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Wednesday, 8 January 2014

Birss issues hosepipe ban (despite current flooding) - Blue Gentian prevails over Tristar

This Kat recalls Mr Justice Birss (or at least one of his judgments) being referred to as "Arnoldian" at the CIPA President's dinner in October 2013.  The term was used with apology to Mr Justice Birss himself, but without apology to Mr Justice Arnold, who was sitting right there in the room. The IPKat therefore considers that "Arnoldian" is now officially a word, and this Kat ventures to attach to it the definition "long, but not necessarily in a bad way".

Blue gentian, I Presume
Decidedly not Arnoldian is the judgment of Birss J handed down just before Christmas in the case of Blue Gentian Llc & Anor v Tristar Products (UK) Ltd & Anor [2013] EWHC 4098 (Pat) (20 December 2013).  (Merpel just loves the names of the parties in this case - especially Blue Gentian - see here)  In just over 100 paragraphs and 19 pages Birss disposes of the entire case, aided by the fact that infringement was not apparently disputed and only two pieces of prior art fell to be considered for validity.  Also the patent at issue  GB 2490276 relates to rather simple technology of garden hoses.  As the judgment records:

The invention is a hose with an inner tube inside an outer tube.  The outer tube is secured to the inner tube only at the ends.  The hose expands when connected to a pressurised water supply such as a water tap (faucet).  The hose can expand longitudinally up to six times its length and width.  On release of the pressurised water from the inner tube, the inner tube will contract.  The inner tube could be made of rubber while the outer tube could be made of a non-elastic relatively soft fabric like woven nylon.  Figures 9 and 5 and figures 10 and 6 show the invention in its unexpanded and in its expanded states: 

In the unexpanded state, when not connected to water pressure, the inner tube is in a relaxed condition.  There are no forces being applied to expand or stretch it.  It has a relatively narrow diameter.  In this state the outer tube is ruffled.  When the hose is connected to a water supply and the supply turned on, water pressure expands the rubber inner tube.  The inner tube will expand laterally (also referred to as radially or circumferentially) and will also expand axially (i.e. along the length of the hose).  As the inner tube expands the wall thickness of the inner tube material reduces, in other words the material gets thinner.  The radial expansion is constrained by the diameter of the outer tube.  The axial expansion is constrained by the length of the outer tube.  As the water inflates the inner tube, the hose expands lengthways and the ruffles of the outer tube unfurl until it is smooth (see fig 10).  In this state the hose can be used.  The hose contains a flow restrictor, which can be a small disc with a narrower bore than the bore of the hose.  
Birss J had little difficulty in finding the claims novel over US 2003/0000530 ("MacDonald") relating to an oxygen hose for an oxygen mask - if MacDonald was considered without the gas mask it lacked the flow restrictor, while if it was considered with the gas mask it was not a "garden water hose assembly".  On the other hand in relation to a document ("Ragner") that was concerned with garden variety [pun intended] hoses, US 2003/098084 [Merpel notes that the judgment has the wrong number for this in para 2, but this is clearly the document that is meant], the judge found that:

although paragraph [0107] discloses the idea of making the cover material from elastic material, it does not expressly disclose the combination of an inner cover of elastic material and a non-elastic outer material.
He therefore found the claims to be novel over Ragner, and also found that it was not obvious (without hindsight) to modify Ragner to arrive at the claimed invention.

And since infringement was not in dispute, that was pretty much the end of the matter.

The IPKat's ears also pricked up at the penultimate paragraph of the judgment, which indicates how much attention a UK court is likely to pay to a Patent Office opinion:

I will mention a further point which arose in argument.  Blue Gentian provided me with a copy of a Patent Office opinion that the European equivalent of the Blue Gentian patent is not obvious over McDonald.  I have not taken it into account and have not read it (save for the extract in Blue Gentian’s closing).  I mention it here because the quoted extract shows that the examiner does “not believe that [McDonald] can rightly be considered relevant to the state of the art as it is a breathing apparatus for a pilot”.  I sympathise with this sentiment but it appears to suggest that McDonald is not even to be put before a person skilled in the art at all for the purposes of testing obviousness.  I believe that is not the law.

So that would be not a lot, then.


Mark said...

Apropos of not very much, and if I remember right, the main remedy provided by the medical team in Catch 22 was to paint the hands and feet of the patient with "gentian violet" and send him on his way. Could this be tried in the small claims court of IPEC as a cost-effective solution to IP disputes?

Anonymous said...

by the way, it's "à propos" not apropos.

Mark not Twain said...

With apologies to Mark Twain:
Monsieur le Landlord--Sir: Pourquoi don't you mettez some savon in your bed-chambers? Est-ce que vous pensez I will steal it? La nuit passée you charged me pour deux chandelles when I only had one; hier vous avez charged me avec glace when I had none at all; tout les jours you are coming some fresh game or other on me, mais vous ne pouvez pas play this savon dodge on me twice. Savon is a necessary de la vie to any body but a Frenchman, et je l'aurai hors de cet hotel or make trouble. You hear me. Allons. BLUCHER.

