Patents: The Janger Ltd v Tesco Plc

Jane Lambert

Intellectual Property Enterprise Court (Mr Douglas Campbell QC) The Janger Ltd v Tesco Plc [2020] EWHC 3450 (IPEC) (16 Dec 2020 )

This was a patent infringement claim. The Janger Ltd,, ("Janger") sued Tesco Plc ("Tesco") for patent infringement.  The patent in suit was for a hangable garden hook which was granted under number GB2552562B,  Janger accused Tesco of infringing claims 1, 4 and 5 by using, keeping, offering to dispose of and disposing of certain hangers known as the Meetic hangers. Tesco admitted that those hangers infringed claims 1, 4 and 5 but contended that those claims were invalid for want of novelty and inventive step. The action came on for trial before Mr Recorder Campbell QC sitting as a judge of the High Court on 3 and 4 Nov 2020. By his judgment of 16 Dec 2020, the learned recorder found that claim 1 had been anticipated and claims 4 and 5 were obvious.

The Basics

A patent is a monopoly of a new invention that can last up to 20 years from the date of the application for the monopoly.  The monopoly is a reward for disclosing the invention to the public. 

The document in which the applicant discloses his or her invention is known as "the specification".  S.14 (3) of the Patents Act 1977 requires the specification to disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art.  If it fails to do so the application for the patent may be refused. Also, should a patent somehow be granted, the patent may be revoked by the Intellectual Property Office or a court on the ground that the specification of the patent does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art pursuant to s.72 (1) (c) of the Act.

S.14 (2) (b) of the Act requires the specification to consist of "a description of the invention, a claim or claims and any drawing referred to in the description or any claim."  That document encapsulates the bargain between the applicant and the public.  The description discloses the invention to the public in a way that it can be understood by "people skilled in the art" - persons with the skill and knowledge to make and use the invention - and the claims set out the extent of the monopoly.  For the purpose of the Act, s.125 (1) the invention shall be taken to be that specified in a claim of the specification.  The subsection also provides that the extent of the protection conferred by a patent shall be determined accordingly.

A 20-year monopoly of a product or process is of substantial economic benefit to the owner and a hindrance to everyone else in the industry.   Such a monopoly will be granted only if the invention was new and inventive.  Should it transpire that the invention was already known own either because there was a previous application for a patent for the invention or it was otherwise disclosed to the public, the invention is said to have been "anticipated,"  If the invention would have been obvious to a person skilled in the art having regard to what he or she would have known at the time of the application, it would lack an inventive step.  A patent that is anticipated or obvious is invalid and likely to be revoked.  No infringement action can succeed if the patent is invalid even if that patent would otherwise have been infringed. 

The Patent

The invention is summarized in the following abstract:

"A garment, clothing, or apparel hook 10 (fig. 1, not shown) comprises a rail or rack engaging hook 12 and a stem 14. The stem has a first section extending from the rail engaging hook, a spacer section 18 extending from the first section, and a tail section 20 extending from the spacer section towards the first section or the rail engaging hook. The stem forms an open triangular loop with an opening between the end of the tail section and the first section. The spacer may be flat and the opening less than half its length and positioned above it. The tail may feature a flange 22 extending away from the stem. The garment hook may further comprise an aperture and connection means for attaching to a garment."

Mr Campbell discussed the description of the invention between paragraphs [26] and [37] of his judgment and the relevant claims between [38]  and  [51].

The Defence

Tesco attacked the validity of the patent on the following grounds:

"(a) First, it submits that claims 1 and 4 are anticipated by, alternatively obvious over, United States Design patent no. 378 167 in the name of Burnia J Jones, Jr (“Jones”) and that claim 5 is obvious over Jones. The title of Jones is “Clothes Hanger Holder”, and its single claim is for “The ornamental design for a clothes hanger holder, as shown and described”.

(b) Secondly, it submits that all claims are invalid due to the prior disclosure of a garment hanger known as the Globalhanger, which was designed by Mr Peter Greening of Global Hanger Solutions Limited (“GHSL”). Specifically, Tesco submit that the Globalhanger was disclosed to Trevor Hatchett of Marks & Spencer PLC (“M&S”) at a meeting held on 1 October 2013 without any obligation of confidence. It is not disputed by Janger that the Globalhanger falls within claim 1, 4, and 5. "

Anticipation

Referring to General Tire and Rubber Company v Firestone Tyre and Rubber Company Ltd [1972] RPC 457 at 485 and Synthon BV v. Smithkline Beecham plc [2006] RPC 10 the recorder said that the prior publication must contain clear and unmistakeable directions to do what the patentee claims to have invented in order to anticipate a claim.  He construed claim 1 at paragraphs [39] and [40] and then Jones between paragraphs [52] and [55].  He considered at [62] whether Jones would have infringed the patent if it had post-dated it rather than being made available to the public before.  In the same paragraph, he concluded that it would, observing that 

"The fact that Jones is a clothes hanger holder would not provide a defence to an action for infringement of claim 1, nor would the fact that it falls short of being optimum for a retail store."

Obviousness

S.3 of the Patents Act 1977 provides:

"An invention shall be taken to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art by virtue only of section 2(2) above (and disregarding section 2(3) above)."

In Pozzoli Spa v BDMO SA and another  [2007] EWCA Civ 588, [2007] Bus LR D117, [2007] FSR 37, [2007] BusLR D117, Lord Justice Jacob proposed the following methodology for deciding whether an invention is obvious at paragraph [23] of his judgment in that case:

"(1) (a) Identify the notional "person skilled in the art"
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"

The Supreme Court confirmed the desirability of using that structured approach in Actavis Group PTC EHF and others v ICOS Corporation and another  [2019] UKSC 15, [2019] Bus LR 1318.

Mr Carmpbell noted at paragraph [17] of his judgment that:

"It was common ground that the skilled addressee is a designer with experience of hanger design. Such a person would have a bachelor’s degree, most likely in Product Design or Industrial Design, and a few years’ experience in the hanger industry"

He identified the common general knowledge of such skilled address between paragraphs [18] and [25].  He identified the inventive concept of claim 4 at [66] as "the combination of claim 1 plus the requirement that the opening between the tail section and the first section of the stem is less than half of the length of the spacer section (which I will call “the narrow opening” feature)." Turning to the question, "what, if any, differences exist between the matter cited as forming part of the "state of the art" and the inventive concept of the claim or the claim as construed", the only difference between Jones and the inventive concept of claim 4 was the narrow opening feature.  As for whether that difference constitutes a step which would have been obvious to the person skilled in the art, he concluded at [74] that it would.  The recorder applied the same methodology to claim 5 and found that that was also obvious.

The Global Hanger Disclosure

His findings on claims 1, 4 and 5 were enough to dispose of the action but he considered whether the disclosure in 2013 by Global Hanger Solutions Limited to Marks and Spencer of a hanger that would have anticipated claims 1. 4 and 5would have invalidated Janger's patent between paragraphs [85] and [101]. The point turned on whether or not the disclosure had been made in confidence. After referring to Mr Justice Megarry;s judgment in Coco v A N Clark (Engineers) Ltd [1969] RPC 41 at 47:and the guidance of the Court of Appeal on circumstances importing an obligation of confidence in The Racing Partnership Ltd and others v Sports Information Services Ltd [2020] EWCA Civ 1300 (9 Oct 2020), Mr Campbell found that the disclosure had been made in confidence.

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