are set out in paragraphs 1-9 of her judgment, which I will not repeat, and there is a useful summary of the procedure up to that point in paragraphs 10-16. As I have said already, these proceedings have been going on for quite some time and there has yet to be a case management conference, but I am told that one has now been listed in a window from 11th November 2025 for two days.

The proceedings are of potentially large value because they concern a multi-billion dollar product line of Convatec. That is not to say that the claim will achieve returns of anything like that sort (or anything at all) -- that remains to be seen -- but the asserted value of the claim is high. The scope of the proceedings is also very large because, somewhat unusually for these sorts of claims, there are a very large number of patents in issue which are split, for the purposes of the pleadings, into seven families, to which Dr. Parsons says he contributed over a multi-decade career with Convatec.

The issue before the Deputy Judge was criticisms made by each side of the other's pleadings. What Convatec were seeking is set out in paragraphs 18 and following of the Deputy Judge's judgment, Dr. Parsons' response is at paragraphs 27-32 and after that, there is an exegesis of Convatec's reply to Dr. Parsons's suggestion.

The Deputy Judge then turned to pragmatic matters in a section of her judgment entitled "The way forwards" at paragraphs 35-37 where she, to my mind, pragmatically and sensibly dismissed certain detailed procedural points under the CPR and noted that both parties agree that pleadings which adequately define and engage with the issues had to be put in place before there could be a CCMC.

The judge then went on to deal with a point of law that divided the parties about what the relevant concept was, if I can put it that way, when one is dealing with a section 40 claim. She recorded the overall point at paragraphs 68-71 as follows:

68.

Both parties agree that the starting point must be s.125(1).

69.

In summary, Mr Green says that the context of s.40(1) proceedings requires that the role of individual patent claims in identifying inventions in such proceedings differs from that in infringement or other similar proceedings which seek to identify the scope of protection conferred by a patent. He submits that the most relevant authorities are those under s.8.

70.

Mr Nicholson says that there is no reason to deviate from the usual approach adopted in infringement and validity cases, and that there is nothing in the context of s.40(1) proceedings that requires otherwise. Mr Nicholson’s position is that everything must start with the individual patent claims, which must be construed to identify the inventive concept encapsulated in that claim. He submits that the 'Eureka moment' must be identified from the claim, essentially that the pleadings should reason back from the claims to the invention.

71.

I prefer Mr Green’s submissions.

In a crucial part -- crucial for present purposes anyway -- of her judgment, the judge, having sided with Mr. Green on the law, nonetheless agreed with Convatec, for whom Mr. Nicholson KC then appeared, as he does today, with Mr. Ivison, in the following terms, at paragraphs 79-83:

79.

I agree with Mr Nicholson that the APoC in its current form is insufficient. It groups various 'inventions' into various technical fields, for example 'pertaining to the addition of Silver to Hydrocel' and identifies families of patents (for example, 'Bray 2003'; 'Bowler Jaques & Parsons 2002') said to have been granted for particular inventions in each technical field. Under each patent family identified in the APoC a brief description of an ‘inventive concept’ is provided with no reference to any part of any of the patents/applications themselves. In my view, this is not sufficient to enable the parties or the Court to identify an 'invention' as required under s.40(1).

80.

For the same reasons as those articulated by the Court of Appeal in Markem, I conclude that a claim-by-claim approach to identifying an invention is not appropriate; an invention must be identified from the information in the specification, rather than the specific form of the claims. However, the scope of the invention must be pleaded in a way that is clearly and objectively linked to the relevant patent(s)/applications, allowing it to be clearly identified by reference to those patent(s)/applications.

81.

I therefore direct that Dr Parsons shall amend his pleadings accordingly, identifying by clear reference to specific parts of the relevant patent(s)/applications, including at least the description and at least one representative claim, the inventions which he says have enabled Convatec to achieve outstanding benefit.

82.

Once that has been done, it will be necessary for Convatec to prepare an amended Defence which will at the very least need to take into consideration the amendments made.

83.

