Patents - Vernacare Ltd v Moulded Fibre Products Ltd.
Business and Property Courts of England and Wales, Intellectual Property Enterprise Court (Mr Nicholas Caddick QC) Vernacare Ltd v Moulded Fibre Products Ltd. [2022] EWHC 2197 (IPEC)
This was an action for patent infringement. It was brought by Vernacare Limited ("Vernacare") against Moulded Fibre Products Limited (“MFP”). Vernacare held the following UK patents:
- GB 2446793 (“793”) for a wash bowl. and
- GB2439947 ("947") for mouldable paper pulp composition.
The Patents
At para [2] of his judgment, Mr Caddick described the inventions for which the patents had been granted as follows:"an open topped washbowl made from moulded paper pulp as used in hospitals, care homes and nursing homes where patients are confined to their beds or find it difficult to get to a bathroom to wash themselves. The products with which the Patents are concerned are intended to be used once and then disposed of in a macerator. As set in greater detail below, the 793 Patent is concerned with the shape (or configuration) of such washbowls whereas the 947 Patent is concerned with their composition."
The abstract of 793 described the invention as:
"An open receptacle such as wash bowl 10 is made from paper pulp and has a base wall 12 and an enclosing wall 14 extending upwardly from the base wall. The enclosing wall has a number of recesses 34, 36 forming grip means for facilitating handling. There may also be inwardly-directed projections, either the said recesses having lips 38, 40 forming shoulders (42, 44, Fig. 1) or other recesses 46, 48, 54 all of which indicate the level of liquid corresponding to predetermined volumes. The container can be recycled by maceration."The 947 abstract described:
Mr Caddick discussed the technical background of the inventions between paras [13] and [19]. He considered 793 in more detail between paras [31] and [39] and 947 between [69] and [79].
The Complaint
Vernacare complained that the following wash bowl infringed its patents:
The Issues
Vernacare alleged that MFP's wash bowl infringed claims 1 to 12 of 793 and claims 1, 2, 3, 5, 7, 8, 9, 10, 12, 15 and 17 of 947. MFP denied that its wash bowl infringed any of the claims of 793. If. contrary to its contentions, its wash bowl infringed, MFP argued that claim 1 and dependent claims would have been obvious. As to 947, CFK admitted that its wash bowl would infringe claims 1, 3, 9 and 12 if the patent were valid but it denied validity on the ground that it was obvious. Vernacare answered the allegation of obviousness with an argument that the invention satisfied a long-felt want and had proved to be a commercial success.
Infringement
A patented invention can be either a product or a process. Where the invention is a product s.60 (1) (a) of the Patents Act 1977 the patent confers on the owner of the patent a monopoly of the manufacture, disposal, use or importation of the product into the United Kingdom. That monopoly is infringed if any of the foregoing acts is done in relation to the invention in the UK without the owner's licence.
The next question is whether a product made by someone other than the patent owner falls within the description of the patented invention. Guidance on that point is provided by s.125 of the Patents Act 1977. Subsection (1) of that section states that an invention for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the patent. The same subsection requires the claim to be
"interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."
The next question is whether a product made by someone other than the patent owner falls within the description of the patented invention. Guidance on that point is provided by s.125 of the Patents Act 1977. Subsection (1) of that section states that an invention for which a patent has been granted shall, unless the context otherwise requires, be taken to be that specified in a claim of the specification of the patent. The same subsection requires the claim to be
"interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for a patent shall be determined accordingly."
Further guidance is to be found in subsection (3):
"Article 1
General principles
Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.
Article 2
Equivalents
For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims."
The correct approach to the construction of patent claims was considered by the Supreme Court in Eli Lilly v Actavis UK Ltd and others [2018] 1 All ER 171, [2017] Bus LR 1731, (2017) 157 BMLR 96, [2017] RPC 21, [2018] 2 All ER (Comm) 1, [2017] UKSC 48 and the Court of Appeal in Icescape Ltd v Ice-World International BV and others [2018] EWCA Civ 2219.
