Posted: July 3rd, 2019
(1) E. Mishan & Sons, Inc T/A Emson v (1) Hozelock Limited (2) Blue Gentian LLC (3) Telebrands Corp (17 April 2019, Patents Court, UK, Case No. HP-2017-000050)
UK Court considers circumstances surrounding a prior use validity attack
The UK Patents Court found that two similar GB and EP patents – relating to expandable garden hoses – were invalid for lack of inventive step despite the GB patent having been found valid against the same prior art (“McDonald”) in previous UK proceedings (also upheld at the Court of Appeal).
In distinguishing the original decision, Nugee J noted that the skills and experience possessed by the notional skilled person were a question of fact to be decided on the basis of the evidence at trial – the original decision of Birss J was based on the evidence called before him. Nugee J also considered the following main points of interest:
– A prior use attack based on the inventor’s experimentation in his own garden. Nugee J considered when a prior use is sufficiently disclosed with in-depth consideration of the observation of each event when the hose was worked on in the inventor’s garden (visible from a public road).
The judge found impermissible mosaicing of events associated with this invalidity case, based on the finding that the skilled person would not have expected to see a newly-invented hose being tested from the observation of any one of the events. In case he was wrong on mosaicing, the judge also considered whether the combined prior use was made available to the public. He found that, based on the circumstances surrounding the use in the garden (including evidence from the inventor that he would have stopped his work had somebody been in fact watching him), this was not a disclosure which was made available to the public.
– A detailed analysis using the equivalence test in Actavis v Lilly to find infringement as a variant. The case also included a Formstein defence argument (i.e. that an equivalent lacking novelty or inventive step over the prior art at the priority date would be deemed to fall outside the scope of the claim) together with an invitation to declare that this defence forms part of English law. However, this argument had no application following the judge’s invalidity finding and he refused to consider the point further.
– An accusation of hindsight with expert evidence, where the expert was aware of the patents and the previous decision (involving one of the patents and the same art) before his involvement in case, and had written his report in the knowledge of everything that had gone on in those other proceedings. In the circumstances, the judge did not find the expert’s conclusions to be based on impermissible use of hindsight.
– The evidence required in running a commercial success argument as an answer to an obviousness attack – the party relying on commercial success must adduce evidence showing that others did not come up with the claimed invention despite their knowledge of the problem and the prior art publication in question. In this instance, no such evidence was adduced and the commercial success argument failed.
A copy of the judgment (in English) can be read here.
Headnote: John de Rohan-Truba, Marks & Clerk Law LLP