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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> L'Oréal Société Anonyme RN Ventures Ltd (Rev 1) [2018] EWHC 173 (Pat) (05 February 2018) URL: http://www.bailii.org/ew/cases/EWHC/Patents/2018/173.html Cite as: [2018] EWHC 173 (Pat) |
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Neutral Citation Number:
[2018]
EWHC
173
(
Pat)
Case No: HC-2016-003018
IN THE HIGH COURT OF JUSTICE
BUSINESS & PROPERTY COURT
PATENTS
COURT
SHORTER TRIAL SCHEME
Royal Courts of Justice
The Rolls Building,
7 Rolls Buildings,
Fetter Lane,
London, EC4A 1NL
Date: 05/02/2018
Before :
MR. JUSTICE HENRY CARR
- - - - - - - - - - - - - - - - - - - - -
Between :
|
(1) L’ORÉAL SOCIÉTÉ ANONYME (2) L’ORÉAL (UK) LIMITED |
Claimants |
|
- and – |
|
|
RN VENTURES LIMITED |
Defendant |
- - - - - - - - - - - - - - - - - - - - -
- - - - - - - - - - - - - - - - - - - - -
MR. TOM MOODY-STUART Q.C. (instructed by Baker & McKenzie LLP) for the Claimants
MR. RICHARD DAVIS (instructed by Irwin Mitchell LLP) for the Defendant
Hearing dates: 7, 8 and 13 December 2017
- - - - - - - - - - - - - - - - - - - - -
Judgment Approved
Mr Justice Henry Carr :
Introduction
1.
The Claimants (“L’Oréal”) have brought claims for infringement of patent
and Community Registered Designs against the Defendant (“RN Ventures”). The
First Claimant is the registered proprietor and the Second Claimant is the
exclusive licensee of these rights in the United Kingdom. The products in issue
comprise certain of RN Ventures’ range of “Magnitone” electronic facial skin
care devices. The Magnitone devices are intended to be used on the face to deep
cleanse pores. They each use an oscillating circular head with rings of bristles
arranged in concentric circles. Not all of the Magnitone range is alleged to
infringe, and I will call those which are complained of “the Magnitone
Products”.
2.
L’Oréal alleges that the Magnitone Products are infringements of European
Patent
(UK) 1 722 699 B1 (“the
Patent”).
The
Patent
was filed on 25 February
2004 and does not claim an earlier priority date. RN Ventures does not
challenge the validity of the
Patent
and its primary case is non-infringement.
However, it contends that if the
Patent
is infringed, then it is anticipated
by, or is obvious in the light of United States
Patent
Application 2002/0156401
(“Woog”). It also relies on a Gillette defence, claiming various
squeezes between infringement and sufficiency.
3.
L’Oréal has made an unconditional application to amend the Patent.
RN Ventures claims that the amendment should be refused for lack of clarity and
added subject matter. L’Oréal has applied to the UK Intellectual Property
Office to correct what is said to be an obvious error in claim 8 of the
Patent.
That application has been stayed pending the outcome of the trial, and I am not
required to rule on it.
4.
The Magnitone Products have, from time to time, been offered with a
range of different brush heads. Not all of the heads, when fitted to the
Magnitone Products, are alleged to infringe the Patent.
The heads complained of
are “Active Clean” (old and new versions), “Silk Bliss”, “Pore Perfection”,
“Soft+Sensitive”, “Get Beached” and “Hydro Pro”.
The Shorter Trial Scheme
7.
This case was heard under the Shorter Trial pilot scheme. Although
L’Oréal relied upon experiments in support of its case of infringement of the
Patent,
which were the subject of significant cross-examination, the timetable
was adhered to and the issues were fully debated. It was a positive advantage
that Counsel were only required to put the principal issues in
cross-examination.
The expert witnesses
9.
The scope for admissible expert evidence in this case is narrow. The
parties each relied upon expert evidence in relation to infringement of the
Patent
and validity squeezes, and in relation to the design corpus and design
freedom. The expert witnesses for L’Oréal were Professor Stephen Franklin and
Mr Philip Phelan. RN Ventures relied on the evidence of a single expert, Mr
Kevin Herbert.
Professor Franklin
Mr Phelan
Mr Herbert
THE PATENT
The person skilled in the art
21.
The Patent
is concerned with a mechanical device suitable for the
treatment of acne through the removal of sebum plugs from skin pores. The
person skilled in the art would be interested in the development of such a
device, and would have a mechanical engineering background and an interest in
dermatology. He (or other team members) would have an understanding of the
basic properties of the skin, or know where to find this information in
standard textbooks.
The common general knowledge
24.
At paragraphs 27 to 32 of his first report Mr Herbert referred to
various powered skin brushes and various patents
which he claimed were common
general knowledge at the priority date. Professor Franklin had not heard of any
of these, and I do not accept that they were common general knowledge.
The disclosure
of the Patent
25.
At [0002] – [0004] the Patent
explains the importance of the prompt and
appropriate treatment of acne, particularly in its early stages. It states that
the earliest evidence of acne is the formation of a sebaceous plug which is
formed in individual skin pores when a combination of corneocytes and sebum
block the pore opening. Colonies of bacteria within the skin pore expand in
numbers, material may aggregate in the pore and the pore may widen. This may
result in further accumulation of sebum and other cellular material, the
rupture of the follicular wall and an inflammatory response followed by the
formation of inflamed papules and pustules. The
Patent
acknowledges existing
systemic treatments of acne, including oral antibiotics, retinoids and hormonal
treatments but points out that each of these treatments has its own significant
side-effects and disadvantages.
26.
At [0005] – [0010] the Patent
acknowledges certain prior art, which it
classifies generally as “mechanical” or “chemical". Mechanical methods
include vacuum devices, mechanised scrub brushes and manual loop-like instruments
which the
Patent
asserts are difficult to use. It also refers to methods that
use heat generated by electrical resistance or ultrasound, and methods which
claim to be able to kill target microorganisms using selected frequencies of
electrical current. It refers to the use of micro-abrasion as a popular
treatment for rejuvenating skin. This technique may remove skin layers which
can cause intense irritation. It lists chemical methods for the treatment of
acne including topical and systemic treatments and their possible side effects.
27.
The Patent
claims that with the apparatus of the invention, early stage
acne is effectively treated by maintaining or restoring the pore openings to an
open state, to allow continuing exudation from the sebaceous gland, to
encourage the maintenance of an aerobic state within the pore, and to prevent
the development of more severe acne conditions, without the inconvenience,
side-effects or other limitations present in existing treatments.
“… is based on the discovery that application of differential motion locally to the pore opening will open a blocked pore. The opening of the pore is due to the fact that the blocking materials within the follicles have different physical properties than the wall of the infundibulum and the surrounding skin. With the present invention, the skin area is deformed slightly and then released to a relaxed position and then deformed slightly in the opposite direction and then again released to a relaxed position, at a specified frequency, which resulted in the plugs being loosened from their position in the skin pores. The loosened plugs can then be readily removed, such as by wiping or washing, permitting thereafter normal skin secretion of lipids, and consequently avoiding the consequences of more fully developed acne.”
31. [0033] describes the “shear aspect” of Figure 9:
“[0033] Figures 9A-9D show the action on the skin and a sebaceous plug with the shear aspect of Figures 6-8. Figure 9A shows a pore 78 blocked by a sebaceous plug 79 therein. The contact elements are in a neutral position. The movable contact element will then be moved in one direction, in parallel with the fixed contact element, which distorts the sebaceous plug (Figure 9B). The movable contact element and mounting plate combination is then reversed and returns to the neutral position. This is shown in Figure 9C. The movable contact element continues in the opposite direction, which deforms the sebaceous plug in the opposite direction (Figure 9D).”
32.
At [0034] – [0046] an alternative mechanical arrangement is described
which the Patent
characterises as “the tension/compression arrangement”.
