IMPROVER CORPORATION AND ANOTHER v. RAYHOND INDUSTRIAL LTD AND ANOTHER
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Headnote
European Patent - Law applicable in H.K. A consideration of the principals to determine whether the patent has been infringed.
A consideration of Article 69 of the European Patent Convention and the Protocol on its interpretation. Also determining the extent to which the principals laid down by Lord Diplock in Catnic Components Ltd v. Hill & Smith could be reconciled with the said Protocol.
Considering the application of the Catnic principals to the present case and holding that there had been no infringement of the Plaintiff's Patent.
Also holding that the said Patent was valid.
1988 No. A5344
IN THE SUPREME COURT OF HONG KONG
HIGH COURT
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BETWEEN
| IMPROVER CORPORATION | 1st Plaintiff | |
| MEPRO COMPANY KIBBUTZ HAGOSHKIN (1987) LIMITED | 2nd Plaintiff | |
AND | ||
| RAYMOND INDUSTRIAL LIMITED | 1st Defendant | |
| GOOD NATURE COMPANY LIMITED | 2nd Defendant |
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Coram: The Hon. Mr. Justice Mayo in Court
Date of hearing: 4 - 8, 11 - 14 and 18 September 1989
Date of Delivery of Judgment: 2 October 1989
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J U D G M E N T
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1. The 1st Plaintiff is the Assignee of a European Patent and it is claimed that the 2nd Plaintiff has an exclusive right to manufacture the device which is the subject of the Patent.
2. The device in question is designed to extract hair. It is intended to be used mainly by ladies to remove unwanted hair on their face, arms and legs.
3. The Plaintiffs' claim that tire Defendants have infringed their Patent rights. The 1st Defendant entered into contractual relations with Remington who are an internationally known company which sells equipment of this type. They are particularly well-known for their electric shavers.
4. The 2nd Defendant which is a subsidiary of the 1st Defendant manufactures a similar type of depilator in China.
5. In October last year the Plaintiffs sought relief by way of an injunction to restrain the Defendants from in any way infringing their rights under tire Patent. One effect of this injunction was to prevent the Defendants from sending their devices to Hong Kong for distribution to other parts of the world.
6. This application was strenuously resisted. It was heard by me and I granted the injunction which was sought. It will of course be appreicated that in doing so I was guided by the principals propounded in American Cyanamid v. Ethicon (1975) AC 396.
7. Accordingly this did not involve an in depth analysis and consideration as to whether the Plaintiffs' rights had in fact been infringed. What I was concerned with was whether the Plaintiffs had demonstrated that there was a serious issue to be tried.
8. It was evident in the application before me that the Plaintiffs' device was extremely successful in markets all over the world and an enormous number of them were sold.
9. Understandably the Defendants or perhaps more particularly Remingtons have been anxious to themselves enjoy similar success. This had led to a number of law suits being instituted in different jurisdictions.
10. The litigation has not always been between the same parties. In the present case Remingtons themselves are not parties. Mr Carr who represented the Plaintiffs informed me that serious thought had been given to joining Remington. However on the evidence available to the Plaintiffs he had formed view that it was unlikely that any application under Order 11 of the rules to serve the proceedings outside the jurisdiction would have met with success. A number of implications flowed from this. The Discovery process was limited to documents in the possession of the Defendants.
11. However, Remington obviously had a considerable interest in tile litigation and assumed an active role behind the scene. They also in correspondence agreed to make various documents available. I was satisfied, however, that the documents which were available fell far short of what would have had to be discovered had Remington been a party. I say this because their so called In House Legal Adviser, Mr. Lipson, gave evidence before me on this aspect of the matter.
12. It was undoubtedly my impression that Mr. Lipson had not addressed his mind in any serious way to all the implications of Discovery. An example of this was that he claimed to have no knowledge of the fact that the 1st Defendants had themselves been involved in the development of the allegedly infringing device.
