Epoch Company Ltd v Character Options Ltd [2017] EWHC 556 (IPEC)

Case No IP-2015-000153[2017] EWHC 556 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Venue Royal Courts of Justice, Rolls Building, Fetter Lane, London, EC4A 1NLDate 22/03/2017
Before
HIS HONOUR JUDGE HACON
Between
EPOCH COMPANY LIMITEDClaimantCHARACTER OPTIONS LIMITEDDefendant
James St Ville (instructed by Maucher Jenkins) for ClaimantGuy Tritton (instructed by Potter Clarkson LLP) for DefendantHearing Hearing dates: 31 January to 1 February 2017
JudgmentJudge Hacon :Introduction
[1]UK Patent No. 2498410B (“the Patent”) is for a toy comprising children’s decorative beads made of water soluble resin. These may be of various colours or no colour. The child arranges the beads into a desired pattern or image in a tray. Water is sprayed on, which causes them to become sticky and fuse to each other. The beads are allowed to dry. They then consist of a one-layer block of beads melded together, displaying the pattern or image. This can be kept, if so wished, as a decorative article.[2]The prior art beads were spherical or tubular. The beads claimed in the Patent are polyhedral and necessarily transparent. The advantage of this is that they glitter in the light – they have ‘brilliance’ to use the term employed in Patent – which makes them more attractive to a child.[3]The claimant (“Epoch”) owns the Patent and alleged that the defendant (“Character Options”) has infringed it. Character Options counterclaimed, alleging that the Patent is invalid on two overall grounds: lack of inventive step and because the invention claimed is an aesthetic creation as such and therefore not a patentable invention, pursuant to s.1(2)(b) of the Patents Act 1977 (“the Act”).[4]James St Ville appeared for Epoch, Guy Tritton for Character Options.[5]By an application notice dated 17 February 2016 Epoch made a conditional application to amend the Patent. Unusually, this was not done to distance the claims further from the prior art, as Mr St Ville made clear. It was done to deal with the argument under s.1(2)(b). The amended claim 1 is to a set of beads and a tray. No objection to the amendment was taken by Character Options, save to say that the claims as proposed to be amended would be invalid for the reasons given in relation to the claims as granted.