The description contrasts the tension/compression arrangement with the shear
arrangement, and states that the shear action is generally preferred;
“[0034] An alternative mechanical arrangement is shown in Figures 10-12. It includes two fixed skin contact elements 24 and 26 and an intermediate oscillating contact element 28. The configuration of the elements in the tension/compression arrangement is similar to that of the elements of the aspect of Figures 6-8, although the "shear" action of the aspect of Figures 6-8 is generally preferred. In both aspects, the differential strain on the skin produced by the mechanical action is sufficient to result in a breaking away of the plug from the skin, due to the difference in elasticity between the plug material and the skin.
34. This is described in [0046]. In summary:
i) Figure 13A shows a pore 78 blocked by a sebaceous plug 79. The contact elements are in a neutral position.
ii) The movable contact element is then moved in one direction, perpendicularly away from the fixed element, which deforms the sebaceous plug and causes deformation of the pore in one direction (Figure 13B).
iii) The motion is then reversed and returns to the neutral position, relaxing the force between the sebaceous plug and the infundibulum, as shown in Figure 13C.
iv) The movable contact element is then moved in the opposite direction, perpendicularly away from the fixed element, which also deforms the sebaceous plug in the opposite direction (Figure 13D).
v) Continued action dislodges or releases the sebaceous plug from the pore walls.
“These configurations operate on substantially the same principles as the devices described above, but have contact elements composed of bristle tufts. In these embodiments, the base portions holding the bristle tufts are analogous to the mounting plates described above. Instead of rigid or compliant solid contact elements, a plurality of bristle tufts are employed.”
“The adjacent rows of bristle tufts for the devices shown in Figures 15 to 22 move relative to each other as an amplitude sufficient to deform the skin in region I and slightly into region II of Figure 4 as shown to produce the cleansing action.”
“[0059] It is also possible to combine the advantages of the differential shear mode and tension/compression modes described above into a compound motion, for example, elliptical.”
“[0060] It is also possible to apply bi-directional motion to the skin via a single set of contact elements for cleaning or clearing the infundibular opening. Unlike the case above in which there is a differential reciprocating motion between adjacent contact elements, the use of a single set of elements relies on inertia of the skin to affect a differential force on the pore openings. The single set of moving contact elements, such as a row of bristles, forces the skin immediately adjacent to it to move. This movement is coupled to skin regions somewhat distant through the skin’s elasticity. However, skin also has inertia which resists motion, thereby producing a shear force in the direction of movement. This shear force decreases at greater distances from the moving contact elements.”
“[0061] Applying bidirectional reciprocating movement via a single set of contact elements is generally not as effective as using adjacent contacting elements arranged to apply tension/compression or shear between them.”
40.
Paragraphs [0077] - [0078] distinguish between the two modes of
differential movement disclosed in the Patent,
namely the shear and
tension/compression modes:
“[0077] There are two basic modes of differential movement that can be applied: shear and tension/compression. The shear mode device applies a linear differential motion via narrow elements which contact the skin, and which move in the direction of their length with respect to each other. The device typically applies a sinusoidal oscillation to adjacent contact elements. The arrangement includes two contact element assemblies. The device moves the contact elements in parallel to each other along their long axis. Sufficient frictional forces between the surface of the contact elements and the skin surface will transfer this motion to the skin, creating a shear action on the skin between them as shown in Figures 9A-9D.
“[0078] The tension/compression mode device, in contrast to shear mode, moves the contact elements toward and away from each other. The oscillations are perpendicular to the long axis of the contact elements (i.e. one element moving toward one neighbor and away from its other neighbor), thus creating alternating tension and compression stress in the tissue surrounding the infundibulum. Sufficient frictional forces between the surface of the contact elements and the skin surface will transfer this motion to the skin as shown in Figures 13A-13D.”
41. The description concludes at paragraph [0086] and summarises the invention the following terms
“[0086] Thus, the present invention provides either mechanical energy in a shear mode or tension/compression mode or a combination (elliptical) in order to loosen the adhesion between the sebaceous plug and the walls of the pore. Said motion can be produced by contact elements moving either reciprocally linearly, reciprocally arcuately or a combination thereof.”
Claim 1 of the Patent
42. The parties divided claim 1 into integers, and integer F contains the proposed amendment. The dispute on infringement concerned integer D, as it was admitted that the Magnitone Products possessed the remaining features of claim 1:
“[A] An apparatus for treatment of acne, comprising:
[B] at least two contacting elements having end faces, wherein at least one contacting element is a moving contacting element;
a mounting assembly for holding the contacting elements substantially adjacent to each other; and
an assembly for reciprocally moving said at least one moving contacting surface;
characterised in that
[C] all of the end faces are in the same plane and the end faces of the moving contacting element move in a single plane
[D] and said assembly reciprocally moves said at least one moving contacting element bi-directionally through a neutral position relative to at least one adjacent contacting element to produce alternating tension and compression of the skin
[E] wherein when the apparatus is positioned so that the end faces of the contacting element contact the skin, an action on the skin in the plane of a skin area to be treated for acne is produced to remove sebum plugs from skin pores, permitting ready removal thereof from the skin
[F] wherein the frequency of movement of the moving contacting element is within the range of 80-200 Hz.”
Interpretation
Legal principles
43.
I shall apply the principles concerning normal
interpretation and equivalents set out by the Supreme Court in Actavis v Eli
Lilly [2017] UKSC 48, [2018]
1 All ER 171 and by the
Patents
Court in Mylan
v Yeda [2017]
EWHC
2629 (
Pat)
at [134] - [139],
[2017] All ER (D) 30 (Nov); Fisher & Paykel v Resmed [2017]
EWHC
2748 (
Pat)
at [82] – [86], [2017] All ER (D) 168 (Nov); and Illumina v
Premaitha [2017]
EWHC
2930 (
Pat)
at [200] – [202], [2017] All ER (D) 185 (Nov).
Issues of interpretation - relative movement (first issue)
44. The claim requires the assembly to move (reciprocally) at least one moving contact element (bidirectionally) through a neutral position relative to at least one adjacent contact element. This gave rise to disputes as to the normal interpretation of relative movement and neutral position.
The parties’ submissions in outline
45.
L’Oréal alleged that the common feature of all
types of movement referred to in the Patent
is that they have the effect of
applying a differential motion locally to the pore openings so as to loosen the
sebaceous plug. To apply differential motion there must be differential
relative movement between the contact elements and the skin. The production of
such an effect on the skin is the purpose of the invention.
46. L’Oréal submitted that the phrase “neutral position” refers to the neutral or relaxed state of the skin and pores between the two contact elements. It relied on the description of Figures 9 A - D at [0033] and 13 A - D at [0046] and suggested that neutral position is defined by the pore being in a relaxed state. It then is reciprocally distorted and relaxed by movement of the contact element.
47.
This was disputed by RN Ventures. It argued that
the claim requires movement of one skin-contacting element relative to at least
one other contacting element. If both elements are stationary relative to each
other, then such an arrangement falls outside integer D of claim 1 of the
Patent.
Movement of A relative to B means that B (for example) will perceive
that A is moving. If B does not perceive that A is moving, then there is no
movement of A relative to B, even though a third party observer may perceive
that A and B are both moving, and are both moving differently.
48. Mr Davis illustrated his proposition by an analogy of two children on a roundabout. As the roundabout rotates, assuming that they remain seated, child A does not move relative to child B. Child B does not perceive that child A is moving. It does not matter that to someone not on the roundabout, the children may appear to move at different speeds (if one is closer to the centre than the other) and in different directions (if they are on different sides of the centre).
49. Furthermore, RN Ventures contended that the phrase “neutral position” in claim 1 is not referring to the neutral or relaxed state of the skin, but rather to the starting or rest position of the movable contact element.
Discussion
50.
L’Oréal’s case derives support from [0060] –
[0062] of the Patent,
where, in contrast to the other embodiments, there is no
differential reciprocating motion between adjacent contact elements and a
single set of elements, such as a row of bristles, is used to affect a
differential force on the pore opening, relying upon inertia of the skin.
L’Oréal contended that this is an embodiment of the invention, which, on RN
Ventures’ interpretation, falls outside the scope of claim 1.
51.
