Neutral Citation Number: [2008] EWCA Civ 868
Case No: A3/2007/2296

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (INTELLECTUAL PROPERTY)
HIS HONOUR JUDGE FYSH QC
HC 05C No 00847
Royal Courts of Justice
Strand, London, WC2A 2LL

Date: 30/07/2008

Before :

THE RT HON LORD JUSTICE JACOB
THE RT HON LORD JUSTICE WALL
and
THE HON MR JUSTICE LEWISON
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Between :

	(1)	Handi-Craft Company
(2)	New Vent Designs Inc	Claimants/Part 20 Defendants
(Appell-ants)	
	- and -		
	(1)	B Free World Ltd
(2)	Yasmin Berkovitch
(3)	Mothercare (UK) Ltd
(4)	The Boots Company plc
(5)	Baby B Free Ltd
(6)	Action Trading Ltd
(7)	Amikam Berkovitch
(8)	Piero Alberici
(9)	Tamir Berkovitch
(10)	TTY General Trade Lines Ltd (an Israeli Company)
(11)	Dvora Berkovitch
(12)	Tamir Tirosh	Defendants and Nos 1, 5 and 6 also Part 20 Claimants (Defendants Nos 1,5 6, 7, 8, 10, 11 and 12 are the 
Respond-ents)	

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Iain Purvis QC and Anna Edwards-Stuart (instructed by Withers LLP) 
for the Appellants
Dominic Hughes (instructed by Short Richardson & Forth LLP) 
for the Respondent Defendants (1), (7), (10), (11) and (12)
The other Respondent Defendants did not appear and were not represented

Hearing date: 22 July 2008
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Approved Judgment

Lord Justice Jacob: 
1.	The patentees, Handi-Craft, appealed from that part of the judgment of HHJ Fysh QC sitting as a Deputy Judge of the Patents Court whereby he held that the patent in suit, EP (UK) 0 845 971, was partially invalid, [2007] EWHC B10 (Pat).   We were not concerned with the many other issues he had to consider.
2.	The only claims under attack were 1-7. The Judge ordered that the patent be revoked unless it was amended to the satisfaction of the court.  We, likewise, were concerned only with claims 1-7.  In fact we were concerned only with claim 1 since it was common ground that claims 2-6 stand or fall with it.
3.	The Judge held the disputed claims invalid by reason of obviousness over a US patent 5,449,098, Offman, which was admittedly published shortly before the relevant priority date of the patent.  The Judge rejected other attacks on the patent and also found that it covered the defendants’ device.  Those findings were the subject of a Respondent’s notice – which in the event we did not need to consider.
4.	This was because in oral argument we proceeded to hear the issue of obviousness over Offman first.  Having done so we indicated to the parties that the appeal would be dismissed.    These are my reasons for that decision.
The Patent in suit
5.	This is for a “nursing bottle” - what the English call a “baby bottle”.   It proceeds on the assumption that colic is caused by the baby having to suck too hard against the partial vacuum which will develop in an unvented bottle:
As the baby sucks harder on the nipple [English, “teat”] ambient air inadvertently and inevitably enters the mouth and stomach [4].
6.	The patent goes on to acknowledge that there have been “many attempts to provide a nursing bottle with an air vent”.   Prior art devices which try to do this are acknowledged but it is said they leak and accordingly it is said that “a demand still exists for a nursing bottle which prevents the formation of a partial vacuum inside the bottle during nursing and yet resists spills.”
7.	I pause there to emphasise that this is an acknowledgement of a known, indeed well-known, need to find a way of venting a baby bottle.  Mr Iain Purvis QC, for the patentees, fairly acknowledged that that need was part of the common general knowledge of a person skilled in the art of baby bottle design.   And there was indeed already on the market a well-known venting baby bottle called the Avent which let air in just above the teat.
8.	I turn back to the patent. I can summarise the idea by reference to fig 15 of the patent, which most corresponds to the patentee’s commercial article, known as “Dr Brown’s” bottle (the Judge describes it in more detail uncontroversially at [51]-[63]):

