William Mark Corporation & Anor v Gift House International Ltd [2014] EWHC 2845 (IPEC)

[2014] EWHC 2845 (IPEC)Case No CC12P03924
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Venue Royal Courts of Justice, Rolls Building, Fetter Lane, London, EC4A 1NLDate 22/08/2014
Before
HIS HONOUR JUDGE HACON
Between
WILLIAM MARK CORPORATIONClaimantsCHINA INDUSTRIES LIMITEDClaimantGIFT HOUSE INTERNATIONAL LIMITEDDefendant
Douglas Campbell (instructed by Geldards LLP) for ClaimantsDominic Hughes (instructed by Berry Smith LLP) for DefendantHearing Hearing date: 24th June 2014
JudgmentJudge Hacon :Introduction
[1]This is an action about flying fish toys. The First Claimant devises and markets toys. The Defendant devises and imports toys for sale in this country, in particular flying fish known as “Mega Fliers”.[2]The First Claimant is the proprietor of United Kingdom Patent Nos. GB 2482275, for an invention entitled “Flying shark” (“275”) and GB 2483597 for an invention also entitled “Flying shark” (“597”). The Second Claimant is the exclusive licensee of the First Claimant in respect of the two Patents. The Claimants allege that the importation and sale of Mega Fliers by the Defendant infringes both Patents. The Defendant admits the acts complained of but says that its Mega Fliers do not fall within the scope of either Patent and also that both Patents are invalid.[3]The Claimant’s pleaded case alleges in addition infringement of four registered community designs (“RCDs”). In a letter dated 4 November 2013 the Defendant conceded that three of the four RCDs were valid and infringed. The Defendant also agreed to submit to an injunction and damages among other relief, so the Mega Fliers flying fish have been forcibly withdrawn from the market in any event. In June 2014 all parties agreed to withdraw their respective cases in relation to the fourth RCD, so all issues regarding the RCDs have now fallen away. The trial was solely concerned with the two Patents.[4]The Defendant has a counterclaim alleging that the Claimants made unjustified threats of proceedings for infringement of the Patents to the Defendant’s customers.

The Patents

[5]The 275 Patent is the parent of 597. Both share the priority date of 6 November 2009 and similar specifications. The 275 Patent[6]The invention claimed in 275 is an improvement on a known type of toy, that is to say neutrally buoyant flying toys. These are filled with a lighter-than-air gas such as helium. The prior art referred to in the Patent includes toys with one or more propellers to provide propulsion and directional control. The disadvantage identified in the specification concerns those flying toys which are configured as a fish or other swimming animal. The specification says that propeller-based propulsion often looks unrealistic on a fish and is therefore undesirable.[7]The specification of 275 refers to two items of prior art which have addressed this problem. The first is US patent no. 5,197,029 (“Kinoshita”), which is also one of the items of prior art cited by the Defendant in these proceedings. The specification notes that the Kinoshita discloses a flying toy shaped as a fish with a reciprocating tail fin that provides forward motion: “While such mechanism is significantly more realistic, several disadvantages remain. Among other things, directional control (lateral and up/down) is not possible using such fin mechanism.” (at [0004])[8]The second item of prior art mentioned is a flying toy marketed by a company called “Festo”: “Here multiple control elements contort substantially the entire body of a flying toy to so produce astoundingly realistic flight motion. However, such devices are hardly considered toys as the manufacture is extremely expensive and requires highly sophisticated personnel.” (at [0004])[9]The invention claimed in 275 is summarised at [0006]:
“The inventors have discovered that numerous flying toys can be manufactured in a simple and effective manner, wherein flight of the toys can be controlled in both horizontal and vertical direction. Most preferably, such flying toys simulate with a high degree of realism movement of a fish in its natural habitat.”
[10]As will be seen, this summary is not fully reflected in the claims. Claim 1[11]Claim 1 of 275 is as follows, broken down into the 7 integers suggested by the indentation used for the claim:(i) A flying toy, comprising(ii) a body portion that includes a lighter-than-air gas, wherein the body portion has a volume sufficient to provide neutral buoyancy to the toy;(iii) a moving surface that is coupled to a first actuator and the body portion, wherein the first actuator is configured such that the moving surface is movable at variable and different angles relative to a forward directional axis of the toy;(iv) a second actuator coupled to the body portion and configured to allow movement of a weight element in parallel or perpendicular direction relative to the forward directional axis; and(v) wherein the weight element is coupled to the body portion such that the movement of the weight element changes pitch of the toy while the toy is flying to thereby allow for controlled ascent or descent of the flying toy;(vi) wherein the moving surface is coupled to a tail assembly, and wherein the tail assembly is removable from the body portion; and(vii) wherein the tail assembly is coupled to the body portion via an elastic element such as to allow application of a compressive force to the body.[12]I draw attention to particular aspects of the claim.