Not everything disclosed in the specification of
a patent
necessarily falls within the scope of its claims, which may have been
amended during prosecution. Claim 1 specifies that at least one contacting
element moves relative to at least one adjacent contacting element. Paragraphs
[0060] – [0062] make no reference to relative movement and contrast such an
arrangement “in which there is a differential reciprocating motion
between adjacent contact elements”, with its alternative proposal in which
“the use of a single set of elements relies on inertia of the skin to affect
a differential force on the pore openings”. The
arrangement disclosed in [0060] – [0062] falls outside the scope of the claim.
This is explicable, since the
Patent
discloses at [0061] that “[a]pplying
bidirectional reciprocating movement via a single set of contact elements is
generally not as effective as using adjacent contacting elements arranged to
apply tension/compression or shear between them”.
52. I accept RN Ventures’ submissions on this issue. In my judgment, claim 1 is not satisfied by an arrangement where there is no relative movement between contact elements, but only relative movement between contact elements and the skin. Furthermore, “neutral position” in integer D is not referring to the skin, but to the movable contact element. Paragraphs [0033] and [0046] disclose that the contact elements are in a neutral position when the movable contact element is in the rest position.
53.
Purposive interpretation does not allow the
language of the claim to be disregarded. The Patentee’s
purpose in choosing
this language is, as indicated in the
Patent,
to exclude an arrangement which
is generally not as effective as that which is claimed.
Relative movement (second issue)
54.
RN Ventures acknowledged that the Patent
discloses
that the skin-contacting elements may be rigid or compliant, bristles with
tufts, or made of flexible
material such as elastomer or closed cell foam. However, RN Ventures contended
that relative movement must be at the base of the contact elements, and not at
the skin-contacting end. It submitted that Integer D relates to what the
mounting assembly end does: i.e. how the assembly drives the element(s). It is
not concerned with movement at the skin-contacting end. The
Patent
does not
disclose arrangements in which brush tufts are differently compliant or flexible,
so that the relative movement between the assembly-contacting end and the
skin-contacting end on adjacent tufts is different. Moreover neither deformable
elements nor differently deformable elements are required by the claim.
55.
I do not accept this interpretation of claim 1. Integer
D relates to the movement of the contact elements “so as to produce
alternating tension and compression of the skin”. It does not specify that
the movement has to be at the base, and the language of the claim does not
exclude movement at the skin-contacting end. The tips of the contact elements,
which touch the skin, are the “business end” of the claimed device. Where there
is a difference in the behaviour of the base and the tip of the contacting
elements, it would not be consistent with the Patentee’s
purpose, nor fair to
the
Patentee,
to disregard movement of adjacent contact elements which produces
the claimed effect.
Tension/compression
57.
Mr Herbert gave evidence about the technical
meaning of “tension and compression” and “shear”. He suggested that tension and
compression refers to things moving towards and away from each other on a
common axis, whereas shear refers to things moving towards and away from each
other on different axes. At [99] of his first report he set out a definition,
which he argued at [100] was consistent with the distinction made between shear
forces and tension and compression forces in the Patent:
“In mechanics, compression is the application of aligned inward (“pushing”) forces to different points on a material or structure, that is, forces with no net sum or torque directed so as to reduce its size in one or more directions. Tension is the opposite action of compression. In contrast, shearing forces are unaligned forces pushing one part of a body in one direction, and another part of the body in the opposite direction.”
58.
It emerged during cross-examination that this
definition appeared on Wikipedia. However, in contrast to other instances where
he admitted having copied from on-line articles, Mr Herbert thought that he had
taken this definition from his undergraduate physics notes, which may be the
case. The definition does not appear in the Patent
and the question is how the
language, as used in that document, would have been understood by the skilled
addressee, having regard to the inventor’s purpose.
“… as I drew on the board, there are stress fields in front and behind of the element, that are causing the pore to be deformed and they are causing the pore to be deformed either in compression and in tension depending on the exact position of the element 57 with respect to the pore at that particular time.”
“Q. Taking your terminology, to say it is a shear force, there is an X and Y component that may be tension or compression, or two tension forces in different directions?
A. The shear force you can break down into two components, yes.
Q. It would be wrong, you say, as a matter of physics, to refer to that state of a pore between two shearing contact elements. It would be wrong, as a matter of physics, to refer to that pore being put under tension or compression. That is your evidence?
A. It would be wrong to my understanding and definition of "compression" and "tension".
Q. As a matter of physics and engineering?
A. Through my experience, yes, and my degree in physics.”
63.
Professor Franklin is correct, in my judgment, that the shear mode
described in the Patent
will produce forces of tension and compression on the
skin which will deform the pore. The question remains, nonetheless, as to
whether the
Patent
has excluded the shear mode from the scope of its claims.
64.
In favour of RN Ventures’ case, the Patent
carefully differentiates between
tension and compression and shear modes, and only refers to tension and
compression in the claims. Furthermore, paragraph [0077], when describing the
shear mode, refers to “a shear action on the skin” between the contact
elements. This is contrasted with the tension and compression mode in [0078], which is said to create “alternating tension and compression
stress in the tissue surrounding the infundibulum.”
65.
On the other hand, at [0041] the Patent
describes a shear mode
embodiment, where the device is moved at a slow rate across the skin surface,
as would be the case in use. It states that “With this action, shear forces
of tension and compression are applied to the skin, with sufficient amplitude
to slightly force open the pores…”. This is exactly the effect described
by Professor Franklin, of which the
Patentee
was clearly aware.
66.
In my judgment, L’Oréal is correct on this issue and I accept its
submissions. The shear mode is expressly stated to be generally preferred to
the tension and compression arrangement at [0034] of the Patent.
I accept that
not everything in the specification necessarily falls within the claims, and I
have applied this principle to the arrangement in [0060] – [0062], which the
Patent
states is “generally not as effective.” However, this does not
mean that the
Patentee’s
preferred arrangement should be excluded from the
claims, which would be the result of RN Ventures’ interpretation. The document
must be read as a whole and exclusion of all of the preferred embodiments would
not be a sensible reading. Nor would it accord with the inventor’s purpose. It
would neither be fair to the
Patentee,
nor provide reasonable certainty to the
public.
67.
Mr Davis submitted that the shear mode is described as “an aspect”, and
in EPO practice, the use of the word “aspect” indicates that what follows is
outside the scope of the invention. However, he was unable to point to any
authority or guideline which supported this. He sought to refer to the
prosecution history of the Patent,
which is not admissible in this context (see
below). Nor could the approach taken by one examiner establish any general
practice.
68.
I do not accept RN Ventures’ submission. Where an aspect is outside the
scope of the invention, the description of the Patent
makes this clear.
Paragraph [0013] refers to “another aspect which is not part of the
invention.” Conversely paragraphs [0033] - [0034] et seq make clear
that both the shear and tension and compression arrangements are part of the
invention, and that the former is preferred.
69.
Furthermore, I agree with L’Oréal that RN Ventures’ interpretation
confuses two separate requirements of Integer D of claim 1: namely movement and
the effect of such movement. I have accepted Professor Franklin’s
evidence that the shear mode described in the Patent
will produce forces of
tension and compression on the skin which will deform the pore. In the shear
mode “said assembly reciprocally moves said at least one moving contacting
element bidirectionally through a neutral position relative to at least one
adjacent contacting element”, thereby satisfying the movement requirement;
and the effect of such movement in the shear mode is “to produce alternating
tension and compression of the skin.”
70.
Finally, I consider that the inventive concept of the Patent
is not
confined to the tension and compression mode. [0086] states that “the present invention provides either mechanical energy in a shear
mode or tension/compression mode or a combination (elliptical) in order to
loosen the adhesion between the sebaceous plug and the walls of the pore.” Whilst
it is not appropriate to substitute this language for the words of the claim,
this summary indicates that an interpretation which excludes shear mode from
the scope of the claims would be unduly narrow.
Prosecution History
71.
RN Ventures submitted that during prosecution the Patentee
had limited
claim 1 to the tension/compression embodiment in order to support inventive
step, requesting that amendments to the description be deferred until later.
