Environmental Recycling Technologies Plc v Upcycle Holdings Ltd
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss |
| Judgment Date | 05 February 2013 |
| Neutral Citation | [2013] EWPCC 4 |
| Court | Patents County Court |
| Date | 05 February 2013 |
| Docket Number | Case No: CC12 03466 |
[2013] EWPCC 4
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
His Honour Judge Birss QC
Case No: CC12 03466
Dr Heather Lawrence (instructed by Shakespeares) for the Claimant
Martin Howe QC (instructed by Bird & Bird) for the Defendant
Hearing dates: 5 th, 6 th December 2012
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.
His Honour Judge Birss QC :
Contents
| Topic | Paragraph |
| Introduction | 1 |
| The Contour prior use | 10 |
| The person skilled in the art | 17 |
| Common general knowledge | 19 |
| The patent | 35 |
| The claims | 46 |
| The application to amend the patent | 50 |
| Discretion — claim 2 | 67 |
| Obviousness | 74 |
| Application to the facts | 83 |
| Aylmore | 84 |
| Heating and cooling channels | 92 |
| Former | 108 |
| Contour | 125 |
| Conclusion | 127 |
Introduction
In this case the claimant (ERT) contends that UK Patent 2 460 838 entitled "Process for moulding plastic articles" is invalid. The patent was filed on 9 th June 2008 without claiming priority from an earlier filing. It belongs to the defendant (Upcycle). Dr Heather Lawrence instructed by Shakespeares appears for ERT and Mr Martin Howe QC instructed by Bird & Bird appears for Upcycle.
The case relates to a process called "PIM", i.e. powder impression moulding. This is a relatively new technique invented by the claimant or its predecessors or individuals associated with them at one time or another. The aspect of the PIM technique which matters for this case is as follows. Two separate moulds in the form of trays are heated. Powdered plastic material is placed on the heated surface of each mould. The plastic softens and forms a skin. Special "foamable" plastic material in then placed inside the lower tray. The upper tray is turned over and placed on top of the lower tray. Heat is applied and this causes the foamable plastic to foam up and fill up the space. The skins also merge together at the edges. Once the product is cooled, the two moulds are opened and a rigid plastic article is made. Examples of the sorts of things which can be made this way include plastic panels about 1m x 1m square and about 2cm thick.
The case began in the High Court in June 2010. It was transferred to the Patents County Court in July 2012 with a trial fixed for December 2012.
In the course of the proceedings Upcycle applied to amend the patent. Upcycle does not defend the validity of the claims in their unamended form. As proposed to be amended the patent has two claims. The important claim is new claim 1. This consists of granted claims 1, 2, 4, 5 and 12. As amended the patent will also have a new claim 2 which was original claim 13. Upcycle does not contend that claim 2 (as amended) is independently valid. Thus the only claim which matters for validity is new claim 1. A point arises on new claim 2 because it is an omnibus claim and ERT contends an amendment leaving it in place should not be permitted.
The substantive points in this case are:
i) Whether the amendments are allowable. ERT contends new claim 1 would add matter and the amendment therefore should not be permitted. ERT also takes the omnibus claim point on new claim 2.
ii) Whether new claim 1 is obvious over two items of prior art: Aylmore (published PCT application PCT/GB2006/001541 published as WO 2006/114632 on 2 November 2006) and a prior use known as "Contour". This was a powder impression moulding process for making shower trays at a factory in Bedwas, Caerphilly, South Wales. The shower trays were for Contour Showers Limited.
Each side called an expert witness:
i) ERT called Mr Colin Williamson. He has been working in the plastics industry since the late 1960s. Since 1987 Mr Williamson has been a consultant specialising in technical aspects of plastics and other industries. He has a particular interest and knowledge of plastics recycling, plastics raw materials and additives, plastics processing and plastics conservation. He also has a particular interest in the history of plastics and polymer technology and maintains a library on the subject. He is the owner of a plastics recycling company (Smile Plastics Ltd). In 2011 he received a Lifetime Achievement Award for his contribution to the plastics industry because of his work in recycling.
