Phil & Ted's Most Excellent Buggy Company Ltd v TFK Trends for Kids GmbH and Others
| Jurisdiction | England & Wales |
| Judge | Lord Justice Kitchin,Sir Stanley Burnton,The Chancellor |
| Judgment Date | 16 April 2014 |
| Neutral Citation | [2014] EWCA Civ 469 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2013/1430 |
| Date | 16 April 2014 |
[2014] EWCA Civ 469
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE PATENTS COUNTY COURT
HIS HONOUR JUDGE BIRSS QC
Royal Courts of Justice
Strand, London, WC2A 2LL
THE CHANCELLOR OF THE HIGH COURT
Lord Justice Kitchin
and
Sir Stanley Burnton
Case No: A3/2013/1430
Andrew Lykiardopoulos (instructed by Fasken Martineau LLP) for the Claimant/Respondent
Douglas Campbell (instructed by Jennings IP & Media Solicitors) for the Defendants/Appellants
Hearing date: 6 March 2014
Introduction
This is an appeal against the judgment of His Honour Judge Birss QC (as he then was) dated 8 May 2013 and his consequential order in a patent action concerning baby buggies. The appellants (collectively "TFK") are the owners of EP (UK) 1 795 424 which has a priority date of 8 December 2005. In this action TFK complained that the respondent (" Phil & Ted's") had infringed the patent by selling in the UK a buggy called the Promenade. Phil & Ted's denied infringement and asserted that the patent was, in any event, invalid in the light of a well known buggy called the Bugaboo Frog and two prior publications referred to as Bigo and Goodbaby.
The judge held in favour of TFK on the issue of infringement and rejected the attack on the patent based upon Bigo and Bugaboo Frog. But he held the patent was obvious in the light of Goodbaby. TFK now appeal against that finding with the permission of Floyd LJ.
In very broad outline TFK contend that the judge erred in principle in arriving at his conclusion in that he:
i) wrongly assumed that the skilled person would be interested in putting Goodbaby into practice;
ii) held, contrary to the evidence, that it was obvious to implement Goodbaby in such a way as to make it detachable from a buggy chassis; and
iii) held, contrary to the evidence, that it was obvious to implement Goodbaby with fabric walls which would constitute relevant suspension means.
I will deal with these three arguments in turn but first must set the scene by saying a little about the expert evidence and the common general knowledge, by explaining the invention of the patent and by describing, at least in outline, the disclosure of Goodbaby.
The expert evidence and the common general knowledge
Phil & Ted's called as its expert Mr David Cocks, an industrial designer who had, for some five years before the priority date, focused upon the design of buggies. The judge considered that, despite an inventive nature and a tendency to be somewhat imprecise in his evidence, Mr Cocks was well placed to assist him to understand the common general knowledge in the field of buggy design.
TFK called as their expert Mr Jon Whyte, an industrial designer of some thirty six years' experience in the field of racing cars and bicycles. However, he had never designed or worked on a buggy and did not profess to know anything about the common general knowledge in the field of buggy design in 2005. The judge therefore had no relevant evidence from TFK to qualify or amplify the evidence given by Mr Cocks. I should add that Mr Whyte was, like Mr Cocks, a designer of proven inventive ability and this was another matter which the judge took into account, just as he did with Mr Cocks.
The judge's findings as to the common general knowledge were therefore primarily based upon the evidence of Mr Cocks. Those aspects of it which have a particular bearing upon the issues arising on this appeal may be summarised as follows.
By 2005 the concepts of "convertible" and "combination" buggies were very well known. Convertible buggies could be changed from one configuration to another, for example from a pram into a seat. Combination buggies used a chassis to which different units could be fixed. So, for example, in a typical combination buggy the seat could be unclicked from the chassis and replaced with a cot or a car seat. Parents whose baby had fallen asleep in the car could remove the car seat from the car and clip it into the chassis of the buggy, hopefully without waking the baby.