When agreeing to grant the
Patent,
the Examiner noted the distinction in the
Patent
description between shear and tension / compression and made limitations
to the description and required that certain subsidiary claims claiming shear
be deleted. The
Patentee
approved these amendments.
72. In particular, RN Ventures relied upon the following:
i) By a letter dated 5 May 2011 the requirement of “alternating tension and compression” was inserted, citing original claim 21 as its basis. This letter relied upon this feature both in support of novelty and inventive step over the cited art.
ii) By a letter of 20 November 2012, it was stated on behalf of L’Oréal, in relation to inventive step, that:
“The solution provided by the present invention is to cause alternating tension and compression of the skin in the plane of the skin using one or more contacting elements. … None of the prior art documents disclose bi-directional movement through a neutral position as described and claimed in the present case.”
iii) In the notice of intention to grant (communication under r71(3) EPC) the Examiner stated “Description in accordance with the claims (the embodiment disclosed in figures 6-9D has been deleted since it is not covered any longer by the new claim 1)”.
iv) In the accompanying druikexempler the Examiner made the following amendments:
a) He expressed the Fig 6 ‘embodiment’ as an ‘aspect’ in the list of figures.
b) He made the same change where it is introduced later in the text and in other places.
c) He deleted claim 4, which was specifically directed to shear: “wherein the movement of the contacting element places the skin in alternating shear which assists in loosening the sebaceous plugs from the skin pores in which they are located”.
v) The text with those amendments was approved by L’Oréal on 9 September 2013.
“While it would be arrogant to exclude the
existence of any other circumstances, my current view is that reference to the
file would only be appropriate where (i) the point at issue is truly unclear if
one confines oneself to the specification and claims of the patent,
and the
contents of the file unambiguously resolve the point, or (ii) it would be
contrary to the public interest for the contents of the file to be ignored. The
first type of circumstance is, I hope, self-explanatory; the second would be
exemplified by a case where the
patentee
had made it clear to the EPO that he
was not seeking to contend that his
patent,
if granted, would extend its scope
to the sort of variant which he now claims infringes.”
74.
I do not consider that the first circumstance contemplated by Lord
Neuberger applies in the present case. I did not find the points at issue to be
truly unclear in the light of the specification and claims of the Patent.
Nor
did I consider that the file unambiguously resolved any issue. There was no
statement by L’Oréal which amounted to a clear disclaimer of the shear mode,
and the amendments did not have that effect, as they are concerned with the
effect of the application of energy to the skin, rather than its mode of
application. Furthermore, I am not satisfied that all claims relating to shear
mode were deleted, as claims 40 to 42 (claims 42 to 45 as unamended) were not
deleted, and they appear to be directed to the shear mode apparatus.
Squeeze with the common general knowledge
78.
RN Ventures submitted that that Patent
should not be interpreted so as
to render it invalid in the light of common general
knowledge, which would be unfair to the
Patentee.
It contended that if L’Oréal
was correct on construction, then the
Patent
would be anticipated by the common
general knowledge: Any brush (or at least any bristle brush) exhibiting oscillating
rotational movement would (regardless of the type of contacting elements)
exhibit the relative movement of the claim; and any brush exhibiting such
movement would inevitably cause tension and compression (which on L’Oréal’s construction
includes shear) of the skin.
Issues of infringement
L’Oréal’s experiments
The movements identified by Professor Franklin
i) Outer Ring Movement: This is shown in blue in the stills. It can be seen when looking at tufts on rings that are further out from the centre compared to those closer to the centre of the brush head. The tufts further out move over a greater distance because the circumference of the circle is greater. Because the frequency of movement is the same, the outer tufts therefore also move at a greater speed compared to the inner tufts. Professor Franklin explained that the rows of contacting elements will move in parallel to each other, producing a shearing action on the skin that will result in alternating tension and compression of the skin.
ii) Inner Ring Movement: This is shown in yellow in the stills, and refers to the movement of contacting elements opposite to each other in the inner ring on the brush head. Professor Franklin explained that each of the contacting elements will move in opposite directions from each other in a shearing movement that will result in alternating tension and compression on the skin.
iii) Swoosh: This is also shown in blue in the stills. The outside ring has a higher velocity compared to the adjacent ring further towards the centre. This results in the bristles having greater momentum and thus bending further at the ends of the oscillation than those closer to the centre of rotation. This causes an effect whereby, at the ends of the oscillation cycle, the outer bristle tufts sweep past the inner bristle tufts as the device changes direction.
iv) Squeeze: This is shown in orange on the stills, and describes a movement in which adjacent tufts have a "squeezing" movement between them, as they get closer and move further apart, during the course of the oscillation. This effect is caused by the bristles not keeping up with the movement of the base; there is a delay in some of them changing direction, leading to their motion becoming out of phase with the motion of other bristles. Professor Franklin explained that although the squeezing movement is particularly apparent in Pore Perfection heads due to the different thickness (and so stiffness) of the bristles within the tufts, the effect is also seen in heads with bristles of uniform thickness.
RN Ventures’ criticisms of the experiments
85. Relying upon the evidence of Mr Herbert, RN Ventures submitted that nothing reliable can be deduced from the experiments about the behaviour of the Magnitone Products on the skin. Mr Herbert’s opinion was that:
i) The videos of the Magnitone Products in air do not accurately reflect what occurs when the products are in contact with the skin, because the frictional contact with the skin will cause the flexible tufts to behave differently;
ii) the skin model videos are unreliable because tufts at the same radius around the centre of rotation of the brush head behave differently to each other, which should not be the case if the model is an accurate representation of skin behaviour and all of the tufts are contacting the skin; and
iii) the swooshing movement occurs when a bristle is not transferring all of its force to, or not making contact with, the skin. The tufts are behaving anomalously and one cannot tell from the videos the cause of differences in swooshing behaviour.
88.
I do not accept Mr Herbert’s reservations about the swooshing movement
which is observable in the air and skin model videos. Professor Franklin’s
evidence was that this effect is caused by the swoosh of the ends of the
bristle tufts at the ends of the oscillation cycle, giving rise to an
elliptical mode between inner and outer tufts which comprises a combination of
the shear and tension/compression mode of mechanical action referred to at [0059]
of the Patent.
He explained how that action leads to alternating tension and
compression of the skin as a result of the differential relative movement. I
accept his evidence that the experiments can be relied upon to demonstrate that
this movement will occur when the Magnitone Products are applied to the skin.
95.
Sixthly, it was suggested to Professor Franklin, and he agreed, that
certain diagrams which had been prepared at his request and included in his
first report, which compared the various movements that he had identified with
Figures 9 and 13 of the Patent,
were inaccurate as they took no account of
centripetal force nor of the effect of adjacent tufts. This is a fair point.
However, I do not consider that the purpose of the diagrams was to present a
precise picture of all of the forces and effects on the skin during movement; the
Figures in the
Patent
are themselves only illustrative. The diagrams in
Professor Franklin’s report illustrate a general similarity in shear,
tension/compression and elliptical movements between embodiments in the
Patent
and movements in the Magnitone Products. Professor Franklin accepted the
criticisms of the diagrams but did not consider that they detracted from the
point that he was seeking to make, and I agree.
Infringement by the four movements
The Outer and Inner Ring Movements
99. I have accepted RN Ventures first point on relative movement - the “roundabout point”. L’Oréal accepted that on this interpretation, the Outer Ring movement falls outside the scope of claim 1.
101.
Relying on the evidence of Professor Franklin at paragraphs [8.16] –
[8.20] of his first report, L’Oréal contended that if there is no relative movement,
the Outer and Inner Ring movements are equivalents, and nonetheless infringe.
I disagree. The Patent
recognises that arrangements in which there is a single
set of contact elements which move in unison is generally not as effective as
having two contact elements with relative movement between them. Since expert
evidence may be relevant to equivalence, I note that Professor Franklin
accepted this during his cross-examination, when he was asked about paragraph
[0061] of the
Patent.
