L'Oréal Société Anonyme v RN Ventures Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Henry Carr |
| Judgment Date | 05 February 2018 |
| Neutral Citation | [2018] EWHC 173 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC-2016-003018 |
| Date | 05 February 2018 |
[2018] EWHC 173 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS & PROPERTY COURT
PATENTS COURT
SHORTER TRIAL SCHEME
Royal Courts of Justice
The Rolls Building,
7 Rolls Buildings,
Fetter Lane,
London, EC4A 1NL
Mr. Justice Henry Carr
Case No: HC-2016-003018
Mr. Tom Moody-Stuart Q.C. (instructed by Baker & McKenzie LLP) for the Claimants
Mr. Richard Davis (instructed by Irwin Mitchell LLP) for the Defendant
Hearing dates: 7, 8 and 13 December 2017
Judgment Approved
Introduction
The Claimants (“L'Oréal”) have brought claims for infringement of patent and Community Registered Designs against the Defendant (“RN Ventures”). The First Claimant is the registered proprietor and the Second Claimant is the exclusive licensee of these rights in the United Kingdom. The products in issue comprise certain of RN Ventures' range of “Magnitone” electronic facial skin care devices. The Magnitone devices are intended to be used on the face to deep cleanse pores. They each use an oscillating circular head with rings of bristles arranged in concentric circles. Not all of the Magnitone range is alleged to infringe, and I will call those which are complained of “the Magnitone Products”.
L'Oréal alleges that the Magnitone Products are infringements of European Patent (UK) 1 722 699 B1 (“the Patent”). The Patent was filed on 25 February 2004 and does not claim an earlier priority date. RN Ventures does not challenge the validity of the Patent and its primary case is non-infringement. However, it contends that if the Patent is infringed, then it is anticipated by, or is obvious in the light of United States Patent Application 2002/0156401 (“Woog”). It also relies on a Gillette defence, claiming various squeezes between infringement and sufficiency.
L'Oréal has made an unconditional application to amend the Patent. RN Ventures claims that the amendment should be refused for lack of clarity and added subject matter. L'Oréal has applied to the UK Intellectual Property Office to correct what is said to be an obvious error in claim 8 of the Patent. That application has been stayed pending the outcome of the trial, and I am not required to rule on it.
The Magnitone Products have, from time to time, been offered with a range of different brush heads. Not all of the heads, when fitted to the Magnitone Products, are alleged to infringe the Patent. The heads complained of are “Active Clean” (old and new versions), “Silk Bliss”, “Pore Perfection”, “Soft+Sensitive”, “Get Beached” and “Hydro Pro”.
At the start of the trial, L'Oréal relied upon infringement of claims 1 and 8. Claim 8 is dependent, via claim 7, on claim 1. Claim 8 added nothing to L'Oréal's case and it was not pursued by L'Oréal in closing.
L'Oréal also contends that the Magnitone Products are infringements of Registered Community Design Nos. 000407747-001 (“the 747 Design”) and 001175046-001 (“the 046 Design”) (collectively “the RCDs”). RN Ventures does not challenge the validity of the RCDs but alleges that their scope of protection is narrow in the light of the design corpus and limitations on design freedom.
The Shorter Trial Scheme
This case was heard under the Shorter Trial pilot scheme. Although L'Oréal relied upon experiments in support of its case of infringement of the Patent, which were the subject of significant cross-examination, the timetable was adhered to and the issues were fully debated. It was a positive advantage that Counsel were only required to put the principal issues in cross-examination.
Unfortunately, a good part of the first morning of the trial was spent in resolving procedural disputes between the parties. One dispute arose from RN Ventures' skeleton argument and could not have been raised before. Other disputes concerned the admissibility of evidence. This used up some of the time available to discuss the substantive issues. In the context of a Shorter Trial, all effort should be made to resolve such disputes. Otherwise, then if at all possible they should be decided before the trial starts.
The expert witnesses
The scope for admissible expert evidence in this case is narrow. The parties each relied upon expert evidence in relation to infringement of the Patent and validity squeezes, and in relation to the design corpus and design freedom. The expert witnesses for L'Oréal were Professor Stephen Franklin and Mr Philip Phelan. RN Ventures relied on the evidence of a single expert, Mr Kevin Herbert.
