William Mark Corporation and China Industries Limited v Gift House International Limited, Intellectual Property Enterprise Court, HH Judge Hacon, London, UK, 22 August 2014, Case No. [2014] EWHC 2845 (IPEC)

In a judgment of the Intellectual Property Enterprise Court (IPEC) handed down on 22 August 2014, the two patents in suit – UK patent no. GB 2482275 and its divisional GB 2483597 – were found valid (in full and partially, respectively) and to have been infringed by the Defendant’s importation and sale of flying fish toys known as “Mega Fliers”.

The Defendant’s invalidity attacks on both patents were based on claims of obviousness over two pieces of prior art; one of which was a full-sized airship rather than a toy – but still deemed to be read with interest by the skilled person and considered relevant.

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The Court’s finding on validity turned largely on the evidence before it. In this regard, this case highlights the importance of expert evidence in connection with the English Court’s determination on the issue of obviousness. For example, in considering inventive step over one of the pieces of cited prior art, the Judge noted that, while it was possible that the skilled person would think that that certain features of the patentee’s invention were obvious in light of such prior art, in the absence of expert evidence to back this up, he concluded that they were not so. The Judge also found that the Defendant’s expert might have approached his evidence on obviousness without having an accurate perception of the nature of the skilled person or understanding of the term common general knowledge, in light of which the Judge felt obliged to treat such evidence with some caution.

Read the decision here.

Head note: Sara de Sousa, Simmons & Simmons