“Q. Paraphrasing that, what the skilled addressee would take away from that is that this arrangement can achieve the same thing, loosening pore opening and loosening of sebum plugs, but it is doing it slightly differently and it is not as good.
A. Yes. It is just saying that it is not as effective as the line tension compression.”
102.
In the circumstances, I do not consider that the ‘variant’ produces
substantially the same result in the same way. It produces a different, less
effective result in a different way. As it is less effective, it makes sense
that the Patentee
would have wished to exclude the variant from the scope of
the claims.
The Swoosh and Squeeze Movements
103.
In the swoosh and squeeze movements the tufts move relative to each
other through a neutral position (as I have interpreted this requirement), as
shown in the diagrams in Professor Franklin’s first report. This movement can
also be seen on the videos which I have observed. In the light of L’Oréal’s
experiments, my assessment of the evidence, and my interpretation of claim 1, I
consider that these movements fall within claim 1 of the Patent.
104.
The evidence and argument focused upon two videos (A2 and D2), which
enabled the points of principle to be argued. RN Ventures argued, contrary to
the evidence of Professor Franklin, that squeezing only occurred with the Pore
Perfection brush heads as shown in video D2. Professor Franklin said that the
effect is particularly apparent in video D2 as the black bristles are thicker
than the white bristles leading to a more pronounced 'squeezing' movement. However,
he added that the same effect is, also apparent in video A2 where the bristles
are all the same thickness and length. I accept his evidence, which accords
with my own observations of the videos. RN Ventures did not suggest that
swooshing was confined to any particular brush head. In my view, the Magnitone
Products in issue are infringements of claim 1 of the Patent,
as they all
exhibit swoosh and/or squeeze movements.
105.
I have concluded that the requirement of tension and compression is
satisfied by the Magnitone Products, as on a normal interpretation, the shear
mode falls within the scope of the claims. In case I am wrong about this, I
shall briefly state my conclusion on L’Oréal’s alternative argument of
equivalents. I would have concluded that the “shear variant” produced
substantially the same result in the same way, and obviously so, as the Patent
makes clear that this is its preferred arrangement. However, on this
hypothesis, having discussed the shear variant at great length in the
specification, the
Patentee
nonetheless chose to exclude it from the claims.
The skilled addressee would have assumed that he intended to do so, possibly in
the light of prior art cited during the course of prosecution. Therefore, I
would have concluded that the variant was not an equivalent, in the light of
the third Actavis question.
106.
In this regard, RN Ventures relied upon the principle, established by
German cases, that as a rule there is no patent
infringement by equivalence if
the description discloses several possibilities as to how a technical effect
can be achieved, but only one of those possibilities is included within the
claims of the
Patent;
German Federal Court of Justice, judgment of 10 May 2011
– X ZR 16/09 Okklusionsvorrichtung; German Federal Court of Justice,
judgment of 14 June 2016 – X ZR 29/15 Eli Lilly & Co v Actavis Group PTC
ehf.
107.
L’Oréal submitted that this approach was not adopted by the Supreme
Court in Actavis v Eli Lilly. Lord Neuberger’s judgment makes clear the
Supreme Court disagreed with the reasoning of the Court of Appeal that, because
the specification referred to “anti-folates” and “anti-folate drugs”, the fact
that the claims were limited to pemetrexed disodium meant that the drafter of
the Patent
would have been understood to intend that the other pemetrexed
compounds would not infringe. At [73] he said:
“Further, contrary to the Court of Appeal’s reasoning, I
would have thought that if the specification had not
referred to anti-folates but had only referred to pemetrexed disodium, that
would have been a more powerful indication that the patentee
was intending to
limit himself to pemetrexed disodium. The very fact that the specification
teaches that there are other anti-folate drugs which have a similar effect to
pemetrexed disodium (coupled with the fact that it was generally known that
cations other than sodium could be successfully used with anti-folates)
highlights a point similar to that made by Lord Diplock in Catnic [1982] RPC
183, 244, namely “No plausible reason has been advanced why any rational
patentee
should want to place so narrow a limitation on his invention” as to
limit the scope of protection afforded by the
Patent
to pemetrexed disodium - a
telling but not always conclusive point. Additionally,
there is no teaching in the specification which relates to the relevance or
importance of the sodium cation.”
108.
I note that the Federal Court of Justice in Germany reached the same
conclusion as the UK Supreme Court, albeit by a different process of reasoning.
It is unnecessary for me to decide whether the German doctrine of “deliberate
selection” should be applied generally to equivalents in the UK, and
undesirable that I should do so, since in the present case I have concluded
that there is infringement on a normal interpretation. My conclusion on
equivalents is based upon a consideration of the specification of the Patent
in
this case, and does not establish any wider proposition.
Sufficiency
109.
RN Ventures contended that on the interpretation of claim 1 which I have
reached, the claim is excessively broad. It pointed out that embodiments in
which the differential force on the skin is caused by swoosh and/or squeezing
are not disclosed in the Patent,
and there are no instructions as to how to
manufacture contacting elements that would exhibit any swoosh or squeezing.
110.
RN Ventures referred to paragraph [0021] of the Patent,
which discloses
that there is a sweet spot at which “the desired differential motion applied
to the skin should be of high enough amplitude to create pore opening forces,
but low enough to minimize stretching of collagen fibers in the skin”.
It pointed out that there is nothing in the
Patent
which explains what is
required to create the differential pore opening forces via the swooshing or
squeezing movement of contacting elements.
111.
I shall apply the legal principles summarised by Arnold J in Sandvik
v Kennametal [2012] RPC 23 at [106] - [124]. In my view, the Patent
claims
a principle of general application, which is claimed in general terms, by
reference to “contacting elements”. Its technical contribution is the
combination of claimed integers, and in particular the reciprocal relative movement
of contacting elements to produce alternating tension and compression on the
skin. The evidence of Professor Franklin was that the skilled addressee would
be able to make a product falling within the clams of the
Patent
using common
general knowledge and the information in the
Patent.
This was not disputed by
Mr Herbert and I accept that evidence. Professor Franklin considered that it
would be common sense for the skilled addressee to implement the general
teaching of the
Patent
by using bristle tufts of different stiffness to achieve
the necessary differential force, which could then be tested on the skin. I
accept his evidence and I do not consider that the breadth of the claims in the
Patent
extends beyond its technical contribution.
Novelty/obviousness in the light of Woog
112.
RN Ventures contended that if, as I have found, the Magnitone Products
infringe claim 1 of the Patent,
then the
Patent
is anticipated by or lacks
inventive step in the light of Woog.
117.
The device has a slanted head attachment that oscillates about an axis
which runs down the centre of the handle of the device depicted in Figure 1. The
head does not rotate or oscillate in the plane of the tips of the attachment.
Instead it “sweeps” back and forth though an arc around the axis of rotation
parallel to the device handle, with the angled head sweeping against the skin. It
was common ground that this motion does not involve the tip oscillating in the
same plane as the plane of the bristles and therefore does not disclose Integer
C of Claim 1 of the Patent.
118.
However, RN Ventures relied upon paragraph [0045] of Woog as disclosing
a number of different modes of movement of the tip. Paragraph [0045] states
that its invention also contemplates, amongst other things “the
back-and-forth or pendulum movement of the embodiments of US Patent
No 5,378,153”
(“Giuliani”). Woog further discloses that “any other periodic back-and-forth
reciprocal or oscillating movement, provided the parameters of attachment tip
velocity, acoustic pressure and shear stress of the invention are maintained”
is contemplated by its invention.
119.
RN Ventures submitted that in the pendulum, or metronome, arrangement of
Giuliani, which is incorporated by reference in Woog, tufts at different radii
will move relative to each other (on the Claimants’ interpretation of the
term), will cause alternating tension and compression of the skin (again on the
Claimants’ interpretation of the term) and will remove sebum plugs from skin
pores because cleansing of pore clogging dirt is a stated aim of Woog.
Thus, it is the same as an arcuate version of the arrangement described at [0060]
– [0062] of the Patent
(although RN Ventures’ primary case was that this is
outside the claims). RN Ventures further contended that, even without
Giuliani, Woog works as a squeeze because it discloses a face brush with a
round brush-head which uses “any other periodic back and forth reciprocal or
oscillating movement”.
