Handi-Craft Company & Anor v B Free World Ltd & Ors

For obviousness, the skilled but unimaginative person considers the teaching and operating principle of prior art, not merely its detailed embodiment or drawings. Where the skilled person seeks a solution to a known technical problem and the prior art explains a principle that would solve it in the relevant field, applying that principle may be obvious even though practical construction, cleaning, cost and marketability require further work. Commercial success may assist where it demonstrates that an apparently obvious idea was not obvious, especially in the presence of a long-felt want, but no such evidence was relied on here.

The patentees appealed against the decision of His Honour Judge Fysh QC in the Chancery Division (Patents Court), reported as [2007] EWHC B10 (Pat). The judge had held claims 1–7 of EP (UK) 0 845 971 partially invalid for obviousness over US patent 5,449,098, Offman, while rejecting other attacks and finding infringement.

On appeal, the parties focused on claim 1, with claims 2–6 standing or falling with it. Offman disclosed a tube and reservoir arrangement that prevented a partial vacuum in a liquid bottle. The central issue was whether applying that venting principle to a nursing bottle, including a nipple, was obvious to the skilled person at the priority date.

1. Appeal dismissed. The finding that claim 1 was obvious over Offman was upheld. Claims 2–6 stood or fell with claim 1, and the court therefore dismissed the appeal without needing to decide the respondent’s notice.
2. On the appellate approach, the challenge depended on showing an error of principle, as reflected in Biogen v Medeva [1997] RPC 1. The court found no such error in the judge’s assessment.
3. The relevant question was whether the tube-and-reservoir principle disclosed in Offman, rather than every detail of its particular soft-drink-bottle embodiment, made the claimed nursing bottle obvious. Offman operated in the same way as the patent in suit: when liquid was withdrawn, atmospheric air entered through the inlet and reservoir arrangement, preventing a partial vacuum.
4. The judge had not erred in principle by referring to the skilled person as looking for improvement or as having a constructive optimism. The patent itself acknowledged a known need for a venting baby bottle, and that need formed part of the common general knowledge. Once the notional skilled person understood Offman, the same principle could not reasonably be overlooked as a means of venting a nursing bottle. That was sufficient to bring the skilled person within claim 1.
5. Practical and commercial questions remained relevant to whether the skilled person would actually make the product. The device would need to be readily cleanable, manufacturable at an acceptable price and commercially acceptable. Those considerations did not prevent the underlying application of the disclosed principle from being obvious.
6. Commercial success can sometimes show that an apparently obvious idea was not obvious, particularly where there is a long-felt want. No reliance was placed on commercial success in this case. Lewison J added that the skilled person reads the text of prior art as well as its drawings; where the text explains the principles of operation, those principles need not be independently deduced.

1. Court of Appeal (Civil Division): Appeal dismissed. The court upheld the decision that claims 1–7 of the patent were partially invalid for obviousness over Offman, without considering the respondent’s notice. [2008] EWCA Civ 868
2. High Court of Justice, Chancery Division (Patents Court): His Honour Judge Fysh QC held claims 1–7 partially invalid for obviousness over US patent 5,449,098, with revocation ordered unless the patent was amended to the court’s satisfaction. Other attacks were rejected and infringement was found. [2007] EWHC B10 (Pat)