Body and tail assembly

[13]The toy is divided into two parts: the body which is filled with the lighter-than-air gas to provide neutral buoyancy and the tail assembly.

First actuator for the moving surface

[14]This movement of the ‘moving surface’ is generated by a first actuator to which the moving surface is coupled. The moving surface is also coupled to the tail assembly. As illustrated, the toy is in the shape of a shark and the moving surface is the tail of the shark, which oscillates to and fro in a lateral direction. If the toy resembles a whale the moving surface will be the fluke of the whale and will move up and down, rather than from side to side (see [0023].

Second actuator and pitch control

[15]There is a second actuator which is attached to the body portion. This is configured to allow movement of a weight which tilts the toy such as to alter its pitch, up or down. In the illustrated embodiment the weight is on an I-beam which runs part of the length of the underside of the body portion. The movement of the weight forwards or backwards thus enables ascent or descent of the toy.

Attachment of the body to the tail assembly

[16]The tail assembly is removably attached to the body. Attachment is via at least one ‘elastic element’ which causes the application of a compressive force to the body. This is in order to maintain sufficient rigidity of the inflated body portion of the toy (see [0027]). Rubber bands are given as an example of elastic elements (at [0019]).

Other claims

[17]Claims 2 to 8 are all dependent on claim 1. Claim 9 is the only other independent claim. It concerns the tail fin and is as follows:(i) A tail fin assembly for a flying toy, comprising:(ii) a base plate comprising an actuator that is coupled to a moving surface such that the moving surface is movable at variable and different angles relative to a forward directional axis of the toy;(iii) an elastic element coupled to the base plate and configured to allow reversible coupling of the tail fin assembly to an inflated and compressible body portion of the toy; and(iv) wherein the base plate and toy are configured such as to allow application of a compressive force to the body via the elastic element.

The base plate

[18]Little is said in the specification about the ‘base plate’ save at [0030]:
“…the tail fin assembly preferably comprises a relatively rigid base plate (e.g., polyethylene or polycarbonate plate, 1-2mm thickness) upon which the movable surface and the actuator moving the surface is installed.”
Claim 9 requires the base plate to comprise an actuator which in turn is coupled to the moving surface. Also attached to the base plate is the elastic element. These are all configured to allow (a) reversible coupling of the tail fin assembly to a compressible part of the body of the toy and (b) the application of a compressive force to the body via the elastic element. Claims 10 to 12 are dependent on claim 9.

Claims of 275 do not require the moving surface to propel the toy forward

[19]The specification states that according to the invention “…various neutrally buoyant flying toys, and especially remote controlled neutrally buoyant flying toys are presented that have a mode of propulsion in which at least one moving surface (most typically a tail fin) of the toy oscillates in a controlled manner to thereby provide forward and lateral motion control”[20]However the claims of 275 have been drafted so that the moving surface need have no effect on forward motion. A toy which otherwise satisfied the claims would not be excluded from their scope if the tail moved without propelling the toy forward. This aspect of the invention forms part only of claim 2 of 597 (which has no dependent claims).