Finally, the draft orders prepared by both parties in advance of the hearing proposed directions leading to a CCMC. One of the suggested directions related to mediation. I had not heard from the parties on that topic at the time of writing this judgment but consider that this is a claim of a type where early mediation should be strongly encouraged. Given the time which has elapsed since the prospect of these proceedings first emerged and the parties’ extensive development of their positions in correspondence, I am minded to direct that mediation should take place in the Autumn term but will accept further submissions from Counsel on that issue and more generally on the form of the order.

It is made clear in those paragraphs that the judge concluded that the claim-by-claim approach to identifying an invention was not appropriate, but rather it had to be identified from the specification and not only the specific form of the claims. The judge went on to make the following order. She directed mediation at paragraphs 4-6, which I will come back to later. At paragraph 3, she made the following direction about the defence:

Most importantly, for present purposes, paragraphs 1 and 2 of her order said the following:

I note most importantly that Dr. Parsons was to put in Re-Amended Particulars of Claim identifying the specific parts of patented applications relied on, dealing with at least the description and one representative claim.

I have mentioned, and will briefly digress, to the question of mediation. Mediation, I am told, took place. Evidently, from the fact that there is a hearing today, it was unsuccessful. There was some delay built into the timetable for that step. These are obviously proceedings where a proportionate effort being put into mediation is amply justified and I hope that the parties carry on seeking to settle their differences by mediation (if appropriate) or otherwise. It is part of my objective, in exercising my case management powers today, to put them in a position where they may, if they want to have another mediation, have better information to prosecute it.

The next matter for me to identify is the nature of the pleadings that were before the Deputy Judge when she made her decision. As I have said, there are multiple patent families in issue. I am told that some are more valuable than others, or are so regarded by Dr. Parsons, and there is a family called Parsons 2012, which was identified in the course of the submissions of Mr. Green KC (who appears for Dr. Parsons with Ms. Ben Norton) as being of special commercial importance in the course of the argument before me. As it happens, the first that appears in the Particulars of Claim concerns a family called Bray 2003. It is convenient to set out the whole of the section within section D of the pleadings that covers Bray 2003 because it illustrates a number of the points that I have to decide. The relevant paragraphs are paragraphs 34-40:

It will appear from those paragraphs that they contain a number of things, but importantly they contain factual assertions about what happened during particular time periods and at particular meetings, most specifically, at paragraph 39, a meeting on 10th October 2000. Secondly, they contain scientific assertions about how Hydrocel works and, most critically of all, at paragraph 38, an identification of the invention, as the claimant formulated it, for the purposes of the pleading.

Since the order of the Deputy Judge, and (it is asserted) in compliance with it, the claimant, Dr. Parsons, has put in a number of amendments and schedules. There is only a very modest amendment to paragraph 38 itself and the meat of what is said to be compliance with the Deputy Judge's order is to be found in Schedule 1A. That is too long to quote in this judgment, so I shall not do so, but the Bray section begins at page 7 and runs on for a number of pages, with quite a considerable number of representative claims appearing on page 7.

In addition to references to the specification, there is also reference in the third column to a witness statement of Ms. Macdonald of Bird & Bird, who I understand must have been acting for Convatec at the time, in which she gave some general description about what was in the various patents.

Convatec is deeply dissatisfied with what has been produced by Dr. Parsons and has issued the application which comes before me today. The draft order that is sought is in the following terms:

Thus paragraph 1 sets out what the claimant must do by way of re-re-amending the Particulars of Claim and paragraph 2 changes the time for compliance with various provisions of the Deputy Judge's order.

The defendant says that it is still in the dark about what Dr. Parsons asserts to have been the inventions in the various patent families which he himself made or potentially made with others. The objections are both to statements in the form of paragraph 38, for which there is a broad equivalent in relation to each family, and in relation to the backup provided in Schedule 1A, to which I have referred. Mr. Nicholson KC (for Convatec), in particular at the hearing today, focused on a mismatch (as Convatec would present it) between the statements of the nature of the invention in paragraph 38, and its cognates for the other families, and the parts of the specifications relied on in Schedule 1A.

