E. Mishan & Sons, Inc. v Hozelock Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Arnold,Lord Justice Henderson,Lord Justice Floyd |
| Judgment Date | 08 July 2020 |
| Neutral Citation | [2020] EWCA Civ 871 |
| Date | 08 July 2020 |
| Docket Number | Case No: A3/2019/1506 |
| Court | Court of Appeal (Civil Division) |
[2020] EWCA Civ 871
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE, BUSINESS AND PROPERTY
COURTS, INTELLECTUAL PROPERTY LIST (ChD), PATENTS COURT
Nugee J
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Floyd
Lord Justice Henderson
and
Lord Justice Arnold
Case No: A3/2019/1506
Thomas Hinchliffe QC and Katherine Moggridge (instructed by HGF Law LLP) for the Appellant
Michael Hicks and Nick Zweck (instructed by Wiggin LLP) for the First Respondent
Hearing dates: 8–9 June 2020
Approved Judgment
Introduction
This is an appeal, brought with the permission of the judge, from an order of Nugee J dated 5 June 2019 that UK Patent No 2 490 276 (“GB 276”) and European Patent (UK) No 2 657 585 (“EP 585”) (collectively “the Patents”), which are exclusively licensed to the Appellant (“Emson”), be revoked on the ground that all the claims were obvious over US Patent Application No. 2003/0000530 (“McDonald”) for the reasons given in the judge's judgment dated 17 April 2019 [2019] EWHC 991 (Pat). The appeal challenges that conclusion. The judge also held that (i) the Patents were entitled to their claimed priority date of 4 November 2011, (ii) the Patents were valid over certain prior uses by the inventor Michael Berardi while reducing the invention to practice in his garden and (iii) if they were valid, the Patents had been infringed by the First Respondent (“Hozelock”). Hozelock challenges those conclusions by a respondent's notice. The current and former owners of the Patents are formally respondents to the appeal, but have played no part in the proceedings.
The Patents disclose and claim expandable garden hoses which are compact when empty, but expand in length when filled with water. Hoses embodying the invention have achieved considerable commercial success under the brand name Xhose.
The case is an unusual one, for three reasons. First, Mr Berardi was an individual inventor who made the invention in his garage and garden. Despite that, his invention has transformed the garden hose industry in that it resulted in the introduction of an entirely new type of garden hose which solved long-standing problems with previous garden hoses (which is not to say that the Xhose has displaced conventional hoses – on the contrary, there continues to be a substantial market for the latter).
Secondly, the validity and infringement of GB 276 has previously been litigated in proceedings brought against different defendants with a different outcome. In Blue Gentian LLC v Tristar Products (UK) Ltd [2013] EWHC 4098 (Pat) Birss J held that GB 276 was valid, including over McDonald, and had been infringed by the defendants. His conclusions were upheld by this Court: [2015] EWCA Civ 746. As the judge in the present case correctly noted at [40], strictly speaking the previous decisions are not admissible evidence on any question of fact arising in the present case. As he said, his function was to decide this case on the evidence adduced by parties in this case. Moreover, as he explained, the evidence in this case was materially different to that in the previous case. I shall return to this point more than once below.
Thirdly, the prior use allegations involve an unprecedented set of factual circumstances and thus gave rise to some novel issues.
Despite these unusual features of the case, Hozelock's appeal raises a familiar issue, which is whether the claimed invention is obvious over close prior art from a different field. That issue can, and must, be determined by applying conventional principles.
The Patents
The judge quoted the helpful summary of GB 276 given by Birss J in Blue Gentian, and I shall do the same:
“21. 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 it would be of great benefit to have a hose that is light in weight, contractable in length and kink resistant.
22. Following a lengthy section listing numerous items of prior art, a summary of the invention starts at paragraph [0022]. The detailed description section including figures 1 to 11 runs from paragraphs [0031] to [0063]. Although the specification is written in general terms and contemplates that other fluids apart from water could be used, the claims are clearly limited to a garden water hose. The skilled reader would understand that while the inventor no doubt has contemplated that his idea might be applicable in other fields, the invention claimed is directed to a garden water hose.
23. The invention is a hose with an inner tube inside an outer tube. The outer tube is secured to the inner tube only at the ends. The hose expands when connected to a pressurised water supply such as a water tap (faucet). The hose can expand longitudinally up to six times its length and width. On release of the pressurised water from the inner tube, the inner tube will contract. The inner tube could be made of rubber while the outer tube could be made of a non-elastic relatively soft fabric like woven nylon. Figures 9 and 5 and figures 10 and 6 show the invention in its unexpanded and in its expanded states:
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.
25. When the water is allowed to flow along the hose the pressure inside will drop to some extent but there will be enough pressure remaining in the hose to keep it expanded in use (described in paragraph [0050]).
26. The patent describes how the invention meets the objectives referred to. The savings in weight are addressed in paragraph [0053]. A conventional 50 foot garden hose is said to weigh 12 lb (5.4 kg) whereas an equivalent hose of the invention weighs 2 lbs (0.9 kg). The hose also does not contain any metal components such as springs along the length of the hose between the connectors.
27. The fact that the hose has a reduced length when there is no pressure in the inner tube is addressed in paragraph [0054]. An empty hose of the invention can be readily stored without kinking or becoming entangled as most conventional hoses do. The hose can be stored in a very small space. There is no need for a hose reel (paragraph [0055]).”
There is no material difference between the specification of EP 585 and that of GB 276.
The claims in issue
Broken down into integers, claim 1 of GB 276 is as follows:
“[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
[G] and 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,
[I] and wherein a water flow restrictor is provided in or is connected to the second coupler.”
Claim 1 of EP 585 is as follows:
“[A] A garden water hose assembly comprising a hose (10) and a water flow restrictor, wherein the hose (10) comprises:
[B] an outer tube (12) formed from a non-elastic, soft, bendable, tubular webbing material having a first end and a second end;
[C] a flexible, elastic, hollow inner tube (14) having a first end and a second end;
[D] a first coupler (18) secured to said first end of said inner and said outer tubes (14, 12);
[E] a second coupler (16) secured to said second end of said inner and said outer tubes (14, 12);
[F] said first coupler (18) arranged in use to couple said hose (10) to a source of pressurized water, said second coupler (16) being connected to the water flow restrictor, wherein the water flow restrictor includes a nozzle having an internal valve that permits, limits, and stops a flow of water through the nozzle;
[G]...
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