9.	When the bottle is inverted the liquid in the inner tube falls to the widened “reservoir” above the neck.   The upper end of the “vent tube” 630 is above the liquid in the reservoir.  Not shown in this picture is a small hole in the top of the vent tube.   The tube communicates to the outside air (this is not entirely apparent from this figure alone – other figures make this apparent).   So when the baby sucks liquid out, air enters the top of the bottle via the vent tube.  A partial vacuum is not created.
10.	Claim 1 of the Patent (omitting the numerical references and broken down into convenient elements) reads:
A nursing bottle comprising:
i. a container adapted to contain a quantity of liquid, an air passage and nipple, characterised in that the bottle further comprises:
ii. a reservoir tube having a proximal first end and an open second end,
iii. the second end of the reservoir tube projecting sufficiently downwardly so that when the bottle is inverted, the second end of the reservoir tube is above the level of the liquid trapped in the inverted bottle,
iv. the air passage between the outside of the bottle and a point in the reservoir tube above the level of the liquid trapped inside the reservoir tube when the bottle is inverted,
v. the air passage and the reservoir tube allowing atmospheric air to flow into the bottle to prevent the formation of a vacuum within the bottle when liquid is withdrawn.
11.	I turn to Offman.  It is for a soft drink bottle, providing an inner device for preventing glugging – which is caused by a partial vacuum developing when liquid pours out.  Fig. 2 looks like this:

