Blue Gentian Llc & Anor v Tristar Products (UK) Ltd & Anor [2013] EWHC 4098 (Pat)

Case No HP13E03325[2013] EWHC 4098 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Venue Royal Courts of Justice, Rolls Building, Fetter Lane, London, EC4A 1NLDate 20/12/2013
Before
MR JUSTICE BIRSS
Between
(1) BLUE GENTIAN LLCClaimants(2) E. MISHAN & SONS, INC TRADING AS EMSONClaimant(1) TRISTAR PRODUCTS (UK) LIMITEDDefendants(2) TRISTAR PRODUCTS INC.Defendant
Andrew Waugh QC and Denise McFarland (instructed by DWF LLP) for ClaimantsRoger Wyand QC and Jonathan Hill (instructed by Field Fisher Waterhouse LLP) for DefendantsHearing Hearing dates: 5th, 6th, 9th December 2013
JudgmentMr Justice Birss :
[1]This is a patent case about garden water hoses. The claimants (Blue Gentian) have launched an expandable garden hose called the X-Hose. The defendants (Tristar) have launched a rival expandable garden hose called the FlexAble Hose. Blue Gentian’s X-Hose is protected by UK Patent 2 490 276 entitled “Expandable Hose Assembly”. The patent application was filed on 26th July 2012 claiming its earliest priority from a filing on 4th November 2011. The patent was granted on 1st May 2013.[2]Blue Gentian contend that Tristar have infringed the patent. Tristar contend the patent is invalid, lacking novelty and lacking an inventive step over two items of prior art. They are: US Patent Application number US 2003/0000530 A1 entitled “Self-Elongating Oxygen Hose for Stowable Aviation Crew Oxygen Mask” published on 2nd January 2003 (“McDonald”) and US Patent Application number US 2003/0000530 A1 entitled “Pressure-actuated Linearly Retractable and Extendible Hose” published on 29th May 2003 (“Ragner”).[3]The claim form was issued on 2nd August 2013. Blue Gentian applied for an interim injunction and the matter came before Morgan J on 28th August 2013. Instead of ordering an interim injunction, he directed that the trial of the issues of validity and infringement should be expedited to be heard on the first available date after 1st December 2013. The application for an interim injunction was stood over to trial.[4]By the trial the issues had narrowed down. The only relevant claims were the main product claim, claim 1, and the method claim, claim 14. They were the claims alleged to be independently valid. There was no issue of infringement. Tristar accepted that if, which they deny, claim 1 is valid, then their product falls within it. Tristar also accepted that if, which they deny, claim 14 is valid, then they infringe that claim too. They accept that offering the FlexAble Hose for sale would amount to offering the claimed process for use (contrary to s60(1)(b) of the 1977 Act) and that the FlexAble Hose is a means relating to an essential element of claim 14 such that their selling it would be contrary to s60(2) of the 1977 Act.[5]Tristar contend that claim 1 lacks novelty over McDonald and that both claims 1 and 14 are obvious over McDonald. As regards Ragner, Tristar contends that both claims 1 and 14 lack novelty and are obvious. Blue Gentian deny either claim is invalid.[6]Each side relied on experts reports from technical experts.[7]Blue Gentian called Bernard Sinclair. He is a mechanical engineer. He graduated in 1974. He has worked in product design and manufacturing for many years. He mostly specialises in plastic products, and has worked on designs for products for shaving, security, housewares, structural packaging, stationery, home and garden and electronics.[8]The defendants submitted that Mr Sinclair was a thoroughly unreliable witness. They submitted he seemed unable to answer straightforward questions, answered questions different from those actually put and occasionally did not answer a question at all. The defendants criticised a drawing Mr Sinclair had produced to explain the problem of trapping the McDonald hose in a box and argued that on one occasion he appeared to be thinking how he could avoid giving an answer that would be unsatisfactory to the claimants instead of thinking what an accurate answer was.[9]Mr Sinclair did take time to answer questions posed in cross-examination but in my judgment that was not in any sense an effort to mislead or avoid answers unhelpful to the claimant. Mr Sinclair came over as a serious minded and thoughtful individual seeking to give his evidence carefully and properly.[10]At one stage counsel explained to Mr Sinclair that he was going to criticise his evidence. This was a proper thing to do. Shortly afterwards Mr Sinclair felt unable to answer a question because he felt whatever he said would be criticised. In my judgment that was not the act of an unreliable witness at all. On the contrary it was a reflection of the fact that Mr Sinclair had been genuinely shocked and surprised by the criticism, because from his point of view it was wholly unfounded. I reject the defendants’ criticism of Mr Sinclair.[11]Tristar called Gary Howe. He is a polymer materials engineer with over twenty year’s experience in polymer technology with specific emphasis on the properties, design and durability of polymer materials and products. The cross-examination showed that the primary focus of Mr Howe’s work involved analysing product failure. In those cases the original design work had been done by someone else. Nevertheless I am satisfied that Mr Howe was able to assist the court in relation to product design. Mr Howe may not design products from scratch but his work involves considering product design and involves creating new designs by considering modifications to existing designs.[12]It was also suggested that Mr Howe was too much of a polymer expert. I do not agree. The case is about products made from polymers. The skilled person may well not have as much detailed polymer knowledge as Mr Howe but nothing turns on that.[13]Blue Gentian also served a witness statement from Kristian Haigh. This was a transparent attempt to rely on an unpleaded allegation of commercial success. The substance of the witness statement is even headed “Commercial Success of the XHose”. Mr Wyand did not cross-examine Mr Haigh and invited me to give the evidence no weight. I accept his submission. For commercial success to be relied on, it must be pleaded. It was not. Moreover CPR Practice Direction 63 contains specific rules about what must be set out in a schedule by the patentee if commercial success is in issue. No such schedule was provided. I have not been asked to consider whether the information in Mr Haigh’s witness statement could have stood in place of the schedule.[14]One minor point arising from Mr Haigh’s evidence is that it can be seen why this case is not proceeding in the Intellectual Property Enterprise Court. Substantial sums are at stake.

