Patents - Emson v Hozelock



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Jane Lambert

Patents Court (Mr Justice Nugee) E Mishan & Sons, Inc (t/a Emson) v Hozelock Ltd and others [2019] EWHC 991 (Pat) (17 April 2019) 

This was a claim for the infringement of two patents:  UK patent GB 2 490 276 for an expandable hose assembly and European patent EP 2 687 575 also for an expandable hose assembly. There was a counterclaim for the revocation of those patents on grounds of obviousness and, for a while, anticipation. This action and counterclaim came on before Mr Justice Nugee.

The Invention
The invention for which those patents were granted was a new type of garden hose. Conventional ones are made of plastic in a number of layers bonded together. They tended to be heavy. bulky and difficult to store.  They also tended to kink.  The invention avoided those difficulties. The inventor, Michael Berardi, made a hose consisting of two tubes, one inside the other.  The inner tube which carries the water is made of an elastic material such as natural rubber.  The outer tube, which is several times longer than the inner tube when not in use, is made of non-flexible material such as nylon or polyester.  When not in use the outer tube is crumpled around the inner tube.  When water is introduced the inner tube expands to the total length of the outer tube which uncrumples. It is, therefore, lighter, less bulky, easier to fold and store and less likely to kink.

Developing the Invention
Mr Berardi developed his invention at home. He carried out his first experiments in his kitchen. Then in his garden.  His wife filmed him as he worked on his invention.  By 3 Nov 2011, he was satisfied that he had a prototype that worked. The next day he applied for a US patent. He launched the product on the American market in March 2012 and introduced it to the UK in May 2013.  He tells his story in an interview with Reg Miller on YouTube.

The Claimant
The claimant describes itself as "a family owned business with over 70 years experience and ingenuity in branding products with mass appeal."  It offers to do the following for inventors:
  • "Create a commercial around your invention
  • Distribute to major retailers across the USA and worldwide.
  • Design a brand image around your invention
  • Patent Filing."
The retailers with which it places its products are some of the biggest names in American business.  It has an exclusive sub-licence under both patents. 

The Defendants
The first defendant is a well-known supplier of garden equipment including hoses.  Its products include two expandable garden hoses known as "the Superhoze 1” and “the Superhoze 2”. The second and third defendants are the original patentee and its assignee who were added pursuant to s.67 (3) of the Patents Act 1977.

The Claims
The claims that the first defendant was alleged to have infringed were claims 1 and 14 of GB 2 490 276 and 1 and 2 of EP 2 687 575.

Claim 1 of  GB 2 490 276 claimed:
"A garden water hose assembly comprising: an outer tube formed from a non-elastic and flexible material and no metal; an inner tube constructed from an elastic material, said outer tube and said inner tube each having a first end attached together by a first coupler and a second end attached together by a second coupler; said outer tube and said inner tube having a substantially shortened first length in a non-water flow contracted state with said outer tube extending about an outer surface of said inner tube in an undulating state and a substantially longer second length with said outer tube capturing said inner tube in an expanded state upon the application of water pressure to the interior of the elastic inner tube as water flows through the assembly, said inner tube having a larger wall thickness in the contracted state than in the expanded state and the wall thickness decreasing as the hose moves from the contracted to the expanded state, and wherein a water flow restrictor is provided in or is connected to the second coupler.”

Claim 14 was as follows:

A method of transporting water comprising introducing water into a garden water hose assembly, the hose assembly comprising:-
an outer tube formed … [there then follows a description in materially identical terms to claim 1] …connected to the second coupler, and wherein the method comprises the steps of attaching the first coupler to a water supply and introducing water into the hose.”

