[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	England and Wales Court of Appeal (Civil Division) Decisions
You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> David J Instance Ltd & Anor v Denny Bros Printing Ltd & Anor [2001] EWCA Civ 939 (20 June 2001) URL: http://www.bailii.org/ew/cases/EWCA/Civ/2001/939.html Cite as: (2001) 24(10) IPD 24063, [2001] EWCA Civ 939, [2002] RPC 14

[New search] [Printable RTF version] [Help]

IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION
MR JUSTICE LADDIE

		Royal Courts of Justice Strand, London, WC2A 2LL Wednesday 20th June 2001

ALDOUS LJ:

1. On 14th April 2000 Laddie J handed down his judgment in six sets of proceedings brought by David J. Instance Ltd and Mr David Instance against Denny Bros. Printing Ltd. In those proceedings the claimants alleged, amongst other things, infringement of a substantial number of patents. There was agreement between the parties on many aspects, with the result that the judge only had to consider the validity of European Patents (UK) 0628941, GB 2247662 and GB 2274268 to come to a conclusion in all the proceedings.
2. The judge held claims 6, 7, 10 and 11 of patent 662 to be invalid as they were obvious. Having regard to that finding, it was accepted that all the patents were invalid and should be revoked. He therefore did not find it necessary to consider Denny's attack upon certain of the patents on the ground that matter had been added to them during the prosecution.
3. The parties agreed that we, like the judge, could concentrate upon the claims of 662. Mr Floyd QC who appeared for the claimants, who I will refer to as Instance, submitted that the judge had made a number of errors and that the claims of 662 that were relied on were valid. That being so, Instance should be granted appropriate relief in respect of that patent and the other patents. Mr Watson QC, counsel for Denny, supported the conclusion and reasoning of the judge.
4. Patent 662 is entitled "Labels and manufacture thereof". It claims 31st August 1990 as its priority date. It relates to a self-adhesive, multi-laminate label which I will refer to as a leaflet label. As those words suggest, the label contains a leaflet within it, usually in the form of a folded sheet or booklet. They are today a recognised part of the label industry and are used to enable more information, usually of a technical, promotional or instructional nature, to be given to the user. They are designed so that when they are adhered to a product, the leaflet will lay flat and shut, but the label can be opened by the purchaser of the product to reveal the leaflet. Because of the need to give ever greater quantities of information to users, there has been a growing requirement to supply users with such leaflets.
5. As 662 (page 1 line 10) makes clear, a number of self-adhesive leaflet labels were known at the priority date of the patent. The patent goes on to point out:

"These labels can suffer from the disadvantage that they can be difficult for a user to open when the self-adhesive label is adhered to a product.

The present invention aims to provide a convenient and elegant solution to this problem."

There follows the consistory clauses in the form set out in the claims. After that the invention is described with the use of four figures. Figures 1 and 2 illustrate "A first embodiment of the present invention." Figure 3 illustrates a method of manufacture of the first embodiment and Figure 4 shows a perspective plan view of a label in accordance "with a second embodiment of the present invention".

6. I am indebted to the judge for this description of those embodiments.

"7. In the art of mechanised and high speed application of labels to the sides of containers, the labels can be assembled on a web of backing material. This frequently has a siliconised surface which allows the labels to be detached from it at the point where they are to be applied to the containers. '662 illustrates two types of leaflet/labels. It is convenient to consider the one shown at figure 4 first.

Figure 4 of '662



8. This shows a leaflet (64) on a piece of release paper or backing (66) held in position by a covering of self-adhesive clear laminate (74), one corner of which (76) has been rendered non-adhesive by a patch of ink. The leaflet is also stuck to the release paper (66) by a layer of adhesive (68). The release paper has characteristics which will allow it to become detached fairly readily from the adhesive backing of the laminate (74) and the adhesive (68). In use, a web of the release paper carrying these leaflet/labels is brought close to the container onto which one of them is to be fixed. At the point of application the paper web passes round an acute bend. The leaflet/label, which is releasably attached to the paper, is sufficiently rigid not to follow the web round the bend. Instead it begins to peel off the web. It attaches itself to the container.