Person skilled in the art and common general knowledge

[15]Since claims 1 and 14 are concerned with garden water hoses, the relevant person skilled in the art will be a person concerned with the design and manufacturing of such products. There was no dispute about this.[16]The garden water hose designer will have a broad knowledge of manufacturing processes including those for plastics. They would know the techniques necessary to make a conventional garden water hose. They would know the sorts of products used as domestic garden hoses and other hoses suitable for domestic use.[17]Mr Howe’s view was that some companies manufacturing garden and domestic hoses are likely to have knowledge of more specialist hose applications. He gave examples of companies of that kind which were in existence, such as one which makes hoses for aerospace, medical and chemical applications. I am not satisfied that such wider experience or knowledge would be part of the common general knowledge of the person skilled in the art. It is not enough if some members of the relevant class have such knowledge. For it to be common general knowledge it must be generally known and generally regarded as a good basis for further action by the bulk of those engaged in the art (Beloit v Valmet [1997] RPC 489 pp 494-495)[18]The garden water hose designer will be well aware of existing hose types including PVC hoses reinforced with wound cord, tubular mesh or braid; rubber hoses; flat hoses constructed from a woven outer sleeve and an inner tube (which may be bonded to the outer sleeve or not); fire-hose type lay flat hoses typically made of PVC impregnated fabric braiding; and corkscrew coiled hoses.[19]It was common general knowledge that conventional hoses were difficult to store compactly and that such hoses had a problem with kinking, particularly when bent around a tight corner. One solution was to use a flat hose wound on a cassette type winder. However this sort of hose needs to be fully unwound before it can be used. Coiled hoses were another approach to solve the problem of compact storage but they are cumbersome.[20]A point arose on the skilled person’s understanding of the terms elastic and elastomeric. An elastic material is one which will deform elastically, in other words it will return to its original state when the applied force is removed. All elastomers are elastic but not all elastic materials are elastomeric. The paradigm example of an elastomer is rubber.

Construction

[21]The patent is not complicated and technical terms are not used. After describing the field of the invention in general terms, without reference to garden water hoses, the background section (paragraphs [0003] and [0004]) describes problems encountered with garden hoses. The problems identified relate to storage, such as the need for a reel or a container and relate to tangling, kinking and the weight of the hose. The patent states that it would be of great benefit to have a hose that is light in weight, contractable in length and kink resistant.[22]Following a lengthy section listing numerous items of prior art, a summary of the invention starts at paragraph [0022]. The detailed description section including figures 1 to 11 runs from paragraphs [0031] to [0063]. Although the specification is written in general terms and contemplates that other fluids apart from water could be used, the claims are clearly limited to a garden water hose. The skilled reader would understand that while the inventor no doubt has contemplated that his idea might be applicable in other fields, the invention claimed is directed to a garden water hose.[23]The invention is a hose with an inner tube inside an outer tube. The outer tube is secured to the inner tube only at the ends. The hose expands when connected to a pressurised water supply such as a water tap (faucet). The hose can expand longitudinally up to six times its length and width. On release of the pressurised water from the inner tube, the inner tube will contract. The inner tube could be made of rubber while the outer tube could be made of a non-elastic relatively soft fabric like woven nylon. Figures 9 and 5 and figures 10 and 6 show the invention in its unexpanded and in its expanded states:[24]In the unexpanded state, when not connected to water pressure, the inner tube is in a relaxed condition. There are no forces being applied to expand or stretch it. It has a relatively narrow diameter. In this state the outer tube is ruffled. When the hose is connected to a water supply and the supply turned on, water pressure expands the rubber inner tube. The inner tube will expand laterally (also referred to as radially or circumferentially) and will also expand axially (i.e. along the length of the hose). As the inner tube expands the wall thickness of the inner tube material reduces, in other words the material gets thinner. The radial expansion is constrained by the diameter of the outer tube. The axial expansion is constrained by the length of the outer tube. As the water inflates the inner tube, the hose expands lengthways and the ruffles of the outer tube unfurl until it is smooth (see fig 10). In this state the hose can be used. The hose contains a flow restrictor, which can be a small disc with a narrower bore than the bore of the hose.[25]When the water is allowed to flow along the hose the pressure inside will drop to some extent but there will be enough pressure remaining in the hose to keep it expanded in use (described in paragraph [0050])[26]The patent describes how the invention meets the objectives referred to. The savings in weight are addressed in paragraph [0053]. A conventional 50 foot garden hose is said to weigh 12 lb (5.4 kg) whereas an equivalent hose of the invention weighs 2 lbs (0.9 kg). The hose also does not contain any metal components such as springs along the length of the hose between the connectors.[27]The fact that the hose has a reduced length when there is no pressure in the inner tube is addressed in paragraph [0054]. An empty hose of the invention can be readily stored without kinking or becoming entangled as most conventional hoses do. The hose can be stored in a very small space. There is no need for a hose reel (paragraph [0055]).[28]Claim 1 is in this form: A garden water hose assembly comprising: an outer tube formed from a non-elastic and flexible material and no metal; an inner tube constructed from an elastic material, said outer tube and said inner tube each having a first end attached together by a first coupler and a second end attached together by a second coupler; said outer tube being unattached from said inner tube between said first and second couplers; said outer tube and said inner tube having a substantially shortened first length in a non-water flow contracted state with said outer tube extending about an outer surface of said inner tube in an undulating state and a substantially longer second length with said outer tube capturing said inner tube in an expanded state upon the application of water pressure to the interior of the elastic inner tube as water flows through the assembly, said inner tube having a larger wall thickness in the contracted state than in the expanded state ad the wall thickness decreasing as the hose moves from the contracted to the expanded state, and wherein a water flow restrictor is provided in or is connected to the second coupler.

