Blue Gentian LLC and Another (Claimants/Respond-ents) v Tristar Products (UK) Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Lord Justice Kitchin,Lord Justice Tomlinson,Lady Justice Hallett |
| Judgment Date | 22 July 2015 |
| Neutral Citation | [2015] EWCA Civ 746 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2014/0494 |
| Date | 22 July 2015 |
[2015] EWCA Civ 746
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
THE HON MR JUSTICE BIRSS
Royal Courts of Justice
Strand, London, WC2A 2LL
Lady Justice Hallett
Lord Justice Tomlinson
and
Lord Justice Kitchin
Case No: A3/2014/0494
Andrew Waugh QC and Katherine Moggridge (instructed by DWF LLP) for the Claimants/Respondents
Roger Wyand QC and Jonathan Hill (instructed by Field Fisher Waterhouse LLP) for the Defendants/Appellants
Hearing date: 16 June 2015
Introduction
This appeal concerns an invention for an expandable garden water hose. The defendants (together "Tristar") appeal against the judgment of Birss J dated 20 December 2013 and his consequential order in which he found and declared that their garden hose called the FlexAble Hose infringed UK Patent No 2 490 276 ("the patent") which is owned by the respondents (together "Blue Gentian"). The patent was filed on 26 July 2012, has a priority date of 4 November 2011 and was granted on 1 May 2013.
At trial the only claims of the patent in issue were the main product claim, claim 1, and the method claim, claim 14. Blue Gentian alleged and Tristar accepted that Tristar's activities in relation to the FlexAble Hose fell within the scope of both claims. Their defence to the action and the basis of their counterclaim was that the patent was invalid because it lacked novelty or was obvious in the light of two prior art publications, namely US Patent Application no. 2003/0000530 A1 ("McDonald") and US Patent Application no. 2003/0098084 A1 ("Ragner"). The judge rejected all of these contentions. Upon this appeal Tristar argue that the judge fell into error in rejecting the obviousness attacks. They do not appeal against the judge's findings in relation to lack of novelty.
Tristar recognise that the issue of whether an invention was obvious is a kind of jury question which involves a multi-factorial evaluation by the trial judge of the evidence. They also acknowledge that an appeal court is therefore reluctant to interfere with the decision to which the judge has come unless he or she has erred in principle. However, they argue that the judge has indeed fallen into fundamental error in approaching the allegations of obviousness in this case in that:
i) in relation to Ragner, he wrongly construed the document and that his errors of construction led him to conclude, wrongly, that their obviousness attack should be rejected as reliant upon hindsight;
ii) in relation to McDonald, he again wrongly construed the document and relied upon evidence from Blue Gentian's expert, Mr Sinclair, which he should not have accepted.
The patent
The specification begins with a description of the background of the invention. It explains that conventional garden hoses made of resilient flexible materials suffer from a number of well known problems, namely they have to be stored on a reel or in a container, they are relatively heavy and they have a tendency to kink. For this reason, the specification continues, it would be a great benefit to have a hose that is light in weight, contractible in length and kink resistant.
There follows a summary of the invention. In broad terms, it provides a hose which comprises an elastic inner tube inside a non-elastic outer tube. When the hose is connected to a pressurised water supply, the elastic inner tube stretches and expands due to the force created by the pressure differential between the interior and exterior of the hose; then, when the supply is turned off, the inner tube contracts due to the spring force exerted by the stretched material. The separate outer non-elastic tube controls and constrains the expansion of the inner tube. The outer tube and the inner tube are only connected together at their ends.