Claim 1 of EP 2 687 575. claimed:

“A garden water hose assembly comprising a hose (10) and a water flow restrictor, wherein the hose (10) comprises:
an outer tube (12) formed from a non-elastic, soft, bendable, tubular webbing material having a first end and a second end;
a flexible, elastic, hollow inner tube (14) having a first end and a second end
a first coupler (18) secured to said first end of said inner tubes and said outer tubes (14, 12);
a second coupler (16) secured to said second end of said inner and said outer tubes (14, 12);
said first coupler (18) arranged in use to couple said hose (10) to a source of pressurized water, said second coupler (16) being connected to the water flow restrictor, wherein the water flow restrictor includes a nozzle having an internal valve that permits, limits, and stops a flow of water through the nozzle;
whereby said outer tube (12) and said inner tube (14) have a substantially shortened first length in a non-water flow contracted state with said outer tube (12) extending about an outer surface of said inner tube (14) in an undulating state, and a substantially longer second length with said outer tube (12) capturing said inner tube (14) in an expanded state when water flows through said hose assembly.
whereby, when water under pressure is introduced into the first end of the hose (10), said elongated inner tube (14) expands longitudinally along a length of said inner tube (14) and laterally across a width of said inner tube (14) thereby increasing a length of said hose (10) to an expanded condition; and
wherein the water flow restrictor is configured to vary the amount of water under pressure that is released from the water flow restrictor.”

Claim 2 claimed:

“The garden water hose assembly of Claim 1, wherein said inner and outer tubes (14, 12) are unattached, unbonded, unconnected and unsecured to each other except at the couplers (16, 18).”

Principles for Interpreting Claims
At paragraph [68] of his judgment, the judge reminded himself of art 69 (1) of the European Patent Convention:

"The extent of the protection conferred by a European patent .....  shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims."

He noted that s.125 (1) of the Patents Act 1977 was to similar effect and that s.125 (3) required art 69 and s,125 (1) to be construed in accordance with the Protocol on the Interpretation of Article 69 of the European Patent Convention.

Referring to the Supreme Court's judgment in  Eli Lilly v Actavis UK Ltd and others [2017] Bus LR 1731, [2017] UKSC 48, [2017] RPC 21 and the Court of Appeal's judgment in Icescape Ltd v Ice-world International BV  [2018] EWCA Civ 2219, Mr Justice Nugee directed himself as follows at paragraph [63]:

"(1) A problem of infringement is now best approached by addressing two issues ( Actavis at [54]).
(2) The first (issue (i)) is whether any of the claims is infringed as a matter of “normal interpretation” (ibid ).
(3) This involves solving a problem of interpretation of a type familiar to all lawyers concerned with construing documents, the applicable principles being those affirmed in Wood v Capita Insurance Services Ltd [2017] UKSC 24 ( Actavis at [58]). In Icescape Lord Kitchin confirmed that despite Lord Neuberger’s later reference to “the literal meaning of the relevant claim(s)” ( Actavis at [66]), this involves purposive interpretation, reading the patent through the eyes of the skilled addressee and identifying what the words of the claim would mean in their context to such an addressee ( Icescape at [60]).
(4) To this can be added the statement by Lord Briggs in Warner-Lambert Company LLC v Generics (UK) Ltd t/a Mylan [2018] UKSC 56 at [92]:

“The Claims must be construed in their context in the patent as a whole, including its summary and detailed description and the teaching which it discloses. A course must be steered between the Scylla of slavish literalism and the Charybdis of pure purposiveness, a task which recent English cases about construction generally suggest requires a constant hand on the tiller. The object is to interpret them as they would be understood by a person skilled in the art, with all the common general knowledge available to such a person as at the priority date.”

(5) The second issue (issue (ii)) is whether the variant nonetheless infringes because it varies from the invention in a way or ways which are immaterial ( Actavis at [54]).
(6) That issue is to be determined by asking the 3 so-called Improver questions (formulated by Hoffmann J in Improver Corp v Remington Consumer Products Ltd [1990] FSR 181), as reformulated by Lord Neuberger in Actavis at [66]."

At paragraph [64] the judge reminded himself of the reformulated Improver questions as set out at paragraph [66] of Actavis:

“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, ie 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?”