9. A second type of leaflet/label is depicted in Figure 2 of the patent as follows:

Figure 2 of '662



10. In this embodiment, as in the one shown in Figure 4, there is a laminar cover (12), a booklet or leaflet (10) and a release paper or backing strip (4). However in this case there is also a sticky base label (6) which lies between the leaflet and the backing strip, So, when the leaflet/label is applied to a container, it will have a three part construction of laminar cover, leaflet and the base label. Base labels are very well known and have been for many years. However, as depicted in Figure 2, at one end the base label is sandwiched between one end of the laminar cover and the backing strip. As shown in this drawing, the base label runs under the leaflet but it stops short of the other end of the laminar cover. So, at one end of the leaflet/label the laminar cover is directly but detachably connected to the backing strip while at the other end the laminar cover is not attached directly to the backing strip. As compared with the one shown in Figure 4, this leaflet/label is markedly asymmetrical."

7. The patent points out that the provision of a patch of ink on the rear-wardly directed surface of the edge part is a neat and convenient solution to enable a user readily to identify which part of the label requires pulling in order to be able to open it and to provide a flap which is unadhered to the product.
8. Uniquely, in my experience, the patentees accept that the solution to the problem which the invention was said to solve was not inventive. The invention is now said to reside in features shown in the figures, but not described in the patent as being inventive. Those features are said to overcome the problem, not mentioned in the patent, of applying leaflet labels to curved surfaces. The judge explained the problem in this way.

"11. …. Before turning to that, it is necessary to say something about a problem which can manifest itself in relation to leaflet/labels. Leaflet/labels can be applied to a wide variety of containers and to a variety of locations on such containers. If they are attached to planar surfaces, no particular problem (or no problem with which this case is concerned) arises. However a problem can manifest itself when such a label is applied mechanically to curved surfaces. If a single sheet sticky label is applied to a curved surface, it follows the curve and can stick to the surface. However in some cases it is not so easy to make a multilayer leaflet stick to the side of a cylinder. Subject to certain qualifications which I will refer to in a moment, this was explained succinctly in Mr. Floyd's skeleton argument as follows:

"One of the limitations of these leaflet/labels was that they could not be used on small cylindrical objects without rucking up and/or tending to lift off from the surface to which they were attached. This was because the sandwich construction sealed the leaflet at both ends. Consequently, when attached to a cylindrical container on the packaging line, the cover had to stretch around a wider radius than the base label. The problem can be appreciated by wrapping a booklet of Post-It notes around one's finger. If the free edges are pinched together, the booklet resists being wrapped. In the case of laminated leaflet/labels, the additional stiffness imparted by the laminar material meant that when in use, the leaflet/label was prone to peel away from the surface of the container."

12. This can be illustrated by the following figure which is deliberately drawn in an exaggerated way to emphasise the point:

Thick Leaflet



Cylindrical container

13. It can be seen that although the outer surface and the inner surface of the leaflet are both going round 180^o, that is to say half the circumference of the cylinder, the former has to be much longer than the latter. The drawing also emphasises a number of other things. The same phenomena exist even when a single sheet of thin paper is wrapped round a cylinder. However because the paper is usually very thin, the differences in length between the outer surface and the inner surface are very small indeed and can be accommodated within the 'give' of the material from which the paper is made. The significance of the problem depends, among other things, on the thickness of the label, the distance it has to travel around the cylinder and the size of the cylinder. So the size of the problem, and indeed, whether it is a problem of any practical significance at all depends on these factors. Needless to say, the problem does not exist if the leaflet is applied to a planar surface."

9. The judge then explained how the embodiments illustrated in figures 2 and 4 of the patent dealt with that problem.

"14. It is now possible to return to the leaflet/label depicted in Figure 4 of '662. As there shown, there is a discontinuity between the right-hand end of the glue (68) and leaflet (64) on the one hand and the part of the laminate (74) on the right of the drawing on the other. If the left-hand end of the leaflet/label is applied to the side of a cylindrical container, the inner surface which was in contact with the release paper (66) will have to travel less far than the outer surface made up of the laminate (74). Tension will build up between these layers. However because the web is made up of release paper, as the application of the label to the container wall moves towards the right in the drawing, the forces will make the right-hand end of the laminate detach from the release paper, thereby relieving the tensions which had built up in the leaflet/label. The free-floating right-hand end of the laminate will then be attached to the container wall. It will be appreciated that by this means the far right-hand end of the laminate will have moved towards the extreme right-hand end of the layer of glue (68) and the leaflet as compared with its position when the leaflet is in its planar form. In fact the same thing would happen if the leaflet/label in figure 4 were to be applied from right to left instead of left to right as shown. In each case any tension building up in the leaflet/label as it is applied to the curved surface of the container will be released by the ability of the last piece of laminate to detach itself from the release paper. The design of the label enables the two ends of the label to move towards each other in the process of being applied to the container. This freedom of relative movement as between the two ends of the laminate is an integral part of the tension-releasing ability of the label.

