Mr. Christopher Floyd QC and Mr. Piers Acland instructed by
Hammond Suddard for the Claimants
Mr. Anthony Watson QC and Mr. Thomas Hinchliffe instructed by Eversheds for
the Defendant
- This is the trial of six sets of proceedings relating to five patents and
three patent applications. All of the patents/applications are owned by Mr.
David Instance or David Instance Limited ("Instance") and relate to self-adhesive
multilaminar labels, that is to say self-adhesive labels which contain a leaflet
or booklet. These are referred to as "leaflet/labels". In each action the
parties are Instance and Denny Brothers Printing Limited ("Denny") who are
rival manufacturers of leaflet/labels.
- By the time that this matter came on for trial there appeared to be four
issues to be resolved: (1) infringement; (2) validity; (3) entitlement and
(4) threats. However the parties, in large part assisted by the sensible approach
adopted by their respective legal representatives, have resolved, or resolved
at least for the time being, many of those issues. In fact only two matters
remain for determination, namely validity and threats. Furthermore, in relation
to threats, there is no matter of substance which I am being asked to deal
with at the moment. Instance admit they made threats. Insofar as it is said
that Denny's products infringe some of Instance's patents, that is conceded.
Therefore the threats will be justified unless the patents are invalid. So
it is only validity which is in issue before me. If I find that unjustifiable
threats have been made by Instance, then questions may arise as to the scope
of the relief Denny should obtain. This is a matter on which Denny wishes
both to amend its pleadings and adduce further evidence. Sensibly the parties
agreed that this could be reserved to a later date after the issue of liability
has been resolved.
- So the only live issue before me is validity. Even here the parties have
adopted an entirely sensible approach. Mr. Floyd, who appears on behalf of
Instance, has only asserted a small number of claims to be independently valid
while Mr. Watson, for Denny, has restricted his arguments on obviousness to
one piece of prior art only. In addition there is a live dispute on an attack
of added matter.
- The number of patents in dispute before the court gives a misleading impression
of the scope of the technology in dispute. In fact many of the patents are
divisionals. There is substantial duplication and overlap between them. Only
three patents need be considered: European Patent (UK) 0,628,941, GB 2,247,662
and GB 2,274,268. Of these only the first and last are said to be infringed.
- This case is concerned in particular with leaflet/labels of the type which
can be stuck to the side of cylindrical containers, such as those used to
contain pharmaceuticals and agrochemicals. They are designed so that when
they are placed on a product they will lie flat and shut but can be opened
by the purchaser of the product to reveal the leaflet. The need and, in some
cases, obligation to give ever greater quantities of information to the users
of these types of products means that there is a growing requirement to supply
them with leaflets containing various data. This is a comparatively recent
phenomenon, although it is clear from the evidence before me that the use
of leaflet/labels on the containers of a variety of products has existed since
at least the early 1980's.
- To understand what is at issue, it is convenient to commence with a consideration
of the two UK patents '662 and '268. The latter is a divisional from the former.
Their specifications are in identical terms and contain the same drawings.
- 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
- 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.
- A second type of leaflet/label is depicted in Figure 2 of the patent as
follows:
Figure 2 of '662
- 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 4, 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.
- The way in which these two constructions can work will be considered
in a moment. 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."
- This can be illustrated by the following figure which is deliberately drawn
in an exaggerated way to emphasise the point:
- It can be seen that although the outer surface and the inner surface of
the leaflet are both going round 180o, 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.
- 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.
- 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.
- Finally, before leaving the description contained in '662, I should mention
the disclosure relating to the way in which the leaflet/labels are to be made.
This is illustrated in Figure 3 of the patent. It is only described in relation
to the asymmetrical leaflet/label of Figure 2. The apparatus is as follows:
- A reel of release paper is loaded onto the machinery at 26 and is led through
a variety of stages at which, one by one, the various layers of the leaflet/label
are fed onto or cut in situ onto it. The laminate is depicted by the numeral
46 and is fed from a spool (48). The spool (58) is used to wind up for disposal
the parts of the web of laminate which are released after the die cutters
at station 50 cut away the excess material. The finished leaflet/labels (2)
on the release paper web (4) are then fed onto what is called a "storage reel"
(60). The way in which the web is fed onto that reel can be seen by examination
of the drawing:
- This (which is consistent with the way in which the leaflets are shown being
applied to the web at 40) shows the labels being fed onto the storage reel
in a way which would mean that they will be dispensed at the customer's plant
with the left-hand end of the leaflet/label being released from the release
paper and applied to the cylinder first.