A garden water hose assembly comprising:

[29]The thing claimed is a garden water hose assembly. These words raised the major debate on construction because the McDonald prior art is not what any normal person would call a garden water hose assembly. McDonald is an oxygen hose used for air crew in an aircraft. Tristar contended that the proper construction of “garden water hose assembly” in a product claim like claim 1 is that it covers any assembly which is suitable for use as a garden water hose assembly. In other words one has to look at the objective characteristics of the article concerned to know if it satisfies the claim and not, for example, at the intention of the inventor of an item of prior art. Blue Gentian contended that a garden water hose assembly was something which had the features normally associated with such an assembly in terms of fittings and dimensions (citing the workbench case Hickman v Andrews [1983] RPC 147).[30]The parties’ rival arguments are directed at different questions. I accept Tri-Star’s submission that the claim must be objective. In other words the focus must be on the characteristics of the product itself and not on subjective intentions either of the draftsman of the prior art or the user or manufacturer of the item. But Blue Gentian’s point is an important one as well. For the sake of argument consider a hypothetical tube arrangement which had all the physical characteristics of the claim which are set out after the word “comprising” but which, in the expanded state, had a tiny inner diameter which water could barely trickle along and a length of 10cm. It would not be within the claim. It would not be a garden water hose assembly. Something too big or too small which no skilled person would call a garden water hose assembly is not within the claim. The ambit of the claim and the scope of the words “garden hose assembly” are objective but they have to be determined in a realistic and fair way. Nevertheless I do not accept Blue Gentian’s submission that “normally” has to be read into the claim. An abnormal garden water hose assembly would still be a garden water hose assembly.[31]The remainder of the claim did not raise any major disputes.[32]The claim calls for an inner and outer tube. The inner tube is made of an elastic material while the outer tube is non-elastic but flexible and with no metal. There are couplers at each end. The outer tube not attached to the inner tube save at the ends. The tubes have a shortened first length in a “non-water flow contracted state” and a longer second length upon the application of water pressure. This is a functional limitation. The tubes must behave this way on the application of the sort of water pressure which would be encountered by a garden water hose.[33]The outer tube in its contracted state it described as “undulating”. Nothing turns on the ambit of that expression.[34]Finally the claim requires that the inner tube gets thinner as it expands and that there is a water flow restrictor. As to the latter, the specification is clear that anything which restricts flow can be employed (paragraph [0051]). The water restrictor is provided “in or connected to the second coupler”. A point arose on the ambit of “connected to”. The language used is broad and unspecific. Any connection will do as long as the flow restrictor restricts the flow.[35]Claim 14 is a claim to a method of transporting water. The claim has method steps and defines a water hose assembly which is to be used in the method. The assembly is defined in language essentially the same as in claim 1. The language is not identical but nothing turns on it and there is no need to set out that part of claim 14. The steps in the method are “introducing water into a garden water hose assembly”, “attaching the first coupler to a water supply” and “introducing water into the hose”.[36]In terms of its scope, claim 14 will still be novel even if, say, an aircraft oxygen line was found to be within claim 1 because it had all the characteristics of a garden water hose assembly. That is because claim 14 requires actually transporting water and connecting to a water supply.