15. I can now turn to the asymmetrical embodiment depicted in Figure 2 of the patent. As mentioned above, there is a base label (6) which is located under the leaflet and one end (i.e. the right-hand end) of the laminate (12). In this case, if the leaflet/label is to release the tension which might be generated if it is applied to a small cylindrical container, it must be applied to that container starting with the part shown on the right of the drawing. If this is done, then as the label passes round the surface of the container, tension will build up and, as the application moves towards the left, at some point the left-hand end of the laminate will detach from the release paper, thereby relieving the tension. The free left-hand end will then be attached to the surface of the cylindrical container. Once again, the far left-hand end of the laminate will have moved towards the far right-hand end. If, instead of this, the label is fed from left to right, the tension created during its passage round the container will not be released. The left-hand end will be clamped in position on the container but the right-hand end of the laminate is stuck firm on the base label (16). It is not detachably connected to the release paper."

10. Before this Court, Instance relied on claims 6, 7 and 10. Claims 7 and 10 are method claims and I shall return to them later. Claim 6 is appendant to claim 5 which is apendant to claims 1-3. Thus claim 6 in its widest form can be considered as the combination of claims 1, 5 and 6, which are in this form:

"[Claim 1] – A self-adhesive label comprising a multilaminar label portion, a self-adhesive laminar material extending over, and adhered by its self-adhesive surface to, the multilaminar label portion thereby to form two self–adhesive edge portions thereof on opposed sides of the multilaminar label portion, a backing of release material to which one of the edge portions is releasably adhered by a self-adhesive rear surface thereof and an unadhesive portion which is located on the rear surface of the said one edge portion.

[Claim 5] – A self-adhesive label according to any one of the claims 1 to 3 further comprising a self-adhesive support piece which is carried on the backing of release material and to which the multilaminar label portion is adhered.

[Claim 6] – A self–adhesive label according to claim 5 wherein the edge portion other than the said one edge portion is adhered to a surface of the support piece."

Obviousness

11. In the end the only piece of prior art relied on by Denny was its Kleerform leaflet label which was first supplied to Vidal Sassoon in 1988. As the judge said:

"24. …. The only piece of prior art relied on by Denny consists of a type of leaflet/label made by it and first supplied to Vidal Sassoon in 1988. It is called the Kleerform label. It is, in substance, a leaflet/label having nearly all the features of the label in Figure 4 of '662. Mr. Sessions, who gave expert evidence on behalf of the claimants, illustrated it as follows:



25. Once again the self-adhesive, clear laminate cover sticks down to the release paper on either side of the leaflet. The advantage of this type of label is exactly the same as that depicted in Figure 4 of '662 namely that it can be applied to sharply curved container surfaces even if the leaflet is quite bulky. The presence of two distinct areas for sticking the label down, here shown as being to the left and the right of the leaflet, allows for the release of tension as it is applied to the curved surface. As Mr. Denny explained in the witness box, with two adhesive footprints the first sticks where you want it to stick and the second sticks where it wants to stick whilst wrapping it round a cylindrical container. Mr. Sessions also accepted that that was how a man in the art would understand the Kleerform label to work (Transcript Day 1 page 51). In fact there could be little dispute on this score. As I have already noted, it is the claimants' case that anyone in the art in the late 1980's who saw the illustrations in '662 would understand that the two types of leaflet/labels there depicted would be suitable for applying to cylindrical containers, even though there is not a word to that effect in the specification or any hint that it was intended that they be so used. I have no doubt that anyone who was shown the Kleerform label in 1988 would know that it was suitable for application to cylindrical containers (it was in fact applied to such containers by Vidal Sassoon) and, importantly, how it worked. It was promoted for use on cylindrical containers."

