Blue Gentian Llc and Another v Tristar Products (UK) Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Mr Justice Birss |
| Judgment Date | 20 December 2013 |
| Neutral Citation | [2013] EWHC 4098 (Pat) |
| Docket Number | Case No: HP13E03325 |
| Court | Chancery Division (Patents Court) |
| Date | 20 December 2013 |
[2013] EWHC 4098 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Mr Justice Birss
Case No: HP13E03325
Andrew Waugh QC and Denise McFarland (instructed by DWF LLP) for the Claimants
Roger Wyand QC and Jonathan Hill (instructed by Field Fisher Waterhouse LLP) for the Defendants
Hearing dates: 5th, 6th, 9th December 2013
Approved Judgment
I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.
THE HON. Mr Justice Birss
This is a patent case about garden water hoses. The claimants (Blue Gentian) have launched an expandable garden hose called the X-Hose. The defendants (Tristar) have launched a rival expandable garden hose called the FlexAble Hose. Blue Gentian's X-Hose is protected by UK Patent 2 490 276 entitled "Expandable Hose Assembly". The patent application was filed on 26 th July 2012 claiming its earliest priority from a filing on 4 th November 2011. The patent was granted on 1 st May 2013.
Blue Gentian contend that Tristar have infringed the patent. Tristar contend the patent is invalid, lacking novelty and lacking an inventive step over two items of prior art. They are: US Patent Application number US 2003/0000530 A1 entitled "Self-Elongating Oxygen Hose for Stowable Aviation Crew Oxygen Mask" published on 2 nd January 2003 ("McDonald") and US Patent Application number US 2003/0000530 A1 entitled "Pressure-actuated Linearly Retractable and Extendible Hose" published on 29 th May 2003 ("Ragner").
The claim form was issued on 2 nd August 2013. Blue Gentian applied for an interim injunction and the matter came before Morgan J on 28 th August 2013. Instead of ordering an interim injunction, he directed that the trial of the issues of validity and infringement should be expedited to be heard on the first available date after 1 st December 2013. The application for an interim injunction was stood over to trial.
By the trial the issues had narrowed down. The only relevant claims were the main product claim, claim 1, and the method claim, claim 14. They were the claims alleged to be independently valid. There was no issue of infringement. Tristar accepted that if, which they deny, claim 1 is valid, then their product falls within it. Tristar also accepted that if, which they deny, claim 14 is valid, then they infringe that claim too. They accept that offering the FlexAble Hose for sale would amount to offering the claimed process for use (contrary to s60(1)(b) of the 1977 Act) and that the FlexAble Hose is a means relating to an essential element of claim 14 such that their selling it would be contrary to s60(2) of the 1977 Act.
Tristar contend that claim 1 lacks novelty over McDonald and that both claims 1 and 14 are obvious over McDonald. As regards Ragner, Tristar contends that both claims 1 and 14 lack novelty and are obvious. Blue Gentian deny either claim is invalid.
Each side relied on experts reports from technical experts.
Blue Gentian called Bernard Sinclair. He is a mechanical engineer. He graduated in 1974. He has worked in product design and manufacturing for many years. He mostly specialises in plastic products, and has worked on designs for products for shaving, security, housewares, structural packaging, stationery, home and garden and electronics.
The defendants submitted that Mr Sinclair was a thoroughly unreliable witness. They submitted he seemed unable to answer straightforward questions, answered questions different from those actually put and occasionally did not answer a question at all. The defendants criticised a drawing Mr Sinclair had produced to explain the problem of trapping the McDonald hose in a box and argued that on one occasion he appeared to be thinking how he could avoid giving an answer that would be unsatisfactory to the claimants instead of thinking what an accurate answer was.
Mr Sinclair did take time to answer questions posed in cross-examination but in my judgment that was not in any sense an effort to mislead or avoid answers unhelpful to the claimant. Mr Sinclair came over as a serious minded and thoughtful individual seeking to give his evidence carefully and properly.