Referring to paras [55] to [57] of Lord Kitchin's judgment in Icescape, Mr Caddick said between paras [41] and [43] of his judgment that the test for infringement of a patent involves a two-stage process:
"The Protocol on the Interpretation of Article 69 of the European Patent Convention (which Article contains a provision corresponding to subsection(1) above) shall, as for the time being in force, apply for the purposes of subsection (1) above as it applies for the purposes of that Article."
The wording of that Protocol is as follows:"Article 1
General principles
Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.
Article 2
Equivalents
For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims."
The correct approach to the construction of patent claims was considered by the Supreme Court in Eli Lilly v Actavis UK Ltd and others [2018] 1 All ER 171, [2017] Bus LR 1731, (2017) 157 BMLR 96, [2017] RPC 21, [2018] 2 All ER (Comm) 1, [2017] UKSC 48 and the Court of Appeal in Icescape Ltd v Ice-World International BV and others [2018] EWCA Civ 2219.
Referring to paras [55] to [57] of Lord Kitchin's judgment in Icescape, Mr Caddick said between paras [41] and [43] of his judgment that the test for infringement of a patent involves a two-stage process:
"[41] The first stage is to ask whether the allegedly infringing product falls within any of the claims of the patent as a matter of “normal” construction. This requires the court to determine what the skilled person, reading the relevant claims of the patent with all the common general knowledge available to such person at the relevant priority date, would have understood the words of those claims to mean when read in the context of the patent as a whole (including its summary, detailed description and the teaching it discloses). Ultimately, the normal construction is one which lies somewhere between, on the one hand, a slavish literal interpretation of the words used and, on the other, pure purposiveness.
[42] If the allegedly infringing product does not infringe any of the claims when construed normally, the second stage is to ask whether it nevertheless falls within the scope of any of the claims because it varies from the invention (normally construed) in an immaterial way or ways. This approach (often referred to as infringement on the basis of equivalence, or as the doctrine of equivalents) requires the court to ask the three so-called Improver questions formulated by Hoffman J in Improver [1990] FSR 181 and reformulated as follows by Lord Neuberger in Actavis v Ely Lilly [2017] UKSC 48 at [66]:
'(i) Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
(ii) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
(iii) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?'
[43] As Lord Neuberger pointed out at [66]:
'In order to establish infringement in a case where there is no literal infringement, a patentee would have to establish that the answer to the first two questions was ‘yes’ and that the answer to the third question was ‘no’.”
When construing a patent claim it is often useful to break it down into its component "features" or "integers" each of which is allocated a letter or number. Where the parties can agree on such a breakdown, they may create a document known as a "claims chart" in which the rival contentions on the construction of the claim are set out. Such a claims chart seems to have been agreed upon in this case.
Claims of 793
Mr Caddick observed at para [45] of his judgment that although Vernacare’s case is that MFP's wash bowl infringes claims 1 to 12 of the 793 patent, it is clear from the claims chart that the principal issue between the parties is whether MFP's wash bowl falls within integers 1.f to 1.k of the 793 Patent. Those integers were as follows:
He continued at [46]:
"To succeed in showing infringement on a normal (purposive) construction, Vernacare must, therefore, establish that the MFP washbowl has the requisite recesses and that those recesses form grip means for facilitating lifting of that washbowl."
He considered whether MFP's wash bowl had those integers between paras [47] and [57] of his judgment.
He concluded between paras [56] and [62] that the bowl would infringe only if the claim were construed in a way that would mean that it would apply to any strengthening rib on the side walls of a wash bowl (and certainly to a rib that was placed roughly mid-way or higher up the side walls) thereby forming a grip means to facilitate lifting of the bowl. However, such strengthening ribs were common general knowledge in the moulded paper pulp sector. Under such a construction, the invention would have been obvious and the claim invalid.
The above argument is an example of a "squeeze". Squeeze arguments can be fascinating and they are one of the reasons why I am attracted to this area of law.