Claims of 275 do not require control of lateral direction

[21]The specification also explains that the oscillation of the moving surface (the tail) can be symmetrical, i.e. to the same maximum angle to either side of the forward directional axis and in that case the toy will move straight ahead. Where there is asymmetrical oscillation, i.e. the surface moves further to the left than to the right or vice versa, the toy will change lateral direction (see [0019]).[22]Although claim 1 of 275 requires the moving surface to be movable “at variable and different angles relative to a forward directional axis of the toy”, neither claim 1 nor any of the other claims require this to have any effect on lateral direction. Nor is control of lateral direction a requirement in any of the claims of 597.

The 597 Patent

[23]597, the divisional Patent, is primarily concerned with the movement of the weight to control pitch. Claim 1 is as follows:(i) A neutrally buoyant flying toy, comprising(ii) a body portion that is at least partially filled with a lighter-than-air gas in an amount effective to render the toy neutrally buoyant;(iii) an actuator that is coupled to the body portion and that is configured to allow movement of a weight element parallel or perpendicular to a forward directional axis of the toy such that movement of the weight element changes pitch of the toy relative to the forward directional axis while the toy is flying to thereby control ascent or descent of the flying toy; and(iv) wherein the weight element further comprises removable ballast elements.[24]Claims 2 to 4 are dependent on claim 1. As I have mentioned, claim 2 (uniquely) introduces the limitation that the moving surface should propel the toy forwardly:
“The flying toy of claim 1 wherein the actuator is configured to allow movement of the weight element parallel to the forward directional axis of the toy when the toy has a moving surface that is configured to move side-to-side for forward propulsion of the toy.”

The expert witnesses

[25]The Claimants’ expert was Jeffrey Rehkemper who started work after college in 1983 in a model shop in Chicago. Since 1985 Mr Rehkemper has worked in a business he runs with his brother creating and designing ideas, particularly in the toy field and including flying toy inventions. These are offered for license to companies in the relevant industry. Mr Rehkemper was a helpful witness.[26]The Defendant’s expert was Peter Manning. Mr Manning was employed by various companies in the development of toys between 1967 and 1980. He then started an independent toy design business where he worked until retirement. Mr Manning was also doing his best to be a helpful witness. However he may have approached his evidence on obviousness without having been given an accurate perception of the nature of the skilled person or team. In his report he said:
“[The skilled team] would know how to solve design difficulties by not only conventional means but by considering alternative ways, without having to be directed, but by referring to and utilising the prior knowledge contained within this varied and fast moving industry.”
[27]He was asked about this in cross-examination and said he would consider members of the team comprising those skilled in the art to be capable of lateral thinking.[28]Mr Manning also said in cross-examination that his understanding of the term ‘common general knowledge’ was the working knowledge of the skilled team, but also that this encompassed anything known to any one of the team.[29]Bearing in mind those views I felt obliged to treat with some caution Mr Manning’s views as to what would be regarded as obvious by the skilled person. Infringement[30]The list of issues appended to the Order of Judge Birss at the CMC on 28 March 2013 identify two issues on infringement:(i) whether the Defendant’s products have an ‘elastic element’ within the meaning of claim 1 of 275 (7th integer);(ii) whether the Defendant’s products have a ‘tail portion that is filled with lighter-than-air gas’ within the meaning of claim 11 of 275.[31]In his skeleton argument Mr Hughes, who appeared for the Defendant, raised a further issue in relation to claim 4 of 597. The Claimant conceded that the Defendant’s product does not fall within claim 4.[32]Otherwise in relation to Patent 597, the Claimant alleged that the Defendant’s product fell within claims 1 and 2. As implied by the list of issues at the CMC, this was not disputed by the Defendant and I so find.[33]No submissions were made by the Claimants, whether orally or in writing, regarding the point on infringement of claim 11 of 275 in the list of issues. The argument of Mr Hughes in his skeleton, that the Defendant’s products do not have a tail portion that is filled with a lighter-than-air gas, was left unchallenged. I will treat the point as conceded by the Claimants.[34]That leaves a single issue on infringement which concerns only Patent 275: do the Defendant’s products have an ‘elastic element’? Not much was said about this. The Defendant’s toys have plastic strips and in his skeleton argument Mr Hughes said that they had no elastic property. I do not agree. I find that they are sufficiently elastic to serve as elastic strips as required by the claims of 275. They serve the two functions required by the claims:(a) to permit reversible coupling of the tail fin assembly to the body of the toy and(b) to provide at least some pressure to the body portion so as to maintain rigidity of the compressible body. Validity The law

Validity

[35]Both sides broadly adopted the guidelines set out by the Court of Appeal in Pozzoli SpA v BDMO SA [2007] EWCA Civ 588; [2007] FSR 37, at paragraph 23.

