Case No. IP-2015-000205

is owned by the Defendant (“FDS”) and has as its title “Disposable Absorbent Garment such as a Diaper or Training Pants and a Process of Making the Same”. 2.In its Grounds of Invalidity Joa alleged that the Patent lacked both novelty and inventive step over three items of prior art. 3.Without formally admitting that the Patent is invalid, FDS has nonetheless made an unconditional application to amend the Patent and thus no longer seeks to defend the Patent’s validity by reference to the claims as granted. FDS also advanced a further and conditional application to amend. FDS’s position is that the claims in both sets of amendments mean the same thing; those put forward in the conditional amendment were said more clearly to express, but in no way to alter, what is claimed. It was therefore convenient at trial to focus on the claims of the conditional amendment. It was common ground that both whether the amendments should be allowed and the validity of the Patent stood or fell by reference to those claims. Hereafter reference to the amended claims should be taken to be those proposed claims which are the subject of the conditional application to amend. 4.Joa objected to the proposed amendment. It alleged that the claims lacked novelty and inventive step for the same reasons as did the granted claims. Joa also alleged that the proposed amendments resulted in the specification disclosing additional matter, contrary to s.76(3)(a) of the Patents Act 1977 (“the Act”) and that the proposed claims lacked clarity, contrary to s.14(5)(b) of the Act. 5.Andrew Norris appeared for Joa; Thomas St Quintin for FDS. The Patent 6.The Patent is concerned with disposable absorbent garments. These include nappies – or diapers, to give them their correct name – together with other disposable pull-on garments such as adult incontinence garments which are also covered by the invention claimed. For the most part the Patent describes the invention by reference to diapers. 7.The invention relates to side panels, or ‘ear regions’ in the diaper, shown as features 26a and 26b in Figure 1: 8.The invention disclosed is a disposable garment with more comfortable side panels than those formerly available, being made of a ‘breathable, stretchable layer assembly’. 9.Claims 1 and 9 of the application to amend were the only two in issue. Claim 1 is a product claim, claim 9 a method claim. They are as follows (omitting reference numerals): “1. A disposable absorbent garment, comprising: a topsheet; a backsheet; and an absorbent core disposed between said topsheet and said backsheet, wherein said topsheet, said backsheet, and said core together form a front region, a back region, and a crotch region disposed between said front region and said back region, and wherein a vertical longitudinal plane extends centrally through said front, back, and crotch regions; wherein each of said front and back regions includes a pair of ear portions extending in opposite lateral directions with respect to said longitudinal plane, each of said ear portions being a breathable, stretchable layer assembly, wherein said stretchable layer assembly of each said ear portion includes a plurality of vent sites, and wherein said stretchable layer assembly includes an inner material layer, an outer material layer and a stretchable material layer disposed therebetween,