E. Mishan & Sons, Inc. T/A Emson v Hozelock Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Nugee |
| Judgment Date | 17 April 2019 |
| Neutral Citation | [2019] EWHC 991 (Pat) |
| Docket Number | Claim No: HP-2017-000050 |
| Court | Chancery Division (Patents Court) |
| Date | 17 April 2019 |
[2019] EWHC 991 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
PATENTS COURT (ChD)
Rolls Building, Royal Courts of Justice
Fetter Lane, London EC4A 1NL
Mr Justice Nugee
Claim No: HP-2017-000050
Thomas Hinchliffe QC and Katherine Moggridge (instructed by HGF Law LLP) for the Claimant
Michael Hicks and Nick Zweck (instructed by Wiggin LLP) for the 1st Defendant
Hearing dates: 26, 27, 28 February, 1 and 5 March 2019
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.
Introduction
This is a patent action concerning expandable garden hoses. The Claimant, E. Mishan & Sons Inc, which trades as Emson, ( “Emson”) is the exclusive sub-licensee in the UK of two patents, a UK Patent, GB 2 490 276 ( “GB 276”), and a European Patent, EP (UK) 2 657 585 ( “EP 585”), each entitled “Expandable Hose Assembly” (together “the Patents”). They are in similar but not quite identical form. Emson markets in the UK (and elsewhere) an embodiment of the Patents called the XHose (X for expandable).
The 1 st Defendant, Hozelock Ltd, ( “Hozelock”) is a well-known manufacturer and seller of garden products including hoses. It sells a rival expandable garden hose called the Superhoze. There have in fact been two successive versions marketed under the title Superhoze. They are very similar but not identical and have to be considered separately. They have been referred to in these proceedings as “the Superhoze 1” and “the Superhoze 2” respectively.
Emson claims that both the Superhoze 1 and the Superhoze 2 infringe the Patents. Hozelock denies infringement, and also claims that the Patents are invalid for lack of inventive step (obviousness). (There was also a claim on the pleadings of invalidity for lack of novelty, but Mr Michael Hicks, who appeared with Mr Nick Zweck for Hozelock, did not pursue this claim in closing submissions). Emson relies among other things on commercial success in answer to the allegation of obviousness. There is also an issue about priority which I explain later.
Emson's status as exclusive licensee was formerly put in issue but is no longer disputed. The position is as follows. The Patents were originally granted to Blue Gentian LLC ( “Blue Gentian”), now the 2 nd Defendant. Blue Gentian granted a worldwide exclusive head licence to a company called National Express, Inc ( “National Express”). National Express in turn granted an exclusive sub-licence for the world excluding the US to Emson. In 2017 National Express assigned its rights under its head licence to Telebrands Corp, the 3 rd Defendant ( “Telebrands”), and in 2018 Blue Gentian sold its patent portfolio, including the Patents, to Telebrands. Neither of these transactions affects Emson's status as exclusive licensee. Blue Gentian, which was originally a claimant, and Telebrands have now been added as defendants (see s. 67(3) of the Patents Act 1977 ( “PA 1977”)), but neither has taken any part in the action.
Background
The inventor of the Patents is Mr Michael Berardi, a resident of Florida. He came up with the idea of an expandable garden hose in 2011. The basic idea is not difficult to state. Conventional garden hoses were then usually made of plastics in a number of layers bonded together. They suffered from three problems from the point of view of the consumer: they were bulky and difficult to store; they were heavy; and they had a tendency to kink. Mr Berardi's idea was to make a hose consisting of two tubes one inside the other, the inner tube (which carried the water) being made of an elastic or expandable material such as natural rubber, and the outer tube, several times as long, made of a non-elastic and flexible material such as nylon or polyester. By connecting the tubes at both ends but not otherwise, the hose, when empty of water, would be the same length as the inner tube (with the outer tube ruffled around it); but when the hose was filled with water, the inner tube would expand to the length and diameter of the outer tube (which constrained it from expanding further and bursting). Thus for example if the outer tube were 50 feet long and the inner tube 17 feet long, the hose would be 50 feet long in use but only 17 feet long when not in use.