- It is against that background that I can turn to the invention covered by
the '662 patent. The specification is short. The problem which it says the
invention seeks to overcome is expressed as follows:
"A number of multilaminar labels are known. 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".
- The elegant solution which is proposed to the only problem stated by the
inventor to exist, is the provision of the non-sticking tab which enables
the customer to more easily pull off the sticky clear laminate, so as to release
the leaflet trapped between it and the container. However it is conceded before
me that the broad concept of providing such a non-sticking tab (of the sort
frequently found at the corners of packets of pre-packed meat or smoked fish)
is not inventive. The invention for which protection is sought and which Denny
is alleged to have used is quite different. It is the design of leaflet/labels
which are capable of being applied to cylindrical containers in the manner
set out above. None of this is described in the '662 patent. Not only does
the patent not describe the tension releasing mechanism achieved by the separate
releasable adhesion of one or both ends of the laminate to the release paper,
but it does not even refer to the fact that the leaflet/labels are to be applied
to curved surfaces. Nothing is said about the characteristics of the laminate,
curvature of the containers to which the leaflet/labels are to be applied
or the characteristics of the releasable bond between the laminate and the
release paper. There is no suggestion that the asymmetric leaflet/label of
Figure 2 must be applied in one direction rather than the other. Furthermore,
as noted in paragraph 18 above, the patent illustrates the production of a
reel of labels in which the asymmetric leaflet/labels are loaded in the wrong
orientation for allowing them to be applied to the customers' containers in
a way which would allow the tension in the label (if it exists) to be released.
As Mr. Floyd put it, the strip of release paper carrying the leaflet/labels
would need to be re-reeled before the labels could be used in a tension-releasing
way. Needless to say, there is nothing in the patents about the need to re-reel
and the claims to the method of manufacturing the labels are not limited so
as to produce a reel of leaflet/labels orientated in the correct direction.
- There is little doubt that the invention which the claimants now put forward
as being at the heart of this case, is not an invention which had occurred
to the patentee at the time any of the patents in suit were applied for. The
only invention which Mr. Instance thought he had made was the creation of
the non-stick flap which would assist the consumer in removing the laminate
layer from the leaflet/label after the latter had been applied to the container.
As I have said, that broad concept is now accepted as being obvious. Nevertheless
Mr. Floyd says that this does not render the '662 patent or any of the other
patents invalid. The objection that the patents cover something which the
patentee never invented might possibly give rise to some form of attack based
on lack of sufficiency, but no such attack has been launched here, nor is
it immediately apparent how such an attack could be formulated. Furthermore,
as Mr. Floyd says, the fact that the patents may cover an invention which
Mr. Instance never made is not really in point. The important claims in issue
all relate to leaflet/labels of a particular design. The main question to
be determined in these proceedings is whether such products are obvious. There
is no requirement for a patentee to set out the benefits of his invention
in his patent. Furthermore, the claimants were at pains to point out during
the trial that the absence of any description of the mode of use and alleged
advantages of the leaflet/labels the subject of the patents is quite irrelevant.
As Mr. Floyd said a number of times and as was said in evidence, even if the
patents in suit are taken only to refer to applying the labels to planar surfaces,
it would be immediately apparent to any worker in the field how the labels
would work when applied to a cylindrical surface. Anyone in the art who saw
the asymmetrical leaflet/label of Figure 2 of '662 would understand not only
how it works but that it would have to be applied in a right-to-left direction.
Similarly, the need to re-reel the storage reel in Figure 3 of the patent
would be self apparent.
- The latter submission is not in dispute. On the contrary, Mr. Watson relies
on it. In any event, in my view it is correct. Anyone in the art who saw either
of the types of leaflet/labels illustrated in '662 (and for that matter in
the '941) would immediately understand how it could work if applied to labelling
a curved container. He would not need to be told how to use it nor, in the
case of the asymmetric label of Figure 2, would he need to be told from which
end to apply it. That is not only the position now, it would have been the
case at the priority dates of the various patents, i.e. in 1989.
Obviousness
- Although '662 describes two types of leaflet/labels, by the time of the
trial the claimants only sought to maintain the validity of the invention
relating to one of them, namely the asymmetric design of Figure 2. No attempt
was made to maintain the validity of the other type of design. Consistent
with this, Mr. Floyd only seeks to maintain the independent validity of claims
6, 7, 10 and 11. At this point I will concentrate on Claim 6. It is dependent
on Claim 5 which, in turn, is dependent on any preceding claim. Claim 6 at
its broadest therefore gathers together the features of claims 1, 5 and 6:
"[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."