The skilled person

[36]There was no significant difference in the parties’ submissions on the identity of the skilled person. The Claimants described him as ‘a designer of lighter-than-air toys’. The Defendant suggested that he is ‘a person or team in a toy development environment’. I see no need for a team in this case, so I take the skilled person to be someone who creates toys, with experience in the design of neutrally buoyant flying toys.

The 275 Patent

[37]The only ground of alleged invalidity was lack of inventive step over two items of prior art:(i) US patent no. 4,272,042 (“Slater”)(ii) US patent no. 5,194,029 (“Kinoshita”)[38]The Claimants alleged that claims 1, 2, 6, 9 and 12 of 275 were separately inventive. Construction of claim 1 of 275 Meaning of ‘toy’

Construction of claim 1 of 275

[39]The main issue on construction arose from the Defendant’s submission that ‘toy’ has a broad construction in claim 1 in the sense that it covers embodiments other than products which children play with. I accept that. Paragraph [0029] contemplates use of the invention for purposes such as surveillance. A sophisticated product used for that purpose with all the elements of claim 1 would fall within the claim.[40]The Defendant’s other submission on construction was that paragraph [0028] contemplates the possibility of a toy UFO or airship within the claim and that therefore the claims should broadly construed. A UFO could be anything one can think of and beyond, so that changes little. The reference to an airship is curious because one would not normally expect a toy airship to be propelled by a moving tail. It would be exotic. Paragraph [0028] contemplates a toy with propulsion means additional to the moving surface, such as propellers or compressed air jets, but that would still make for an unusual airship. I think this part of the specification was relied on by the Defendant to broaden the claims beyond toys and thus to bring one of the cited items of prior art, Slater, closer to both 275 and 597. Slater concerns an anchoring assembly for a full sized airship. The 275 and 597 Patents are both concerned only with toys.[41]It seems to me that the word ‘toy’ in the claims must be given proper effect. It limits the scope of the claims to products of a scale that a child might be expected to play with as a toy, even where its actual use is intended more for adults. The prior art Kinoshita

The prior art

[42]The invention in Kinoshita is a mechanism for propelling a floatable structure filled with lighter-than-air gas, such as a flying toy, through the air. The example in the diagrams takes the form of a flying fish. A power source, such as a rubber cord, is connected via two crankshafts to a vertical fin. The fin swings to and fro in a vertical plane and by urging air backwards it causes the structure to advance.

Slater

[43]Slater discloses an improvement on a full-sized airship. The improvement is an anchoring means on the airship. This comprises a magnet which, when the airship is brought to rest, is attracted to an anchoring member secured to the ground. The advantage claimed is that the airship can be anchored, at least initially, without the need of a ground crew.[44]There is a further feature disclosed in Slater which is relevant. The body of the airship has a track support which is mounted lengthways along the underside of the main body, i.e. the underside of the envelope which contains the lighter-than-air gas. The airship’s gondola is slidably mounted on the track, hanging below the envelope, so that it may be moved forward or backwards. This is for the purposes of balance if additional propulsion devices are attached, for stability in flight and to decrease the landing area footprint (see figure 2). 275 and obviousness Claim 1 Kinoshita[45]In its Amended Defence and Counterclaim the Defendant admitted that integers (iv), (v) and (vii) of claim 1 of 275 were not disclosed in Kinoshita. It pleaded that these elements of the claim would be obvious to the person skilled in the art, having read Kinoshita, in the light of the skilled person’s common general knowledge.[46]In his reports Mr Manning, for the Defendant, focussed only on the obviousness of claims 9 and 12 in relation to the 275 Patent and Kinoshita.[47]In relation to claim 1, Mr Rehkemper, for the Claimants, pointed in particular to the second actuator and moving weight to control pitch as being neither disclosed in Kinoshita nor obvious. It was not suggested by the Defendant that the common general knowledge of the skilled person included this concept. I accept Mr Rehkemper’s evidence and his view that claim 1 is not obvious over Kinoshita.