At one stage counsel explained to Mr Sinclair that he was going to criticise his evidence. This was a proper thing to do. Shortly afterwards Mr Sinclair felt unable to answer a question because he felt whatever he said would be criticised. In my judgment that was not the act of an unreliable witness at all. On the contrary it was a reflection of the fact that Mr Sinclair had been genuinely shocked and surprised by the criticism, because from his point of view it was wholly unfounded. I reject the defendants' criticism of Mr Sinclair.
Tristar called Gary Howe. He is a polymer materials engineer with over twenty year's experience in polymer technology with specific emphasis on the properties, design and durability of polymer materials and products. The cross-examination showed that the primary focus of Mr Howe's work involved analysing product failure. In those cases the original design work had been done by someone else. Nevertheless I am satisfied that Mr Howe was able to assist the court in relation to product design. Mr Howe may not design products from scratch but his work involves considering product design and involves creating new designs by considering modifications to existing designs.
It was also suggested that Mr Howe was too much of a polymer expert. I do not agree. The case is about products made from polymers. The skilled person may well not have as much detailed polymer knowledge as Mr Howe but nothing turns on that.
Blue Gentian also served a witness statement from Kristian Haigh. This was a transparent attempt to rely on an unpleaded allegation of commercial success. The substance of the witness statement is even headed "Commercial Success of the XHose". Mr Wyand did not cross-examine Mr Haigh and invited me to give the evidence no weight. I accept his submission. For commercial success to be relied on, it must be pleaded. It was not. Moreover CPR Practice Direction 63 contains specific rules about what must be set out in a schedule by the patentee if commercial success is in issue. No such schedule was provided. I have not been asked to consider whether the information in Mr Haigh's witness statement could have stood in place of the schedule.
One minor point arising from Mr Haigh's evidence is that it can be seen why this case is not proceeding in the Intellectual Property Enterprise Court. Substantial sums are at stake.
Person skilled in the art and common general knowledge
Since claims 1 and 14 are concerned with garden water hoses, the relevant person skilled in the art will be a person concerned with the design and manufacturing of such products. There was no dispute about this.
The garden water hose designer will have a broad knowledge of manufacturing processes including those for plastics. They would know the techniques necessary to make a conventional garden water hose. They would know the sorts of products used as domestic garden hoses and other hoses suitable for domestic use.
Mr Howe's view was that some companies manufacturing garden and domestic hoses are likely to have knowledge of more specialist hose applications. He gave examples of companies of that kind which were in existence, such as one which makes hoses for aerospace, medical and chemical applications. I am not satisfied that such wider experience or knowledge would be part of the common general knowledge of the person skilled in the art. It is not enough if some members of the relevant class have such knowledge. For it to be common general knowledge it must be generally known and generally regarded as a good basis for further action by the bulk of those engaged in the art ( Beloit v Valmet [1997] RPC 489 pp 494–495)
The garden water hose designer will be well aware of existing hose types including PVC hoses reinforced with wound cord, tubular mesh or braid; rubber hoses; flat hoses constructed from a woven outer sleeve and an inner tube (which may be bonded to the outer sleeve or not); fire-hose type lay flat hoses typically made of PVC impregnated fabric braiding; and corkscrew coiled hoses.
It was common general knowledge that conventional hoses were difficult to store compactly and that such hoses had a problem with kinking, particularly when bent around a tight corner. One solution was to use a flat hose wound on a cassette type winder. However this sort of hose needs to be fully unwound before it can be used. Coiled hoses were another approach to solve the problem of compact storage but they are cumbersome.
A point arose on the skilled person's understanding of the terms elastic and elastomeric. An elastic material is one which will deform elastically, in other words it will return to its original state when the applied force is removed. All elastomers are elastic but not all elastic materials are elastomeric. The paradigm example of an elastomer is rubber.
Construction
The patent is not complicated and technical terms are not used. After describing the field of the invention in general terms, without reference to garden water hoses, the background section (paragraphs [0003] and [0004]) describes problems encountered with garden hoses. The problems identified relate to storage, such as the need for a reel or a container and relate to tangling, kinking and the weight of the hose. The patent states that...
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