A further interesting decision handed down by the Judges of the English Patents Court prior to the Easter break was a judgment from Nugee J concerning proceedings between E. Mishan and Hozelock relating to a UK patent and European patent, both entitled “Expandable Hose Assembly”. E. Mishan (trading as Emson) claimed that Hozelock’s expandable garden hoses, the Superhoze 1 and 2, infringed both patents and Emson counterclaimed for invalidity based on lack of inventive step. The Judge found both patents obvious, but that had they been valid, they would have been infringed by both products.
The most interesting part of the decision is that relating to an alleged lack of inventive step over the inventor, Mr Berardi’s, experimentation with prototypes in his front garden. Two points arose here. The first was whether the various occasions on which Mr Berardi had worked in his garden could be put together via mosaicing (as the parties agreed that none of the individual occasions was enough for a case of obviousness). Applying the well-established principles that it is not permissible to put together two separate disclosures or prior uses except where one cross-refers to the other and where the second disclosure would cause the skilled person to consult the first, Nugee J found mosaicing was not permissible on the facts before him because it would not have been clear to the skilled person watching Mr Berardi on one specific occasion that what he was doing was testing the thing that he had made on another earlier specific occasion.
The second point that Nugee J explored (albeit obiter) was, if he was wrong on the mosaicing point, whether Mr Berardi’s work in his front garden amounted to a relevant prior use. Finding the point to be a novel one, the Judge explored the case law on making available to the public, as per section 2(2) of the Patents Act 1977, at length and concluded: first, that if the public is given access to information, in whatever guise, it is made available to the public and it does not matter that no one in fact took up the opportunity (see Folding Attic Stairs v Loft Stairs [2009]), but, second, that the law does not treat information as available to the public when no member of the public in fact could have accessed it. Therefore, on accepting Mr Berardi’s evidence that if anyone had stood watching him then he would have stopped his work or continued it out of sight, Nugee J found that Mr Berardi’s garden activities were not made available to the public and that they did not amount to prior use.
Despite the fact that Mr Berardi’s garden experiments did not invalidate the patents, they were both held obvious over a piece of prior art which described a self-elongating hose for supplying oxygen to an oxygen mask for aviation crew.
Of further interest is that, in December 2013, Birss J found the UK patent valid and infringed by Tristar, the seller of a different rival garden hose (this decision was later upheld by the Court of Appeal). Therefore, as he was entitled to do so on the basis of the evidence before him (as per Hollington v Hewthorn [1943] and reaffirmed in Rogers v Hoyle [2014]), in finding the patents obvious in the current proceedings, Nugee J came to a different conclusion to Birss J on the invalidating piece of prior art concerning oxygen masks.
This decision, from a Judge who does not regularly try patent cases, contains an interesting new nuance on the law of prior use. It seems that the ”brightline” test for prior use, as it was termed in Milliken v Walk Off Mats [1996], may not be as rigid as previously thought. At the time of writing, it is not known if the parties are appealing the decision.
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Much of interest in this lengthy (61 pages, 203 paragraphs) Decision on a claim to a “garden water hose” despite, perhaps because, the judge is new to patents cases. We read him, in particular, that, for the crux examination of the obviousness issue, the 4th “Pozzoli question” (para 154) is “a sort of jury question” (para 161). The judge goes on to find that, “McDonald”, a prior publication of a hose to supply oxygen to aircrew, “would” (para 187) have led the skilled person to the subject matter of the claim. This reverses an earlier opinion on validity over McDonald, written by a Hearing Officer at the UK Patent Office.
The reasoning of the Hearing Officer and that of the judge in coming to the opposite conclusion, I shall now read with great interest.
Wouldn’t it be nice, if Patent Offices and courts throughout Europe could explore the obviousness issue within a common framework of argument? Or not? Who thinks what?
My first comment, above, was made in the heat of the first moment of acquaintance with this decision. Since then, I’ve looked at it more thoughtfully. The judge, in finding the claim obvious, disagreed with not only the Patent Office but also (as Ms Muncey notes) with an earlier decision of the High Court that was subsequently upheld by the Court of Appeal. That’s quite startling.
How come? Evidence from a technical expert, to the effect that nearly all the makers of garden hoses also make “technical hoses”, was given to the judge and (if I see it right) not disputed. The point is, none of the earlier deciders had the benefit of that evidence. It helped the judge to come to a definition of the “person skilled in the art” different from all the previous deciders, a definition crucial to the decision on obviousness, a decision which, to me now, seems fair enough. But is it a decision that any other court in EPC-land could and would have come to, on that evidence? There are two oppositions pending at the EPO, one on each of the two EP patent family members. How will the TBA decide each case, I wonder.
The inventor’s disclosures and experiments in his front garden were done during the Paris Convention priority year after the first priority date but before the second priority filing. What exactly were his experiments and what makings available to the public could have been viewed by a member of the public who might have been observing the experiments from the road. If the claims in suit entitled to the first priority date none of that would matter. But were they?
Aside from the issues of novelty and obviousness, there is lots of interesting stuff on infringement by equivalent and the Formstein defence to infringement.
I do hope the case in England goes to appeal. I’m grateful to Bristows and Kluwer for publicising it.