13. The consequence of all this was that the Plaintiffs did not have access to the documentation relating to the development of the device and, it was accordingly impossible to guage fully the extent to which the development of the idea had proceeded independently of the Plaintiffs' Patent Specification. This is a matter I have taken cognisance of. However, it is no part of my function as a trial judge to attempt to speculate upon material which is not before me. On the other hand, having regard to the fact that Remington was not a party to the action I do not think that I could fairly critize their conduct in the proceedings.
14. I will not turn to the law which is applicable to this action.
15. To the best of my knowledge there have been no reported Hong Kong Patent cases since the passing of the United Kingdom 1977 Patent Act. I am satisfied that I was correct in the interlocutory proceedings to hold in effect that current English law applies in Hong Kong for the reasons I gave in my judgment. I propose proceeding on that basis.
16. Under the Patent fact 1977 it is open to parties to contest both the validity of a Patent and also whether there has been any infringement. Both these matters are in issue in the present case.
17. As I stated at the beginning this judgment the Patent which is being contested is a European Patent.
18. S.125 of the Patent Act 1977 provides:
"(1) For the purposes of this Act an invention for a patent for which an application has been made or 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 application or patent, as the case may be, as interpreted by the description and any drawings contained in that specification, and the extent of the protection conferred by a patent or application for patent shall be determined accordingly.
(2) It is hereby declared for the avoidance of doubt that where more than one invention is specified in any such claim, each invention may have a different priority gate under section 5 above.
(3) 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."
19. Art. 69 of the European Patent Convention is in the following form:
"(1) The extent of the protection conferred by a European patent or a European patent application shall be patent application shall be determined by the terms of the claims. Nevertheless, the description and drawings shall be used to interpret the claims.
(2) For the period up to grant of the European patent, the extent of the protection conferred by the European patent application shall be determined by the latest filed claims contained in the publication under Article 93. However, the European Patent as granted or as amended in opposition proceedings shall determine retroactively the protection conferred by the European patent application, in so far as such protection is not thereby extended."
20. Perhaps most important of all is the format of the Protocol on the Interpretation of Art. 69. This is as follows:
"Article 69 should not be interpreted in the sense 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. Neither should it be interpreted in the sense 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 patentee has contemplated. On the contrany, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties."
21. It is evident from a reading of the Protocol that what the negotiating parties have attempted to achieve is a balance between what was perceived to be the rather literal approach of the English courts on the one part and the more purposive or functional approach of some continental systems including the German one on the other part. I would hasten to add that it is not an entirely simple matter to attempt to reconcile these two approaches.
22. What I consider to be essential before going on to anything else, is to determine the extent to which English case law can be said to come within the four corners of the Protocol.
23. The classic formulation of the principals to be applied in determining whether or not there has been an infringement of a Patent is the passage from the speech of Lord Diplock at p. 242 of Catnic Components Ltd. and another v. Hill & Smith Ltd. (1982) RPC P. 183.
"My Lords, a patent specification is a unilateral statement by the patentee, in word of his own choosing, addressed to those likely to have a practical interest in the subject matter or his invention (i.e " skilled in the art"), by which he informs them what the claims to be the essential which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called "pith and marrow" of the claim. A patent specification should be given a purposive construction rather than a purely literal one derived form applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.
The question, of course, does not arise where the variant would in fact have a material effect upon the may the invention worked. Nor does it arise unless at the date of publication of the specification it would be obvious to the informed reader that this was so. Where it is not obvious, in the light of then-existing knowledge, the reader is entitled to assume that the patentee thought at the time of the specification that he had goon reason for limiting his monopoly so strictly and had intended to do so, even though subsequent work by him or others in the field of the invention might show the limitation to have been unnecessary. it is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way in which the invention worked."
24. I have no doubt that these guidelines are entirely consistent with the Protocol. I am fortifies in this belief by a consideration of the judgments in recent cases where this question was posed – T.K. Valves v. Hindle Cockburn Chancery Division, 13th January, 1989 (unreported), Dory v. Richard Wolf Chancery Division, 7th April, 1989 (unreported ) and Unilever v. Scnoller (1989) FSR 596.