The Patent

[6]The Patent describes a prior art toy, one which used spherical or tubular beads. It says that the user may find the earlier toy lacking in interest. It then explains the advantage of the invention claimed (in a translation from the Japanese):
“[0007] An object of an aspect of the present invention is to provide a bead toy using novel beads which eliminates the above-described disadvantages and can enjoyably amuse a user for a long period of time without tiresomeness. [0008] According to an aspect of the present invention, a fusible toy includes a polyhedral particulate bead made of transparent and water soluble resin.”
[7]The specification goes on to provide a more detailed description of the invention, exemplifying polyhedral shapes which the beads can take and highlighting the rhombic triacontrahedron, (formed by combining 30 rhombuses of the same size). The beads are transparent and may be colourless or have any colour.[8]The specification explains how the child arranges the beads in a tray:
“[0026] Further, the bead tray has dents formed on an upper surface thereof. Each of the dents has a diameter smaller than the particle diameter of the bead. The dents are arranged at intervals substantially equal to but slightly smaller than the particle diameters of the beads. [0027] As shown in Fig. 4, when the beads are arranged in the adjacent dents of the bead tray, the beads are stably placed at positions of the adjacent dents in a state in which the beads contact each other.”
[9]Water is sprayed on to the beads and as a consequence adjacent beads bond strongly. The specification explains how use of polyhedral beads leads to brilliance in the ‘accessory’, which is the word used for the decorative article created by the fused beads:
“[0034] Further, the bead is made of transparent water soluble resin and has the shape of a polyhedron. Therefore, when the accessory is formed using such bead, the state of a surface reflected light or a refracted light is changed depending on the angle of illuminating light. Consequently, it is possible to provide the accessory which can allow a user to enjoy, without tiresomeness, the change of brilliance of the accessory in addition to the beauty of the shape of the accessory.” … [0038] The polyhedron shape of the bead is not limited to the rhombic triacontahedron and may be a polyhedron which can be handled substantially similar to a spherical body, such as a complex polyhedron.”
[10]The Patent goes on to give examples of possible bead shapes and identifies a range within which the invention will work: a polyhedron with less than 12 faces will not handle like a spherical body whereas if there are more than 62 faces the brilliance created by the reflected and refracted light becomes less visible.[11]The priority date is 13 January 2012.[12]Claims 1-3 and 7 of the Patent as granted were said by Epoch to be independently valid. They are as follows (including claim 5, on which claim 7 is dependent):
“1. A fusible bead toy comprising a polyhedral particulate bead made of transparent and water soluble resin. 2. The fusible bead toy according to claim 1, wherein the polyhedral particulate bead has a shape of a polyhedron with 12 to 62 faces, which is selected from a group consisting of a regular dodecahedron, a regular icosahedron, and a truncated regular polyhedron obtained by cutting vertices of a regular polyhedron, and a dual thereof. 3. The fusible bead toy according to claim 2, wherein the polyhedron is a rhombic triacontahedron. [5. The fusible bead toy according to any one of claims 1 to 4, comprising: a set of a plurality of the particulate beads.] 7. The fusible bead toy according to claim 5 or 6, wherein the plurality of particulate beads of the set have all a same shape and size.”
[13]Claim 1 as conditionally proposed to be amended adds the features of claim 5 plus the features of a bead tray:
“1. A fusible bead toy comprising: (i) a set of a plurality of polyhedral particulate beads made of a transparent and water soluble resin; and (ii) a bead tray having dents formed on an upper surface thereof, wherein the dents are arranged at intervals substantially equal to but slightly smaller than a particle diameter of the beads, such that beads placed at positions of adjacent dents contact each other.” (i) a set of a plurality of polyhedral particulate beads made of a transparent and water soluble resin; and (ii) a bead tray having dents formed on an upper surface thereof, wherein the dents are arranged at intervals substantially equal to but slightly smaller than a particle diameter of the beads, such that beads placed at positions of adjacent dents contact each other.”

The witnesses

[14]Epoch’s expert was Jim Thompson who is a Principal Lecturer in the School of Journalism, Media and Performance at the University of Central Lancashire. Mr Thompson developed undergraduate courses in Games Design, which started as a BA course in 2002, and in Games Programming which has been a BSc course since 2003.[15]Character Options’ expert was Ian Towner. Mr Towner is Director of Product Assurance at Product Assurance Limited. The company conducts design safety assessments and provides advice, generally directed to compliance with safety standards, to clients on consumer products, including toys. The clients include manufacturers of toys.[16]Both experts were good witnesses, I think doing their honest best to assist the court.[17]There were also witness statements from Joost Poulus and Stephen Tull. Neither was cross-examined and their statements stood as unchallenged evidence. Mr Poulus is General Manager of Moose Toys Pty Ltd (“Moose Pty”). Moose Pty is an Australian toy manufacturer and owner of European Patent Application No. 1847404 A2, a cited item of prior art in this case. Mr Tull is Quality Assurance Director of Character Options.

Person Skilled in the Art

[18]It was agreed that the person skilled in the art was a member of the toy industry with practical experience in the manufacture and design of recreational beads for use by children.

Common General Knowledge

[19]It was common ground that the old bead toy of this nature – using spherical water fusible beads – was part of the common general knowledge (“CGK”).[20]The points of dispute were whether the following were also part of the CGK:(a) decorative polyhedral beads used for threading into a chain and(b) polyhedral shapes generally, including those specified in the claims.[21]Mr Towner said in his report that the skilled person would have known about threading polyhedral beads at the priority date and maintained this in cross-examination. Mr Thompson accepted this in cross-examination.[22]Both experts said that the skilled person at the priority date would either have known, or would have been able to find out about alternative polyhedral shapes, whether on the internet or otherwise. In particular, Mr Thompson said that the skilled person would have known about 20- or 30-sided dice. The significance of these is that they are in the shape of a rhombic triacontahedron.

Construction

[23]Three issues arose on construction.