Slater

[48]Mr Manning identified two differences between claim 1 of 275 and Slater, namely integer (i): Slater was not a toy; and integers (vi) and (vii): Slater being a real airship, it did not have a removable tail portion attached to the body by an elastic element.[49]As to the first, Mr Manning said that it was common for toy makers to be influenced by items taken from real life and so the skilled person reading Slater would think of making a small scale version as a toy.[50]As to the second, Mr Manning would expect the tail part of an airship to be manufactured separately and it would be common practice for them to be separable to aid testing, packing and distribution. This would also reduce damage if the toy airship crashed. Attaching appendages to a toy with rubber bands was common in flying toys.[51]In cross-examination Mr Manning said that when he read Slater in order to prepare his first report he did not realise that Slater disclosed a real airship, not a toy one. He was not alerted to this until he read Mr Rehkemper’s report. I think this was intended to reinforce Mr Manning’s argument that a person skilled in the design of toys would readily adopt Slater as the basis for a toy. For my part, this led to some doubt about how closely Mr Manning read the documents on which he based his opinion. Slater is plainly not concerned with a toy.[52]Mr Rehkemper took the view that four integers of claim 1 were absent from Slater: Integer (i) Slater did not disclose a toy. Mr Rehkemper did not agree with Mr Manning that a skilled person could make a toy airship after reading Slater because of the practical difficulties in translating a real airship into a toy. Integer (iii) Contrary to what Mr Manning said, this integer was not disclosed in Slater. The moving surface relied on by Mr Manning was a rudder or vertical aileron, not a flapping tail for propulsion. Integer (vi) Mr Rehkemper agreed that Slater did not disclose a removable tail portion. However he accepted that it was practical to make the tail removable in a toy for easier and lower cost shipping. Integer (vii) Mr Rehkemper agreed that Slater did not disclose coupling of the tail to the body via an elastic element. In cross-examination he agreed that it was common to use rubber band to attach appendages in toys.[53]As to integer (i), whatever the practical difficulties in making a toy floating airship, I did not understand Mr Rehkemper to say that the skilled person reading Slater would dismiss the idea of making a toy version of an airship as so problematic that it would not be worth attempting. I take the view that Slater would put into the mind of the skilled creator of toys the notion that he or she could make a toy floating airship, if that was not there already.[54]Mr Campbell, who appeared for the Claimants, argued that the skilled person would have dismissed Slater out of hand as being concerned with a means of anchoring a real airship which would be of no interest to a maker of floating toys. I do not agree. The hypothesis is that the skilled person reads cited prior art with interest. I accept that the invention itself disclosed in Slater would have provided no interest. But I think that having read Slater carefully the idea of making a model version of the airship disclosed would undoubtedly have entered the mind of the skilled person. Neither expert suggested that the skilled person would have rejected the idea as unworkable. So the question is whether, using the common general knowledge available to him, it would have been obvious to make something falling within claim 1 of 275.[55]Mr Rehkemper’s evidence was that integer (iii) is not present in Slater because there was no moving surface that propelled the airship. The problem with this evidence is that integer (iii) does not require the moving surface to provide propulsion.[56]Mr Hughes argued for the Defendant that there were a number of options for the moving surface in Slater. He suggested the rudder (feature 26a), the horizontal stabilizers (29), the wings (29a) or the propellers (90 and 92). Since they all move they must be coupled to actuators and are all directly or indirectly coupled to the body portion.[57]However it is not enough just to point to features disclosed in Slater. The assumption is that the skilled person reads Slater and decides to make a toy version. The issue under this head is whether it would be obvious to that skilled person to adapt Slater in such as way so as to incorporate one or more of its features in the toy and in so doing to create the features described in integer (iii). For this the Defendant must rely on expert evidence.[58]Mr Manning said very little at all in this regard, in fact nothing in the context of claim 1. Briefly, in the context of claim 7, he referred to the stabilising air foils which are shown as feature 29a in figure 1 of Slater. Column 7, lines 6-10 refers to these as ‘wings’ pivotally mounted to the envelope to enhance stability. I will assume that this what Mr Manning had in mind in relation to claim 1 as well. I will also assume that since they move, they are coupled to an actuator.[59]If the skilled person were to adapt these wings shown in Slater to become part of the toy, it is first of all not clear that they are moveable at angles relative to a forward directional axis of the toy. Mr Manning did not say that they were. If anything, looking at figures 1 and 2, they appear to rotate about an axis perpendicular to the forward directional axis rather than move (like a shark’s tail or a whale’s fluke) at angles relative to that axis.[60]Further, there is no teaching in Slater that the motion of the wings (or any of the other moving parts relied on by Mr Hughes) was at ‘variable’ and especially ‘different’ angles relative to the forward directional axis. The reason for different angles is explained in paragraph [0023] of 275. Asymmetrical oscillation relative to the axis, i.e. moving to a greater maximum angle to one side than the other, allows control of lateral direction. This directional control is not required by integer (iii) but the actuator must be configured so that the surface can move at both variable and different angles.[61]Mr Rehkemper did not address this point directly. His just said that the wings on Slater did not control direction or serve as a means of propulsion. But neither of those requirements is present in claim 1.[62]I can see that integer (iii) is broad enough to cover a rudder on a toy airship, coupled to an actuator and the body portion. It may be that the skilled person reading Slater would think of incorporating such a rudder in a toy version, though Mr Manning did not say so. It is possible, by way of alternative, that the wings on Slater, which Mr Manning did refer to, could be made to move on the toy at angles relative to the forward directional axis of the toy and that this was obvious. It is even possible, though it seems less likely, that the skilled person would think that it was an obvious option to arrange for such movement to be at both variable and different angles relative to that axis. In the end, however, there was no evidence from Mr Manning to back this up. I therefore conclude that it would not be obvious to a skilled person, who contemplates making a toy version of Slater, to include the features of integer (iii).[63]Turning to integers (vi) and (vii), Mr Rehkemper accepted that it was obvious, when creating a model, to have a separate tail and to couple removable appendages, such as a tail, by means of an elastic element, such as a rubber band. It is possible to contemplate the use of a rubber band to attach the tail to the body without generating a compressive force on the body, but in the normal course an arrangement resulting in a compressive force would be likely. Anything above a negligible force would have at least some effect in maintaining the rigidity of the inflated body.[64]For the reasons given in relation to integer (iii), I find that the invention claimed in claim 1 is not obvious to a skilled person who has read Slater.[65]It also follows that none of claims 2 to 8 lack inventive step over Slater but I will deal with them briefly.