Ragner

[37]Ragner describes the idea of hoses for carrying fluids which are retractable or extendable. The vast majority of the disclosure is focussed on two things. One is a garden water hose which expands in length in use as a result of water pressure. The other is a vacuum cleaner hose which works the opposite way round. In both cases the hoses consist of coiled springs and cover material. They are short when not in use and then extend when they need to be used. In the water hose case the extension is caused by connecting the hose to a water supply whereby the water pressure acts against the spring to extend the length of the hose. When the supply is turned off the spring contracts and the length of the hose reduces. In the vacuum case the hose is always connected to a vacuum line. When not in use the vacuum is high whereas in normal operation the vacuum is somewhat lower. As the vacuum reduces for normal operation the spring expands and the hose therefore extends in length.[38]An example of the water hose disclosed in Ragner is shown in figures 1A and 1B. The figures show hose connected to a garden sprinkler:[39]In paragraph [0054] Ragner explains that the hose body can be made with a thin-walled flexible material and both ends may be made with standard garden hose connectors. Ragner states that almost all water nozzles and sprinklers provide significant restrictions in the flow of water through them to increase the pressure within the hose sufficiently to cause it to extend as shown in figure 1B (above).[40]The detailed construction of the water hose is shown in figure 3A as follows:[41]This detail is explained in paragraphs [0056] and [0057]. The hose has a biasing spring (36) which can be integrated with the body of the hose or can be internal or external. In the example there is a cover material 32 on the outside and a cover material 34 on the inside. Vinyls or other polymers may be used to make the cover materials. The cover materials are flexible enough to allow the hose to expand and contract. Cover material 34 on the inside provides most of the pressure support. The spring acts as a support structure for the hose cover material 34 to keep it from expanding radially too far. Cover material 32 basically provides a cover for the spring and helps hold material 34 in place. Cover material 32 can be eliminated if cover material 34 is moulded around the spring coils sufficiently that cover 34 maintains its place on the spring. There is a sentence which states that in an alternative design the spring is allowed to slide freely with respect to the hose material.[42]This aspect of Ragner’s disclosure describes a garden water hose assembly which expands as a result of water pressure and contracts when the pressure is removed but it does not deprive claim 1 of the Blue Gentian patent of novelty. The spring loaded hose does not have an elastic inner tube coupled with a non-elastic outer tube. Claim 14 is novel for the same reason. Note that the “no metal” feature of the claims does not distinguish over Ragner since Ragner expressly contemplates springs made from plastic or composite materials (paragraph [0107]).[43]The validity arguments really start from passages in the disclosure of Ragner which I have not yet addressed. In places Ragner sets out a more general disclosure and includes various other suggestions. Although the abstract refers always to the spring, in places Ragner uses the wider expression “biasing means” (e.g. paragraph [0004], paragraph [0107]). The reader can see that Ragner has at least contemplated the idea of something other than a spring being the biasing means. At paragraph [0060] Ragner addresses the different pressure states and refers to the biasing force as including both the spring bias and any biasing caused by the material which makes up the hose. Ragner then states:
“In most designs the biasing of the flexible cover material of the hose is designed to be small compared to the biasing caused by the spring. However, in some designs, for special purposes, the cover material may represent a significant portion of the bias force. In fact, if desired, the hose may obtain all its biasing force from the cover material, and not need a separate metal or composite spring at all.”
[44]Similarly in paragraph [0107] Ragner refers to the materials from which the spring may be made but also states:
“[…] Even the hose cover material itself can be used as the biasing means if made of a resilient material that provides consistent restoring force. The biasing spring(s) can also be placed on the interior or exterior of the hose. Even elastic bands can be used to bias a linearly retractable hose. […]”
[45]There was a dispute about what sort of material would be understood as “resilient material”. I will return to the argument below. The reference to resilient material in paragraph [0107] is at least a disclosure of material which is elastic.[46]However although paragraph [0107] discloses the idea of making the cover material from elastic material, it does not expressly disclose the combination of an inner cover of elastic material and a non-elastic outer material. Tristar argued that idea of the combination would come from consideration of the fact that paragraph [0057] mentions an alternative design in which the spring can slide freely with respect to the cover material. They argued that this has the result that the two cover materials need not be bonded together save at the ends and so, since the skilled person would know that the hose had two unbonded cover materials, the elastic material could be inside or outside. The configuration in which it was inside, with a non-elastic material on the outside, was the practical one. Tristar relied on the evidence of Mr Howe but I am not convinced it was a matter for him since the issue is entirely down to the construction of Ragner. In any case he accepted that the combination was not directly revealed by Ragner.[47]I reject Tristar’s argument. The test for novelty is a strict one (General Tire v Firestone [1972] RPC 457). Ragner does not disclose, either explicitly or implicitly, a product of claim 1 of the Blue Gentian patent. There is simply no disclosure of the required combination. Nor could it be said to be the inevitable result of what Ragner does disclose.[48]At one stage I think Mr Wyand argued that claim 1 of Ragner, which refers only to biasing means, was broad enough to cover the invention claimed in the Blue Gentian patent. I do not have to decide that. Even if it is correct it is irrelevant.[49]Tristar’s obviousness case was based on these same passages. Mr Howe’s opinion was that the claims of the Blue Gentian patent were obvious in the light of Ragner. Blue Gentian did not agree and Mr Sinclair’s opinion was to the contrary. Over Ragner, if claim 1 is obvious then claim 14 will be obvious too.[50]The structured approach to the assessment of obviousness was set out by the Court of Appeal in Pozzoli v BDMO[2007] EWCA Civ 588, [2007] FSR 37. It is:(1) (a) Identify the notional person skilled in the art; (b) Identify the relevant common general knowledge of that person;(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?[51]I have identified the skilled person and the common general knowledge above. I have also construed claim 1 and since neither side advanced an inventive concept for that claim, I will not invent one. The key difference between Ragner and claim 1 is the lack of the combination of an elastic inner tube coupled with a non-elastic outer tube.[52]Tristar contended that the skilled person would be led inexorably to the hose structure of claim 1 from Ragner. His view was that based on the disclosure that the elasticity required for elongation and retraction of the hose can be achieved by the cover materials without the use of the coiled spring, he considered it likely that a garden hose designer would make an internal layer from an elastomeric cover material and combine it with a constraining outer layer. The inner layer would need to be impermeable to water but the outer layer could be a material such as the fabric used on flat hoses known in the common general knowledge. To operate correctly the inner and outer layers would need to be partially unbonded along their length. For production simplicity the inner and outer layers would be likely to be left completely unbonded and only joined at the ends. This would lead to a hose as claimed in the Blue Gentian patent. It was obvious.