25. Mr. Carr submitted that there had been further developments in the lair since Catnic. He referred to 3 more recent Court of Appeal cases: Code v. Racal - Milgo (1983) RPC 369, Societe Anonyme v. Edbro (1983) RPC 345 and Fairfax v. Filhol (1986) RPC 499. He places particular reliance upon the second case.
26. I do not think any of these cases go further than the passage I have cited from the speech of Lord Diplock in Catnic. Indeed I am satisfies, after carefully considering all of them that the principals laid down are indistinguishable from the Catnic tests.
27. I have said earlier in this judgment that there has been litigation in other jurisdictions. My attention was particularly directed to the proceedings which were conducted in West Germany and England. In both these jurisdictions there were both interlocutory proceedings and a trial. Also I am told that in each case appeals are pending against the judgments which were delivered.
28. Although some time was spent in considering the interlocutory applications in both jurisdictions I am inclined to think that I am unlikely to derive a great deal of assistance from these. In the case of the English proceedings all that has to be established on infringement is an arguable case. This was not demonstrated at first instance but the Court of Appeal held that this had been shown. In Germany it was the other way round. At first instance it was held that there was no reasonable doubt that there had been infringement. On appeal this determination was reversed.
29. Very little evidence of the law in Germany relating to interlocutory injunctions was cited to me. It is certainly not a subject of which I have much knowledge. I have come to the conclusion that it would be unwise to attach undue weight to findings in the interlocutory applications in both Germany and England.
30. The position, however, is very different so far as the trials were concerned. I have given anxious consideration to the judgment of Hoffman, J. who heard the case in England and to the judgment of the Landgericht of Dusseldorf. Mr. Justice Hoffman held that there mad been no infringement where the Landgericht found that there had been.
31. I am informed that each of these courts had similar expert evidence placed before them. I understand, however, that the German procedure is different to that adopted in England. Expert witnesses tender their reports but are not subjected to cross-examination. Whatever the practice may be I have no reason to doubt that all the evidence is subjected to careful scrutiny by the court in Germany and it is unfortunate that a different result was reached in each jurisdiction.
32. I think that the correct approach for me to adopt is to consider carefully the way in which each of these Tribunals evaluated the evidence which was before them and for me then to try and determine the applicability of their respective thought processes to the matters for my consideration.
33. I have no doubt whatever that Hoffman, J. was right to closely follow the guidelines laid down by Lord Diplock in Catnic. Equally I am satisfied that Hoffman, J. posed the correct questions to arrive at the conclusions he did. Where however I would, with the greatest respect, depart from his reasoning is in the answers he gave to the questions posed. However, at the end of the day I find that my ultimate conclusion is similar to his.
34. On reading the German judgment it is difficult not to gain the impression that the court was far more disposed to treat the Patent Specification as merely a guide than an English Court would. There is also not much assistance as to how the Court arrived at the conclusion it did. They gave no reason why they considered a rubber rod with slits wold be the equivalent of a helical spring. One is driven to a conclusion that they were unduly pre-occupied with questions of function and had insufficient regard to the text of the specification.
35. I was concerned as to the exact nature of the test they applied to determine what would have been either evident or obvious to "a person skilled in the art". It is even possible that they applied their own technical knowledge to the matter and reached a conclusion on a subjective basis.
36. Having considered the law applicable to his case it is now necessary for me to deal with the facts.
37. The Plaintiffs' European Patent Specification is in the following form:
"Summary of the invention
The present invention seeks to provide to the marketplace an electrically driven mechanical depilatory appliance which provides efficient hair removal by device, whose size, complexity, cost anti convenience compare favourably with an electric razor.