Transparent and Brilliance

[24]The fusible bead must be made of a transparent and water soluble resin. Character Options began and to some extent persisted in emphasising the dictionary definition of ‘transparent’. I was also provided with images and samples to show that it was not easy to see through their beads.[25]In my view this was beside the point. ‘Transparent’ is being used here in a particular context. One clue might have been provided by expert evidence as to how transparent water soluble resin can ever be. It is possible that even the most transparent resin bead will always be a good deal more translucent than glass. There was no such evidence.[26]I think that Mr St Ville provided the purposive answer. Paragraph 34 of the specification (quoted above) indicates the reason for the transparency of the bead. Light falling on the bead will be reflected and/or refracted, depending on the angle of illumination. It is this which leads to the brilliance of the beads and the advantage of the invention. (I would say ‘brilliance’ conjures up an effect more striking than the one actually seen, but it is as good a word as any.) Transparency can have nothing to do with reflected light, so although some of the brilliance will be caused by reflected light, it will be visibly enhanced by the effect of refracted light. There will only be refraction within a bead if the bead is sufficiently transparent.[27]A bead will therefore be transparent within the meaning of the claims if, under illumination, it displays visibly more brilliance than an equivalent but opaque polyhedral bead, which must rely solely on reflection to deliver any brilliance. The eye of the court is as good as any to assess this.

Particle diameter of the beads

[28]The parties were agreed that the relevant diameter of the beads was as measured from apex to opposite apex, not from face to face. Dents arranged at intervals substantially equal to but slightly smaller than a particle diameter of the beads[29]The correct construction of this part of claim 1 as proposed to be amended was agreed by the time of closing speeches. The dents are circular indentations in the tray in which the beads were placed by the child. The intervals between dents are to be measured from one centre of a dent to another. That interval has to be close to, but slightly smaller than the diameter of the beads. It requires a purposive construction. If the interval were too large, the beads would not touch. If the interval were too small, the beads would touch but push against each other and so sit unstably in their respective dents before the water is added. The claim requires that the interval between dents is less than the apex to apex diameter of the beads, so causing adjacent beads to touch, but not so much less that the beads cease to sit stably in the dents. Infringement The claims as granted

Infringement

[30]The beads in issue are sold by Character Options as the ‘Beados Gems’ range. The only point in dispute with regard to the claims as granted was whether they were transparent within the meaning of the claims. It emerged that some of the beads in the range were plainly opaque: those coloured black and white. It was accepted by Epoch that these do not infringe. However they played a useful role in the brilliance test for transparency which I have described above.[31]After the trial I was provided with a sample of the Beados Gems beads made into a decorative article. It was a butterfly made from blue, purple, pink, yellow and green non-opaque beads and two opaque black beads for the eyes. I looked at them under a light and considered whether I could detect a greater brilliance emanating from the coloured beads when compared with the black ones. I think that reasonable people could differ on this, but on balance I would say that the coloured beads provide slightly more brilliance under light.[32]Claim 1 of the Patent is infringed. There was no dispute that if this were the case, the remaining claims are also infringed.

The claims as proposed to be amended

[33]The further issue on infringement concerned the proposed amended claims. It was whether the dents in the trays used in the Beados Gems sets were at intervals substantially equal to, but smaller than, the diameter of the beads. For the reasons given above, this depended on whether, when the beads were sitting in their tray, adjacent beads touched each other and at the same time sat stably in their dents.[34]The difficulty was that while both Mr St Ville and Mr Tritton agreed at the trial that this was the correct purposive test, neither side had approached the trial with this in mind. A lot of work had been done comparing bead diameters with dent intervals, without complete accord. There was, however, one photograph, added by Epoch to the trial X bundle for a different and peripheral purpose, which showed Beados Gems in their tray. Mr Tritton fastened on to this because the beads looked considerably larger in diameter than the intervals between the trays. On the other hand, they seemed to be in close contact – as one might expect if each was stably in its dent. Mr St Ville submitted that because of the way the photograph had been taken, it did not provide an accurate guide as to the relationship between bead size and dent intervals.[35]It is not intuitive that Character Options would design their Beados Gems range to have a tray with dents that did not stably accommodate the beads, so that when the child is arranging the beads they are liable to roll annoyingly out of place. Mr Towner, Character Options’ expert, had seen experiments carried out on the Beados Gems beads. He agreed that there had been no sign of the beads over-sized or too large to fit in the trays. I think he must have meant that they fitted comfortably into the dents of the trays.[36]On that evidence I find that the dents in the Beados Gems trays are arranged at intervals substantially equal to, but slightly smaller than the apex to apex diameter of the beads.[37]Claim 1 as conditionally proposed to be amended would be infringed.