12. The essential difference between claim 6 and the Kleerform label was that the Kleerform label did not have a base label. There was no dispute between the parties that the use of base labels was obvious. The dispute between them concerned the addition of such a label to the Kleerform and the position of that label. If such a base label were to be used there are in practice only three possible ways which are illustrated below

A.



B.



C.


13. Instance submitted that it was not obvious to think of putting a base label on the Kleerform; but if that submission was not accepted the only obvious form was that shown at A above. Denny submitted that all were obvious, but B and C above were the obvious ways of modifying the Kleerform as they would maintain the purpose of the two adhesive footprints which was an essential element of the Kleerform construction.
14. The judge accepted Denny's submission. He said:

"30. In fact the design on the left [B] was put into production by one of Denny's licensees and supplied to Tippex in 1990 or 1991. I can see nothing inventive in this. It retains the multiple footprint feature which is apparent in Kleerform and just adds another layer underneath the mille-feuille constituted by the leaflet. Even Mr. Sessions was prepared to accept that it was 'less clever'.

31. I can see nothing clever or inventive in the design on the right [C]. Once again it retains the multiple footprint requirement of Kleerform. If, for purely aesthetic reasons or because a large amount of information has to be included on the base label, the latter has to be or is chosen to be larger than the footprint of the leaflet mounted over it, it is difficult to see how a Kleerform-type label could be designed other than as illustrated by the drawing on the right. An example of a design using such an offset was shown to me during the trial. The customer wanted a label which carried a printed scale on it to enable the end user to determine the volume of contents in the container. That scale had to be located permanently on the container. The obvious place to put it is on a base label. On the other hand it was desired to have the scale visible even when the leaflet is in place. An obvious design solution is to have the scale printed on the edge of the base label and to have it protrude from under the leaflet. That is what was done. Mr. Sessions accepted that such a design is the sort of arrangement which customers might well want for aesthetic reasons. One passage from his expert report is illuminating on this subject:

"In 1989/90 it was very common for leaflet labels to have a base label or support piece on which the leaflet or booklet is mounted. This is a self-adhesive label in its own right, which is permanently adhered to the product in use. When this self-adhesive label performs the function of a leaflet/booklet carrier, it is commonly referred to as a "base label". …

Traditionally, in leaflet labels, base labels have been used in a certain way as a carrier. The base label can carry text, which text can be basic information which stays adhered to the product if the leaflet is opened or removed, and as such can appear underneath the leaflet, and/or can be information additional to that contained in the leaflet printed on areas of the base label not covered by the leaflet. Structurally the base label provides the surface by which the label is adhered to the product. It also has served the function of assisting in the placement of the leaflet by defining the perimeters within which the leaflet needs to be applied." (emphasis added).

32. If a leaflet/label meeting such design criteria is to be used on the side of a container and to take advantage of the known benefits of the Kleerform multiple footprint, it is difficult to see how it could be done other than as shown in the right-hand drawing in paragraph 29 above [C]. This is, of course, the same as the Figure 2 arrangement from '662. In my view both of the above Kleerform-type products incorporating a base label were obvious at the priority date."

15. Mr Watson submitted that this Court should not interfere with the judge's conclusion unless he had erred in principle which he had not. The Court's task was to review the judge's conclusion in the way suggested by Lord Hoffmann in Designers Guild Ltd v Russell Williams (Textiles) Ltd [2001] FSR at 122 line 27:

"The appellate function

The question of substantiality is one of mixed law and fact in the sense that it requires the judge to apply a legal standard to the facts as found. It is, as I said, one of impression in that it requires the overall evaluation of the significance of what may be a number of copied features in the plaintiff's design. I think, with respect, that the Court of Appeal oversimplified the matter when they said that they were in as good a position to decide the question as the judge. I say this for two reasons.

First, although the question did not depend upon an assessment of the credibility of witnesses, there seems to me no doubt that a judge may obtain assistance from expert evidence in identifying those features of an artistic work which enable it to produce a particular visual effect. The plaintiff's expert Mr Herbert described his expertise as "the art of visual literacy". This seems to me to be right. So I think that the judge, having heard Mr Herbert, was well placed to assess the importance of the plaintiff's designer's brush strokes, resist effect and so forth in the overall artistic work. The Court of Appeal, on the other hand, adopted a reductionist approach which ignored these elements.