There is thus provided in accordance with an embodiment of the present invention an electrically powered depilatory device including a hand held portable housing, motor apparatus disposed in the housing, and a helical spring comprising a plurality of adjacent windings arranged to be driven by the motor apparatus in rotational sliding motion relative to skin bearing hair to be removed, the helical spring including an arcuate hair engaging portion arranged to define a convex side whereat the windings are spread apart, and a concave side corresponding thereto whereat the windings are pressed together, the rotational motion of the helical spring producing continuous motion of the windings from a spread apart orientation at the convex side to a pressed together orientation at the concave side and for engagement and plucking of hair from the skin, whereby the surface velocities of the windings relative to the skin greatly exceed the surface velocities of the housing relative thereto.
Further in accordance with an embodiment of the invention, the helical spring arcuate hair engaging portion extents along an arc subtending more than 90 degrees and preferably more than 180 degrees, whereby the surface velocities of windings of the helical spring simultaneously include components extending in mutually perpendicular directions, for significantly enhanced hair removal efficiency.
Additionally in accordance with an embodiment of the present invention there is provided an electrically powered depilatory device including a hand held portable housing, motor apparatus disposed in the housing, and a helical spring comprising a plurality of adjacent windings arranged in a loop for being driven in rotational motion by the motor apparatus, the helical spring loop defining along substantially the entire length thereof an arcuate hair engaging portion arranged to define a convex side whereat the windings are spread apart, and a concave side corresponding thereto whereat the windings are pressed together, the rotational motion of the helical spring producing continuous motion of the windings from a spread apart orientation at the convex side to a pressed together orientation at the concave side and for engagement and plucking of hair from the skin of the subject.
Further in accordance with an embodiment of the invention the helical spring is oriented such that at the convex side of the hair engaging portion, the orientation of the adjacent spread apart windings defines an angle therebetween of at least 1.5 degrees and preferably at least 2 degrees.
Additionally in accordance with an embodiment of the invention the helical spring is oriented such that at the convex side of the hair engaging portion, the orientation of the adjacent spread apart windings defines a maximum separation of at least 0.15mm and preferably at least 0.2mm.
Additionally in accordance with an embodiment of the invention, the helical spring is driven in rotary motion having a surface velocity of at least about 70 meters per minute and preferably in the range of between 100 and 200 meters per minute.
Further in accordance with an embodiment of the invention, the housing is defined as a modular two part housing, one part including the motor apparatus and the other part including the helical spring. The part including the helical spring maybe readily removed from the part including the motor apparatus for easy sanitization of the helical spring or replacement thereof as necessary.
It is noted that although the motor apparatus is preferably electrically powerd, alternatively powered motor apparatus such as pneumatically or hydraulically powered motor apparatus may alternatively be employed. The motor apparatus typically comprises a pair of motors coupled to respective opposite free ends of the helical spring. Alternatively a single motor may be employed."
38. Their 1st claim is:
(1) An electrically powered depilatory device comprising:
a hand held portable housing (2), motor means (4, 4') disposed in said housing; and
a helical spring (24) comprising a plurality of adjacent windings arranged to be driven by said motor means in rotational sliding motion relative to skin bearing hair to be removed, said helical spring (24) including an arcuate hair engaging portion arranged to define a convex side whereat the windings are spread apart, and a concave side corresponding thereto whereas the windings are pressed together, the rotational motion of the helical spring (24) producing continuous motion of the windings from a spread apart orientation at the convex side to a pressed together orientation at the concave side and for engagement and plucking of hair from the skin of the subject, whereby the surface velocities of the windings relative to the skin greatly exceeds the surface velocity of the housing relative thereto."
39. The subsequent claims are all dependent upon the 1st claim.
40. So far as the allegedly infringing device is concerned I realise that the relevant comparison which has to be made is comparing the device against the monopoly claimed by the Patentee.