- It is the feature consisting of one end of the laminate cover being attached
directly to the release paper, while the other is connected to the base label
(item 6 in Figure 2 of '662), which is said to be the novel and inventive
departure from the prior art. 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:
- 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.
- The invention is alleged to reside in placing a base label under the Kleerform
type of leaflet/label in an offset arrangement as depicted in Figure 2 of
'662. Mr. Floyd argues that not only was it not obvious to adopt the offset
arrangement, but it was not obvious to place a base label under the Kleerform
label even if it was symmetrically placed immediately under the leaflet, that
is to say in the location indicated at (68) on Figure 4 above. He says that
to arrive at the configuration now relied upon as inventive takes two steps.
Neither is obvious alone. They are not obvious together. He accepts that the
steps may be small but he reminds me that it is important not to be misled
by the clarity of hindsight. Small inventive steps can always be made to appear
obvious once they have been taken. He says that here the chronology points
to the inventiveness of the offset arrangement. Denny had made the Kleerform
leaflet/label in 1987 and sold it in 1988. It did not market a product with
the offset arrangement until after it had been asked to do so by a customer
in 1992. At the time of that request Denny was shown by the customer one of
the Instance leaflet/labels with an offset back label, so Denny did not spontaneously
come to the offset arrangement by itself.
- On the issue of obviousness each side produced expert evidence. Mr. Sessions
appeared on the claimants' side. Unfortunately he did not enter the relevant
field until 5 years after the priority date and even then it does not appear
that he was involved to a large extent in thinking up or designing new label
designs. The expert produced on behalf of the defendants was Mr. Denny. Although
he clearly had the relevant expertise, I have to bear in mind that he has
a personal interest in the outcome of this litigation. Notwithstanding these
points, I have come to the conclusion that both witnesses tried hard to be
objective in the evidence they gave. Each was tripped up by skilful cross-examination,
but 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. In the end, as both sides accept, the decision
on obviousness is one for me aided by the totality of the evidence adduced.
- There is no dispute that there is no invention in adding a more or less
permanent base label to a leaflet/label. For example if a leaflet/label has
to be applied to the side of a can of agrochemicals, it may well need to incorporate
a safety label which remains attached to the can even if the leaflet is removed.
The sticky label must be at the bottom and the rest of the leaflet/label must
overlay it. The question then is, how should the base label be incorporated.
Mr. Floyd suggests that the obvious thing to do is to place it under the totality
of the leaflet/label so that it extends from one end to the other. That would
produce an arrangement as follows:
- Such leaflet/labels have been made in the past and appear to have been accepted
and used without complaint, although this may be because they were used only
with thin leaflets and in circumstances where rucking up of the label did
not occur or did not occur to any significant extent. But in my view it would
be apparent to anyone in the art that this type of arrangement would not release
the tension which could be built up in situations where a thick leaflet/label
is passed round a tight curve. In particular it destroys the two footprint
arrangement which anyone who saw the Kleerform label would immediately appreciate
was the essential requirement if tension relief and the prevention of rucking
was required. It appears to me that it would have been obvious to anyone in
the art that if a leaflet/label was required which continued to have the benefits
of Kleerform and also incorporate a base label, it would have to retain the
multiple footprint arrangement. There are two obvious ways of achieving this,
as illustrated below:
- In fact the design on the left 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'.
- I can see nothing clever or inventive in the design on the right. 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)
- 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. 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.
- 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 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.
- Mr. Sessions suggested that he would have steered clear of the offset design
because it would involve using labels and laminate films of different footprints
and this would have necessitated the use of two rather than one die cutting
stage. That two cutters would be necessary is not in dispute, but it was established
that label manufacturers have used multiple die cutters in the past. It seems
to me that this amounts to no more than a commercial disincentive to adopting
an offset design. There was no technical difficulty in making such a product.
I do not accept that the need for an additional die cutting station renders
the design of the leaflet/label in suit inventive.
- Finally on this issue, I should mention Mr. Floyd's argument that the offset
design achieves certain technical benefits. For example he says that the use
of a multi-layer leading edge in the offset label means that that leading
edge becomes stiffer and therefore will lift off the storage spool and onto
the customers' container more easily. Of course this is something of an illusion.
Depending upon the characteristics of the material from which the laminate
layer and base label are made, the multi-layer edge could be too stiff and
therefore prove a disadvantage because it will tend to make the edge lift
off the can. Therefore whether this is an advantage or not is dependent upon
the materials from which the leaflet/labels are made. But even assuming that
the claimed advantages exist, they do not advance the claimants' case. It
is not suggested that the claimed advantages either singly or together cured
any long felt and pressing problem with existing leaflet/labels. Indeed, if
they are advantages at all, it is not shown that anyone in the art was aware
that they were advantages which they were missing.