[53]In cross-examination Mr Howe accepted that conventional hoses were difficult to store compactly and neatly and that problems of kinking and storage have existed for a very long time. He also agreed that the invention disclosed in the Blue Gentian patent does solve the problems it claims to solve. I accept that element of his evidence. The claimed garden water hose assembly is an improvement on known garden hoses in that it is light in weight, contractable and therefore easier to store, and also kink resistant. These are real advantages for a garden hose product.[54]Mr Howe also accepted that the combination of inner and outer tubes in the invention was an important part of what makes the invention solve these problems. I accept that evidence too.[55]A different aspect of Mr Howe’s cross-examination was the following. He accepted that he was aware of the patented construction before he reached his opinions about obviousness over the cited prior art and also accepted that he had the patented configuration in mind when he was describing the changes to be made to the prior art.[56]Blue Gentian contended that this was proof that Mr Howe’s evidence was tainted with hindsight and that the fact Mr Sinclair had been instructed by being presented with the prior art before seeing the patent was a reason for preferring his opinion over Mr Howe’s. I do not accept this submission. Mr Howe’s views were obviously expressed with the claimed features in mind otherwise the evidence would not have focussed on the relevant issues. The substantive points may or may not involve hindsight but I do not accept that this cross-examination is an indication either way. I see no value in the difference between the manner in which Mr Sinclair was instructed as opposed to Mr Howe. Calling expert evidence is not an experiment to find out the opinions of a statistically significant sample of persons skilled in the art, as if the expert is an exemplar of that a class. Their role in relation to obviousness is to bring to bear their technical expertise to explain the technical issues arising and the attitudes and approach of the person skilled in the art in the relevant circumstances.[57]Mr Sinclair’s view was that the invention was not obvious over Ragner. Employing a resilient material as the biasing means and therefore replacing the spring was unfeasible because the spring’s function is not only to act as the biasing means. The spring also acts as the support structure for the cover material. Although a resilient material will be able to expand and retract longitudinally, without the spring there is nothing to restrain such a cover material from expanding radially.[58]Mr Sinclair also drew attention to the fact that paragraph [0060] refers to special purposes. He thought that did not include use as a garden hose.[59]In my judgment claim 1 is not obvious over Ragner. Tristar’s argument is an example of the familiar step by step approach identified in Technograph [1972] RPC 346 which is unfair to inventors.[60]The skilled person would be interested in Ragner since it is concerned at least in part with garden hoses. The main disclosure of Ragner is a spring based hose extendable and retractable hose. The reader would see the two references to the cover material providing the biasing force in paragraph [0060] and [0107]. The skilled person would not dismiss these passages and would consider them. They might think that using an elastomeric material as the cover material was an idea worth considering further. However there is nothing in Ragner itself which teaches that two distinct cover materials would need to be used in that context.[61]The function of the outer cover material 32 disclosed in the document is to cover the spring and hold inner cover 34 in place on the coils. If there is no spring, there is no need for the outer cover material. With hindsight knowledge of the invention we can see that replacing the spring with an elastomeric cover material might create a problem because there will be nothing to restrain the radial expansion of the inner tube. However I do not think it would be obvious to employ a second, inelastic cover material outside the putative elastic inner material to restrain its radial expansion. The function of that outer layer would be different from the outer cover in Ragner.[62]Moreover it seems to me to involve a further element of hindsight to combine into this reasoning the aspect of paragraph [0057] which discloses an alternative design in which the spring can slide freely with respect to the hose material. The disclosure of sliding freely is the basis for the argument that Ragner implicitly discloses the idea of using two cover materials which are not bonded together along their length. However this teaching about sliding freely and the necessary implication of it has nothing to do with taking forward the reference to using the cover material as the biasing means. They are not linked by Ragner and I see no reason why it was obvious to link them.[63]For these reasons I find claim 1 is not obvious over Ragner.[64]I will mention some other points which arose in argument.[65]Although Mr Sinclair did not suggest it, Blue Gentian in cross-examination advanced a further option for the skilled person. Exhibit D included a white plastic tube which was corrugated and so made to be springy albeit it was not made from an elastomer. It is elastic but not elastomeric. The experts did not agree whether it was made from a resilient material. I preferred Mr Howe’s evidence on that topic. The skilled person will not be as much of a polymer specialist as Mr Howe but nevertheless the exhibit is not an example of a hose cover made from what the skilled person would regard as a resilient material. The resilience comes from the geometry of the tube and not the material.[66]Blue Gentian submitted that all the elements of the claimed invention had been available for many years. That is so but it is irrelevant when considering inventive step over Ragner. Ragner discloses a particular combination of elements and the idea of an extendable hose. There is no evidence that the combination of elements in Ragner was known or was part of the common general knowledge beforehand.[67]Blue Gentian pointed out that Ragner was 8 years before the priority date and put to Mr Howe that if the invention had been obviousness over Ragner, Mr Ragner would have launched a product like the X-hose in that 8 year period. Debating whether the invention was obvious to Mr Ragner himself does not help. It is apparent that the inventors of Ragner were focussed on using a spring based hose. That may explain why they did not make a product like the one in issue in this case. But it does not assist in deciding what is obvious over what has been made available to the public in the Ragner document, which contains the passages focussed upon.[68]Blue Gentian also focussed on the fact that paragraph [0060] links the idea of using a cover material to provide the biasing force as for “special purposes”. They argued that special purposes meant purposes other than use as a garden hose. Both experts gave evidence about this but it is not a matter for them. The language is ordinary English.[69]As a matter of construction of Ragner, I reject Blue Gentian’s case on special purposes. The reader would not think it referred to purposes other than use as a garden hose. It is generalised language which would be just as apt to refer to special purpose garden hoses as hoses for other purposes. The reader would not think Ragner was teaching that the idea of hoses without springs was confined to applications other than for the garden. Indeed paragraph [0107] has the same disclosure but no reference to special purposes.

