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Innovate Newsletter
- Virgin Atlantic Airways v Contour Aerospace and others: Which country did you say?
- Entitlement to damages - In the balance
- CJEU rules on cross-border interim relief in patent proceedings
- The role of post-dated evidence in UK patent litigation
- Amending a granted patent to avoid invalidity
- Patents County Court decides patent dispute between two multinational corporations
- Patent extensions: continuing ambiguity on the application of the SPC Regulation
- Other News - Latest on Unitary Patents Court
The Patents County Court ("PCC") in Unilever PLC v SC Johnson & Son [2012] EWPCC 19 has held invalid all but one of the claims of two patents relating to an automatic shower cleaning device.
As described by HHJ Birss, the patents related to the cleaning of bath and shower enclosures which have become coated with soap, hard water scale or the like. The invention was a device, usually hung from a shower head, for automatically spraying the walls of the enclosure with cleanser, avoiding the need for a human being to remove the deposits. The user presses a button on leaving the shower and, shortly after the user closes the door of the enclosure, the device sprays the walls with cleanser, stopping automatically after a period.
Unilever contended that the patents lacked novelty and/ or were obvious over three items of prior art.
Suitability of the PCC
HHJ Birss noted at the beginning of his judgement that the parties (two well-funded, multi-national manufacturers of fast moving consumer goods ("FMCG")) were not obvious PCC litigants and commented on the suitability of the case for the PCC:
"In terms of the issues to be decided, the case is clearly suitable for the PCC. There has been no disclosure and the evidence consists only of reports from the in-house experts on both sides. The legal representation consisted of junior intellectual property counsel instructed by firms of patent attorneys. The trial took 1 ½ days. As far as I can tell it has been run expeditiously and without major cost".
It is well-known that the PCC was established to handle the smaller, less complex, less important, lower value actions and its procedures are designed for cases of that kind. The PCC also aims to provide cheaper, quicker and more informal procedures to ensure that smaller companies have access to justice and are not deterred from innovation by the cost of litigation.
The parties themselves also appear to have had no issue with the PCC deciding the dispute. The case was conducted throughout under the PCC rules and neither side suggested the matter should be transferred. There was one debate at the case management conference about whether the obviousness case had been articulated in sufficient detail. However, rather than order a further round of pleadings, HHJ Birss directed that expert reports were to be served sequentially so that the patentee could fully understand the case it had to meet. The case proceeded to trial on that basis and judgment was delivered 10 months after the action was commenced.
Person Skilled in the Art
The judge first identified that the person skilled in the art would be someone (possibly a small team), working in the field of consumer products for household care, but not necessarily working in an organisation as large and well resourced as the parties. They would be well aware of the idea of making smaller portable automated dispensing products for household care. HHJ Birss noted his suspicion that, in the real world, people working in household care in FMCG companies are highly innovative and paid to invent and innovate. However, one should be reminded that the legal construct – the person skilled the art – has no inventive faculty. "He never misses the obvious and always misses the inventive".
Common General Knowledge
A major issue between the parties concerned the general knowledge of spraying and a particular textbook. However, the fact that the textbook was not in the library of the defendant (a major FMCG company) really settled the matter. The judge noted that he would expect the libraries of companies like the parties to have vastly more in them than would represent the common general knowledge of household care product designers.
Validity
The judge then applied the Kirin-Amgen and Virgin Atlantic v Premium guidelines on construction, the Synthon v SKB and General Tire principles on novelty and the Pozzoli test on obviousness, which were undisputed. Overall, he concluded that some claims lacked novelty as an apparatus used to dispense material from a container described in a previous patent was capable of spraying an enclosure. Other claims were invalid because it was obvious to the skilled man, bearing in mind the common general knowledge, to adapt the prior apparatus to hang it from a shower head and to spray shower walls. The one claim that was held valid described a rotatable fluidic oscillator.
Key Points
This is good example of the PCC using good case management and common-sense to decide a patent case in an expeditious and cost-effective manner. It also shows that larger and well-funded parties can take advantage of the PCC system in suitable straightforward cases, if neither of the parties object or apply to have the case transferred to the High Court.
Beverley Potts, Senior Associate (PSL) in the IP and Technology Dispute Resolution Group at Field Fisher Waterhouse LLP