He concluded between paras [56] and [62] that the bowl would infringe only if the claim were construed in a way that would mean that it would apply to any strengthening rib on the side walls of a wash bowl (and certainly to a rib that was placed roughly mid-way or higher up the side walls) thereby forming a grip means to facilitate lifting of the bowl. However, such strengthening ribs were common general knowledge in the moulded paper pulp sector. Under such a construction, the invention would have been obvious and the claim invalid.
The above argument is an example of a "squeeze". Squeeze arguments can be fascinating and they are one of the reasons why I am attracted to this area of law.
The upshot was that the patent was not infringed on a "normal construction."
Between [63] and [57] Mr Caddick considered whether MFP's wash bowl could be caught under the doctrine of equivalents and decided at [68] that it could not. In passing, the learned deputy judge referred to the Formstein defence at para [65]. For those who are interested. I wrote an article on the Formstein defence on 2 Oct 2021. Mr Caddick held at [68] that 703 was valid and none of its claims was infringed by the MFP wash bowl.
Obviousness
MFC's only defence to the claim for infringement of 947 was that the patent claims that it admitted infringing were invalid because they were obvious over the following Japanese patent applications:
- Japanese Patent Application, No. JPH7-137726, published on 30 May 1995 and entitled “Simple food container” (“Shimooka”); and
- Japanese Patent Application, No. JPA9-183429, published on 15 July 1997 and entitled “Oil-resistant and water resistant simple food container” (“Sugimoto”).
Mr Caddick discussed Shimooka between paras [107] and [113] and Sugimoto between paras [114] and [118].
A patent may be granted for an invention only if it satisfies the conditions of s.1 (1) of the Patents Act 1977. One of those conditions is that the invention involves an "inventive step." S.3 provides that 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 s, 2 (2) of the Act. That subsection describes "the state of the art" as
"all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way."
"all matter (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention been made available to the public (whether in the United Kingdom or elsewhere) by written or oral description, by use or in any other way."
At para [90] of his judgment, Mr Caddick referred to the following methodology for determining obviousness in accordance with those statutes that had been propounded by the Court of Appeal in Pozzoli Spa v BDMO SA and another [2007] FSR 37, [2007] Bus LR D117, [2007] BusLR D117, [2007] EWCA Civ 588 and approved by the Supreme Court in Actavis Group PTC EHF and others v ICOS Corporation and another [2020] 1 All ER 213, [2019] RPC 9, (2019) 167 BMLR 1, [2019] UKSC 15, [2019] Bus LR 1318:
(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, decide whether those differences constitute steps which would have been obvious to the person skilled in the art or whether they require any degree of invention."
Person Skilled in the Art
Mr Caddick adopted Vernacare's case that the skilled addressee or team would be
- a designer of single use maceratable paper pulp products;
- understand how such products would be stored, used and disposed of in, for example, hospitals;
- have an understanding of the moulding techniques needed to achieve particular shapes;
- not have a particularly broad chemistry background or knowledge, but have a working knowledge of the ingredients typically used in the pulp formulations used to make moulded paper pulp products (including the sizing agents, binding agents and biocides that were in use in the moulded paper pulp sector);
- would be interested in the wider world of paper pulp products but would, in general, be unlikely to question the status quo with regard to matters of pulp composition used in the moulded paper pulp sector; and
- would, if a technical issue arose regarding, in particular, pulp formulation, seek specialist advice.
Common General Knowledge
The deputy judge set out the skilled person's common general knowledge as at the date of the application for the patent between paras [92] and [99].
Inventive Concept
Mr Caddick said at [100] that "the inventive concept underlying claim 1 of the 947 Patent was that a detergent resistant wash bowl can be made using a fluorocarbon binding agent (read more broadly, as set out above) in the composition from which it is made."
Differences between Shimooka and the Inventive Concept
At para [120] the learned deputy judge said:
"it seems to me that there are further differences in that Shimooka discloses the use of a fluororesin to give oil and water resistance to a “simple food container”, whereas claim 1 discloses the use of a fluorocarbon to give detergent resistance to a washbowl."
