In the recent High Court case, E. Mishan & Sons Inc t/a Emson v Hozelock Limited & Ors  EWHC 991 (Pat), Nugee J held that a patent for an expandable hose lacked inventiveness and was, therefore, invalid. As such, the claim for infringement failed. However, of greater interest is the judge's analysis of what amounts to a public disclosure for the purposes of obviousness. Specifically, whether the inventor's development of the expandable hose in his garden amounted to separate public disclosures and, therefore, prior art or whether he was simply "a man using a hose in his garden".
Emson is the exclusive sub-licensee in the UK of a UK and European Patent for an "expandable hose assembly". Emson marketed its product, the "XHose", in the UK. Hozelock sold a rival expandable garden hose called the "Superhoze". Emson issued proceedings for patent infringement and Hozelock counterclaimed for invalidity of the patents due to a lack of inventive step.
The inventor of the patents, Michael Berardi, was a resident of Florida. Mr Berardi experimented with prototypes in 2011 in the kitchen and garden of his Florida home. This was captured on video by Mr Berardi's wife. A patent application was filed only after Mr Berardi had developed a working prototype of the expandable hose.
Hozelock claimed that since Mr Berardi's garden was visible from the public road at the front of the property that amounted to making available to the public all that could be seen from the road rendering the patents invalid for obviousness. Hozelock also disputed obviousness over two other pieces of prior art.
Applying the Supreme Court's decision in Actavis v Eli Lilly  UKSC 48 to the claim construction, Nugee J held that the patents had been infringed. Therefore, the case turned on validity.
Regarding the prototypes developed by Mr Berardi, the judge noted that the garden at the front of his house came right up to the kerb of the road giving a person stood on the road an uninterrupted view of anything done in front of the house. Hozelock argued that, whilst no single video filmed by Mrs Berardi was sufficient on its own to evidence obviousness, the videos should be considered together. Nugee J held that the question for determining whether mosaicking was permissible was whether one disclosure cross referred to the other and the second disclosure would cause the skilled person to consult the first.
Nugee J held that the skilled person would not have understood what Mr Berardi was doing on one day as testing the same object he was seen testing on another day. Unless the skilled person was expecting to see a hose being tested, it would not have been clear Mr Berardi was testing anything – the skilled person would just see Mr Berardi using a hose in his garden.
Regarding, Mr Berardi's prior use, the judge confirmed that to constitute prior art his activities must have "made the information available to the public" (section 2(2), Patents Act 1977). Whilst there was no evidence that anyone had actually witnessed Mr Berardi in his garden, Nugee J held that if anyone had tried to, Mr Berardi he would have stopped what he was doing and packed everything up. As such, that person would not have been given access to any information. Therefore, Mr Berardi had not made information available to the public by carrying out activities and testing his prototypes in his garden.
Although Emson won on the above points, ultimately, the patents were invalid for lack of inventive step over another piece of prior art relating to a self-elongating oxygen hose.
Nugee J's reasoning in relation to "made available to the public" turned largely on the intention of the disclosing party. Hozelock had argued that it was irrelevant whether anyone on the road had actually seen the invention. The fact was that Mr Berardi had placed prototypes of his invention in his garden which were visible by someone stood in a public place. That, Hozelock argued, was a potential disclosure. Nugee J reasoned that was only the case where the intention of the disclosing party was to make a disclosure. Mr Berardi would have packed his prototypes away had an observer been present.
By analogy, the need for there to be an intention would distinguish a lecturer giving a lecture to an empty room where no-one turns up which could be recorded (a potential disclosure) to someone talking out loud to themselves on a deserted moor who would stop talking if anyone were present (not a disclosure).
It will be interesting to see if and how this concept is applied going forward. However, the case overall underlines the importance of diligence and consideration as to the environment an invention is tested in prior to filing a patent application.
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