Claim 2

[66]Claim 2 adds to claim 1 the requirement that “the first actuator is coupled to the tail assembly”.[67]Mr Manning said that this makes no material difference. Mr Rehkemper said only that the rudder in Slater did not have a first actuator. On that evidence I find that there is nothing separately inventive in claim 2.

Claim 6

[68]Claim 6 requires that “the flying toy has a shape of a fish, and wherein the moving surface is configured as tail of the fish.”[69]Mr Rehkemper’s evidence was that, contrary to what Mr Manning had said, it was not obvious to take the idea of an airship toy (assuming Slater had imparted that idea) and convert it into a fish with the moving surface being a tail rather than the rudder of the airship. It required non-obvious expertise to make a fish swim through the air in your living room. Mr Rehkemper also raised what amounted to a ‘commercial success’ argument: if it was so obvious why had Mr Manning not thought of it and made a lot of money?[70]I do not accept the argument about commercial success. This was thrown in briefly and cannot be given weight without sufficient evidence that the only significant reason for the toy industry not making a flying fish like the one in 275 before the priority date was that it was not technically obvious.[71]The experts agreed that it was common general knowledge before the priority date that helium filled flying toys existed and that some were in the form of a fish. Mr Manning also gave evidence that fish shaped bath toys were known which had flapping tails to propel the toy in the water. Mr Rehkemper agreed with this, for what it was worth.[72]In relation to the moving surface, claim 6 just requires that it is configured as the tail of a fish. This just means that the tail moves. Mr Rehkemper’s resistance to accepting such an arrangement to be obvious was based on the difficulty of making a fish swim through the air. This is not a requirement of claim 6. On balance I find that the invention claimed in claim 6 is not separately inventive.

