Inventiveness for expandable hose proves too much of a stretch

John Hull & Sarah-Jane Crawford | May 2019

E Mishan & Sons (trading as Emson) v (1) Hozelock Limited, (2) Blue Gentian LLC, (3) Telebrands Corp

This recent decision from the UK High Court concerns European Patent (UK) No. 2657585 and UK Patent No. 2490276, which both relate to an expandable hose assembly.  Among other issues, the judge considered public prior use, and provides a useful summary of the UK case law on the issue of when a public disclosure is public.

Emson claimed that two versions of an expandable hose (Superhoze 1 and Superhoze 2) produced by Hozelock infringed both patents. Hozelock denied infringement and counter-claimed for invalidity for lack of inventive step. 

Emson was the exclusive licensee of the two patents, with Blue Gentian being the original patent proprietor and Telebrands being the current proprietor. 

In the UK, Emson and Blue Gentian had previously successfully sued the seller of an expandable hose for infringement under UK276 in Blue Gentian LLC v Tristar Products (UK) Ltd [2013] EWHC 4098 (Pat) (reported January [2014] CIPA p.34), which was upheld by the Court of Appeal in [2015] EWCA Civ 746 (reported August/September [2015] CIPA p. 30-31)

Hozelock alleged invalidity over two items of prior art, Ragner and McDonald. These were the same documents argued in the previous Blue Gentian v Tristar cases. Hozelock also alleged invalidity based on public prior use by Mr Berardi, the inventor.

In relation to the public prior use, a number of videos of Mr Berardi were taken by his wife to document the process of reducing the invention to practice. Most of these videos were taken indoors, but some were taken outdoors on different days. Hozelock provided reconstructions of those videos attempting to show what might have been visible to a skilled person standing on the road.

The judge found that it was not permissible to combine public disclosures across more than one day as this would constitute impermissible mosaicking of information. Therefore, he considered that there was no sufficient disclosure of the invention.

In addition, the judge considered whether the prior use was actually public. Mr Berardi lived on a quiet cul-de-sac and it was argued that it would have been obvious if someone had been watching him. It was further argued that he was sufficiently aware of patent law that he should not tell anyone about his invention and that he would have taken the hose into the house if he was being watched. The judge followed this point and found that on the balance of probabilities, Mr Berardi would have packed up his equipment. Therefore, the judge concluded that it was not correct to say that Mr Berardi’s actions could have been observed, even in theory. As such, he found that the disclosure was not public.

In relation to the prior art documents, Nugee J found that the claims were inventive over the disclosure of Ragner, but were not inventive over McDonald. The judge noted that this was at odds with the earlier decision, but stressed that the decision was based on the evidence before him in this case and not the evidence in the previous case.

McDonald related to a self-elongating hose for supplying oxygen to an oxygen mask for aviation crew. The judge had found that the skilled person was not just a garden hose designer but a designer of hoses in general and therefore that the skilled person would be aware of McDonald and would read it with an interest in how this novel type of hose worked.

The differences between the disclosure of McDonald and the relevant claims were found to constitute steps which were obvious to the skilled person.

Hozelock did not dispute that the Superhoze 1 product infringed claim 1 of EP585 but argued that neither product infringed the other relevant claims as both products had inner and outer tubes that were attached at the joiners and therefore the outer tube was not unattached from the inner tube between the couplers, as required by claims 1 and 14 of GB276 and claim 2 of EP585. In addition, Hozelock argued that Superhoze 2 was non-elastic, which was required by all claims.

The judge followed the approach set out in Actavis. He found that Superhoze 1 and Superhoze 2 were not “unattached” between the couplers on a normal interpretation of the claims. However, following the Actavis questions, he found that the Superhoze products achieved substantially the same technical result in substantially the same way and that there was no reason to exclude these from the scope of protection.

The judge found that the outer tube of both Superhoze 1 and Superhoze 2 were non-elastic. He also considered that if he were wrong on a normal infringement of the term “non-elastic”, the Superhoze 2 would still be considered to be an immaterial variant that would infringe the relevant claims.

Therefore, the judge found that Superhoze 1 and Superhoze 2 infringed all of the relevant claims.

The judge also considered a point on priority against claim 1 of EP585. He found that this claim was entitled to the same priority date as the other claims relied upon.

In conclusion, the judge found that the patents were invalid for lack of inventive step over McDonald. Had they been valid, they were all entitled to a priority date of 4 November 2011 and Superhoze 1 and Superhoze 2 would each infringe claims 1 and 14 of GB276 and claims 1 and 2 of EP585.