Various preferred embodiments are then described and illustrated. Specifically, figures 6 and 9 show an embodiment of the invention in its unexpanded form and figures 5 and 10 show that same embodiment in its expanded form:
unexpanded expanded
Figure 5
Figure 6
Figure 9
Figure 10
The judge described how this embodiment works in the following terms at paragraph [24]:
"In the unexpanded state, when not connected to water pressure, the inner tube is in a relaxed condition. There are no forces being applied to expand or stretch it. It has a relatively narrow diameter. In this state the outer tube is ruffled. When the hose is connected to a water supply and the supply turned on, water pressure expands the rubber inner tube. The inner tube will expand laterally (also referred to as radially or circumferentially) and will also expand axially (i.e. along the length of the hose). As the inner tube expands the wall thickness of the inner tube material reduces, in other words the material gets thinner. The radial expansion is constrained by the diameter of the outer tube. The axial expansion is constrained by the length of the outer tube. As the water inflates the inner tube, the hose expands lengthways and the ruffles of the outer tube unfurl until it is smooth (see fig 10). In this state the hose can be used. The hose contains a flow restrictor, which can be a small disc with a narrower bore than the bore of the hose."
The benefits of this invention are, according to the specification, rather striking. It says that a preferred embodiment is, in its expanded state, 50 feet (15.24m) long but, in its contracted state, only a fifth of that length. It weighs less than two pounds (0.9072kg). In contrast, a conventional rubber hose with a length of 50 feet can weigh up to 12 pounds (5.443kg). Further, the fact that the outer tube can move freely with respect to the inner tube along the entire length of the hose enables the outer tube to become folded, compressed and tightly gathered around the outside of the circumference of the inner tube along its length in its contracted condition. This prevents the hose from kinking and becoming entangled and means it can be stored easily in a small space.
Blue Gentian make and sell a commercial embodiment of the invention under the name X-Hose. We were provided with a sample of this hose during the course of the appeal hearing and on a simple inspection the advantages of the invention were readily apparent.
The parties have helpfully agreed that on this appeal we need only address claim 1 of the patent. It reads as follows (when broken down into its various features):
"A garden water hose assembly comprising:
(a) A garden water hose assembly comprising:
(b) an outer tube formed from a non-elastic and flexible material and no metal;
(c) an inner tube constructed from an elastic material,
(d) said outer tube and said inner tube each having a first end attached together by a first coupler and a second end attached together by a second coupler;
(e) said outer tube being unattached from said inner tube between said first and second couplers;
(f) said outer tube and said inner tube having a substantially shortened first length in a non-water flow contracted state with said outer tube extending about an outer surface of said inner tube in an undulating state and
(g) [said outer tube and said inner tube having] a substantially longer second length with said outer tube capturing said inner tube in an expanded state upon the application of water pressure to the interior of the elastic inner tube as water flows through the assembly
(h) said inner tube having a larger wall thickness in the contracted state than in the expanded state and the wall thickness decreasing as the hose moves from the contracted to the expanded state, and
(i) wherein a water flow restrictor is provided in or is connected to the second coupler."
The claim presents no particular difficulties of interpretation. It includes all assemblies which have all the features of the claim and which a skilled person would sensibly call a garden water hose. It must have an outer tube which is non-elastic but flexible and has no metal (feature (b)) and an inner tube which is made from an elastic material (feature (c)). The outer tube and inner tube are attached to each other at their respective ends by first and second couplers (feature (d)) but not in between the ends (feature (e)). These tubes have a substantially shortened first length in a non-water flow contracted state in which the outer tube extends around the outer surface of the inner tube in an undulating state — referred to by the judge as a "ruffled" state — (feature (f)), and a longer second length upon the application of water pressure to the interior of the elastic inner tube (feature (g)). Inevitably, the inner tube becomes thinner as the hose assembly expands (feature (h)). Finally, there must be a water flow restrictor in or connected to the second coupler (feature (i)). The specification explains at paragraph [0051] that this flow restrictor may be a device within the second coupler or a hose nozzle, sprayer or any other device which restricts the flow of liquid within the hose.
Ragner
Ragner describes pressure-actuated retractable or extendable hoses that can be used to carry any fluid and which axially extend and retract by making use of the force created by the pressure differential between the interior and exterior of the hose and a counteracting biasing means applied to the hose. When designed to carry liquid, hoses of this invention have two...
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