Two buggies had a major impact upon the market in the years to 2005. The first was the Maclaren Stroller which had an adjustable reclining seat and used gussets in the seat fabric to accommodate the different seat positions. It had a three part base, and from 2000 could be reclined into a lie-flat position in which the backrest and leg rest sections were near horizontal with the seat base.
The second was the Bugaboo Frog which was launched in 1997. This transformed the market by creating a consumer demand for "travel systems" or "3-in-1" products. It was described by the judge in these terms at [24]:
"…. The Bugaboo Frog had a wheeled chassis onto which different items could be fitted. One item was a seat frame. The seat frame could be tilted in three positions (upright, recline or horizontal). The Bugaboo Frog had two fabric inserts: one was used when the seat frame was a seat; and the other fabric insert was used when the frame was horizontal, to make a carrycot. Thus to convert the seat into a carrycot, the frame was tilted to the horizontal position, the seat fabric insert was removed and the cot fabric insert was put in place. The seat frame was removable by releasing two connectors. This allowed the seat to be turned to face either the direction of travel or the parent. Instead of the frame, a car seat could be fitted into the chassis sockets."
These and similar buggies, and a general acceptance that a large recline angle was necessary for seats for new born children meant that, by December 2005, important considerations for a designer of a new buggy were that it should be:
i) removable, so that a car seat or carry cot could be clipped to the buggy frame in place of the buggy seat, and so that it could be oriented so that the baby was facing either towards or away from the parent; and
ii) convertible from an upright to a substantially lie-flat position.
In light of all these matters the judge found the following design features were part of the common general knowledge:
i) a chassis with connectors or adapters to enable different components to be attached and locked to it;
ii) foldable fabric seat units;
iii) movable foot sections;
iv) reclining mechanisms;
v) frames constructed from aluminium or steel tubular components with plastic moulded joints.
Finally, there were a number of well known design techniques for the handling of fabric. As the judge explained, buggies generally had fabric side walls and this fabric often extended under the base. Gussets, zips and straps to gather up or release the fabric, as required, were all well known design features.
The patent
The object of the invention is the provision of a new insert for a buggy which can be converted from a seat into a cot. It consists of an upper frame, an articulated base which forms the seat or bed, as required, and suspension means which hang down from the frame and support the parts of the base. As the judge explained, the idea is that the insert can be converted from one state to another simply by tilting the upper frame and by adjusting the position of the base parts by changing the length or connecting points of the suspension means. One embodiment is shown in its cot position in figure 1 and in its seat position in figure 3:
In this embodiment the base consists of three panels, 11, 12 and 13, which are hinged to one another and suspended from the frame 8 by the suspension tapes 9 and 10. The frame is, in turn, coupled to the adapters 1 and 2 by mounts 6 and 7. The adapters themselves have coupling elements 23 and 24 which allow them to be detachably mounted on elements on a buggy chassis. As the judge correctly noted, although it might appear from figure 1 that the middle panel of the three part base is connected to the adapters, that is not in fact the case. Accordingly, when the insert is turned into a seat, as shown in figure 3, it can be seen that the relative position of the middle panel and the adapters has changed.
The invention as claimed requires two particular features which have a bearing upon this appeal. The first is that there must be adapters. The judge interpreted this at [65]:
"I think a skilled reader would understand, particularly bearing in mind figures 1 to 3 but also the word adapter itself, that the inventor was not seeking to use language in the claim in a narrow sense. The skilled reader would understand that the adapters, in terms of claim 1, are simply the parts of the insert by which the insert can be mounted onto and dismounted from the chassis."
The second is that there must be suspension means which perform the particular function called for by these closing words of claim 1:
"and the relative angular adjustment of the sections is carried out by change in length and/or by changing the connecting points of the suspension means."
The suspension means in figure 1 are, as I have mentioned, tapes. But the teaching of the patent is clear that the invention is not so limited and the suspension means may include the fabric side walls. So, for example, paragraph [0028] states:
"However, instead of such tape-formed suspension means, the side walls consisting of textile material can also be used directly as adjustable suspension means. For example, by folding the side wall it can be ensured that this can be shortened or lengthened by means of press studs 38....
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