Validity

[38]The two overall allegations of non-validity can be split into three. First, it was said that the claims as granted were not patentable, being claims to an aesthetic creation as such.[39]Secondly, it was pleaded that the invention lacked inventive step over the CGK alone. This was a way of characterising an allegation that the invention claimed in claim 1 was a mere collocation of(i) fusible bead toys,(ii) bead toys having a polyhedral shape and(iii) being transparent.[40]Thirdly, it was alleged that the claims lacked inventive step over the cited items of prior art:(1) European Patent Application No. 1 847 404 A2 (“Tobias”).(2) A spherical fusible bead product manufactured and marketed in the UK by Moose Pty (“Bindeez Aquadots)”.

Aesthetic Creation

[41]Section 1(2)(b) of the Act provides: (2) It is hereby declared that the following (among other things) are not inventions for the purpose of this Act, that is to say anything which consists of – … (b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever; … but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.[42]Pursuant to s.130(7) of the Act, the foregoing subsection is to be taken to have been framed so as to have, as nearly as practicable, the same effect as the corresponding provision in the European Patent Convention, that is to say art.52(2)(b). In Aerotel Ltd v Telco Holdings Ltd; Macrossan’s Patent Application [2006] EWCA Civ 1371; [2007] R.P.C. 7 Jacob LJ stated that it was better to work directly from the Convention. Art.52 provides in relevant part:(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: … (b) aesthetic creations; …(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter as such.[43]Mr Tritton referred me to Aerotel and subsequent cases in which art.52(2) and (3) were considered, namely Symbian Ltd v Comptroller-General of Patents [2008] EWCA Civ 1066; [2009] R.P.C. 1 and HTC Europe Co. Ltd. v Apple Inc [2013] EWCA Civ 451; [2013] R.P.C. 30. These set out the overall approach to be taken to art.52(2) and (3). The analysis is one of substance, not form. The essential question is whether, as a matter of practical reality, the invention properly construed contributes anything to the art over and above the excluded matter, see HTC at [46] and [48].[44]None of the above cases concerned aesthetic creations. Mr Tritton referred to one that did, a decision of the UK Intellectual Property Office: Gram Engineering Pty Ltd BL O/275/08, dated 9 October 2008, in which the Hearing Officer, Dr Plummer, considered the following claim in a patent application:
“A cladding panel formed from sheet material having opposite top and bottom edges and opposite longitudinal side edges, and being profiled to incorporate a plurality of longitudinally extending major formations of generally common shape lying substantially parallel to one another, each said major formation having a portion delineated from the remainder of that formation and which is not of constant size across the panel, ones of the portions being sloped differently to one another in a direction across the panel and respective of said portions extending along the major formations from the top edge to the bottom edge of the panel.”
[45]The only advantages identified in the specification for the claimed panel were aesthetic. At the hearing, it was argued that there were also technical advantages in that the panel reduced glare, was inexpensive to make, provided an illusion of increased width and was reversible. The Hearing Officer did not accept the first or second were true advantages of the invention and said that the third and fourth were in fact aesthetic in nature. Also, the fourth formed no part of the claims. In substance the claim was to an aesthetic creation and the invention was therefore not patentable.[46]Mr Tritton argued that in the present case, in reality the only contribution to the art made by the invention was that it imparted brilliance to the decorative object. This was a purely aesthetic contribution, as was the profiling of the panel in Gram Engineering.[47]Mr St Ville referred to T 686/90 HETTLING-DENKER/Translucent building materials [2004] E.P.O.R. 5, a decision of the Technical Board of Appeal (“TBA”) of the European Patent Office. The claim in issue was this (omitting reference numerals):
“1. Flat or cuboid translucent building modules with at least two flat surfaces made of transparent material, which are bonded together without significant loss of light, having at least part of one of the inner flat surfaces covered by a multi-coloured art work of any shape in the style of stained glass, directly applied to screen printing, which after the bonding process is protected against weathering and mechanical damage.”
The TBA held that this was not a claim to an aesthetic creation as such.[48]To my mind these two cases demonstrate the distinction between an invention which contributes a new aesthetic effect and is therefore patentable, and an invention which goes further to claim an aesthetic creation as such – not patentable.[49]In Hettling-Denker the invention was a building module which gave the impression of being a stained glass artwork. The contribution to the art was a new type of effect imparted by a building module. One could reasonably call it an aesthetic effect, but it was not an effect consisting of any particular design or group of designs. It was a technical effect. The design used could have been anything. The invention was therefore not an aesthetic creation as such.[50]In Gram Engineering the claim was to arrangements of panel formations on a cladding panel. The contribution here was again an aesthetic effect, this time imparted by the panel. It was achieved by profiling the panel to incorporate in it formations arranged within the constraints set out in the claim. Every such profiling, when done, would constitute a design. In reality the contribution to the art was the claimed group of designs, to be made on a cladding panel. A design is an aesthetic creation. Thus, the invention was an aesthetic creation as such – more exactly, a group of aesthetic creations as such.[51]The contribution to the art in the present case could also reasonably be described as an aesthetic effect, imparted by a fusible bead toy. An aesthetic effect is not, though, of itself an aesthetic creation. In particular, the effect here is not achieved by the creation of a particular design or group of designs. The invention claimed is therefore not an aesthetic creation as such.