McDonald

[70]McDonald describes a way of providing oxygen to crew on an aircraft. There is a mask and a hose carrying the oxygen from the aircraft supply to the mask.[71]A question of principle arose about how the document was to be approached. The document is clearly not addressed to a garden water hose designer. It is addressed to a manufacturer of equipment for aircraft. The document takes a number of things for granted. It does not explain how an aircraft mask works no doubt because the draughtsman of McDonald assumed that the reader would understand how such masks work as part of their common general knowledge. In the same way it does not explain how the oxygen supply in an aircraft works and does not for example explain the flow rate or pressure of such an oxygen supply. There is no statement in McDonald about the diameter of the hose and the drawings are not drawn to scale. Blue Gentian submitted that aircraft oxygen hoses were narrower than conventional garden water hoses. The draughtsman of McDonald assumes the reader understands these things. The fact that a garden water hose designer may not understand them cannot reduce what McDonald has contributed to the state of the art.[72]It seems to me that for the purposes of construing the document in order to assess what it has made available to the public, it would be wrong to read that document in any other way than through the eyes of the person to whom it is addressed. In other words, at least in order to test whether the claims of the Blue Gentian patent are novel, what is disclosed by McDonald has to be assessed by considering how it would be understood by a manufacturer of equipment for aircraft. Therefore the fact that a garden water hose designer may not know how a mask works or how an aircraft oxygen line works is irrelevant. That lack of knowledge on the part of a garden water hose designer does not mean that McDonald is not an enabling disclosure. Mr Wyand for Tristar accepted that and Mr Waugh for Blue Gentian did not dissent. Mr Wyand submitted that once the disclosure had been construed in this way, the question (for novelty) was whether that fell within claim 1.[73]When it came to obviousness however both sides agreed that McDonald had to be considered from the point of view of a garden water hose designer. Since that was common ground I will approach the matter that way.

What does McDonald disclose?