41. The inventor of the Defendants' device Mr. Gross has obtained a U.S. Patent. It is convenient to proceed in the same way as Hoffman, J. did in the English proceedings and refer to the Defendants' device by citing the abstract at the commencement of that Patent and the 1st claim:
"A depilatory device for removing body hair, comprises a manually-grippable housing, and a hair-plucker body rotatably mounted to the housing and having an exposed section formed with a plurality of gaps in its outer surface which open and close during the rotation of the hair-plucker body to receive, pluck, and eject body hair growing on a surface over which the hair-plucker body is moved. The hair-plucker body is a flexible cylindrical member of plastic on elastomeric material having a smooth outer surface formed with a plurality of slits penetrating only partially through the cylindrical member and extending circumferentially thereof. The cylindrical member is rotated about its longitudinal arts and is supported in an arcuate position such that the slits open at the convex side of the cylindrical member during its rotation to receive the hairs between the open confronting faces of the slits, and close at the concave side of the cylindrical member during its rotation to clamp the hairs between the close confronting faces of the slits."
"What is claimed is:
A depilatory device for removing body hair comprising: a manually-grippable housing, and a hair-plucker body rotatably mounted to the housing and having an exposed section formed with a plurality of gaps in its outer surface which open and close during the rotation of the hair-plucker body to receive, pluck, and eject body hair growing on a surface over which the hair-plucker body is moved, characterized in that said hair-plucker body is a flexible cylindrical member of plastic material having a smooth outer surface formed with a plurality of slits penetrating only partially through the plastic cylindrical member and extending circumferentially thereof, said plastic cylindrical member being rotated about its longitudinal axis and being supported in an arcuate position such that said slits open at the convex side of the plastic cylindrical member during its rotation to receive the hairs between the open confronting faces of the slits, and close at the concave side of the plastic cylindrical member during its rotation to clamp the hairs between the closed confronting faces of the slits."
42. It will be noted that there is a considerable amount of similarity in these descriptions and in many respects the mode of operation is similar.
43. The outstanding distinguishing feature between the two inventions is that a helical spring is used for the plaintiffs' Patent whereas a solid cylindrical member of plastic or elastometric material with slits in it is used for Mr. Gross' invention.
44. Having described the two inventions I now propose to apply the Catnic principals to determine whether Mr. Gross' invention constitutes an infringement of the Plaintiffs' Patent.
45. In doing so I accept entirely the validity of Mr. Carr's contention that I must not indulge in an over meticulous vernal analysis of tile Plaintiffs' Patent Specification. I must also adopt a purposive approach. However, I must also have strict regard to the wording which has been adopted in the specification otherwise I may find myself falling into the trap of merely regarding the specification a s a guideline.
46. Adopting this approach I am bound to accept that there is a large measure of similarity in the function of the respective devices.
47. This being the case what I must now do is to ask myself the 1st Catnic question.
48. Does the variant have a material effect upon the way the invention works? The variant here of course is the substitution of the solid cylindrical rod with slits in it for tire helical spring in an arcuate form.
49. To find the answer to this question according to Lord Diplock's formula it is necessary to resort to expert evidence.
50. It is also necessary to define the nature of the expertise which has to be applied to the problem.
51. This is conveniently set out in the speech of Lord Reid in Technograph Printed Circuits Ltd. v. Mills and Rockley (Electronics) Ltd. (1972) RPC 346 at 355:
"To whom must the invention be obvious? It is not disputed that the hypothetical addressee is a skilled technician who is well acquainted with workshop technique and who has carefully read the relevant literature. He is supposed to have an unlimited capacity to assimilate the contents of, it may be, scores of specifications but to be incapable of a scintilla of invention. When dealing with obviousness, unlike novelty, it is permissible to make a 'mosaic' out of the relevant documents, but it must be a mosaic which can be put together by an unimaginative man with no inventive capacity."
52. Each side produced an expert witness. The Plaintiffs relied on Dr. Sharpe and the Defendants on Dr. Laming. I would say at once that I was most impressed with both these men as witnesses. They are both distinguished Engineers with impressive relevant qualifications. It was strongly my impression that they are both honest men seeking to assist the court to the best of their ability.
53. I had before me their reports and they both were subjected to searching cross-examination. This was of the greatest assistance to me. It is no reflection whatever upon their integrity that for the most material and important issues before me they came to almost diametrically opposite conclusions.