The ‘mere collocation’ argument

[52]Character Options argued that the invention claimed was only a juxtaposition of features. This is sometimes called a mere collocation or aggregation of features. There are, in fact, two quite distinct sorts of argument relating to a collocation of features and these can get blurred.[53]First there is the type considered by the Court of Appeal in Williams v Nye (1890) 7 R.P.C. 62. The invention claimed was a machine which combined the tasks of(a) mincing meat and(b) putting the minced meat into sausage skins. It was held that there was nothing inventive in carrying out two known processes in the same machine. The dispute turned on the entirely straightforward question of whether it was inventive to create such a combination.[54]There is a quite separate type of argument which can be illustrated by considering these hypothetical facts for example: at the priority date it was new and not obvious to combine a mousetrap and a corkscrew in the same contraption; does it necessarily follow that there was an inventive step?[55]An issue of this sort was considered by the House of Lords in SABAF SpA v MFI Furniture Centres Ltd [2004] UKHL 45; [2005] R.P.C.10. The patent was for a burner used in gas cookers and hobs. The specification stated that prior art burners were too tall to be used for hobs. The invention overcame this by combining two features:(a) drawing primary air in from above the hob unit and(b) using a flow path under the flame spreader in which a Venturi effect (here an increase in gas pressure caused by the gas passing from a narrow to a wider pipe) would be present.[56]At first instance the judge had found that each of these two features was known or obvious and that the invention lacked inventive step because it was a merely a collocation of known concepts.[57]The Court of Appeal [2002] EWCA Civ 976; [2003] R.P.C. 14 emphasised that there was no separate law of collocation. The statutory test under section 3 of the Act had to be applied indiscriminately to all questions of inventive step. The question was simply whether it had been obvious to combine the two features. The Court found that the combination had not been obvious and therefore there was an inventive step.[58]In the House of Lords, Lord Hoffmann agreed with the Court of Appeal that there was no separate law of collocation and thus no exception to the test for obviousness under s.3. He continued:
“[24] … But before you can apply s.3 and ask whether the invention involves an inventive step, you first have to decide what the invention is. In particular, you have to decide whether you are dealing with one invention or two or more inventions. Two inventions do not become one invention because they are included in the same hardware. A compact motor car may contain many inventions, each operating independently of each other but all designed to contribute to the overall goal of having a compact car. That does not make the car a single invention.”
[59]Thus, where an invention consists of two or more features which interact to produce a combined technical effect which is greater than the sum of their individual technical effects – i.e. there is synergy – the combination can be treated as a single invention. The issue of inventive step will turn on whether it was obvious to combine those features. By contrast where the alleged invention consists of features which do not interact synergistically, the features must be considered separately and each must be assessed for inventive step on its own merits.[60]Going back to my example, the answer to the question I raised is no. It would not be possible to determine whether there was an inventive step until it has been decided whether the corkscrew and the mousetrap interact synergistically and thus whether inventive step is to be assessed in relation to the combination or in relation to each element separately.[61]Turning to the present case, in my view there is sufficient synergy to treat the invention claimed as a single invention. The use of transparent polyhedral beads in a fusible bead toy provides brilliance when the decorative article made using the beads is illuminated. The synergy between transparency, polyhedral beads and their use in a fusible bead toy gave rise to a new toy that was more attractive to kids than the old ones. By common consent this had not been done before the priority date. The question is whether it was obvious to do it.

