Patent

William Mark Corporation v Gift House International Ltd: Intellectual Property Enterprise Court: 22 August 2014

Infringement – Validity of patent – First claimant owning patents for invention ‘flying shark’ – Second claimant being exclusive licensee of first claimant in respect of both patents

The first claimant devised and marketed toys and owned two UK patents for an invention entitled ‘flying shark’. The first patent, UK patent no. GB 2482275, was an improvement on neutrally buoyant flying toys, namely fish (patent 275). The specification of patent 275 referred to two items of prior art, including a US patent, ‘Kinoshita’, which disclosed a flying toy shaped as a fish with a reciprocating tail that provided forward motion.

A further item of prior art, a US patent, ‘Slater’, disclosed an improvement on a full-sized airship. Claim one of patent 275 comprised seven integers (see [11] of the judgment). Integer (vii) concerned a flying toy wherein the tail assembly was coupled to the body portion via an ‘elastic element’, such as to allow application of a compressive force to the body. Claims two to eight were all dependent on claim one and claim nine was the only other independent claim (see [17] of the judgment).

The second patent, UK patent no. 2483597, was primarily concerned with the movement of the weight to control pitch (patent 597). Patent 597 comprised four claims (see [23], [24] of the judgment). In particular, claim two disclosed that the toy had a moving surface that was configured to move side-to-side for forward propulsion of the toy. The second claimant was the exclusive licensee of the first claimant in respect of both patents.

The defendant devised and imported toys for sale in the UK; in particular, flying fish known as ‘mega fliers’. The claimants brought proceedings against the defendant alleging infringement of both patents. The defendant did not dispute that its product fell within claims one and two of patent 597.

The issues before the court were whether: (i) the defendant’s products had an ‘elastic element’ within the meaning of claim one of patent 275 and, therefore, whether the importation and sale of ‘mega fliers’ by the defendant infringed patent 275; (ii) patent 275 was invalid on the ground of lack of inventive step; and (iii) patent 597 was invalid on the ground of lack of inventive step.

The court ruled: (1) On the evidence, the defendant’s product fell within claim one of patent 275, but not claims four or eleven. It was not in dispute that the defendant had sold the products complained of, so both patents had been infringed. The defendant’s toys had plastic strips and they were sufficiently elastic to serve as elastic strips, as required by the claims of patent 275. Further, they served the two functions required by the claims (see [34], [97]-[99] of the judgment).

(2) All the claims of patent 275 were valid. Claim one was not obvious over Kinoshita and was not obvious to a skilled person who had read ‘Slater’. It also followed that none of claims two to eight lacked inventive step over ‘Slater’ (see [47, 64, 65 of the judgment).

(3) Claims one, three and four of patent 597 were invalid, but claim two was valid. Claim one was obvious in relation to ‘Slater’. Since it had not been alleged that claims three and four were independently inventive, they also lacked inventive step.

However, in respect of claim two, the defendant had not established sufficient reason for the court 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, namely a tail, had been obvious. Claim two, therefore, did not lack inventive step (see [90], [95], [98] of the judgment).

Douglas Campbell (instructed by Geldards LLP) for the claimants; Dominic Hughes (instructed by Berry Smith LLP) for the defendant.