"it seems to me that there are further differences in that Shimooka discloses the use of a fluororesin to give oil and water resistance to a “simple food container”, whereas claim 1 discloses the use of a fluorocarbon to give detergent resistance to a washbowl."
Whether those Differences constitute Steps that would have been obvious to the Skilled Person
Mr Caddick directed himself as follows in para [121]:
"The question, therefore, is whether the skilled person with the common general knowledge referred to above would, on reading Shimooka, have seen the step from using a fluororesin in a food container to achieve oil/water resistance to using a fluorocarbon in a washbowl to achieve detergent resistance as inventive or as obvious."
"The question, therefore, is whether the skilled person with the common general knowledge referred to above would, on reading Shimooka, have seen the step from using a fluororesin in a food container to achieve oil/water resistance to using a fluorocarbon in a washbowl to achieve detergent resistance as inventive or as obvious."
Subsidiary Claims
The above finding related to claim 1. Between [126] and [129] the deputy judge considered whether claims 3, 9 and 12 were valid. He held that they were.
Long Felt Want/Commercial Success
“The mere existence of large sales says nothing about what problems were being tackled by those in the art nor, without more, does it demonstrate that success in the market place has anything to do with the patented development nor whether it was or was not the obvious thing to do. After all, it is sometimes possible to make large profits by selling an obvious product well. But in some circumstances commercial success can throw light on the approach and thought processes which pervade the industry as a whole. The plaintiffs rely on commercial success here. To be of value in helping to determine whether a development is obvious or not it seems to me that the following matters are relevant:
'(a) What was the problem which the patented development addressed? Although sometimes a development may be the obvious solution to another problem, that is not frequently the case.
(b) How long had that problem existed?
(c) How significant was the problem seen to be? A problem which was viewed in the trade as trivial might not have generated much in the way of efforts to find a solution. So an extended period during which no solution was proposed (or proposed as a commercial proposition) would throw little light on whether, technically, it was obvious. Such an extended period of inactivity may demonstrate no more than that those in the trade did not believe that finding a solution was commercially worth the effort. The fact, if it be one, that they had miscalculated the commercial benefits to be achieved by the solution says little about its technical obviousness and it is only the latter which counts. On the other hand evidence which suggests that those in the art were aware of the problem and had been trying to find a solution will assist the patentee.
(d) How widely known was the problem and how many were likely to be seeking a solution? Where the problem was widely known to many in the relevant art, the greater the prospect of it being solved quickly.
(e) What prior art would have been likely to be known to all or most of those who would have been expected to be involved in finding a solution? A development may be obvious over a piece of esoteric prior art of which most in the trade would have been ignorant. If that is so, commercial success over other, less relevant, prior art will have much reduced significance.
(f) What other solutions were put forward in the period leading up to the publication of the patentee’s development? This overlaps with other factors. For example, it illustrates that others in the art were aware of the problem and were seeking a solution. But it is also of relevance in that it may indicate that the patentee’s development was not what would have occurred to the relevant workers. This factor must be treated with care. As has been said on more than one occasion, there may be more than one obvious route round a technical problem. The existence of alternatives does not prevent each or them from being obvious. On the other hand where the patentee’s development would have been expected to be at the forefront of solutions to be found yet it was not and other, more expensive or complex or less satisfactory, solutions were employed instead, then this may suggest that the ex post facto assessment that the solution was at the forefront of possibilities is wrong.
(g) To what extent were there factors which would have held back the exploitation of the solution even if it was technically obvious? For example, it may be that the materials or equipment necessary to exploit the solution were only available belatedly or their cost was so high as to act as a commercial deterrent. On the other hand if the necessary materials and apparatus were readily available at reasonable cost, a lengthy period during which the solution was not proposed is a factor which is consistent with lack of obviousness.