54. In general terms the only criticism (if indeed it is a criticism) I would make in connection with the expert evidence is that in my opinion Dr. Sharpe fails to meet the criteria laid down by Lord Reid as in my assessment he is too resourceful and inventive to come within the said test. I say this not only having regard to the evidence he gave before me but also I gained this impression from considering the titles of the numerous papers and articles he has produced, particulars of which are given in his report.
55. In fairness to Dr. Sharps I would add that I am satisfied that he did attempt in giving his evidence to keep himself within Lord Reid's criteria.
56. Mr. Gross also gave evidence. Again I accepted him as an honest and truthful witness. However, I did need to make considerable mental reservations concerning his evidence as he is obviously a man of some inventive genius and it would be idle to treat his evidence in any as corresponding with Lord Reid's expert.
57. Mr. Gross gave evidence of no he came to make his invention. He freely admitted that the stimulous for this was the Epilady, name the Plaintiffs device. His wife had acquired one and had experienced considerable pain when attempting to use it. This had led him to consider alternative methods of solving the problem of removing unwanted hair in a relatively painless manner.
58. I have given anxious thought to all of the relevant expert evidence. I am satisfied that the essential feature of the Plaintiffs' invention is the method of operation of the helical spring. This is to say the manner by which it extracts hair. As can be seen from the specification the helical spring is in an arcuate form and it rotates at high speed. By virtue of the arcuate formation the spaces between the metal open and close. When the spaces are open hairs enter the space and when it closes they are gripped. As result of the continued rotation the hair is then plucked out.
59. This has to be contrasted with the Defendants' device. Here the solid rod, which is also in an arcuate form, rotates. On account of the arcuate form the slits in the rod open and close. When they are open the hairs enter the slits. When they close again the hair is gripped and again on account of the continuing rotation of the rod the hairs are extracted.
60. I was satisfied from Dr. Laming's evidence that there were essential differences in these modes of operation.
61. A rubber rod is different to a helical spring. For one thing the area of skin coming within the ambit of the operation is different. In the case of the helical spring all of the hair coming within the operation of the spring will the "grabbed" and extracted. This operation was referred to in the evidence as being the "sweeping effect."
62. This has to be contrased with the operation of the solid strip with slits in it. Here only a narrow furrow of hair is subjected to the process. I consider this to be a significant difference in operation. At the very least there would almost inevitably be implications as to how the respective devices could be controlled.
63. The next matter I would refer to is the way in which hair is actually plucked.
64. Both Dr. Sharpe aria Dr. Laming drew sketches which illustrated the cycle of operation of the respective devices. It was evident to me that hairs were plucked from the skin at different points in the cycle by the two devices. These sketches are appended to this judgment. I was satisfied that in the case of the helical spring the hairs were plucked at a different stage in the cycle than was the case of the rubber rod.
65. I was also satisfied that by its nature there was a greater chance of entanglement of hair with the helical spring than with the rubber rod.
66. In any event I have come to the conclusion that Dr. Laming's assessment of the position is to be preferred to Dr. Sharpe's. He was definitely or the view that the differences of operation of the two devices did have a material effect upon the way the invention worked. I accept this view and my answer to the 1st Catnic question is in the affirmative.
67. Just in case I am wrong in coming to this conclusion I will go on to consider Catnic question No.2.
68. Would this (i.e. the variant had no material effect) have been obvious at the date of the publication of the Patent to a reader skilled in the art.
69. To begin with I accept entirely the correctness of the submission made by Mr. Thorley on behalf of the Defendants that time is a crucial factor in determining what would have been obvious to persons skilled in the art. I also accept his submission that the relevant time is the time of the publication of the Plaintiffs' Patent.
70. This being the case the question which has to be posed is whether the solid cylindrical rod with slits in it would have been an obvious mechanical equivalent to a helical spring at that time.
