Mr Justice Nugee and the Superhose: The potentiality of disclosure

In a recent UK High Court case (Emson v Hozelock), Mr Justice Nugee, in a follow-up to the classic UK case Windsurfing, considered the issue of when a disclosure may be considered public. Mr Justice Nugee assessed whether the prior use of an invention by the inventor in his own private garden was a public disclosure, given that the garden was visible from the public road.

The case concerned the alleged infringement and invalidity of a UK and EP patent for an expandable garden hose - the XHose. Licencees of the patent, Emson, sued Hozelock for infringing the patent by manufacture of their own expandable hose - the Superhoze. Hozelock counterclaimed that the patents were invalid. Hozelock argued that the Patents were obvious in view of the inventor's manufacture and use of XHose prototypes in his private garden. Hozelock argued that the prior use by the inventor was a public disclosure, given that the inventor's activities could potentially have been seen from the public road.

I see you...
Legal Background - When is prior use state of the art?

The case of Emson v Hozelock is reminder of  the classic UK case law on the issue of when a public disclosure is public: Windsurfing International Inc v Tabur Marine (Great Britain) Ltd ([1985]). In Windsurfing, the alleged prior disclosure related to a sail board built by a 12 year old boy. The boy used his sailing board in an isolated coastal inlet. There was no evidence that anybody had observed or taken note of the boy's sailing board. However, the judge in the case observed that there was no doubt that the use of the sailing board was "public" in the sense that it had been potentially visible to anyone in the vicinity of the inlet.

"Just a man using a hose"

In Emson v HozelockMr Justice Nugee first considered whether the private development of the claimed invention by the inventor, Mr Berardi, in his publicly visible garden rendered the patent obvious. In 2011, Mr Berardi made prototypes of his invention. Mrs Berardi videoed Mr Berardi's various attempts at constructing and testing these prototypes in the garden of their house. The videos documented Mr Berardi's iterative development of the hose invention over 3 months, up until the day before the priority US patent application was filed.

Mr Berardi was living in a detached house in Skylark Point, a small cul-de-sac in Florida. The garden of the house was visible from the road. The Defendant argued that a skilled person would have been able to observe Mr Berardi in his garden, and that the claimed invention would have been obvious in view of the skilled person's observations.

Mr Justice Nugee found that the claimed invention would only have been obvious in view of the separate disclosures taken together as a whole. In the UK, prior art disclosures may be combined for an obviousness attack if a skilled person would have been likely to consider the disclosures together. The question of obviousness therefore rested on whether a skilled person would have been motivated to come to observe Mr Berardi on more than one day.
Skylark Point

Mr Justice Nugee admitted that he did not find the question of whether the separate disclosures could be combined in this way, an easy one. However, he eventually concluded that the separate disclosures on separate days could not be combined. Mr Justice Nugee reasoned that particular individual instances of the inventor's activities would have been unremarkable to a skilled person. On some days, Mr Justice Nugee observed, the view from the road would have just looked like a man using a hose. Given such a disclosure, the skilled person would not have had any motivation to come and spy on Mr Berardi on another day. Mr Justice Nugee thus found Mr Berardi's disclosure in his non-secluded garden as insufficient to render the claim obvious.

Was the prior use public?

In case he was wrong on the issue of whether the separate disclosures on different days would have been combined, Mr Justice Nugee also considered in obiter the issue of whether Mr Beradi's activities did, in fact, constitute public prior use. Mr Justice Nugee summarized the relevant case law that, for an invention to have been made "available to the public", proof is not required that the invention was seen. The favorite example used to illustrate public disclosure based on a potentiality of disclosure, is the unread thesis gathering dust in a public library. It was also established in Folding Attic Stairs v Loft Stairs [2009] EWHC 1221 (Pat) that the confidentiality of a disclosure cannot be implied merely because the disclosure occurs on private property. 

Emson argued that the public nature of an oral or visual disclosure should be considered differently to that of a written disclosure, such as a thesis. A visual or oral disclosure, it was argued, requires the presence of a person to see or hear the disclosure. Particularly, the Emson argued, "if the inventor recites the details of his invention in an empty room, that is no disclosure of anything, even if the room is one to which the public have access" (para. 139) [We seem to have veered dangerously close here to the old philosophical chestnut of whether a tree that falls in the forest can be said to have made a sound...]. Emson concluded that, given that there was no evidence that Mr Beradi was observed, no disclosure could be said to have occurred.

Mr Justice Nugee disagreed with the Emson's "empty room argument". Particularly, Mr Justice Nugee reasoned that, applying the case law, if an inventor advertised a public lecture to which no-one turned up and the inventor then went ahead with the lecture anyway, the lecture would be a public disclosure.

However, Mr Justice Nugee was potentially conscious that finding the private activities of an inventor in his garden to be public disclosure, just because part of the garden was visible from the road, would not necessarily correspond to a common sense view of things. One could argue, for example, that any activity in a private garden could be observed by the public. What about, for example, activities visible to camera-bearing recreational drones. But then again, wouldn't ignoring the potentiality of disclosure be contrary to Windsurfing?

Mr Justice Nugee has appeared to have impressively reconciled the "common sense" view and the case law of Windsurfing. Particularly, Mr Justice Nugee found that Mr Beradi had not disclosed his invention, because there was not, in fact, the potential for disclosure. The road was very quiet. Mr Beradi knew of the dangers of disclosing his invention before filing a patent application. Therefore, if Mr Beradi had seen anyone on the road peering into his garden, he would have packed up his things on gone inside. Thus, no potentiality of disclosure existed.

Mr Justice Nugee therefore found that the obviousness attack based on prior use also failed because Mr Beradi's disclosure was not a public disclosure.

Mr Justice Nugee did, however, find the patents invalid for being obvious in view of a cited prior art document, US 2003/0000530 (McDonald).

Expandable hose
A new criteria for assessing whether a disclosure is public?

This Kat is keen to hear readers comments on this question. It seems that Mr Justice Nugee, despite his obvious best efforts to the contrary, has introduced a new concept into the test for public disclosure that is in potential conflict with Windsurfer. Previously, the test has been whether there was the "potentiality" for a member of the public to see or hear a disclosure. Mr Justice Nugee seems to have introduced the further criteria of the intentionality of the party making the public disclosure.

What if Mr Beradi had failed to notice someone standing on the road observing his garden activities (the established facts of the case was that it would have been "quite obvious" if a person had been on the road)? Mr Justice Nugee compared Mr Beradi's disclosure with that of an inventor talking out loud to himself while taking a walk along the deserted moors. If the inventor had seen someone else on the moor, he would not speak aloud, and thus the disclosure could not be considered public. But what if the inventor walking on the moor is so wrapped up in his invention he fails to notice a quiet footed rambler walking behind him?

It will therefore be interesting to see if Mr Justice Nugee's approach is followed by Judges in future cases.
Mr Justice Nugee and the Superhose: The potentiality of disclosure Mr Justice Nugee and the Superhose: The potentiality of disclosure Reviewed by Rose Hughes on Monday, May 13, 2019 Rating: 5

1 comment:

  1. An enquiry into "intentionality" is fraught with difficulty. Theresa May was able to handle it, in the case of the recent "making available" of something or other to The Daily Telegraph by Cabinet Minister Gavin Williamson, but the police not, because they have to consider the evidence under a standard different from that used by the Prime Minister.

    Robin Jacob had a case some years ago, in which the inventor showed a prototype to the buyer for a chain of supermarkets. He would ask the proverbial fly on the wall what he (or she) would have made of it. I also think it best to keep intentionality out of the enquiry what an inventor makes available to any "member of the public".


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