(h) How well has the patentee’s development been received? Once the product or process was put into commercial operation, to what extent was it a commercial success. In looking at this, it is legitimate to have regard not only to the success indicated by exploitation by the patentee and his licensees but also to the commercial success achieved by infringers. Furthermore, the number of infringers may reflect on some of the other factors set out above. For example, if there are a large number of infringers it may be some indication of the number of members of the trade who were likely to be looking for alternative or improved products (see (iv) above[8]).
(i) To what extent can it be shown that the whole or much of the commercial success is due to the technical merits of the development, i.e. because it solves the problem? Success which is largely attributable to other factors, such as the commercial power of the patentee or his license, extensive advertising focusing on features which have nothing to do with the development, branding or other technical features of the product or process, says nothing about the value of the invention.'”
'(a) What was the problem which the patented development addressed? Although sometimes a development may be the obvious solution to another problem, that is not frequently the case.
(b) How long had that problem existed?
(c) How significant was the problem seen to be? A problem which was viewed in the trade as trivial might not have generated much in the way of efforts to find a solution. So an extended period during which no solution was proposed (or proposed as a commercial proposition) would throw little light on whether, technically, it was obvious. Such an extended period of inactivity may demonstrate no more than that those in the trade did not believe that finding a solution was commercially worth the effort. The fact, if it be one, that they had miscalculated the commercial benefits to be achieved by the solution says little about its technical obviousness and it is only the latter which counts. On the other hand evidence which suggests that those in the art were aware of the problem and had been trying to find a solution will assist the patentee.
(d) How widely known was the problem and how many were likely to be seeking a solution? Where the problem was widely known to many in the relevant art, the greater the prospect of it being solved quickly.
(e) What prior art would have been likely to be known to all or most of those who would have been expected to be involved in finding a solution? A development may be obvious over a piece of esoteric prior art of which most in the trade would have been ignorant. If that is so, commercial success over other, less relevant, prior art will have much reduced significance.
(f) What other solutions were put forward in the period leading up to the publication of the patentee’s development? This overlaps with other factors. For example, it illustrates that others in the art were aware of the problem and were seeking a solution. But it is also of relevance in that it may indicate that the patentee’s development was not what would have occurred to the relevant workers. This factor must be treated with care. As has been said on more than one occasion, there may be more than one obvious route round a technical problem. The existence of alternatives does not prevent each or them from being obvious. On the other hand where the patentee’s development would have been expected to be at the forefront of solutions to be found yet it was not and other, more expensive or complex or less satisfactory, solutions were employed instead, then this may suggest that the ex post facto assessment that the solution was at the forefront of possibilities is wrong.
(g) To what extent were there factors which would have held back the exploitation of the solution even if it was technically obvious? For example, it may be that the materials or equipment necessary to exploit the solution were only available belatedly or their cost was so high as to act as a commercial deterrent. On the other hand if the necessary materials and apparatus were readily available at reasonable cost, a lengthy period during which the solution was not proposed is a factor which is consistent with lack of obviousness.
(h) How well has the patentee’s development been received? Once the product or process was put into commercial operation, to what extent was it a commercial success. In looking at this, it is legitimate to have regard not only to the success indicated by exploitation by the patentee and his licensees but also to the commercial success achieved by infringers. Furthermore, the number of infringers may reflect on some of the other factors set out above. For example, if there are a large number of infringers it may be some indication of the number of members of the trade who were likely to be looking for alternative or improved products (see (iv) above[8]).
(i) To what extent can it be shown that the whole or much of the commercial success is due to the technical merits of the development, i.e. because it solves the problem? Success which is largely attributable to other factors, such as the commercial power of the patentee or his license, extensive advertising focusing on features which have nothing to do with the development, branding or other technical features of the product or process, says nothing about the value of the invention.'”
After considering the parties' contentions, the deputy judge accepted that Vernacare's product had been a commercial success but he was not persuaded of a lack of obviousness. The evidence was even less supportive of Vernacare's argument of long-felt want.
Further Information
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