[74]The hose is described as being self-elongating. The hose has an inner tube and an outer sheath. In his report, Mr Sinclair described how the hose in McDonald is supposed to work in the following terms: The inner tube is made of elastomeric material which will expand in length when gas pressure is applied inside it. The longer outer, tube or sheath is made of a non-expandable, non-elastic material which is pleated along its length and into which the inner tube is assembled and attached at its ends. As the inner tube expands, the outer non-elastic tube prevents radial expansion of the inner tube whilst allowing axial expansion of the inner tube. This causes the pleated form of the outer tube or sheath to straighten out and therefore lengthen together with the inner tube which remains inside and attached to the outer tube. When the gas pressure is reduced inside the inner tube, both tubes reduce in length, such that the hose can be stored compactly.[75]Therefore the hose in McDonald is supposed to expand and contract in the same way as the hose of the Blue Gentian patent and uses the same sort of combination of an elastic inner tube and a non-elastic outer tube to achieve this. However Mr Sinclair’s view was that it was very unclear from the specification of McDonald how the assembly described operates in practice. The problem relates to the handling and stowage of the assembly and the way in which the pilot uses it in practice. To explain this one needs to look more closely at McDonald.[76]Figures 1 to 3 of McDonald are as follows:[77]The hose itself can be see in figures 2 and 3 with the pleated outer sheath 36 made of fabric and the inner tube 30 made e.g. from silicone rubber. The hose has threaded fittings 32 and 34. Fitting 32 attaches to the mask while fitting 34 attaches to a box mounted gas fitting which is not shown. The mask includes a regulator (22).[78]Figure 1 shows the arrangement with the hose stowed in a box. The box has a hinged cover 44. The stowage of the hose in the limited space available on an aircraft flight deck and the need to be able to put on the mask quickly (in 5 seconds or less) are important elements of McDonald’s disclosure (e.g. paragraph [0004] – [0007]). In the event of cabin depressurisation the pilot grasps the mask and pulls it up. This causes the hinge cover to open and facilitates easy removal of the mask. The pilot pulls the mask to his or her face. During mask deployment the hose assembly self-elongates from a relaxed condition (e.g. Fig 2) into a fully extended condition (fig 3). This gives the pilot an additional length of hose to facilitate donning of the mask. The relaxed condition facilitates easy stowage of the mask assembly both originally and after use. Given that the hose is secured to a connector in the box it will retract itself and the mask back into the box.[79]Mr Sinclair’s opinion was that it was very difficult to understand how this actually works in practice because the hose would get tangled up inside the box if it expanded while it was still inside and it was very unclear how the hose could retract itself back inside the box again. He annexed a drawing to his report to illustrate the problems. He felt there was no explanation how the gas flow would be initiated and no explanation how the regulator in the mask worked. He did not know if it would restrict the flow of oxygen. He was cross-examined on these views but maintained them. I have addressed the defendants criticism of Mr Sinclair already. The defendants produced their own version of Mr Sinclair’s box drawing to show that a box configured a different way would not present the same difficulties.[80]Mr Howe was cross-examined about the deployment of the hose in McDonald. Blue Gentian contended that he conceded that the hose was to be pulled to the maximum length it could reach before the airflow started and that this bore out their case that it would not work. However I understood Mr Howe’s evidence on this to be nothing more than saying that the pilot would pull the hose to the maximum length it could reach before it was expanded by the air pressure. That evidence did not support Blue Gentian’s case on this issue.[81]Taking the evidence from both witnesses and considering McDonald itself, I find that the skilled reader would be concerned that the proposal had not been thought through. The deployment and retraction might work but it is not explained clearly. It would at least require some careful thought and might well not be practical.[82]However it is important to keep these problems in perspective. The manufacturer of aircraft equipment would not have any difficulty understanding how the hose itself was supposed to work. They would understand how the hose was supposed to expand due to air pressure acting on the rubber inner tube. They would believe that the mask restricted gas flow. They would not be put off from embarking on making the hose in the first place just because they were not sure how the box idea would work. A manufacturer of aircraft equipment would be able to make the hose described in McDonald with a suitable aircraft oxygen mask which would expand using the air supply in an aircraft. There is really no evidence to the contrary. I reject the argument that there is no enabling disclosure in McDonald.[83]The question is then whether McDonald renders claim 1 lacking in novelty. There are three questions, whether McDonald is a garden water hose assembly at all, whether the functional features which define the properties of the inner tube in a contracted and expanded state based on water pressure are satisfied and whether there is a flow restrictor as called for in claim 1. I will deal with them in reverse order. To decide these issues one needs to consider what would happen if water was introduced into McDonald’s arrangement.

Flow restrictor

[84]There is nothing in the flow restrictor point. In my judgment, from the point of view of a manufacturer of aircraft equipment the mask including a regulator will act to restrict oxygen flow. I accept that it would restrict water flow too if water was introduced along the hose. Since it is connected to the coupler at the end of the hose, the McDonald arrangement satisfies the last element of claim 1. McDonald discloses an assembly wherein a water flow restrictor is provided in or is connected to the second coupler.

Functional features

[85]There was a debate about the diameter of the hose which would be made. Blue Gentian’s counsel produced an aircraft hose and mask such as is used to supply emergency oxygen for passengers. It has a much narrower diameter (about ½ cm) than an ordinary garden water hose. However it was not exhibited by a witness and is not a mask for air crew. Neither Mr Howe nor Mr Sinclair were in a position to say what the actual diameter of a hose which would be made by a manufacturer of aircraft equipment following McDonald would be. It was not their area. I doubt the hose in McDonald is as narrow as the example produced by counsel. Doing the best I can on the evidence I find that the likely diameter of the hose in McDonald is somewhat narrower than an ordinary garden water hose but not so narrow as to be outside the range of possible diameters of garden water hoses.[86]There was a dispute between Mr Howe and Mr Sinclair about what would happen if water was sent down the McDonald hose. Mr Howe’s view was that McDonald would expand if filled with pressurised water. Mr Sinclair was concerned that the properties of water and gas were not the same (water being incompressible and heavy whereas gas is compressible and light). There was some rather exiguous evidence about what the pressure of oxygen might be in aircraft and what the low rates for airlines might be. This evidence was an illustration of the difference between the perspective of a manufacturer of aircraft equipment as opposed to a garden water hose designer. The latter would not have that information as part of their common general knowledge whereas the former would.[87]I preferred Mr Howe’s evidence on this point. I find that the hose and mask assembly which a manufacturer of aircraft equipment would make reading McDonald would expand in the manner required if it was connected to an ordinary domestic water supply and would retract again if disconnected.

Garden water hose

[88]I have found that the hose in McDonald satisfies all the elements of claim 1 after the word “comprising”. I am left with the issue of whether it is a garden water hose assembly. In my judgment it is not, for the following reasons.[89]First, the assembly I am considering is the hose plus the mask because that is the assembly which would have the flow restrictor called for by claim 1. No-one would call such an assembly a garden water hose. With the mask attached, it is an aircraft oxygen hose. An assembly with a mask is not suitable for use as a garden hose.[90]Second, considered without the mask, the hose of McDonald on its own has no apparent flow restrictor. I am not satisfied that this assembly, consisting of the hose alone, would expand if connected to a water supply. There is nothing to restrict the flow of water. I am not satisfied the geometry of the hose itself would restrict the flow sufficiently (leaving to one side whether such a configuration would be within the claim in any event).[91]Third I am not satisfied the fitting on the free end of the hose (item 34) which a manufacturer of aircraft would use would be one which actually fits any domestic garden water supply. There is no evidence that it would. Tristar contend that a person who wanted to connect it to a water supply would be able readily to make an adaptor. That may be but for the purposes of novelty that is irrelevant. A suitable fitting is not disclosed and is not inevitable.[92]Accordingly I find claim 1 is novel over McDonald.