I think, at least at the level of understanding which has been possible for me at the hearing, that mismatch looks like something that needs careful thought on Dr. Parsons's side. Over the short adjournment, Mr. Green took instructions about that and indicated that the claimant was willing to consider that and, if advised, to make amendments to the particulars of claim in the next four weeks to address that mismatch. However, Mr. Green made clear that in saying that, he was not accepting that there was a mismatch or that if there was, it was necessarily a problem. He referred me in particular to the claims of one of the Bray patents which is indeed in more general terms.

In the written skeleton argument for this hearing, matters were approached at quite a forensic level, particularly on Dr. Parsons's side, asserting under a variety of procedural headings that it was not open to Convatec to seek this order in the light of the fact that the Deputy Judge had already ruled on the adequacy of the pleadings and the steps to be taken in respect of them. On the other hand, Mr. Nicholson argued that the court always has the power to case manage its proceedings and that if it turns out, following the compliance with one order, that the case requires further management, then the court must have the power to do it.

I agree with that at a high level. On the other hand, it is an inappropriate course to take for the court to revisit a case management decision and replace it with something else simply because one party has come to regret it, particularly when the case management decision is taken, as it was here, by a judge of the same seniority and where there has been no appeal.

I do not think it is necessary to get into a careful analysis of the provisions of the CPR or of estoppel by procedural orders, or anything of that kind, for my decision today. I think it is adequate for me to say that simply doing over again a previous case management decision is something the court should rarely, if ever, do and only in the most extraordinary circumstances.

That is far from answering the question because Mr. Nicholson's primary submission was that Dr. Parsons is not in compliance with the previous order and that the case was, and remains, unmanageable.

In my view, however, statements of invention of the kind that appear in paragraph 38 for Bray, and in other paragraphs for the other patent families, are potentially entirely appropriate to characterise a relatively general high-level invention of the kind that might be made in this field of technology, or indeed in any other field of technology. As I have said in the course of argument, they appear to be framed at the sort of level that frequently is used when parties seek to characterise inventions or inventive concepts for many different purposes in proceedings under the Patents Act. They are framed, it is true, at a relatively general level, but inventions sometimes are made in that way. It is extremely telling, I think, that the Deputy Judge's order did not require the claimant to amend any such paragraphs and separately, although I think this is of less importance, I note that the Deputy Judge did not make an order for the provision of further information which would have dug into the detail of those paragraphs despite an application that was before her covering that. I have little hesitation in concluding that merely by not amending paragraph 38 and its equivalents, there was no default by Dr. Parsons. I find those paragraphs relatively easy to understand.

I also consider that on its face Schedule 1A does what the Deputy Judge required by her order. The claimant has called out parts of the specification and has alighted on representative claims. I was and remain somewhat troubled, as I have said already, by the mismatch between the statements of invention at a high level in the narrative parts of the pleading and the considerably more detailed parts of the specification. For example, many of the parts of the specification relied on in relation to Bray 2003 get into the detail of percentages of ingredients and ranges and so forth and so far as I could tell (and Mr. Green did not direct me to anything to contradict this) there is no general statement relied on from the specification that matches the quite high level statement of inventive concept in paragraph 38 and its equivalents.

That may potentially, and I put it no higher than that, be justified by the fact that there are more general claims because, as is a fundamental part of patent law, the claims do tend to generalise the specific description in the specification of the patent. In any event, it is really a matter for Dr. Parsons to consider if the mismatch is a difficulty for his case. It is that which Mr. Green has offered for his client to do. I emphasise to consider whether amendments are needed or not, and without a commitment to do that.

In my view, summarising, although it may be open to attack at trial, the sort of statement contained in paragraph 38 is an appropriate statement of an invention, potentially (if the facts bear it out), and not amending that did not amount in any way to a breach of the Deputy Judge's order, and the connection made to Schedule 1A is also in compliance, even if it raises issues that have to be thought about in terms of the level of detail of the specification and of the claims. I therefore conclude that there has been no breach of the order and that Dr. Parsons has complied.

