Wrapped up: Everseal Stationery Products Ltd v Document Management Solutions Ltd

Not all patented inventions are high tech. The title of the patent in Everseal Stationery Products Ltd v Document Management Solutions Ltd. and Others  [2015] EWHC 842 (IPEC) (1 April 2015) was "Mailer with self-adhesive closure". The principal claim was for
"1. A business form with an adhesive closure having one or more adhesive regions for holding the form on a folded condition, characterised by the use on the adhesive region of a non-tacky layer of a dry self-sealing contact adhesive, which in the folded condition self-seals irreversibly to an opposed adhesive region also carrying a said contact adhesive, the adhesive being selected to self-seal irreversibly under a pressure of 500 kPa or less."
The defendant, Document Management Solutions Ltd. ("DMS") was accused by Everseal Stationery Products Ltd ("ESP") of supplying mailers to a company called Mastermailer Stationery Limited ("Mastermailer") which had failed to obtain a declaration of non-infringement in relation to the patent in Mastermailer Stationery Ltd v Everseal Stationery Products Ltd and another [2013] EWPCC 6 (16 Jan 2013).

ESP sued DMS for infringement of its parent not only in respect of the mailer it had supplied to Mastermailer but also in relation to two others that it had developed subsequently. DMS counterclaimed for revocation of the patent. The action and counterclaim came on before His Honour Judge Hacon on 24 and 25 Feb 2015. The questions before him were:
"(1) Whether any of Mailers 1, 2 or 3 fall within claims 1 and/or 7 of the Patent.
(2) Whether the Patent was invalid on the grounds of
(a) lack of novelty;
(b) lack of inventive step; and/or
(c) added matter.
(3) If any of the Mailers infringed, whether there should be a restriction on Everseal's recovery of damages pursuant to section 62(3) of the Patents Act 1977 ("the Act") because amendment of the Patent had been allowed and
(a) the specification of the Patent as published had not be framed with good faith and reasonable skill and knowledge; and
(b) the proceedings against DMSL had not been brought in good faith."
I have already mentioned claim 1. Claim 7 was for:
"A business form according to claim 6 in which the adhesive is a natural rubber latex adhesive stabilised with ammonia."
To understand claim 7 you need to know that claim 6 was for
"A business form according to any one of the preceding claims made from a paper sheet which is laser-printable in which said contact adhesive is an elastomer latex adhesive."
The judge concluded at paragraph [63] that if the patent were valid, the mailer that DMS had supplied to Mastermailer would have infringed claim 1 but not claim 7 and the mailers that DMS developed afterwards would not have infringed either claim. However, he also held that those claims were invalid for lack of novelty and obviousness.

The parties agreed that the judge should construe the claims in accordance with Lord Hoffmann's speech in Kirin-Amgen Inc and others v Hoechst Marion Roussel Ltd and Others [2005] RPC 9, [2004] UKHL 46, [2005] 1 All ER 667, (2005) 28(7) IPD 28049, [2005] RPC 169 as amplified by Lord Justice Jacob's judgment in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062, [2010] RPC 8. The only argument on construction was on the meaning of "irreversibly" in claim 1. His Honour decided at paragraph [42]:
"the adhesive self-seals 'irreversibly' if, upon receipt of the mailer, the recipient is able to tell from both (a) the adhesive structure (by direct inspection or by inference from inadequate sealing) and (b) the appearance of the base material, that the mailer has previously been opened. If earlier opening would not be betrayed by each of these taken separately, the adhesive did not self-seal 'irreversibly' when the mailer was first closed."
Claim 7  required the adhesive to be a natural rubber latex adhesive stabilized with ammonia.

The judge found no evidence that natural rubber latex adhesive stabilized with ammonia was used for the first mailer. He therefore held at paragraph [47] that claim 7 had not been infringed by that mailer. DMS had carried out experiments on the second and third mailers to see whether they could be resealed to disguise signs of tampering and there was no evidence that they could not. As the burden of proof was upon ESP the judge held at paragraph [56] that ESP had not discharged that burden. Accordingly the claim for infringement failed in respect of the subsequently developed mailers.

ESP succeeded on claim 1 in respect of the first mailer because DMS admitted that that mailer fell within the integers of that claim subject only to an argument as to whether the adhesive seal was irreversible. That argument had failed in the action before Judge Birss and it was abandoned at trial.

DMS had argued that one British and two American patents had anticipated the patent in suit. The judge directed himself at paragraph [73]
"that if it is alleged that carrying out the teaching of certain prior art would lead to the performance of the claimed invention, it must inevitably do so if the claimed invention is to lack novelty". 
At paragraph [74] he said:
"Where lack of novelty turns on whether an alleged prior use had particular features, it is sufficient to adduce evidence which proves, on the balance of probabilities, facts which establish that the prior use had those features. By contrast where the court is invited to infer that the prior use had one or more features on the basis of primary facts proved, the claimed invention will lack novelty only if the inference is an inevitable one. No matter how likely an inference it is, if the primary facts allow for the possibility of an alternative inference the invention will not lack novelty."
On the evidence before him he concluded that there was sufficient evidence of prior use to show that claim 1 of the patent had been anticipated by the British invention but that the teaching of the US patents did not anticipate claims 1 or 7.

Earlier in his judgment Judge Hacon adopted Judge Birss QC's findings in Mastermailer on the skilled addressee (a team concerned with producing business forms, including someone who is an adhesive specialist) and common general knowledge. Having regard to the team and common general knowledge the judge concluded that both claims 1 and 7 were obvious in the light of the prior art.

Other Matters
Having reached decisions on validity and infringement His Honour did not consider it was necessary to consider the other issues and declined to do so.  If the case went to appeal the appellate judges would not require findings of fact from him to form a view because these were issues of law and construction. The whole point of the Intellectual Property Enterprise Court is to save time and costs and a discussion and adjudication on those points would have consumed both.

This case does not make any new law but it is a useful illustration of the application of well known principles and may well appear in skeleton arguments for that reason alone. Should anyone wish to discuss this case or patent law in general, he or she should call me on 020 7404 5252 during office hours or use my contact form.


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