Claim 9

[73]I have set out claim 9 above, which is primarily concerned with the base plate (including an actuator) coupled to the moving surface and an elastic element coupled to the base plate to allow for reversible coupling of the tail to the body and the application of a compressive force to the body.

Kinoshita

[74]Mr Manning said that he struggled to see any material difference between claim 9 of 275 and Kinoshita. Argument focussed on figure 5 of Kinoshita and whether Kinoshita disclosed(a) a base plate comprising an actuator or(b) a compressive force applied to the body via an elastic element. Mr Manning said that the items marked 23 were elastic elements and that they were coupled to a structure shown but not separately identified in figure 5 (or elsewhere) which constituted the base plate.[75]Confusingly, items marked 23 are variously described as “support members” and “pinions”, though I think this is just a mistaken use of the same number for two separate parts. Both parties took parts 23 to be the support members in figure 5. They are each said to be “…a soft, flexible, thin plastic strip having one end attached adhesively to the rear end of the floatable structure 1 and the other end attached adhesively to the base member of the framework 2’ of the vertical fin 2.” The rear end of the floatable structure marked 1 was what Mr Manning identified as the base plate.[76]I will assume that the structure in figure 5 of Kinoshita identified by Mr Manning is the equivalent of a base plate. Mr Rehkemper did not actively oppose that suggestion when put to him in cross-examination.[77]There was a dispute as to whether features 23 in figure 5 are elastic. They are shown to be coupled to the base plate. Claim 9 requires that the base plate comprises an actuator. That appears not to be the case looking at figure 5 but Mr Manning said in cross-examination that it was connected to an actuator. I will assume that this by itself makes no difference in relation to obviousness. However it was put by Mr Campbell to Mr Manning that for the actuator to impart a force in order to move the tail, features 23 could not be elastic. Mr Manning did not have a satisfactory answer to this.[78]On the other hand, the evidence of both experts was that there was nothing inventive in attaching a tail fin assembly to the body of a flying toy using rubber bands so that there is a compressive force applied to the body, or that the attachment is reversible.[79]Although it was not explored, I could find no disclosure in Kinoshita regarding the surface moving at variable and different angles.[80]To demonstrate that claim 9 lacks inventive step it would be necessary to show that it was obvious to adapt the base plate and plastic strip arrangement shown in Kinoshita to create the claim 9 arrangement, including making the plastic strip elastic and having the surface move at variable and different angles. In my view this was not established on the evidence and I find that claim 9 is not obvious in relation to Kinoshita.

Slater

[81]Mr Manning nominated the feature marked 26 in figure 1 of Slater as the base plate which in the normal course would comprise an actuator to move the moving surface, in this case the rudder marked 26a.[82]Assuming that is right, Slater does not disclose(a) that the moving surface is moveable at variable and different angles relative to a forward directional axis of the toy;(b) an elastic element coupled to the base plate;(c) reversible coupling of the tail fin assembly to the body; or(d) a compressive force to the body via the elastic element.[83]If Slater were adapted to be a toy, on the evidence (c) and (d) would be obvious. The evidence did not show that (a) and (b) would be. I conclude that claim 9 is not obvious in relation to Slater.

Claim 12

[84]Claim 12 is dependent on claim 11 and therefore includes the elements of claims 9-11. It requires that(i) the actuator is a remote control servo,(ii) the moving surface is configured as a fin and formed from a tail portion that is filled with lighter-than-air gas and(iii) the toy is configured as a fish and the moving surface is configured as a tail fin.[85]Very little was said about claim 12. I have already discussed (iii) and concluded that there was no separate invention in this regard. Mr Rehkemper accepted that using a remote control servo as actuator was common general knowledge and in fact in correspondence the Claimant conceded that none of the features of claims 10 and 11 were relevant to inventive step, including (i) and (ii). I therefore find that claim 12 is not separately inventive.

