Everseal Stationery Products Ltd v Document Management Solutions Ltd and others, Intellectual Property Enterprise Court, 1 April 2015, [2015] EWHC 842 (IPEC), HHJ Hacon
The Intellectual Property Enterprise Court (IPEC) has found a patent for a “mailer” (a business form, letter etc which, after completion, is folded and then sealed around the edges) to be invalid for lack of novelty and obviousness. The judge, HHJ Hacon, held that the patent was anticipated by prior use of a third party’s mailer, and it lacked inventive step over each of two US patents cited as prior art.
He held that if the patent were valid it would be infringed by one of the first defendant’s mailers (no longer supplied) but not by the two other mailers (Mailers 2 and 3). Other defendants, officers of the first defendant, were alleged to be jointly liable for the first defendant’s infringements but the parties had elected that the issue of joint tortfeasance would be heard at the damages hearing if the judge’s findings were reversed on appeal.
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Although in IPEC proceedings experiments are not often conducted, in this case the evidence regarding infringement consisted of experiments conducted by the defendants into the question of whether the adhesive sealed the mailer irreversibly, as required by claim 1 of the patent. HHJ Hacon held that the experiments did not enable him to conclude there was infringement by Mailers 2 and 3. He noted that the burden was on the claimant to prove infringement, yet the claimant had decided not to conduct its own experiments and did not request changes to the defendants' experiments when given the opportunity to do so.
The case also provides a nice example of the standard of proof required for anticipation by prior use. Claim 1 of the patent required the mailer’s adhesive to make an irreversible seal; claim 7 required a particular composition of adhesive. On the question of whether sufficient proof had been adduced to invalidate these claims, the judge held that proof on the “balance of probabilities” is sufficient when seeking to demonstrate as a matter of primary fact that the features were present in the prior use.
Claim 1 was anticipated on the basis that it was proven that the prior use was of a mailer with an irreversible seal. However, where the court was being asked to make an inference as to the existence of features on the basis of the primary facts proved, novelty would be destroyed only where it was inevitable on the basis of those facts that the features existed (Synthon v SKB [2005] UKHL 59 followed).
Claim 7 was not anticipated because it was merely likely, but not proven to be inevitable, that the adhesive had the required composition. Both claims 1 and 7 were held to lack inventive step. Having found the patent invalid for anticipation and obviousness, HHJ Hacon did not consider the defendants’ claim that the patent was invalid for added matter. He referred to Teva v Leo [2014] where Birss J, having found the patent obvious, did not deal with an added matter claim “because it does not depend on any court (at this level or on appeal) making findings of fact by resolving disputed evidence. It is primarily a matter of construction and is therefore something an appellate court would be able to resolve if necessary."
HHJ Hacon commented: “the procedural economy adopted there is particularly suited to the IPEC, where appropriate.” Again, for reasons of “procedural economy”, he did not deal with the defendants’ claim that there should be a restriction of the claimant’s recovery of damages pursuant to section 62(3)(b) and (c) of the Patents Act 1977. The patent had been held invalid so no damages were payable. If that result was reversed on appeal, the restriction on damages point could be dealt with then (together with the joint tortfeasance point that the parties had already agreed to hold over).
Read the entire decision here.
Head note: Dominic Adair, Bristows