Anonymous said...

Karl said...

I think Birss is being a little bit casual on the matter of which documents should be considered for obviousness. Sometimes it is clear that certain documents can only be found/identified using knowledge of the invention, and they realistically would not have been considered/located by the skilled person at the priority date wishing to solve the problem. For example for sequence inventions that can often be the case, where until one discovers the identity of the sequence X that does Y, one does not have the means of searching databases for disclosures of bits of sequence X.

MaxDrei said...

It will come as no surprise, to those who know my pseudonym, to find me urging that the EPO's Problem and Solution Approach (to what was or was not "obvious" on the date of the Claim) deals very elegantly (and fairly) with prior disclosures that have already occurred in other technical fields. And it does this scrupulously clean of any hindsight. And it has been doing this consistently, these last 30+ years.

EPO-PSA is the established law of Europe on Art 56 EPC. The UK Supreme Court has told us to defer to the established law of substantive patentability laid down by the Enlarged Board. When then shall we see evidence that the English judges have any interest at all in getting "up to speed" with EPO-PSA?

Anonymous said...

MaxDrei states "And it does this scrupulously clean of any hindsight. And it has been doing this consistently, these last 30+ years."

Except that is not quite true. There is always some hindsight (and subjectivity) involved. With PSA, this shows up in the defining the problem and choosing the closest art steps.

MaxDrei said...

Thanks for that, anon. Let's think about it a bit more.

EPO-PSA looks at the situation on the filing date. It looks exclusively at documents created BEFORE that key date, including what was written as the patent application which later came to be filed the next day.

Written into that text, by the inventor, in words of her own choosing, is the announcement of the technical field and the subjective problem.

What the EPO selects as the prior art starting point has to be realistic for a skilled person in that field addressing that problem.

So, EPO-PSA scrupulously gives full faith and credit to the inventor's statement where the Invention is and what it is.

The notional addressee for assessing obviousness is NOT a real person. Rather, it is the notional PHOSITA, who knows all the prior documents but lacks any inventive insight. The enquiry is objective, modifying the stated subjective problem as needed. We want objectivity, don't we?

Given the PHOSITA concept, and the strict exclusivity as to the qualifying date, where's the hindsight. Everything is done on the basis of anterior documents. Except in Special circumstances, there are no later. crafted affidavits, no experts looking back, and no emerging secondary indications.

Still dissatisfied with PSA? Why then?

MaxDrei said...

One more thought: in case there are readers here who would criticise EPO-PSA without first learning the Rules of the Game.

Re-formulating the Technical Problem can only be within the frame of what is disclosed in the appln as filed, this to be fair to the public. And further, in the re-formulation, it is prohibited to make use of the disclosed solution, this of course to protect the inventor and (of course) to exclude hindsight!

Anonymous said...

Since there is a corresponding European application in which the same prior art is under consideration by the Examiner, we will have the opportunity to see whether we get the same outcome.

There is also a divisional where Ragner is considered to be the closest prior art

MaxDrei said...

Thanks for alerting me to the div, anon. Not sure though whether any particular ED is the ultimate word on how correctly to apply EPO-PSA, but never mind.

The div file is rich. I see 3rd party observations and 123(2) problems. What seriously troubles me about EPO caselaw is the "beyond reasonable doubt" established caselaw of DG3 on 123(2) see pp 437-9 of the 7th Edition of the White Book. DG3 is wrong there, I think.

MaxDrei said...

Sorry readers. Error. The "rich" EPO file is (logically enough) not the div but, rather straight counterpart EP-A-2520840.

MaxDrei said...

I note that the inventor's field was hoses for a "fluid" and that his subjective problem was to save storage space. I note that the prior art teaching the pilot's oxygen hose was also trying to save storage space. What's so special about water and watering your garden?

So we have a 21st century update on the wonderful Barking Brassware case, which centred on what "fluid" means and what was the appropriate skilled person. What goes around comes around. Bravo!

Anonymous said...

MaxDrei do you have a citation on that Barking Brassware case?

MaxDrei said...

If I remember correctly, anonymous, it is an RPC from the 1960's, in which Barking was Defendant and Mr justice Lloyd-Jacob was the judge.

I wish I could remember the name of the Plaintiff. I will see if i still have a copy of the case Report.

MaxDrei said...

The case of Barking Brassware v. Allied Ironfounders is reported at 1962 RPC 210 (in which "RPC" stands for "Reports of Patent Cases"). I did not succeed though, in finding a way to access the text free of charge. Perhaps other readers can help the anonymous enquirer further?

Anonymous said...

MaxDrei... I appreciate the assistance.

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