Secondly, because the decision involves the application of a not altogether precise legal standard to a combination of features of varying importance, I think that this falls within the class of case in which an appellate court should not reverse the judge's decision unless he has erred in principle: see Pro Sieben Media A.G. v Carlton U.K. Television Ltd [1999] 1 WLR 605 at 612-613. I agree with Buxton LJ in Norowzian v Arks Ltd (No.2) [2000] FSR 363 at 370 when he said:

…[W]here it is not suggested that the judge has made any error of principle a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges in this court, or at least by two of them, will be different from that of the trial judge.

In my opinion the judge made no error of principle. His decision that the copied features formed a substantial part of the work should therefore not have been reversed. I would allow the appeal."

16. Mr Floyd did not suggest that the court's jurisdiction when deciding obviousness under CPR 52 should be exercised other than as suggested in Designer's Guild. He submitted that the judge had erred in principle due to a failure to adopt the structured approach to deciding obviousness advocated by Oliver LJ in Windsurfing International Inc v Tabur Marine (GB) Ltd [1985] RPC 59 at 73. He went so far as to submit in his skeleton that it was now settled law, pursuant to a number of cases in the Court of Appeal, that obviousness should always be decided using the Windsurfing formula. To support that submission he referred to a number of my judgments. Having reread them I adhere to the view that the structured approach of Windsurfing is useful, but there is nothing in those judgments to say that it is essential. The court has to decide whether an invention is obvious and a judge cannot be faulted from going straight to that question, provided that he adopts the mantle of the skilled person and asks himself the correct question. In this case it is not surprising that the judge did not mention Windsurfing as neither counsel referred to that case during their oral submissions.
17. Mr Floyd went on to submit that the judge's failure to adopt the structured approach of Windsurfing had resulted in a failure to make findings as to what was the common general knowledge at the priority date of the patent. That had resulted in him assessing obviousness with hindsight reasoning.
18. According to Mr Floyd it was common general knowledge at the priority date of 662 that all leaflet labels were made as shown in A above with the base label forming the entire footprint. Further the skilled person knew that such products suffered from the limitation that they could not be used on small cylindrical containers without rucking.
19. The judge said in paragraph 29 of his judgment that leaflet labels in the A form had been made in the past. He went on to hold that they "appear to have been accepted and used without complaint, although this may be because they were used only with their leaflets and in circumstances where rucking up of the label did not occur to any significant extent." There was ample evidence from Mr Denny to support that conclusion. The judge did not fall into error in appraising himself as to what was the common general knowledge.
20. There was no dispute between the parties as to what was the inventive concept. It was the provision of a leaflet label with the offset base label feature of claim 6. That the judge realised. Further he clearly had in mind the prior art relied on, the Kleerform label, and that the difference between that product and the invention was the provision of the offset base label. I also reject the submission that the judge asked himself the wrong question. It was as the judge realised – did the provision of an offset base label with a Kleerform constitute a step which would have been obvious to the skilled person or did it require a degree of invention? He answered that question, using the evidence. No error of principle appears. For that reason I would reject the appeal, but in deference to the persuasive submissions of Mr Floyd I will go on and explain why I believe the judge came to the right conclusion.
21. Mr Floyd submitted that the judge had failed to give effect to the evidence. He submitted that he had disregarded the evidence given by Mr Sessions and the cross-examination of Mr Denny, in which Mr Denny had accepted that the patent was inventive. Having read the evidence of those experts, I have no doubt that the judge was entitled to conclude in paragraph 27 of his judgment "….. the overall impression made on me was that Mr Denny honestly believes that the offset arrangement was obvious from the date of introduction of the Kleerform label and Mr Sessions honestly believes that, had he been in the relevant field at the time and had he been involved in the design of labels, he would not have hit upon it." Further, the judge was right to conclude that in the end the decision as to whether the invention was obvious was his "aided by the totality of the evidence adduced."
22. Mr Floyd's real complaint was that the judge had rejected the claimant's case on obviousness. Before us he submitted that the addition of the offset base label to Kleerform was only obvious with hindsight. That being so the judge had come to the wrong conclusion. He submitted that the common general knowledge leaflet labels had base labels across the whole footprint. There were good manufacturing reasons to adopt that construction. The Kleerform was strikingly different because it was designed to avoid rucking. That was achieved by doing away with the base label. Further it was advertised as a label which could be removed. That being so, it was not obvious to take "the backward step" of putting a base label into the Kleerform. That was supported by the fact that the problem of rucking of leaflet labels with base labels had been known since the early 1980s, and despite the desire for a solution, none had been put forward until the invention in 1990.
23. In my view the reasoning in paragraphs 30, 31 and 32 of the judgment is correct. Mr Floyd's submissions fail to take account of the way that designs move forward. Leaflet labels moved from the A form to the Kleerform. It was clear to the skilled person that an essential element of the Kleerform was the existence of the two footprints and that to fix a base label across the whole footprint would destroy the purpose of the design. It was established that base labels were considered necessary by some customers so that essential statements on a product remained attached to the container. Thus there could be nothing inventive in considering whether it would be possible to maintain the advantages of the Kleerform construction and incorporate a base label. The skilled person would, I believe, immediately come up with the only two possible constructions which are shown at B and C above.
24. The submission that the invention could not have been obvious otherwise it would have been done before also fails. As the judge pointed out the evidence did not establish that there was the need. That was supported by the lack of evidence that the invention had been commercially successful. The conclusions reached by the judge in paragraph 33 of his judgment cannot be faulted.

