Phil & Ted's Most Excellent Buggy Company Ltd v Tfk Trends for Kids Gmbh and Others
| Jurisdiction | England & Wales |
| Judge | Judge Birss |
| Judgment Date | 08 May 2013 |
| Neutral Citation | [2013] EWPCC 21 |
| Court | Patents County Court |
| Date | 08 May 2013 |
| Docket Number | Case No: CC12P00958 |
[2013] EWPCC 21
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
His Honour Judge Birss QC
Case No: CC12P00958
Andrew Lykiardopoulos (instructed by Fasken Martineau) for the Claimant
Douglas Campbell (instructed by Jennings IP) for the Defendants
Hearing dates: 19 th, 20th March 2013
| Topic | Paragraphs |
| Introduction | 1 |
| The witnesses | 5 |
| The person skilled in the art | 11 |
| Common general knowledge | 13 |
| The patent | 29 |
| Construction of claim 1 | 45 |
| Infringement | 67 |
| Obviousness | 70 |
| Chinese Utility Model | 72 |
| UK Application | 91 |
| Bugaboo Frog | 95 |
| Conclusion | 98 |
Introduction
This patent action concerns products known variously as baby buggies, strollers or pushchairs. I will refer to these products as buggies. The patent is EP (UK) 1 795 424 ("Transformable seat inlet for child's or doll's pram"). It has a priority date of 8 December 2005. The patent is owned by Mr Udo Beger, the third defendant. The first defendant, TFK Trends for Kids GmbH, is owned and managed by the Beger family. Nothing turns on the difference between the various defendants and I will refer to them as TFK.
The Claimant, Phil & Ted's Most Excellent Buggy Company Ltd, is a New Zealand company. I will refer to it as " Phil & Ted's". Both sides in this case sell buggies for young children. The UK market is an important market for them both. The dispute began with an email from Mr Oliver Beger, the CFO of TFK threatening proceedings for patent infringement in relation to sales in the UK of a Phil & Ted's product called the Promenade. The Promenade buggy has a seat which transforms into a carry cot and vice versa. Phil & Ted's began an action for unjustified threats and a claim for revocation on the ground that the patent is invalid. TFK denied invalidity and responded with a claim for infringement. Thus before me is a conventional patent action. It is agreed to leave over any point arising on threats to be addressed once the decision on validity and infringement has been made.
The only relevant claim is claim 1. TFK says claim 1 is valid and is infringed by the Promenade. Phil & Ted's says that claim 1 is not infringed and is invalid because it is obvious. Three starting points for the obviousness analysis are relied on: a Chinese Utility Model Patent (Goodbaby), a UK patent application (Bigo) and common general knowledge alone, based on a product called the Bugaboo Frog.
At the trial Phil & Ted's were represented by Andrew Lykiardopoulos instructed by Fasken Martineau. TFK were represented by Douglas Campbell instructed by Jennings IP.
The witnesses
Phil & Ted's relied on Mr David Cocks. He has a degree in industrial design and started his career as a designer for Addis in 1984. He then worked in various design consultancies. In 2000 he became a founder member of a buggy company, Micralite Ltd. Mr Cocks has worked on the design of a wide range of products. He worked on buggies in 1989–90 and then again from 1999 when he formed Micralite. The first Micralite buggy was called the Fastfold, it was adapted to accept a car seat in 2003 and a cot in 2004. In 2006/7 Micralite developed the Fastfold into a product called the Toro. Its current design is the Twofold. Since 1999/2000, the focus of Mr Cocks' work has been buggies.
Mr Campbell submitted Mr Cocks was inventive by profession and had a proven innovative ability. I agree and to the extent that it matters, I will take it into account. His direct experience in buggies meant Mr Cocks was well placed to give evidence about the common general knowledge in the relevant field.
Mr Cocks sometimes had a tendency to make loose, rather imprecise, statements in the course of his testimony. Also, in relation to obviousness it was not always clear exactly what differences were being taken to exist between the relevant prior art and the claim. Neither point undermined his evidence overall but I will take both into account.
TFK called Mr Whyte. He also had designed a variety of products, with 36 years experience as a mechanical engineering designer. From 1988 to 1996 he worked on components for Formula 1 racing cars. From 1996 to 2007 he was Chief Designer of ATB Sales Ltd, designing bicycles and in 2008 he set up his own consultancy producing designs for the bicycle industry. Like Mr Cocks, I thought Mr Whyte also was inventive by profession and had a proven innovative ability. As with Mr Cocks, to the extent that it matters, I will take it into account.