Professor Franklin
Professor Franklin is a Royal Academy of Engineering Visiting Professor at the University of Sheffield. He specialises in tribology and, since about 2000, primarily in tribology of the human body. Tribology is the science of friction, lubrication and wear. The design of skin-contacting devices requires consideration and measurement of friction, or the forces, deformation and stresses involved in the relative slipping motion of such devices over the skin. Professor Franklin's research interests include the tribology of human tissue, including the skin and eyes, which is known as “bio-tribology”.
Professor Franklin is employed by Philips Research, a division of Koninklijke Philips NV. He leads research on the interaction of products with the human body, including products that interact with the skin, for example shaving products. In 2016 and early 2017 he was involved, as a skin and bio-tribology specialist, in specifying and developing experimental protocols for testing the efficacy of Philips' VisaPure product, which is a mechanical facial cleansing brush.
Professor Franklin was criticised in trenchant terms in RN Ventures' opening skeleton, where he was described as a “hired gun”. Generally, it is advisable to comment on expert witnesses after they have been cross-examined. After he had given evidence, Mr Davis accepted, sensibly, that Professor Franklin gave frank evidence which was of assistance to the court. Nonetheless, he claimed that Professor Franklin's written evidence was careless, that much of his reports were written for him and were not checked by him. I do not accept this. Professor Franklin asked for certain figures in his report to be prepared for him, which he was entitled to do. Insofar as Professor Franklin corrected material parts of his expert reports, I shall consider their significance in relation to the substantive issues.
It was also submitted that as Professor Franklin had not designed a mechanical skin brush before the priority date, he could not give evidence about the attitudes of a person skilled in that field. I reject this submission. Professor Franklin had extensive experience, both academic and practical, in relation to bio-tribology and the design of skin-contacting devices, and was well qualified to give relevant expert evidence. In my view, Professor Franklin was an impressive and knowledgeable witness, who was objective and thorough.
Mr Phelan
Mr Phelan is a design consultant. He provides consultancy services through Phelan Associates, which he founded in 2001. He has been involved with the industrial design of consumer electronics since 1991 and has worked on a range of domestic appliances, handheld consumer electronics and personal care products. Mr Phelan was criticised for failing to investigate the design corpus beyond the designs identified by Mr Herbert. It was said that he ought to have referred to the Second Claimant's Clarisonic range of facial care brushes when considering the design corpus for the 046 Design. Mr Phelan was only permitted to give evidence in response to Mr Herbert's report, which also made no reference to the Clarisonic range. I do not consider that this criticism is justified. It was also suggested that he only considered absolute technical constraints on design freedom. I disagree, and I found that his evidence about design freedom was helpful.
Mr Herbert
Mr Herbert has a BSC in Physics and Medical Physics from the University of Wales. He completed an Open University law course in 2007 and obtained a postgraduate certificate in intellectual property from Bournemouth University in 2013. He is the managing director of Certainty IP Ltd, which he formed in 2015. His LinkedIn page explains that he opened an intellectual property consultancy to help SMEs and startup companies avoid IP issues while identifying and protecting their existing IP in an effective and affordable way. Between 1998 and 2004 he worked as a project engineer for IXA Medical Products LLP. His CV states that he designed and developed professional and consumer medical devices for UK and global markets. Between June 2004 and December 2005, he joined the Dezak Group Limited as senior project engineer. His CV states that he designed and developed lifestyle consumer devices for UK and global markets. From December 2005, he became a legal manager for the Dezak Group Limited in relation to its intellectual property portfolio and between December 2013 and October 2015 he was EMEA intellectual property coordinator for Zimmer Biomet.
During cross-examination, Mr Herbert stated that he had worked on a skin brush shortly after the priority date. This was not referred to in his written evidence and no detail was provided as to what role he had taken.
At paragraph [9] of his first report he stated that “ it has been emphasised to me that my evidence is to be confined to my knowledge of the technical field and should try to avoid straying into legal matters.” I accept that he tried to follow that direction. However, particularly in his supplementary report, he tended to argue RN Ventures' case, rather than confine himself to expert opinion.
In his first report, Mr Herbert copied passages which he had found on the Internet,...
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