The Superhoze 
According to the judge, the first defendant's Superhoze 1 and 2 are expandable hoses with an inner tube made of latex rubber and a much longer outer tube made of woven material.  When the inner tube is filled with water, it expands to the whole length of the outer tube which uncrumples at the same time.  The outer tube of the Superhoze 2 differs from the Superhoze 1 in that the weft is made of polyester but the warp is made of nylon which allows the outer tube to expand a little.  The inner and outer tubes are not connected to each other except at each end. There the inner tube is encased in a sleeve which is glued onto a plastic joint that is itself welded onto the outer tube.

Issues on Claim Construction
Because of the way those hoses are constructed, the question whether the Superhoze 1 and 2 infringed the patents turned on the interpretation of the phrase "said outer tube being unattached from said inner tube between said first and second couplers" in claims 1 and 14 of GB 2 490 276 and claim 2 of EP 2 687 575. and whether the outer tube had to be made of non-elastic material.

EP 2 687 575
The judge noted at paragraph [34] that claim 1 of EP 2 687 575 (unlike GB 2 490 276) does not require the outer tube to be unattached from the inner tube between the first and second couplers. Also, claim 2 of that patent makes it clear that being unattached except at the couplers is not a requirement of claim 1. As it was only arguable that the outer tube of Superhoze 2 was not made of non-elastic material, it was clear that Superhoze 1 fell within claim 1 on a normal construction of that claim.

As for Superhoze 2, the learned judge concluded at paragraph [105] that although the outer tube had slightly more give than the outer tube of Superhoze 1 it was much less elastic than the inner tube. Even on a normal construction, Superhoze 2 fell within claims 1 and 2.  On an Actavis construction, the Superhoze 2 would certainly be caught by the claims.

GB 2 490 276
His lordship analysed the description to see how the word "coupler" had been used in the specification of GB 2 490 276 and decided that on a normal construction the phrase "said outer tube being unattached from said inner tube between said first and second couplers" Superhoze 1 and 2 fell outside claims 1 and 14 of that patent and, of course, claim 2 of EP 2 687 575.  However, it was common ground that the inventive concept included the fact that the tubes are unconnected except at the ends so that the tubes can move freely.  Applying an Actavis construction asking the reformulated Improver questions the judge concluded that Superhoze 1 and 2 would fall within claims 1 and 14 of GB2 490 276 and claim 2 of EP 2 687 565.

Conclusions  on the Claim
Mr Justice Nugee concluded as follows at paragraph [110]:

"(1) So far as being “unattached” is concerned, this is not a requirement of claim 1 of EP 585, but it is a requirement of claims 1 and 14 of GB 276 and claim 2 of EP 585. The Superhoze 1 and Superhoze 2 are not “unattached” within the normal meaning of these claims; but they are variants which are within the scope of protection as explained in Actavis.
(2) So far as “non-elastic” is concerned, this is a requirement of all the claims relied on. The Superhoze 1 is accepted to be “non-elastic”, and I find that the Superhoze 2 is also “non-elastic” within the normal meaning of these claims; if I am wrong about that, it is a variant which is within the scope of protection on the Actavis basis.
(3) On the assumption that the Patents are valid, both the Superhoze 1 and the Superhoze 2, therefore, infringe each of the claims relied on."

The Counterclaim
The first defendant attacked the validity of the patents on grounds of obviousness having regard to prior use and prior publication.

S.1 (1) (b) of the Patents Act 1977 requires an invention to include "an inventive step". S.3 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)."

S.2 (2) states:

"The state of the art in the case of an invention shall be taken to comprise 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."