"33. In coming to that conclusion I have considered Mr. Floyd's argument, set out at paragraph 27 above, that it took Denny a long time to arrive at its infringing design and then only after it had been shown the Instance leaflet/label. Behind this was the suggestion that there existed a long felt want. In my view the claimants came nowhere near proving that there was such a want. It will be appreciated that wrapping a label round a cylindrical container only becomes a problem if the diameter of the cylinder, the length of the label, the thickness of the label and any leaflet on it and the material from which the label is made are such as to give rise to significant rucking. As Mr. Denny said, and was not challenged, there has been a comparatively recent growth in the size, and therefore thickness, of the leaflets attached to products. There is no evidence before me that at the priority date or in the few years thereafter there was a significant problem with existing leaflet/labels or that there was a pent up demand for a solution. If there had been, no doubt Mr. Instance would have referred to it in his patents and would have proclaimed that he had found the long-awaited solution. Even now there is no evidence that any substantial number of multiple footprint leaflet/labels are sold. Furthermore, the reason Denny did not suggest an offset design earlier was explained by Mr. Denny and not really challenged: Denny make labels to meet their customers' requirements. They are reactive. As Mr. Denny explained, no customer asked his company for a leaflet/label incorporating a base label at any time between the introduction of the Kleerform and 1992. The suggestion that Denny took a long time to arrive at its infringing design is not borne out by the evidence. I have little doubt that had a customer asked him at any time after the introduction of the Kleerform he would have arrived at the offset design without any difficulty. Anyone competent in the art would have done so."

25. Mr Instance, the person named as the inventor, did not give evidence, although he had made a witness statement. If he had given evidence he would have been able to explain why he had suggested in his patent that the disadvantage of the previously known leaflet labels was the difficulty of opening; why his patent never suggests that he had made the invention of the offset base label and why it does not refer to the alleged problem that had existed since the early 1980s. I suspect the answer is that given by the judge namely that there was no established problem and it was not inventive to add an offset base label to the Kleerform.

The Method Claims

26. Instance relied upon claims 7 and 10. They relate to the method of making the easy release tab at the corner of the laminate. The broad idea of such an easy release tab was conceded to be known or obvious. The only issue was how to achieve it. Those claims are as follows:

"7. A method of producing a succession of self-adhesive labels carried on a backing of release material, the method comprising the steps of:-

(a) releasably adhering a succession of multilaminar label portions to a backing of release material;

(b) either before, during or after step (a) applying a succession of patches of non-adhesive material to the backing of release material;

(c) applying a self-adhesive laminar material over the succession of multilaminar label portions and patches on the backing of release material, the laminar material being adhered thereto by the self- adhesive surface thereof; and

(d) cutting through the laminar material and the multilaminar label portions thereby to form the self-adhesive labels, each self-adhesive label including an edge portion of the laminar material having a respective one of said patches which is unadhered to the backing of release material."