I do consider that in substance Convatec's approach to this hearing has been to seek a re-do of the consideration that the Deputy Judge already gave to matters. In fact, it goes rather further than that, because the order sought goes on in subparagraphs (a) and (b) at paragraph 1 to seek to require Dr. Parsons to identify facts or concepts known at the time the invention was made; in other words, the prior art and the common general knowledge. This was something that could have been sought at the time of the Deputy Judge's order and was not. In my view, it would place an extremely heavy burden on Dr. Parsons and delay matters considerably and is unnecessary to the progress of the case at this stage.

I conclude that I will give Dr. Parsons the four weeks that he sensibly seeks to review the mismatch that is asserted, to consider whether he accepts that it is real and what his response is and, if appropriate, to make additional amendments either to the body of the particulars of claim or to Schedule 1A. The time for Convatec's amended defence, to which I will turn in a moment, can be put back appropriately to allow that. Both pleadings can easily be prepared in time for careful consideration of disclosure, trial structure and so on in advance of the CMC in November.

I turn to consider the question of Convatec's defence. The Deputy Judge's order, as I have noted already, was that the defendant had to put in an amended defence which "shall at the very least" take into consideration the amendments made pursuant to Convatec's amendments on the inventions. It is, in retrospect, a slightly unusual way to phrase matters but I am clear in my own mind that the intention and meaning of the order was to ensure that Convatec had to, without any equivocation, engage with the material put in about the specification and claims, but more broadly had to file a CPR-compliant amended defence.

In my view, there is a lot of work still to be done on Convatec's defence for it to reach that standard, and although there is no formal application before me today to rule on it, I intend to give guidance about that and to set a time for it to be done. Given the review that has been possible at this hearing I cannot conceivably go through each paragraph but I can look at them at a high level. To take Bray 2003 to begin with, the relevant part of the defence begins at paragraph 34 and stretches to paragraph 37:

It can be seen that few admissions are made, indeed minimal admissions. As to paragraphs 36-39, it is said that the invention relied on is not identified with sufficient particularity to admit a response, that the relevance of the matters in paragraphs 36-38 cannot be understood and it would be disproportionate to the defendant to plead further, and otherwise everything else is not admitted.

Those paragraphs, all three paragraphs 37-39, contain specific assertions about individual meetings and about what the claimant did. Perhaps most crucially, there is an assertion at the beginning of paragraph 39 that the claimant presented the invention described in paragraph 38 at a meeting on 10th October 2000.

These factual assertions are, it is obvious, potentially critical to the disposition of the proceedings, and they are straightforward assertions of fact. It can be no excuse not to plead to assertions of fact of that kind that there is an interpretational issue, no doubt a difficult one, about what the inventive concept of a patent family is. I reject entirely what is said in paragraph 36 of the defence, and it does not to my mind present anything like a coherent reason for not complying with the requirements of the CPR to deal with allegations of fact, to admit or deny them, to put forward an alternative case and so forth. I would have reached that conclusion anyway, but I understand from the submissions of Mr. Green, which were not contradicted by Dr. Nicholson, that Dr. Parsons has actually presented a page from his laboratory notebook at the time covering the meeting of 10th October 2000. I have no doubt that in an organisation of the size and careful organisation of Convatec that records of some kind exist and can be accessed or certainly at least searched for. My direction is that the amended defence that is put in must plead to the factual assertions contained in the reamended particulars of claim.

Of course, I am not shutting out Convatec from the normal pleading that can be put in under the CPR if it turns out that it in fact has no knowledge of such matters, although I have to say that seems rather unlikely to me. I would hope that Convatec has already been looking into the factual allegations. I must say until it does so and shows its hand in its pleadings, as it is required to by the CPR, that will be an unnecessary hindrance both on case management and the ability of the parties to try to work towards a settlement.

I am also unimpressed by the general statements in the defence in section I under the heading "The defendant's position". This was said by Dr. Nicholson to be a general indication of the sort of way that Convatec might develop its case, whilst hindered by the difficulty it saw with the formulation of the inventive concept of the patents by Dr. Parsons. As I have said already, I consider that the formulation of the inventive concept is reasonably easy to understand and not defective. In any case, that still to my mind does not excuse the approach that has been taken. Paragraph 59 in section I of the defence says that the Aquacel products (those are the ones in question) have been successful and profitable and a variety of factors leading to that are given, including at (f) intellectual property rights, including but not limited to patents. It seems to me that the defendant ought to be able to and is required by the CPR, if it can, to deal with the factual assertion that the patents in question made a significant contribution to the profitability of the Aquacel product line. Masking that within the very general subheading of subparagraph (f) is not good enough.