Inventive step over the cited prior art

[62]Before turning to the two items of cited prior art, I will make an initial observation. As will be seen, the key feature of claim 1 is that the beads are polyhedral. Any polyhedral shape will do, so this includes a cube or a polyhedron close in shape to a sphere for instance. Epoch’s argument rests on the skilled person not even contemplating beads of any polyhedral shape in place of spherical or tubular beads. It is irrelevant whether the skilled person would think about brilliance. Exhibiting brilliance is not a feature of any of the claims.[63]Transparent beads were known. In my view Epoch faced an uphill task to establish an inventive step based on the replacement of spherical beads with polyhedral beads unless the skilled person had a technical prejudice against polyhedral beads. None was suggested.[64]However, even a difficult task can be accomplished if supported by the evidence. I turn to the cited prior art and the evidence relating to it. I can take both together.

Tobias and Bindeez Aquadots

[65]Tobias disclosed a bead dispensing system for use in creating artwork. The beads expressly disclosed are coloured water fusible spherical beads arranged on a tray. The specification states that the beads are ‘often spherical’, which provides a suggestion of alternative shapes. There was no disclosure of transparent beads.[66]Bindeez Aquadots constituted a prior use of toy similar to that claimed in the Patent. The beads of the toy were spherical and of different colours, and some were translucent. No polyhedral beads were used.[67]In cross-examination Mr Thompson accepted that it would be natural for the skilled person to consider changing the shape of the Bindeez beads. He also said that it would be natural to consider a gem-like shape. Mr Thompson added that the skilled person would know about polyhedral shapes or where to find them. He thought that the skilled person would contemplate using beads in the shape of a rhombic triacontrahedron.[68]Mr Towner said in his report was that it would be obvious to the skilled person at the priority date to use polyhedral beads in place of spherical beads and that this would include using beads in the shape of a rhombic triacontrahedron. Transparent recreational beads would have been part of the skilled person’s CGK and would have been considered. Mr Towner maintained his view in cross-examination although he conceded that he did not think about using polyhedral beads when he was working on Bindeez Aquadot beads. But Mr Towner’s job was concerned with whether the resin uses was toxic and so he had no reason to consider any changes in the shape of the beads.[69]Mr Towner also said that it would have been obvious to the skilled person at the priority date to use transparent polyhedral beads in place of the spherical beads referred to in Tobias. I accept that evidence even though there was a possibility that his view could have been prompted by having first seen the Patent.[70]I find that claims 1 to 3 as granted lack inventive step over Bindeez Aquadots. In all the prior art I was shown the beads had the same shape and size. Mr St Ville did not maintain the argument that claim 7 was independently inventive over claims 1 to 3. I find that claim 7 is also invalid.[71]The claims as conditionally proposed to be amended had no inventive significance over those granted, so they also would lack inventive step.

Conclusion

[72]The Patent is invalid because it lacks inventive step over Bindeez Aquadots. Had it been valid, it would have been infringed by Character Options.