The 597 Patent

[86]Mr Manning only relied on Slater as the basis for his view that the inventions claimed in the 597 Patent were obvious.

Claim 1

[87]The Defendant’s pleaded case was that 597 disclosed all the integers of claim 1 of 597 except that Slater was not a toy. Mr Manning conceded that there was no reference to removable ballast (integer (iv)) in Slater, but stated that this was a feature in common use in nearly all flying toys.[88]Mr Rehkemper agreed that flying toys had used removable ballast, but reiterated that Slater was not a toy.[89]As I have explained, in my view the fact that Slater is not a toy would not discourage the skilled person who has read Slater from contemplating a replica in toy form. The experts were apparently content that it would be obvious for such a replica to adapt the gondola arrangement in Slater to create the moving weight to control ascent and descent of the toy, because nothing was said about it on either side.[90]I conclude that claim 1 is obvious in relation to Slater. Since it was not alleged that claims 3 and 4 are independently inventive, they also lack inventive step.

Claim 2

[91]The additional feature of claim 2 on which argument focussed was that “…the toy has a moving surface that is configured to move side-to-side for forward propulsion of the toy”.[92]In his evidence Mr Manning advanced two propositions. The first was that the side-to-side movement of the rudder on a toy airship constructed like Slater would have a very small propulsive effect, so that was disclosed. The second was that it was obvious to adapt Slater to make a toy in the shape of a fish and in that event it would be obvious to have a flapping tail as the means of propulsion. Mr Manning pointed again to examples of toy bath fish which had flapping propulsive tails.[93]Mr Rehkemper’s evidence was that a flapping rudder in a toy airship would have insignificant propulsive effect. He also relied on the same evidence he had given in relation to claim 6 and Slater: it takes trouble to make a toy like a flying shark and if it was so obvious, why did Mr Manning not think of it?[94]In my view, on a purposive construction of claim 2 the propulsive effect must be sufficient for the user of the toy, such as a child, to appreciate a noticeable forward motion by the toy when the tail moves. On the evidence I am not satisfied that making a toy replica of the Slater airship would achieve that.[95]As to Mr Manning’s alternative argument, it seems to me that this rests on the assertion that propelling a floating toy, specifically a fish, by means of the lateral movement of the tail, was obvious. Mr Manning asserts that there were floating fish toys before the priority date but not that any were propelled in this way. I do not think that the Defendant has established sufficient reason for me to accept that propulsion of a neutrally buoyant toy through the air (as opposed to a bath toy through water) by means of the lateral movement of a moving surface – a tail – was obvious. I find that claim 2 does not lack inventive step.

Threats

[96]The Defendant’s counterclaim for threats was not pursued.

Conclusion

[97]I find that all the claims of the 275 Patent are valid and that the Defendant’s product falls within claim 1, but not either claim 4 or claim 11.[98]I find that claims 1, 3 and 4 of the 597 Patent are invalid, but claim 2 is valid. The Defendant’s product falls within claims 1 and 2 of 597.[99]It is not in dispute that the Defendant sold the products complained of, so both Patent 275 and Patent 597 have been infringed. Outstanding issues relating to

Infringement

[100]The Defendant’s skeleton argument referred to three issues relating to infringement, which would arise if there was a finding that the Defendant’s product fell within any valid claim of either Patent. These were(a) the acts done by the Defendant which constituted infringements (aside from selling),(b) whether the Claimant is entitled to claim damages pursuant to section 69 of the Patents Act 1977 and(c) whether the Second Claimant held a valid exclusive licence in respect of the Patents and if so, during which period. None of these was the subject of submissions from either side at the trial and so I gave them no attention but they have been raised in correspondence following receipt of the draft judgment. I will hear argument as to whether either party may now pursue any of these matters and if so, how they should be resolved.