Prior Use
This attack was based on the work that Mr Berardi did in his garden on the prototypes and what could have been seen by a notional skilled person standing on the public road at the front of Mr Berardi’s house.  Bearing in mind that Mr Berardi lives in a detached house at the end of a short cul-de-sac in a seaside town not far from Palm Beach and that the person skilled in the art would have to loiter in the street for days which is unlikely to have passed unnoticed by either Mr and Mrs Berardi, their neighbours or indeed the local police, it is not surprising that the judge concluded that there had been no disclosure to the public.  Nevertheless,  the judge does not appear to have found it an easy question to answer.  He considered the authorities on disclosure by prior use. He found that the skilled person would not have learned enough from a single visit to the neighbourhood but added that he or she might have guessed the purpose of Mr Berardi's experiments after a number of visits over a period. 

Prior Art
The first defendant cited US Patent Application No. US 2003/0098084 A1 entitled “Pressure-actuated Linearly Retractable and Extendible Hose” ("Ragner") and US Patent Application No. US 2003/0000530 A1 entitled “Self-Elongating Oxygen Hose for Stowable Aviation Crew Oxygen Mask” published on 2 January 2003 ( “McDonald”).

In assessing whether the invention would have been obvious having regard to either disclosure, his lordship directed reminded himself of the following test propounded by Lord Justice Jacob at paragraph [23] of his judgment in Pozzoli Spa v BDMO SA and another [2007] EWCA Civ 588, [2007] Bus LR D117, [2007] BusLR D117, [2007] FSR 37:

“(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?”

At paragraph [152] of his judgment, Mr Justice Nugee observed:

"The basic teaching of Ragner is a hose that has a spring providing a biasing force. The hose can be either a vacuum hose (in which case the biasing spring exerts an extending force) or a pressure hose such as a garden hose (in which case the spring provides a retracting force). In the case of a garden hose the effect is to make a hose which retracts when not in use but expands under water pressure when in use."

He said at [157] that that was quite unlike the inventive concept in the patented invention.  He concluded at [168] that it was not obvious over Ragner.

Although designed for oxygen, the judge thought that the McDonald bore a striking resemblance to the patented invention. He quoted the following passage from the abstract:

"The inner tube is made of elastomeric material which will expand in length when gas pressure is applied inside it. The longer outer, tube or sheath is made of a non-expandable, non-elastic material which is pleated along its length and into which the inner tube is assembled and attached at its ends. As the inner tube expands, the outer non-elastic tube prevents radial expansion of the inner tube whilst allowing axial expansion of the inner tube. This causes the pleated form of the outer tube or sheath to straighten out and therefore lengthen together with the inner tube which remains inside and attached to the outer tube. When the gas pressure is reduced inside the inner tube, both tubes reduce in length, such that the hose can be stored compactly."

Applying the Pozzoli test, the judge acknowledged that the invention in McDonald was not a garden hose but reasoned at [186] that:

"the general hose designer would be well used to designing hoses for both liquids and gases, and would have no difficulty in appreciating that the way in which the McDonald hose works, that is by being pressure-actuated, does not depend on the type of fluid used – nor, I would add, on the particular application which McDonald describes. In those circumstances I also accept his conclusion that the skilled person would indeed immediately see that the construction described in McDonald could also be used to make expandable hoses for other fluids in other situations, including a water hose for use in gardens. That conclusion does not seem to me to be based on an impermissible use of hindsight. Once he has made that connection, the skilled person would, as Mr Hinchliffe accepted in closing, readily be able to make all the necessary adaptations to turn the McDonald hose into a garden water hose without doing anything inventive."

With some reluctance, the judge concluded that the invention was obvious over McDonald.    It followed that the patents were invalid.  Had the patents been valid they would have been infringed by both Superhoze 1 and 2,

Conclusion
As Mr Justice Nugee observed at [187],

"That may seem hard on Mr Berardi who is undoubtedly inventive and who I have no reason to doubt came up with his idea entirely independently of McDonald, but if there is prior art, however obscure, which discloses either the same invention, or something which would lead the skilled person to the same invention, then patent protection is for good reasons unavailable."

Anyone wishing to discuss this article or patents, in general, should call me on 020 7494 5252 during normal office hours or send me a message through my contact page,

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