71. In my view the expert evidence is almost entirely one way.
72. It is essential to bear in mind that the person skilled in the art is not endowed with inventive capacities. It is at this stage that my "criticism" of Dr. Sharpe has application. He gave evidence that it would nave seen natural for an Engineer to think of a rubber hose pipe with slits in it as being an alternative method of performing the functions of the Plaintiffs' invention.
73. I agree with all of the questions which were posed by Mr. Thorley and which are helpfully set out on p.7 of his skeleton argument:
1. Why in the first place even consider the necessity for an equivalent?
2. Even assuming that the expert would think of an equivalent way would this take the form of a solid member with slits in it;
74. I accept the evidence of Dr. Laming that on the valance of probabilities it is highly improbable that the expert would have directed his thoughts along this line.
75. One reason for this is that the alternative solution would be riddled with potential difficulties such as the uncertainty of the various qualities of any such solid member. Now could the slits be positioned on the member so as to produce an effect which would be similar to the action of the opening and closing or the spaces in the helical spring?
76. Having regard to all the expert evidence I am satisfied that a solid cylindrical member with slits in it would not have been an obvious mechanical equivalent to the invention to a person skilled in the art.
77. My answer to the 2nd Catnic question would therefore be No.
78. The consequence of my answers to these 2 questions is that the Defendants' device does not infringe the Plaintiffs' Patent.
79. The final matter for we to determine is whether the Plaintiffs' Patent is valid.
80. The only Patent relied upon by the Defendants to support their contention of invalidity was the Fischer Patent. They Claimed that it was obvious that Plaintiffs' Patent did not involve any inventive step.
81. It may be helpful to consider in some detail how the Fischer device operates.
82. It is stated in its Patent Specification to be as follows:
"The curved portion of the device is applied onto the skin, with a light pressure, contrary to the direction of grown of the hairs to be removed, so that the coil spring rolls along on the skin. In order to make it roll more easily, the spring is roughened on its exterior side, e.g. it is provided with indentations. Due to the arcuate guidance (C, D, respectively) of the wire A, it results that the coils of the coil spring are pressed apart from one another on the outside of the curve, whereas on the inside of the curve they are pressed closer together. Thus as the spring rolls along on the skin, at each rotation and at any optional place on the spring, a compression and a subsequent expansion of the coils takes place. The hairs which are to be removed are therefore between the pressed-spring continues to roll they are held clamped therein and are pulled a whole, and are ejected as the rotation continues."
83. What is immediately evident is that the Fischer device is operated manually. What is also obvious is that the helical spring is activated by the friction of the device against the skin of the person who is using it.
84. Considerable time was spent at the hearing when the operation of the Fischer device was discussed. One aspect of this was a consideration of the speed at which the device would be drawn over the skin and which the nature of the "jerk" which was necessary to extract hairs.
85. I have no doubt after hearing all of expert evidence that the introduction of mechanisation was a crucial element of novelty and that the essence of the Plaintiffs' device was an almost entirely novel way of dealing with the problem of the removal of unwanted hair.
86. I am also entitled to take coghisance if, but not to attach too much weight to the fact that the Fischer Patent was issued in 1950. Since then it wold appear that the invention has not been developed significantly on a commercial scale. The has to be contrasted with the undoubted and immediate commercial success of the Plaintiffs' invention.
87. Taking all relevant considerations into account I have no doubt that the Defendants have not succeeded in proving that the Plaintiffs' Patent is invalid.
88. As a consequence of my findings in this judgment I would dismiss the Plaintiffs' claim. I would also dismiss the Defendants' counterclaim.
89. Before concluding this matter I would like to place on record my great appreciation for the considerable assistance I received from both counsel. I will hear the parties on costs.
(Simon Mayo) |
Representation:
Mr. C. Carr, Q.C. and Mr. P. Garland, instructed by Denton, Hall, Burgin & Warrens, for the Plaintiffs.
Mr. S. Thorlag, Q.C. and Miss W. Tam, instructed by Robin Bridge & John Liu, for the Defendants.