Q. Right. In that movement, the bristles further away from the pivot will be moving faster linearly than the bristles closer to the pivot.
A. In the pendulum movement, yes. That is correct, yes.
Q. Yes. So, if we assume that swoosh is a substantive effect, it would be a substantive effect caused by the different movement in that sort of -- sorry, I will start again. If we assume that swoosh is a substantive effect caused by different linear velocity of bristles, that will occur in the movement we have just described?
A. Yes. I think it is quite similar in that respect.
Q. And the same point on squeezing?
A. (Pause) What do you mean by squeezing here?
Q. The squeezing effect you described that occurs in, for example, the Pore Perfection?
A. Due to the bristles moving closer together to each other?
Q. Yes.
A. Yes, that is correct.
Does Woog
anticipate the Patent?
121.
Since I have accepted RN Ventures case on “the roundabout point” and
held that the arrangement in paragraphs [0060] – [0062] of the Patent
falls
outside the scope of the claims, I am not sure whether the anticipation case is
still pursued. However, in the light of the cross-examination concerning the
swoosh and squeeze movements, I will assume that it is. In answer to
anticipation, L’Oréal focussed in its closing on Integer C of Claim 1. The
issue is whether this is clearly and unambiguously disclosed in Woog, when read
in the light of common general knowledge.
“In respect of all of the bristles here, there is an angle here and it is moving free. There is obviously a row of bristles here that will be moving in the same plane; but yes, where it is angled, they are moving like this. So, on a different plane.”
125.
Nor do I consider that Woog anticipates any other claim of the Patent.
I am not sure if anticipation was pursued in relation to claim 8. If so, Woog
does not anticipate claim 8, which is dependent on claim 1. In addition, Woog
does not disclose the diameter, length, or flexural modulus values of claim 8.
Inventive Step
126.
The allegation that the Patent
lacks inventive step over Woog was
referred to but not developed in RN Ventures’ written Closing. Insofar as it
continues to be advanced, I reject it. Professor Franklin gave evidence at
paragraphs [6.18] – [6.24] of his First Report that if the skilled addressee wished
to develop Woog further, he would use an angled head and would adjust
parameters such as frequency, power, amplitude and stiffness of the bristles to
achieve an effective and comfortable device. I accept this evidence. A right
angled head, according to Woog, might induce swelling of the skin. Therefore,
it would not be obvious to use such a head, which would be contrary to the
teaching of Woog.
Amendment
127.
RN Ventures submitted, correctly, that a proposed amendment must satisfy
the requirement of clarity under section 14 of the Patents
Act 1977. Otherwise
the amendment must be refused. It argued that the proposed amendment to claim 1
was unclear because there is no proper antecedent basis for: “wherein the
frequency of movement of the moving contact element is within the range
of 80 - 200 Hz”. Contacts are previously defined as “at least one
moving contacting element”. Hence it is unclear whether every element that
moves must exhibit this effect or only at least one of those elements that move
or something else.
Added Matter
130.
RN Ventures contended that claim 7 of the Patent
as proposed to be amended,
and all claims dependent thereon, add subject matter. It was argued that in the application as filed, the frequency ranges were
only disclosed in relation to embodiments comprising rigid/compliant solid
contact elements, and not rows bristle tufts, which are a feature of claim
7.
Submissions on the draft judgment – the Barrell jurisdiction
135.
After the draft judgment was sent to the parties, I received a request
from Mr Davis to consider whether my conclusion that the Patent
was infringed
should be corrected prior to hand-down, on the basis that there was an internal
inconsistency in the draft judgment which could not be reconciled. It is within
the power of a judge to alter his or her judgment before it is handed down; Re
Barrell Enterprises [1973] 1 WLR 19 CA. In In Re L (Children)
(Preliminary Finding: Power to Reverse) [2013] UKSC 8; [2013] 1 WLR 634 SC,
the Supreme Court confirmed that, in giving judgment, a judge has jurisdiction
to change his or her mind until the order carrying the judgment into effect is
drawn up and perfected, and held that the exercise of the power is not
restricted to exceptional circumstances. Relevant considerations include a
plain mistake by the court; the failure of the parties to draw the judge’s
attention to a plainly relevant fact or point of law; the discovery of new
facts after judgment was given; whether any party has acted upon the judgment
his detriment (especially where this would be expected), but a carefully
considered change of mind can be sufficient.
136.
It is the duty of Counsel to draw the attention of the Court to, for
example, a plain mistake on the face of the judgment. On the other hand, there
is a temptation to raise fresh arguments or further observations on receipt of
the draft judgment. This temptation is inevitable in commercially important
cases, but it needs to be resisted. In Heron Bros Ltd v Central Bedfordshire
Council (No 2) [2015] EWHC
1009 Edwards-Stuart J referred to a list of
examples where it might be appropriate to exercise the jurisdiction, given by
Neuberger J (as he then was) in In Re Blenheim (Restaurants) Ltd, The
Times, 9 November 1999 and referred to by the Supreme Court in In Re L.
He said at [17] – [18]:
“17 Whilst I accept that this is not to be treated as a closed list of categories, I consider that they are all examples of situations where either something has obviously gone wrong or relevant material was overlooked through no fault of the parties. In my view they do not sit easily with the situation where a party knows the relevant facts (or, where appropriate, the relevant law) but simply fails to appreciate a potential legal consequence of the matters of which it is aware.
18 It therefore seems to me that in principle there has to be something more than a post-judgment second thought based on material that was already in play. If it were otherwise, any fresh point that occurred to a party following the handing down of a judgment would entitle the party to require the court to hear further submissions with a view to revisiting the judgment. That would then become the rule rather than the exception. It seems to me that this would accord neither with the interests of finality of judgments nor with the overriding objective to deal with cases justly and at proportionate cost, particularly in the sense of ensuring that parties are on an equal footing, avoiding unnecessary expense and dealing with cases expeditiously. However, at the end of the day the court has a discretion which must be exercised judicially and not capricious.”
137.
Mr Davis submitted that throughout the case it was understood to be
common ground between the parties that the Magnitone Products were made exactly
in accordance with arrangement described in paragraph [0060] – [0062] of the
Patent
(“the [0060] Arrangement”) and that infringement or non-infringement
would therefore follow the ruling of whether such devices were or were not
within the claim. He relied on the finding at paragraph [51] of the draft
judgment that the [0060] Arrangement fell outside the scope of Claim 1. On this
basis, he said that I should have found that the Magnitone Products did not
infringe. Furthermore, at paragraph [51] I found that the [0060] arrangement relied
on inertia of the skin to affect a differential force on the pore openings, and
not on differential reciprocating motion between adjacent contact elements. The
same, it was submitted, should have been found in relation to the Magnitone
products, so that the action in integer E was not caused by the movement of
integer D.
139.
The basis of the finding at paragraph [51] of the draft judgment was
that the [0060] Arrangement fell outside claim 1 of the Patent
because there
was no relative movement between adjacent contacting elements. I found
paragraph [103] that the Magnitone Products exhibit swoosh and squeeze
movements, which satisfy this requirement of Claim 1. I do not consider that it
has been established that products made in accordance with the [0060]
Arrangement would also exhibit such swoosh and squeeze movements. The finding
at paragraph [51] concerns the relative movement of the base of the
contact elements. The finding of infringement is based upon the relative
movement of bristle tufts in the Magnitone Products, fixed to a single
base, which results from their different flexibilities. The former finding
concerns an embodiment which is disclosed and illustrated figuratively in the
Patent.
The latter finding is based on my assessment of the evidence about the
operation of the Magnitone Products, in a manner which is not disclosed in
relation to the [0060] Arrangement.
141.