ii) Upcycle called Dr Andrew Peter Cox. He has worked in polymer processing for over 35 years in a variety of roles. His undergraduate degree was in mechanical engineering from Imperial College and his PhD related to creep properties of a nickel alloy. After a period at Rolls Royce in the 1970s working on the failure of gas turbine blades and a short period in the early 1980s working on computer modelling, since then Dr Cox's work has been very practically based. In the mid 1980s he worked on rubber hoses for the offshore oil industry and from 1987 Dr Cox was a Senior Engineer in the Plastics Section of the Metal Box Research and Design Centre in Wantage. His primary focus was on developing a production process for a stretch blow moulded multilayer structure. In 2001 he set up Peter Cox Associates, a consultancy firm dealing with polymer processing.
The differences in their experience meant that Mr Williamson's focus was more towards plastics recycling whereas Dr Cox had what might be called an engineering approach to materials. However both were well qualified to give evidence on the issues arising in this case. Neither witness was criticised by counsel. They both gave their evidence fairly.
I should record that Mr Williamson explained in his first report that he had been approached in 2004 to join the board of the claimant (then called 3DM Worldwide Plc). He declined to do so. Mr Howe did not suggest that this had any material impact on his evidence. I agree.
I also heard evidence from three witnesses called by the claimant on the issue of prior use. They were Mr Niall John Mackay, Mr Richard Bayfield and Mr Christopher Livingston- Campbell. Mr Howe did not criticise their evidence. They also gave their evidence fairly.
The Contour prior use
By the conclusion of the trial the facts in relation to the Contour process were clear. The Bedwas factory was being used as a showcase for the PIM process. Numerous individuals of all kinds, such as potential investors and potential customers, were being shown around the factory without any express terms of confidentiality being imposed on them. On the other hand, as Mr Livingston- Campbell explained, some people were required to sign confidential disclosure agreements or CDAs before being shown what was going on at Bedwas. Thus the defendant had been going to call Mr Stillwell (of the defendant) as a witness to attest to the fact the he had been required to sign a CDA in those circumstances. In the result however, since it was accepted that CDAs had been required sometimes, there was no need to call Mr Stillwell.
Mr Howe submitted that the CDAs showed that what was going on inside Bedwas was not made available to the public. He relied on an article written by a journalist and published in July 2004 entitled "3DM shrouds PIM process in secrecy". He referred to Lux Traffic Controls v Pike Signals [1993] RPC 107 and pointed out that the onus was on the claimant. He also observed that much of the evidence from the claimant's witnesses was second hand or was not concerned with the Contour process but with other lines at the Bedwas plant (the so called alpha and beta lines).
The evidence given by Mr Livingston- Campbell, which I accept, is that ERT (and EPT, who were running the Bedwas plant in 2008) were very open about the general principles of PIM technology but that the detailed know-how, which Mr Livingston- Campbell called the "dark art", was kept very secret. That is the explanation for the fact that many people came to Bedwas without having to sign a CDA but others had to. It explains the "shrouded in secrecy" article since, despite its title, the article includes a generalised outline of the PIM process but no details.
Mr Livingston- Campbell had said that no express or implied obligation of confidence was imposed on various people he characterised as tradesmen who visited the factory over the years. The term tradesmen included people such as those delivering things to the factory. Such people were not subject to an implied duty of confidence but on the other hand such visitors would never have been permitted to discover the "dark art". To take an extreme example, I am sure that the staff at Bedwas would not have allowed a deliveryman to stand by a production line with a stop watch carefully measuring the timings of the various stages.
The Contour process was running at Bedwas in March/April 2008, before the filing date of the patent. Although the claimant called no specific evidence of a particular person who visited Bedwas and saw the Contour line in operation, I infer from the evidence of Mr Livingston- Campbell, Mr Mackay and Mr Bayfield as a whole that visitors did come to Bedwas when the Contour line was in operation and before the priority date, saw that process in operation and were not required to sign a CDA. I also infer that "tradesmen" will have seen the Contour line at Bedwas in that period, again without any material obligation of confidence. None of these visitors (including the tradesmen) would have been allowed to discover any detailed operating information about the processes in operation. Thus they would not have discovered detailed timings, operating temperatures, specific process conditions, special additives,...
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