| ESTOPPEL — Per rem judicatam — Cause of action estoppel — Defendant winning patent action through perjury of inventor — Claimant bringing fresh action for declaration of entitlement to patent — Whether claim precluded by doctrine of res judicata — Whether inventor mere witness — Whether fraud exception applying
Cinpres Gas Injection Ltd v Melea Ltd [2008] EWCA Civ 9; [2008] WLR (D) 19
CA: Sir Igor Judge P, Jacob and Richards LJJ: 24 January 2008
Where an inventor who gave perjured evidence at the trial of his employer’s application for a patent had been more than a mere witness in those proceedings, his fraud should be treated as his employer’s fraud for the purposes of the fraud exception to the doctrine of res judicata.
The Court of Appeal so stated allowing the appeal of the claimant, Cinpres Gas Injection Ltd, from the decision of Mann J [2006] EWHC 2451 (Ch); The Times, 5 December 2006 dismissing the claimant’s claim under s 37 of the Patents Act 1977 for a declaration that it, rather than the defendant, Melea Ltd, was entitled to be registered as proprietor of a patent.
In 1991 the claimant had brought proceedings under s 12 of the Patents Act 1977 claiming that a patent application made by the defendant should proceed in the claimant’s name. Those proceedings had been dismissed by the Court of Appeal (Ladney and Hendry’s International Application [1998] RPC 319) which upheld the Comptroller’s finding that the invention had been made by one Hendry when working for Ladney, the owner of the defendant. The claimant brought the present s 37 proceedings after discovering that Hendry had given perjured evidence in the original proceedings. Mann J held, inter alia, that as a matter of law, based on the authority of Odyssey v OIC Run-Off [2000] EWCA Civ 71, the claimant’s claim to the patent must fail by operation of the doctrine of res judicata, since the fraud exception to that doctrine was limited to circumstances where the first judgment had been obtained by the fraud of the party concerned, and Hendry was a mere witness.
JACOB LJ giving the judgment of the court said that Odyssey v OIC Run-Off decided that a judgment could not be set aside unless it had been obtained by the fraud of a party or procured by a party. Perjury by a “mere witness” was not enough. In his Lordship’s judgment the evidence of Hendry the first time round should be regarded as that also of Ladney and that Hendry’s fraud should be treated as also that of Ladney. Both Hendry and Ladney had been actually parties to the first proceedings. Hendry had been seeking to justify his claim to be the inventor, to be named on the patent as such and to have had the right to have assigned the property in the invention to Ladney. Ladney had been claiming to be the owner of the right to apply for the patent by virtue of assignment from Hendry. They had had a common foe, the claimant, and made common, and completely intermixed cause against it. One could not succeed without the other. True it was that Ladney’s claim was much the more valuable commercially, but that value did not have anything to do with it. Besides even Hendry had a commercial interest in the patent belonging to Ladney for he would be entitled to royalties if that were so. Not so if the patent belonged to the claimant. It would be wrong to say that Hendry had been a “mere witness” in the first proceedings. He was more than merely a witness for Ladney—he had been Ladney’s “comrade in arms”. His fraud by way of perjury was being adopted by Ladney and should be regarded as Ladney’s. Hendry himself clearly could not resist the earlier judgment being set aside on the grounds of his fraud. Given that, the whole judgment was unravelled and should be set aside.
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