The case now sought to be advanced by RN Ventures is that when applied
to the skin, the Magnitone Products produce the action of integer E not as a
result of differential relative movement, but rather as a result of a single
set of contacting elements moving in unison, relying on the skin’s
inertia/elasticity. This was not suggested during the trial, although it could
have been pursued by RN Ventures. Mr Herbert advanced a theory that the Patent
would not work to achieve pore opening and that any cleansing effect would be
achieved by exfoliation. I do not accept that evidence, which was disputed by
Professor Franklin. Mr Herbert suggested in his oral evidence that exfoliation
might be the cause any cleansing effect on the skin of the Magnitone Products.
I do not accept that either, and I note that a quite different explanation is
now advanced by RN Ventures.
142.
The dispute at trial concerned integer D. If, having admitted integer
E, RN Ventures wished to say that this action was caused by something other
than integer D (and that its products therefore operated in a manner which,
according to the Patent,
is inferior to the embodiments which I have held fall
within the claims) then it needed to establish this by evidence. It did not
attempt to do so.
143.
In conclusion, whilst I consider that Mr Davis was right to draw my
attention to this issue, and I have carefully considered it, it does not cause
me to change my conclusion that the Patent
is infringed.
THE REGISTERED COMMUNITY DESIGNS
Legal principles
Legislative Framework
i) Recital 14 which refers to the design corpus:
“The assessment as to whether a design has individual character should be based on whether the overall impression produced on an informed user viewing the design clearly differs from that produced on him by the existing design corpus, taking into consideration the nature of the product to which the design is applied or in which it is incorporated, and in particular the industrial sector to which it belongs and the degree of freedom of the designer in developing the design.”
ii) Article 3(1)(a) which defines “design”:
“ … “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself or its ornamentation.”
iii) Article 4(1) which concerns protection requirements:
“A design shall be protected by a Community design to the extent that it is new and has individual character”
iv) Article 5 which concerns novelty:
“1. A design shall be considered to be new if no identical design has been made available to the public:
…
(b) in the case of a registered Community design, before the date of filing of the application for registration of the design for which protection is claimed, or, if priority is claimed, the date of priority.
2. Designs shall be deemed to be identical if their features differ only in immaterial details.”
v) Article 6 which defines “individual character”:
“1. A design shall be considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public:
…
b) in the case of a registered Community design, before the date of filing the application for registration or, if a priority is claimed, the date of priority.
2. In assessing individual character, the degree of freedom of the designer in developing the design shall be taken into consideration.”
vi) Article 7, which concerns disclosure:
“1. For the purpose of applying Articles 5 and 6, a design shall be deemed to have been made available to the public if it has been published following registration or otherwise, or exhibited, used in trade or otherwise disclosed, before the date referred to in Articles 5(1)(a) and 6(1)(a) or in Articles 5(1)(b) and 6(1)(b), as the case may be, except where these events could not reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the Community.”
vii) Article 10, which concerns scope of protection:
“1. The scope of the protection conferred by a Community design shall include any design which does not produce on the informed user a different overall impression.
2. In assessing the scope of protection, the degree of freedom of the designer in developing his design shall be taken into consideration.”
The informed user
145.
The identity and attributes of the informed user were set out by His
Honour Judge Birss QC (as he then was) sitting as a High Court Judge in Samsung
Electronics (UK) Ltd v Apple Inc [2012] EWHC
1882 (
Pat),
[2013] ECDR 1 at
[33] – [35], in a passage which was affirmed by the Court of Appeal: [2012] EWCA Civ 1339, [2013] FSR 9:
“33. The designs are assessed from the perspective of the informed user. The identity and attributes of the informed user have been discussed by the Court of Justice of the European Union in PepsiCo Inc v Grupo Promer Mon-Graphic SA (C-281/10 P) [2012] FSR 5 at paragraphs 53 to 59 and also in Grupo Promer v OHIM (T-9/07) [2010] ECDR 7 , (in the General Court from which PepsiCo was an appeal) and in Shenzhen Taiden v OHIM (T-153/08), judgment of 22 June 2010.
34. Samsung submitted that the following summary characterises the informed user. I accept it and have added cross-references to the cases mentioned:
i) He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller (PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzhen paragraph 46).
ii) However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53);
iii) He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62);
iv) He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59);
v) He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so (PepsiCo paragraph 55).
35. I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59).”
The existing design corpus
146.
The relevance of the design corpus was explained by Arnold J in Whitby
Specialist Vehicles v Yorkshire Specialist Vehicles [2014] EWHC
4242 (
Pat),
[2014] All ER (D) 233 at [22] – [23]:
"Recital (13) of the Designs Directive makes it clear makes it clear that the overall impression produced on the informed user depends on “the existing design corpus”, taking into consideration the nature of the product to which the design is applied, and the industrial sector to which it belongs.
23. In Grupo Promer the Community design was registered for “promotional items for games”. The General Court held at [62] that the informed user “has some awareness of the state of the prior art, that is to say the previous designs relating to the product in question that had been disclosed on the date of filing of the contested design, or, as the case may be, on the date of priority claimed” (emphasis added). In PepsiCo the CJEU appears to have approved this statement at [54]. The CJEU went on at [59] to say that the informed user “knows the various designs which exist in the sector concerned, possesses a certain degree of knowledge with regard to the features which those designs normally include” (emphasis added).”
148.
This is a point of some significance as it applies generally to
identification of the design corpus in registered Community design cases.
L’Oréal’s submission gains some support from the CJEU’s statement in Pepsico
that “the informed user possesses a certain degree of knowledge with
regard to the features which those designs normally include”. It is
further supported by a passage in the judgment of Arnold J in Magmatic
Limited v PMS International Limited [2013] EWHC
1925 (
Pat)
at [46]:
“PMS contends that the design corpus includes all designs which qualify as prior art under Article 7(1) of the Regulation and are not excluded by either the obscure designs exception or the confidential disclosures exception. Magmatic disputes this, and contends that the design corpus consists of the designs with which the informed user is likely to be familiar. Thus there may be designs which are not quite obscure enough to be excluded by the obscure designs exception, and thus can be relied upon as prior art for the purposes of Articles 5 and 6 , but nevertheless do not form part of the design corpus when assessing the overall impression created by other designs for the purposes of Article 10 . In support of this contention counsel for Magmatic relied upon the passages from Grupo Promer and PepsiCo that I have just cited. He also relied on passages in the judgment of His Honour Judge Birss QC in Gimex International Groupe Important Export v Chill Bag Co Ltd [2012] EWPCC 31, [2012] ECDR 25 at [44]-[47] and [65], but those were addressed to a slightly different issue to the one presently under consideration. Nevertheless, I agree that Grupo Promer and PepsiCo support Magmatic's contention. For reasons that will appear, however, I consider that it makes no difference who is right about this in the present case.”
“There is nothing in a purposive construction of the Regulation, or indeed in the PepsiCo decision, that supports such a contention. In order to assess the validity of an RCD it is necessary to compare it against each prior design. If any one of those prior designs creates the same overall impression on the informed user as the RCD, that RCD is invalid. But it cannot be that an RCD that survives such an invalidity attack is then protected from the ‘kindred prior art’ that may be obscure-ish but not obscure. For the invalidity test to be the flipside of the infringement test the design corpus must include all prior designs. As a practical matter the legislature cannot have intended that the tribunal should have to apply an additional filter once a prior design is found not to be too obscure….”
150. Prior art which is said to invalidate a registered Community design may be excluded by the exception to Article 7 on the basis that it would not “reasonably have become known in the normal course of business to the circles specialised in the sector concerned” i.e it is obscure. If it is not excluded for this reason, then a defendant is not required to prove that the informed user would have known of it. This was made clear by His Honour Judge Birss (as he then was) in Gimex v Chill Bag [2012] EWPCC 31 at [74]:
“Once the notional informed user is defined, the question of overall impression can be resolved. From the point of view of assessing individual character (validity), the informed user must be presented with any given item of cited prior art whether or not it is a design for the product in question. Whether the cited prior art is or is not within the user’s design awareness is not the issue. If the cited prior art is not a design for a product of the kind the informed user has gained experience using then it will not be part of their design awareness, but it still must be considered for the purposes of novelty and individual character. The design is only protected to the extent that it has novelty and individual character.”