……

10. A method according to any one of claims 7 to 9 wherein the patch is printed onto the backing of release material."

27. The judge's reasoning for finding claim 7 obvious was as follows:

"39. This is directed to preventing the corner of the self-adhesive laminar layer from sticking to the release paper. Mr. Floyd accepts that there are two ways of doing this. One is to put a non-stick or stick-defeating surface on the release paper. The other is to put that surface on the underside of the laminate. Either way achieves the objective of inserting a non-stick barrier between the laminate and the release paper. Claim 7 is directed to the first of these two alternatives. Mr. Watson says that both are obvious. Mr. Floyd says that the second is but the first is not. This really is not a subject which admits of much analysis. I have no doubt Mr. Watson is right. It is difficult to imagine anyone in the art thinking of one of these alternatives without thinking of the other."

28. As to claim 10 the judge concluded that as he had held that applying a non-stick or stick-defeating surface to the release paper was obvious, the only question for decision was whether it was obvious to do that by means of a printing process. Instance submitted that that step would not have been an attractive option because the substrate had a siliconised surface. The release paper was intended to provide a poor footing for the adhesive and it would be likely to make a poor footing for printing ink.
29. Having cited an extract from the cross-examination of Mr Denny the judge said:

"43. Taken as a whole, this passage suggests that Mr. Denny would have thought of using printing but it would not have been the first to be tried because getting the ink right might have been difficult. It is worth bearing in mind that the patent contains no teaching as to the type of printing ink to use. It is not suggested that anyone would have any difficulty in finding or needs instructions on how to find or make a suitable ink. It and these claims are concerned only with the general concept of using an unspecified form of printing with an unspecified type of ink. I accept Mr. Denny's approach as one which would have occurred to persons skilled in this art. Mr. Floyd places particular emphasis on the last question and answer in this extract from the transcript. He says that this amounts to evidence from Mr. Denny that the potential difficulties with printing are such that it would not be obvious to try using it. This is, of course, skilful cross-examination. But I do not think Mr. Floyd's argument is fair to the evidence as a whole. In fact on analysis it will be appreciated that his last question carries two, inconsistent, suggestions. On the one hand it is putting to Mr. Denny that of the things that he would try, printing is not the first, and secondly it suggests that printing would not be tried at all. Having seen Mr. Denny in the witness box and having re-read this transcript, I have come to the conclusion that Mr. Denny was consistently answering the first of these questions and never intended to say that printing was not worth trying. In any event, whatever may have been extracted from Mr. Denny under cross-examination, I have come to the conclusion that on a balance of probabilities a man skilled in the art would have considered using printing to apply the non-stick patch, although he might well have tried other expedients first. In the circumstances these two claims fail for obviousness also."

30. Mr Floyd attacked the conclusion reached by the judge relying upon the evidence of Mr Denny and Mr Sessions. He submitted that the judge had not had proper regard to their evidence. I reject that submission. The judge heard those witnesses give their evidence and, as it is clear from his judgment, he made use of that advantage to come to a clear conclusion as to the effect of that evidence. We have not had that advantage and could not come to a different conclusion as to the effect of the evidence. There is no error of principle in the judge's conclusions. Further once it was accepted that the provision of a patch was obvious, there could not have been any invention in the idea of where to put it as there were only two possible and evident places. There could possibly be invention in how to do it, but not where to put it. The judge came to the right conclusion on these claims.
31. In the light of the conclusion I have reached there is no need to consider the further ground of invalidity relied on by Denny.
32. For the reasons I have given I would dismiss this appeal.

RIX LJ:

33. I agree.

LLOYD J:

34. I also agree.
ORDER: Appeal dismissed with costs of the appeal and the respondent's notice; detailed assessment of costs; payment on account in the sum of £30,000 within 14 days; permission to appeal to their Lordship's House refused; stay of the order of revocation for 21 days to enable the petition to be presented (if thought fit); stay to be continued on the usual terms if petition is presented; junior counsel to agree a minute of the order. (Order does not form part of approved Judgment)