This invention had three noticeable advantages over conventional garden hoses. First, it took up very much less room to store, not only because it was shorter in its contracted state but also because it was less bulky and folded easily. Second, it was much lighter: the specifications in the Patents refer to a hose, 10 feet long in its contracted state and 50 feet long when expanded, as weighing less than 2 lb, in contrast to a conventional 50 foot rubber hose which could weigh up to 12 lb. Third, it did not kink: the Patents do not really explain (and I was not given any technical explanation) why this is so, but it is not disputed.
Mr Berardi started experimenting with prototypes in 2011, initially in the kitchen of his then house at 223 Skylark Point, Jupiter, Florida, and later, when he was making 50 foot hoses, in his garden. Mr Berardi's wife video-ed what Mr Berardi was doing (both in his house and in his garden) in order to document it in a series of videos ( “the Videos”), so there is quite good evidence of exactly what he did. By 3 November 2011 he had made a prototype which worked, and the next day he filed a US patent application. This date (4 November 2011) is the first claimed priority date for the Patents.
The XHose was launched in the US in March 2012. It has since been sold around the world. In the UK it has been sold since May 2013. When it was launched there was nothing similar on the market. The evidence is that it has been a considerable commercial success. This has attracted a number of other manufacturers to offer expandable hoses, and there are now many versions on the market, as was shown by the results of a search for “expandable hose” on Amazon's UK site. Expandable hoses now account for a significant share of the garden hose market in the UK (and no doubt elsewhere).
In the UK, Blue Gentian and Emson have already successfully sued the seller of one rival product for infringement of GB 276: see Blue Gentian LLC v Tristar Products (UK) Ltd [2013] EWHC 4098 (Pat) 746 (“ Tristar”), which concerned an expandable hose launched by the defendants, two Tristar companies, called the FlexAble Hose. The defendants did not dispute that if GB 276 was valid their product was infringing, but contended that it was invalid for lack of novelty and obviousness over two items of prior art. These were (i) US Patent Application No. US 2003/0098084 A1 entitled “Pressure-actuated Linearly Retractable and Extendible Hose” published on 29 May 2003 ( “Ragner”); and (ii) US Patent Application No. US 2003/0000530 A1 entitled “Self-Elongating Oxygen Hose for Stowable Aviation Crew Oxygen Mask” published on 2 January 2003 ( “McDonald”). Birss J found that Claim 1 (the main product claim) of GB 276 was novel and not obvious over either Ragner or McDonald; the defendants' appeal (confined to the question of obviousness) was subsequently dismissed by the Court of Appeal: see [2015] EWCA Civ 746. In the present case Hozelock again claim that the Patents are obvious over Ragner and McDonald, and I will have to consider in due course to what extent the decision in Tristar is of any assistance to the issues I have to decide.
Hozelock launched the Superhoze 1 in early 2017. These proceedings were brought (initially by Blue Gentian and Emson) in August 2017 claiming that the Superhoze 1 infringed GB 276, and were later amended to include an allegation of infringement of EP 585. In the course of 2018 Hozelock provided the Claimants' solicitors with first pre-production samples, and then a product description, of the Superhoze 2, and asked for an acknowledgment that it did not infringe. This was not forthcoming, and Hozelock amended to claim a declaration to that effect, and the Claimants amended to claim that the Superhoze 2 was also infringing. The Superhoze 2 was launched (replacing the Superhoze 1) in February 2019, shortly before trial.
Factual witnesses
Each side relied on a number of factual witnesses. Those who gave oral evidence did so in a straightforward and helpful manner, and I am satisfied that each of them was seeking to assist the court to the best of his recollection.
Those called by Emson were Mr James Coleman and Mr Berardi himself. Mr Coleman is the Chief Executive Officer of High Street TV (Group) Ltd, which entered into an exclusive distribution agreement with Emson for the sale of the XHose in the UK and the Republic of Ireland, and gave evidence of the commercial success of the XHose.
Mr Berardi's oral evidence was almost entirely directed to the construction and use of the prototypes in his garden at 223 Skylark Point as recorded in the Videos. Hozelock's case is that since the garden was visible from the (public) road at the front of the property, that amounted to making available to the public all the information that could have been seen from the road, and that the Patents are invalid for obviousness in the light of these disclosures. Mr Berardi was therefore asked about the details of the layout of his garden, precisely what he did and where, and what could be seen in the Videos.
In addition Emson served two witness statements from witnesses who were not required for cross-examination. They were Mr Jim E Mishan of Emson and Mr Richard Kelly of National Express, each of whom gave evidence of the commercial success of...
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