12.	Just as in the Patent in suit there is an internal pipe and a reservoir which fills from that pipe when the bottle is inverted.   The air at the top of the bottle communicates directly with the outside atmospheric air via an inlet tube which opens out above the liquid level.  So there is no partial vacuum at the top.   The Judge describes it in more detail at [111-120].
13.	Offman describes how his device works at 237-54:
As seen in Fig. 2, as a result of the displacement of fluid from the bottle, a partial vacuum is created in the air cavity above the fluid, 4.  Air, 5 is forced into the air inlet hole, 12, and flows through the unfilled end of the reservoir, 13, of the reservoir 7.  The air then flows, 10, up the tube 9, to the air cavity above the fluid, 4.   This air creates a pressure on top of the fluid, 14.  The tube, 9, is affixed to the end of the reservoir, 7, at an angle, such that when the bottled is inverted, the open end of the tube, 15, is located at the corner which contains air, 14, thereby allowing the air from outside the bottle, 5, to combine with air in the corner, 14.   Thus, none of the liquid can flow out of the bottle through the tube, 9.  Only the small amount of the liquid which had already been within the tube when it was standing upright will now flow down to the top of the reservoir, 23, and remain there, below the level of the air inlet tube, 12, allowing a free passage for incoming air.
14.	Mr Purvis conceded, as he had to, that Offman works in exactly the same way as the bottle of the patent in suit.   The only reason that claim 1 is not anticipated is because of the limitation to “a nursing bottle” and, which amounts to the same thing, to the requirement for a “nipple.”
15.	The Judge, in finding claim 1 obvious, said:
[122]	One thus quickly arrives at the last stage of the Windsurfing enquiry; one is in truth considering an analogous application of a bottle working in the same way as that proposed in the Patent. The essential question on obviousness is therefore: Would it have been obvious to the skilled addressee at the priority date, looking for improvement in nursing bottles, with Offman to hand and without knowledge of the invention, to consider fitting a standard teat / teat cap combination onto the Offman bottle?
[127]…..  Neither of them [i.e. the experts] apparently appreciated that for the purpose of assessing obviousness, Offman (alone) had been given to the addressee by a notional but unseen hand, that he was assumed to take a practical interest in it whether he liked it or not and then, with the mentality of constructive optimism, he had to express an informed technical view on it in the light of the common general knowledge.
And, by way of conclusion:
[137]	In my judgment, the Offman citation would at the priority date give the skilled addressee all he required to design a nursing bottle falling within claim 1 of the Patent using no more than his common general knowledge. The fitting of a nipple/nipple cap to the Offman bottle (which is anyway not part of the invention of claim 1) could be effected using commercially available products to fit on the Offman liquid container- which in the fig 6 embodiment, was already threaded to take a detachable cap. More likely however, the neck of Offman would be modified in accordance with current nursing bottle design thinking. This could be done in association with a plastics blow moulder if necessary. I do not think that any of this involves any degree of invention and thus the attack on the Patent based on Offman succeeds.
16.	Mr Purvis submitted (as he had to, given the principles upon which an appeal court should approach a finding of obviousness by a court of first instance laid down in Biogen v Medeva [1997] RPC 1 at 45) that the Judge had erred in principle.
17.	His submission ran as follows:
(1)	The legal approach was wrong – the Judge wrongly attributed to the skilled man an attitude of “looking for improvement”, a “mentality of constructive optimism”, and applied the wrong test in saying Offman gave the skilled man “all he required” to design a claim 1 bottle.   
(2)	A baby-bottle designer would have a mind-set against any product which had “fiddly-bits” such as internal tubes.   “How would they be cleaned?” would be his immediate and instant reaction.
(3)	So assuming (as the law requires one must) that a notional uninventive person skilled in the art were given Offman, it would be rejected as the basis for a baby bottle design.
(4)	What the judge should have asked is whether the skilled person would have seen that the Offman idea could be applied in the field of baby bottles, either generally or more specifically to Offman’s actual embodiment.
18.	Mr Purvis developed his argument by distancing a practical baby bottle from the Offman proposal as far as he could.   So, he submitted, Offman was an impractical proposal even for his stated purpose of soft-drink bottles.   Given the costs of these, no one would even consider actually making it.   Moreover it was a throwaway item (even though, as he conceded, there was an embodiment, fig. 6, which could be dismantled).   And there would be severe difficulties even in making it.
19.	The Judge rejected the last submission on the facts (judgment [134]) – and I see no basis for saying he was wrong for there was ample material for him to make such a finding.   But it does not really matter because the real question is not whether the skilled man would consider making the detailed Offman proposal but whether the tube/reservoir principle disclosed in Offman would make claim 1 obvious.
20.	As to the attacks based on mind-set and over optimism, I cannot see that the Judge went wrong in principle.   After all, as is common ground and as is acknowledged in the patent in suit, the notional skilled man wanted a ventable baby bottle.   Optimistic or not, once he had read Offman and understood how it worked (which it is rightly conceded the law requires) it is impossible to see how he could miss seeing that the same principle would work to vent a baby bottle.   Putting it another way, however uninventive he might be, a baby bottle man would be bound to consider whether that principle could help him vent a baby bottle. That would enough to bring him within claim 1.
21.	Of course whether he would actually make a bottle embodying the principle would depend on technical and commercial considerations.   Technically he would have to construct the device so that it could readily be cleaned, commercially he would have to be able to make it at the right price and to persuade the public to buy it (perhaps not too difficult since people will try almost anything to cure colic).   
22.	I should mention that no reliance was placed on commercial success.   Patent law is pragmatic enough to recognise that experience may show that a seemingly obvious idea cannot have in fact have been so in cases where an invention has had enormous success – particularly where there has been a long-felt want.  But that is not this case.  Things might have been different if Offman had been an old proposal and commercial and technical success had been proved.  
Lord Justice Wall:
23.	I have had the advantage of reading in draft the judgments of both Jacob LJ and Lewison J. I agree with both of them, and there is nothing I can usefully add.
Mr Justice Lewison:
24.	I also agree. Mr Purvis concentrated his attack on the specific embodiments in the Offman patent. To some extent the judge also concentrated on them too (see the way in which he formulated the question in paragraph [122] of his judgment which Lord Justice Jacob has quoted). However, the skilled but unimaginative person, with Offman to hand, does not confine his attention to the drawings. He reads the text as well. The text does more than merely describe the invention; it explains the principles on which it works. The skilled but unimaginative person does not, therefore, need to deduce those principles for himself. Once the principles have been explained, I agree that it is obvious that they can be applied to a baby bottle.