Similarly, paragraph 60 says that the claimant was a longstanding employee of the defendant who made contributions to its business over the course of his employment, including in relation to certain technical and non-technical aspects of the development of the Aquacel AG products. This is a positive statement of a case or an indication that the defendant has a positive case about what the claimant did, but fails to say what the defendant considers that he did.

I accept that to phrase his contribution in terms of patent claims or bits of the specification, while that remains in flux, could have been difficult, but there is no reason at all why his activities could not have been described in a purely factual way without having to link them to patent specifications or patent claims. It is just a question of historical facts.

As I say, it is impossible in the time available and, anyway, I am not invited to go through the defence in all its paragraphs, but I hope I have made clear that the approach of bare denials in relation to the patent families where they involve an omission to even engage with factual allegations is not satisfactory, and nor is it satisfactory to engage in only the most general terms in section I of the pleading by indicating a positive case or a knowledge of the importance of the patents and the like without pleading out what they are.

I also am clear in my own mind that until that is done (i.e. the defendants properly engage with the facts) case management is going to be very difficult. I said in the course of argument that this may potentially be a case where the disputes of primary fact are few. That would have very considerable case management implications. It would be far from meaning that Dr. Parsons would necessarily win, because the question of benefit, what the benefit came from, whether it was outstanding and so forth, would all have still to be litigated. It would have potentially profound implications for the length of the trial, the splitting of these proceedings into a number of different trials, disclosure and so forth. I regard it as a crucially important case management step for the defendant fully and properly to grapple with the concrete historical facts of what happened as pleaded by Dr. Parsons.

I do not know how far investigations have already gone, but time should be allowed for them to be done properly. I think it is a good thing that there is plenty of time before the CCMC to enable that to be done. That is my guidance about the very substantial work that needs doing to the defence.

Towards the end of the oral argument, I canvassed with counsel how it might be that these proceedings would be managed in terms of trials. I express no concluded view and it would be impossible to do so anyway until the steps that I have already indicated have been taken, but there is an obvious difficulty in terms of the sheer length of the trial in dealing with all of the seven patent families in one trial. I do not intend to make any prescriptive ruling about this today, but I do require the parties to engage in discussions which can begin as soon as possible, but I think cannot be hoped to reach fruition until the pleadings are in more complete form, about how to do that.

This exercise should be considered along all axes and I mean that the parties need to have regard to which of the patent families are the most important commercially, which will be the easiest to determine the facts about, which will be most easily characterised in terms of contribution, and so on. A suggestion was made by Convatec, through its solicitors, some time ago which was not taken up, which I think is unfortunate. I think the sooner this discussion at least begins the better. For the moment, I will leave it to the good sense of the parties to work out how to conduct that discussion. It may be that they want to or may feel it is best to initially have that discussion without prejudice to see if it offers a way through, because I think there may well be an integration between that exercise and the consideration, if it is to happen again, of possible settlement. For example, it may be that simply trying to characterise Dr. Parsons's contribution, if any, in relation to the inventions of some of the patents, without considering the remedies that might follow from it, will not progress matters towards a settlement because it will not enable the parties to begin to get a grip of the sums, if any, that are at stake. In any case, this will be a complicated and multi-stage exercise. It will be one of the most crucial decisions to be made at the CCMC in November and, as I say I make no prescriptive decision about it, but I encourage the parties to begin the discussions as soon as possible.

My conclusion is that Dr. Parsons is not in breach of the Deputy Judge's order. I would not have made any further order against him but, at his own request, I will give him a period of four weeks to consider whether he wants to make any further amendments to the pleadings to address any potential mismatch of the kind I have described. Thereafter, the defendant will be required to put in an amended defence consistent with the guidance I have given about its contents.