McDonald - inventive step

[93]Following Pozzolli, I have already addressed steps (i) and (ii). The question is whether the differences from claim 1 are obvious. As mentioned above I am now to consider McDonald as if it is presented to a garden water hose designer. In law, the skilled person is taken to read the document with interest (Asahi v Macopharma [2002] EWCA Civ 466). In physical terms the differences are that the hose does not have fittings suitable for a garden water hose and no specific flow restrictor save for a mask. However although these are small points in one sense, to arrive at a product within the claim the skilled person has to have decided to make a garden water hose in the first place.[94]Tristar submitted the invention was obvious because the garden water hose designer would immediately recognise that the hose structure could be used and would work in a garden water hose. McDonald describes the hose at a high level of generality and the skilled person would have no difficulty recognising that the idea could be applied to garden water hoses and would be of use in meeting the commonly recognised problems of storage and weight. The use of suitable fittings would be an inevitable part of adapting the concept to garden water hoses and would present no difficulty. Their case was supported by Mr Howe.[95]Tristar submitted that Mr Sinclair accepted that McDonald would be of interest to the garden water hose designer if he was presented with it. However that is not how I understood his evidence (at Day 2 p155 ln5 to 156 ln25). Mr Sinclair’s view was that the garden water hose designer would be interested if they thought McDonald did explain how a hose could replace itself back in the box but he thought the skilled person would not understand how it did that. I agree. Just as a manufacturer of aircraft equipment would be concerned that the proposal had not been thought through and might not be practical as I have held above, so a garden water hose designer would have the same concern.[96]Mr Sinclair’s view was that the garden water hose designer would discard McDonald. They would not consider it could be suitably used as a garden water hose. It does not appear to be relevant to the normal use of garden hoses as conveyors of water under pressure and there is no incentive or obvious benefit to modify the assembly.[97]Mr Howe’s view was that although the end fittings in McDonald itself would not be suitable for the practical use of the hose with water, adaptation of the end fittings to allow the hose to be used as a garden water hose was a simple process and was obvious. I accept that if the skilled person had decided to adapt the couplings to connect to a water supply then doing it would be obvious and simple. However I do not accept that this is sufficient to show that claim 1 is obvious over McDonald. To decide to adapt the fittings the skilled person must have already decided to adapt McDonald to make a garden water hose.[98]Although a garden water hose designer would understand at a conceptual level how the hose in McDonald is supposed to expand in length as a result of gas pressure, I accept Mr Sinclair’s evidence that it would not be immediately apparent to a garden water hose designer that the hose would be suitable for use as a garden hose. He said that a garden water hose designer would see McDonald as being small bore, gas-actuated and without a valve. I agree. The garden water hose designer does not know how the mask and regulator works and they do not know what the gas pressure or flow rate would be. Although that information would be readily available to a manufacturer of aircraft equipment, it is not part of the common general knowledge of a garden water hose designer. I have accepted that a hose made according to McDonald by an aircraft equipment manufacturer would in fact expand under domestic water pressure but I am not satisfied this would be obvious to a garden water hose designer reading the document.[99]Tristar submitted that the skilled person would recognise the principle of hose construction exhibited in McDonald and see that it could be adapted with choice of appropriate ready to hand materials, to the field of garden hoses. However in cross-examination Mr Sinclair was doubtful that a practical hose designer would use McDonald as the basis for a new product. I think that is right. Details will be important to a product designer.[100]I think a garden water hose designer presented with McDonald and reading it with interest would be interested in the space saving quality of the idea but the designer would also see a document which was not addressed to him or her. The teaching is concerned with something used in an environment and context a very long way from garden water hoses and subject to considerations which the garden water hose designer would know they knew little about. For all they would know the idea is only realistic because of specific details relating to aircraft oxygen supplies and oxygen masks. They would not be confident the idea would be practical if applied to a garden water hose. Although it is undoubtedly the case that a person skilled in the art could arrive at a product within claim 1 if presented with McDonald, given that the hoses function in the same way, I am not satisfied the unimaginative skilled person working without hindsight would do that. I find that claim 1 is not obvious over McDonald. The same therefore follows for claim 14.[101]I will mention a further point which arose in argument. Blue Gentian provided me with a copy of a Patent Office opinion that the European equivalent of the Blue Gentian patent is not obvious over McDonald. I have not taken it into account and have not read it (save for the extract in Blue Gentian’s closing). I mention it here because the quoted extract shows that the examiner does “not believe that [McDonald] can rightly be considered relevant to the state of the art as it is a breathing apparatus for a pilot”. I sympathise with this sentiment but it appears to suggest that McDonald is not even to be put before a person skilled in the art at all for the purposes of testing obviousness. I believe that is not the law.

Conclusion

[102]I find that the patent is valid. I will give judgment for the claimants.

Cited in 3 later judgments