Vector Corporation v Glatt Air Techniques Inc

Factual and Procedural Background

The proceedings began with Company A seeking revocation of Company B's European patent concerning fluidised bed technology. Company B responded by applying for unconditional amendment of the patent. Company A opposed the amendments on numerous grounds, including discretionary and allowability issues, and challenged the validity of the amended claims based on alleged lack of novelty and obviousness over four prior art citations.

The trial judge rejected all discretionary objections, held the amendments legally allowable, and dismissed the validity attacks. Permission to appeal was granted only on the allowability of the amendments, not on novelty or obviousness. Company A sought permission to appeal the latter issues, but the appeal was ultimately allowed on the amendment point alone.

The appeal focused exclusively on the allowability of a newly introduced independent claim 13, concerning whether it contained extended subject matter, specifically whether it constituted an intermediate generalisation. The patent in question relates to fluidised bed processors with a spray nozzle shielded to improve coating processes.

Legal Issues Presented

1. Whether the new independent claim 13 introduced by amendment contains extended subject matter contrary to the provisions of Article 123(2) of the European Patent Convention and section 76(3)(a) of the Patents Act 1977.
2. Whether the particular amendment constitutes an unallowable intermediate generalisation.
3. Whether permission should be granted to delete certain words from claim 13 to avoid added matter and the implications of such deletion on the necessity of a new trial.

Arguments of the Parties

Appellant's Arguments

• The Appellant contended that the amendment to claim 13 introduced added matter because the application as filed required both a physical shield and an upwardly moving gas stream to shield the spray nozzle, whereas claim 13 allowed shielding by gas stream alone.
• The Appellant argued that the amendment imposed a requirement that the means forming the gas stream be located within the upbed, which was not disclosed in the original specification, constituting an unallowable intermediate generalisation.
• They further submitted that allowing deletion of the contested words would necessitate a new trial due to potential new evidence on validity, including novelty, obviousness, and sufficiency.

Appellee's Arguments

• The Appellee contended that the specification clearly and unambiguously disclosed alternatives to the preferred embodiment, including shielding by a gas wall alone without a physical shield, thereby justifying claim 13 as amended.
• They argued that the italicised words requiring the means to be within the upbed were surplusage or at least did not add new matter, and that the amendment did not constitute an intermediate generalisation.
• Regarding the deletion of the italicised words, the Appellee submitted that no new trial would be necessary since the judge's validity findings were not dependent on those words and the narrower claim was encompassed within the scope of the broader claims already found valid.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Merrell Dow v HH Norton (unreported, 1996)	Equivalence of s.76(3)(a) Patents Act 1977 and Art 123(2) EPC regarding added matter	Confirmed purposive construction of s.76(3)(a) to align with Art 123(2) EPC; no substantive difference in meaning
Bonzel v Intervention (No 3) [1991] RPC 553	Test for added matter: comparison of original application and amended patent through the eyes of the skilled addressee	Adopted the three-step comparison test for assessing added matter, emphasizing strictness and clarity of disclosure
Richardson-Vicks' Patent [1995] RPC 568	Test for added matter simplified to whether the skilled man learns anything new from the amendment	Supported the Bonzel test and confirmed its continued relevance
G1/93 Advanced Semiconductor Products [1995] EPOR 97	Underlying rationale of Art 123(2) EPC preventing unwarranted advantage by adding undisclosed subject matter	Reinforced the principle protecting legal certainty and third party interests
European Central Bank v Document Security Systems [2007] EWHC 600 (Pat)	Elaboration on the Bonzel test; strict comparison, avoidance of hindsight, and consideration of explicit and implicit disclosure	Applied the principles to clarify assessment of added matter and intermediate generalisation
Palmaz's European Patents [1999] RPC 47	Definition and explanation of intermediate generalisation	Used to illustrate the difficulty in extracting features from a particular context without inventive significance
Nikken v Pioneer [2005] EWCA Civ 906	Principle that post-trial amendments to patents by claim re-writing should generally not be permitted	Applied to refuse permission to amend claim 13 without a new trial unless exceptional circumstances arose

Court's Reasoning and Analysis

The court began by reaffirming the equivalence of the UK statutory provision on added matter and the corresponding article of the European Patent Convention, adopting a purposive and strict approach to amendments. The test applied was whether the skilled person would learn anything new from the amended claim compared to the original application, considering explicit and implicit disclosures without hindsight.

The court analysed the patent specification and drawings, noting that the preferred embodiment disclosed a physical shield around the spray nozzle within a Wurster fluidised bed processor. Importantly, the specification also explicitly disclosed alternatives to the physical shield, including shielding by an air wall or gas stream alone, which was not contested as an intermediate generalisation.

The contested amendment to claim 13 introduced a requirement that the means forming the gas stream be located within the upbed. The court found that while the specification disclosed the physical shield within the upbed, it did not disclose the location of the means forming a gas-only shield. This addition was not clearly or unambiguously disclosed, constituting a true intermediate generalisation and thus added matter.

The court considered whether permission should be granted to delete the italicised words to cure the added matter objection. Applying the principle from Nikken v Pioneer, the court examined whether a new trial would be necessary. While initially acknowledging some uncertainty, the court ultimately concluded that a new trial would be required due to unresolved issues concerning sufficiency and the practical implementation of a gas-only shield.

The appeal was therefore allowed insofar as it related to the disallowance of claim 13 as amended. The patentees were directed to be content with their existing claims 1 to 12. The court noted that the issue of added matter in claim 13 had not been considered by the trial judge, but this did not affect the costs order in favour of the patentees.

Holding and Implications

The court's final ruling was to ALLOW THE APPEAL in respect of the amended claim 13, resulting in the disallowance of that claim due to added matter and unallowable intermediate generalisation.

The patentees were not permitted to reformulate claim 13 or delete the offending words without a new trial. Consequently, the patent must stand with claims 1 to 12 only. No new precedent was established beyond the reaffirmation of existing principles concerning added matter, intermediate generalisation, and post-trial amendments in patent proceedings.