Mr Whyte has never designed or worked on a buggy. He did not profess to know anything about the common general knowledge in the relevant field at the relevant time. Mr Whyte appeared to relish the opportunity to argue the points in this case. This sometimes risked obscuring the issues rather than illuminating them but overall his views were expressed clearly.
A difficulty arose given Mr Whyte's lack of knowledge about the common general knowledge. A particular issue was the status and significance of the Bugaboo Frog. TFK did not agree with Phil & Ted's case, supported by Mr Cocks, that the Bugaboo Frog had been very prominent and changed the market when it was introduced. However Mr Whyte was unable to help on the issue and TFK produced no other evidence to support their position. Since TFK were in the market, they were in a position to comment on the common general knowledge directly, but they did not do so either by producing a witness to contradict Mr Cocks or by producing documents which undermined or qualified his views. Mr Campbell submitted that TFK could not have produced material contradicting Mr Cocks even if they had wanted to because there was no permission to bring factual evidence in this case. I do not accept that. TFK chose to call an expert who was unable to comment on the common general knowledge. They did not have to do so and they cannot be in a better position than they would otherwise have been as a result. The directions order made at the case management conference in this case specifically provided that one of the issues about which the experts would give evidence was common general knowledge. There is a rule in the Patents County Court ( r63.23(2)) which makes it difficult for a party to rely at trial on material for which no permission was given at the CMC. However in this case TFK had permission to call evidence about common general knowledge. If after deciding to rely on Mr Whyte, they had wanted to call evidence on common general knowledge through a different medium, they could and should have raised the matter with the court. I doubt r63.23(2) would even be engaged if all a party was seeking to do was to call non-duplicative evidence it has already been given permission for through a different medium but even if the rule had been engaged, it is hard to see how the application would have been refused. I do not accept that TFK can rely on the PCC rules as an excuse for not calling evidence about common general knowledge in this case.
Person Skilled in the Art
It is common ground that the relevant person skilled in the art in this case is a person interested in designing buggies. They are likely to have a degree in industrial design or mechanical engineering.
Mr Cocks' evidence, which I accept, was that the person would:
i) Have a good knowledge of mechanical design and development;
ii) Have a good knowledge of the pushchair/baby market and trends as to what parents are looking for;
iii) Be familiar with manufacturing processes;
iv) Have a good knowledge of relevant safety standards;
v) Have a good understanding of fabrics and fabric construction.
Common General Knowledge
The law on common general knowledge was summarised by Arnold J in KCI Licensing v Smith & Nephew [2010] FSR 31 at paragraphs 105–115, approved by the Court of Appeal at [2011] FSR 8 at paragraph 6.
The relevant common general knowledge had three elements: safety standards; buggies which were sufficiently well known to be part of the common general knowledge; and design features and techniques.
Safety standards
In 2003 European Standard EN1888:2003 was released. Although it was never ratified, it became the standard in the industry. It formed part of the common general knowledge of the skilled person in 2005.
The standard specifies the safety requirements and test methods for wheeled child conveyances designed for the carriage of one or more children. It includes a number of definitions. A " pram body" is in effect a cot, with the child horizontal. A " seat unit" is a seat. The word " convertible" means a " vehicle combining the possibility of two uses; achieved by the pram body transforming into a seat unit and vice versa". The term "combination pushchair" means " a vehicle combining the possibility of various uses by attaching a pram body, a seat unit, a car seat or similar item to the chassis".
Phil & Ted's contends that the concepts of "convertible" products and "combination" products, as defined in the standard, were common general knowledge in 2005 and that this was reflected in the standard. I agree.
The idea of a convertible buggy needs no further explanation at this stage. The idea of a combination product bears expanding. By 2003 some buggies had a modular form. There was a chassis and different units could be fixed onto the chassis. So a chassis could carry a seat unit but the seat unit could be unclipped and replaced by a separate unit such as a cot or a car seat. Parents whose baby had fallen asleep in the car could remove the car seat from the car with the baby still asleep inside and clip the car seat...
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Phil & Ted's Most Excellent Buggy Company Ltd v TFK Trends for Kids GmbH and Others
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