151. That has now been confirmed by the CJEU in Cases C-361/15P and C-405/15 Easy Sanitary (21 September 2017), ECLI:EU:C:2017:720. The Court of Justice overturned a decision of the General Court, which held that for the purposes of assessing individual character within the meaning of Article 7(1) it was necessary that the informed user of the contested design should know of the product in which the earlier design was incorporated or to which it was applied. The Court of Justice held as follows at [130] – [134]:
“130. However, the concept of an informed user cannot be interpreted as meaning that it is only if that user knows the earlier design that the earlier design could prevent recognition of the individual character of a subsequent design. Such an interpretation runs counter to Article 7 of Regulation No 6/2002.
….
131. The General Court’s finding, set out in paragraph 132 of the judgment under appeal, amounts to saying that, for the purposes of examining the individual character of a design, within the meaning of Article 6(1) of Regulation No 6/2002, the earlier design, whose disclosure to the public has been proved, within the meaning of Article 7(1) of that regulation, must be known to the informed user of the contested design.
132. However, nothing in Article 7(1) permits the conclusion that it is necessary for an informed user of the product in which the contested design is incorporated or to which it is applied to know the earlier design when it is incorporated in a product in an industry sector that differs from the relevant sector for the contested design, or is applied to such a product.
133. If the General Court’s finding, set out in paragraph 132 of the judgment under appeal, were to be followed, an applicant for a declaration of invalidity in respect of the contested design would have to prove not only that the earlier design had been made available to the public, within the meaning of Article 7(1) of Regulation No 6/2002, but also that the informed public of the design whose validity is contested knew that earlier design.
134. That would be tantamount to requiring an applicant for a declaration of invalidity to provide evidence of two disclosures: a first disclosure to those in ‘circles specialised in the sector concerned’ and a second disclosure to users of the type of product relevant to the contested design. Such a requirement, besides being incompatible with the interpretation of the phrase ‘sector concerned’ referred to in paragraph 129 of this judgment, would add a condition that neither the letter nor the spirit of Article 7(1) of Regulation No 6/2002 provides and would be irreconcilable with the principle arising from Article 10(1) of that regulation, according to which the protection granted by the Community design extends to ‘any design’ that fails to produce on the informed user a different overall impression.”
Effect of the design corpus and design freedom
153. In Procter & Gamble Co v Reckitt Benckiser (UK) Ltd [2007] EWCA Civ 936, [2008] FSR 8 Jacob LJ considered the effect of the design corpus at [35(ii)]:
“… if a new design is markedly different from anything that has gone before, it is likely to have a greater overall visual impact than if it is ‘surrounded by kindred prior art’ (H.H. Judge Fysh's pithy phrase in Woodhouse at [58]). It follows that the ‘overall impression’ created by such a design will be more significant and the room for differences which do not create a substantially different overall impression is greater. So protection for a striking novel product will be correspondingly greater than for a product which is incrementally different from the prior art, though different enough to have its own individual character and thus be validity registered.”
154. The impact of limitations on design freedom was considered by the General Court in Kwang Yang Motor v OHIM (T-10/08) [2011] E.C.R. II-265, ECLI:EU:T:2011:446 at [32] to [33]:
“32. As the Court has recognised in its decisions, the designer’s degree of freedom in developing his design is established, inter alia, by the constraints of the features imposed by the technical function of the product or an element thereof, or by statutory requirements applicable to the product. Those constraints result in a standardisation of certain features, which will thus be common to the designs applied to the product concerned (Representation of a Circular Promotional Item, paragraph 67).
33, Therefore, the greater the designer’s freedom in developing the challenged design, the less likely it is that minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user. Conversely, the more the designer’s freedom in developing the challenged design is restricted, the more likely minor differences between the designs at issue will be sufficient to produce a different overall impression on an informed user. Therefore, if the designer enjoys a high degree of freedom in developing a design, that reinforces the conclusion that the designs which do not have significant differences produce the same overall impression on an informed user.”
Overall impression
“Although it is proper to consider both similarities and differences between the respective designs, what matters is the overall impression produced on the informed user by each design having regard to the design corpus and the degree of freedom of the designer. As Jacob LJ has emphasised repeatedly, the most important thing about each of (i) the registered design, (ii) the accused design and (iii) the prior art is what they look like: see Procter & Gamble [2008] FSR 8 at [3], Dyson v Vax [2010] FSR 39 at [8] and Samsung v Apple [2013] FSR 9 at [28].”
The Representation of the 747 Design
157. Views from the 747 Design are reproduced below.
The Informed User in the present case
158. In my view, the informed user is the observant user of powered skin brushes.
Comparison of the 747 Design with the design corpus
L?Oréal?s design corpus comparison:
RN Venture’s design corpus comparison:
Design Freedom
173.
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I prefer the evidence of Mr Phelan to that of Mr Herbert in respect of
design freedom. Mr Phelan’s evidence confirms that which is fairly obvious. In
relation to the 747 Designer, there is a wide degree of design freedom.
Comparison of the 747 design and the Magnitone Products
They show RN Ventures’ case in its most favourable light, as the relevant comparison is between the physical articles and the representation of the 747 Design. In my view, when that comparison is made, the Magnitone Products are very similar to the 747 Design, and the Homedics device is not.
i) A general lozenge shape.
ii) A switch on the front.
iii) A single round brush head.
iv) An enlarged/tapering brush head supporting region.
v) A circumferential groove.
176. RN Ventures alleged that the following features were distinctive:
i) Exaggerated hourglass overall shape (both in plan and side view).
ii) Size and design of switch cowling.
iii) Switch detail.
iv) Fixing/construction details.
v) 360° waistline.
vi) Castellations.
i) The Magnitone product did not have an exaggerated hourglass overall shape and was striking in being asymmetric.
ii) A separate switch cowling was not reproduced in the Magnitone product. It had an enlarged switch with a distinctive asymmetric teardrop shape, which mimicked the overall asymmetric shape of the product.
iii) The dual rings switch detail was not present in the Magnitone product.
iv) Fixing and construction details were different, in that the small circle surrounding the switch cowling on the front face was absent and there was no small rectangle in the middle of the back.
v) The 360° waistline was absent and there were differences in side view.
vi) Castellations were present on the Magnitone product, but there were twelve small ones rather than six large ones.
181. L’Oréal characterised the overall impression of the 747 Design as follows:
i) A sculpted shape (not cylindrical or wedge shaped) which narrows in the middle with a pronounced waist feature, where the control buttons can be found in a defined panel feature on the front of the device.
ii) The brush end is not perpendicular sided but is curved, as is the distal end of the handle.
iii) The distal end from the brush broadens to form a rounded end shape when viewed from above.
iv) The back of the brush end is rounded and the front, bearing the brush, forms a protruding feature which tapers into a circular platform for the brush.
v) The distance from the back of the product to the platform for the brush is approximately twice that of the distance from the front to the back of the distal end of the handle.
vi) From the side, a line can be seen which runs along from distal end towards the brush, and sweeps upwards towards the brush at the brush end.
vii) The brush and distal end are higher than the narrowed waist section, with the brush end being approximately twice as high as the distal end.
viii) Screw holes can be seen at the brush end around the switch panel, but the informed user would pay less attention to such features than the general aesthetics of the shape.
ix) The base of the brush has castellated features topped by a concentric circular arrangement of bristle tufts.
x) From the brush end looking down the body of the design, the user sees a broad rounded back leading to generally straight sides tapering up to the castellated base of the brush.
xi) From the back, the user sees a waisted shape with a broader brush end and narrower distal end, each with rounded edges and a narrowed middle portion separating them.
The 046 Design
184. Views from the 046 Design are shown below.
Overall Conclusions
186.
For the reasons set out above, I conclude that the Magnitone Products
with the brush heads complained of by L’Oréal infringe claim 1 of the Patent.
I
reject the various squeezes between infringement and validity advanced by RN
Ventures. L’Oréal will have permission to amend the
Patent in the form
indicated in this Judgment. The Magnitone Products which are the subject of the
Registered Design claim infringe the 747 Design but do not infringe the 046
Design.