- For these reasons I have come to the conclusion that Claim 6 in '662 is
bad for obviousness. It was not suggested that any of the claims to similar
constructions of label in other Instance patents could survive if this was
obvious. It follows that Claims 1 of '268 and Claim 1 of '941 also fail. Mr.
Floyd did not attempt to support the independent validity of Claim 5 of '941
at the trial.
- This leaves another group of claims in '662 to be considered. The way that
they came to be the subject of argument at the trial is somewhat unusual.
As is normal practice in patent actions, the claimants notified the defendant
which claims in each of the patents were alleged to be independently valid.
In relation to '662 the claimants only asserted independent validity of claims
6 and 7. That was communicated to Denny before the exchange of experts' reports.
However in Mr. Floyd's skeleton argument, for the first time, the claimants
also asserted independent validity for claims 10 and 11. This put Mr. Watson
in some difficulty because Mr. Denny had not concentrated on these claims
in his expert report. I indicated to Mr. Floyd that I would be prepared to
allow him to widen out the nature of the case his clients were making but
it would almost certainly be on terms which would result in at least part
of the trial being adjourned and subject to a suitable order as to costs.
This course was not attractive to the defendant. Although it is applying to
invalidate the whole of '662, it is not alleged to have infringed claims 10
or 11. Furthermore Instance admit that they have threatened Denny's customers.
At least one major customer has ceased taking the Denny product. Denny says
that this is due to the threats. It was apparent that Denny did not want to
allow the trial to be adjourned. In the end Mr. Watson took the view that
he could successfully attack these two additional claims even in the absence
of detailed evidence from his own expert on the subject.
- Claims 7, 10 and 11 all relate to the method of making the easy release
tab at the corner of the laminate film (see 76 in Figure 4 of '662). As noted
already, the broad idea of having such an easy release tab is conceded to
be known or obvious. The only issue is how to achieve it. Claim 7 is as follows:
"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."
- 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.
- Claims 10 and 11 can be considered together. They are as follows:
Claim 10: "A method according to any one of claims
7 to 9 wherein the patch is printed onto the backing of release material."
Claim 11: "A method according to claim 10 wherein
the patch is composed of ink."
- Although Mr. Floyd says that each of these is independently valid, he does
not advance any argument to support the suggestion that if printing was known
or obvious, use of ink was not. In my view the claims stand or fall together.
- Since I have already held that applying a non-stick or stick-defeating surface
to the release paper is obvious, the only question is whether it is obvious
to do that by means of a printing process. The argument against taking that
step is that printing would not be an attractive option where the substrate
has a siliconised surface. The release paper is intended to make a poor footing
for the adhesive on the back of the laminate and it will be likely to make
a poor footing for printing ink. This subject was put to Mr. Denny in cross-examination
and is recorded in the following extract from the transcript:
"Q. ... so far as printing is concerned you have given
evidence in your own statement which is back at tab 1 of bundle 5 at page
45, paragraph 137, at the bottom of the page. I just want to make sure there
is no misunderstanding about this. You say: 'Whilst claim 7 refers to applying
patches of non-adhesive material to the release material ....' and we have
discussed that. Then you say: '.... claim 10 covers printing the patch and
claim 11 covers a patch made of ink. However, the release material is coated
with silicone, selected for its repellent qualities (as confirmed by Mr. Sessions)
and the effectiveness of this method was always doubtful....' So again that
is something which would not have occurred to you to have done until you saw
it demonstrated that it had been made to work by Mr. Instance?
A. I am not saying it would not have occurred to me to
do it but the effectiveness of it would have been a major question mark for
the effectiveness of it in my mind.
Q. You would not be sure whether it would work?
A. I think it would depend a great deal on the chemistry
and the practical way it was to be done.
Q. You would have tried other things in preference because
you would not be sure enough of that method to warrant trying that?
A. I would try other things first, yes. That would not
be one of my favourite things to do first because I would have doubts about
how effective it could be made and I think rightly so.
Q. The answer to my question is question (sic), yes, you
try other things first because you would not be sure whether the inking method
would be likely enough to work to warrant trying it?
A. Yes, I think that is probably correct."
- Taken as a whole, this passages 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.
- It follows that all of the claims asserted to be independently valid fail
for obviousness. In the circumstances it is not necessary to consider Mr.
Watson's argument of added matter.
