William Mark Corporation & Anor v Gift House International Ltd

Patent claims must be construed by giving effect to their language and limitations. The word “toy” limited the claims to products of a scale that a child might be expected to play with, even if intended for adult use. In assessing obviousness, it was insufficient merely to identify features in prior art. The question was whether the skilled person would have adapted that prior art so as to produce the claimed combination, supported by appropriate evidence. Claims were not rendered obvious where the evidence did not establish that the skilled person would adopt the required variable and different movement of a surface. A claim requiring propulsion by a moving surface required a noticeable forward motion for the user of the toy to appreciate.

The claimants owned two patents concerning neutrally buoyant flying toys, and the second claimant was their exclusive licensee. The defendant admitted importing and selling flying fish toys, but disputed infringement and challenged the validity of the patents for lack of inventive step. The claimants also pleaded infringement of registered Community designs, but those issues had fallen away before trial. The defendant’s threats counterclaim was not pursued.

The principal issues were the construction and infringement of specified patent claims, and whether the claims were obvious over US patents Nos. 4,272,042 (Slater) and 5,194,029 (Kinoshita). The central questions were whether the defendant’s products contained the claimed elastic element and whether the claimed combinations involved an inventive step.

The court found that the defendant’s plastic strips were sufficiently elastic to satisfy the relevant claims. They permitted reversible coupling of the tail fin assembly to the toy’s body and applied pressure sufficient to maintain rigidity of the compressible body.

1. Construction. The word “toy” had to be given proper effect. It limited the claims to products of a scale that a child might be expected to play with, even where the intended use was more directed towards adults. The claims did not require the moving surface to propel the toy forwards or to control lateral direction unless those features were expressly included.
2. Patent 275. Claim 1 was not obvious over Kinoshita because the second actuator and moving weight for pitch control were neither disclosed nor shown to be part of common general knowledge. It was also not obvious over Slater. Although a skilled toy designer might contemplate making a toy version of Slater’s airship, the evidence did not establish that the skilled person would adapt its moving parts to move at variable and different angles relative to the forward axis. Claims 2 to 8, 9 and 12 were valid; claims 2, 6 and 12 were not separately inventive but remained dependent on a valid claim 1.
3. Patent 597. Claim 1 was obvious over Slater, as was claim 3 and claim 4 insofar as independent inventive step was not alleged. Claim 2 was valid. On a purposive construction, its required propulsive effect had to be sufficient for a user, such as a child, to appreciate noticeable forward movement when the tail moved. The evidence did not establish that the Slater replica would provide that effect, nor that lateral tail propulsion of a neutrally buoyant flying toy was obvious.
4. The defendant’s products fell within claim 1 of patent 275, but not claims 4 or 11, and within claims 1 and 2 of patent 597. The court therefore found infringement of both patents. Issues concerning other infringing acts, damages under Patents Act 1977 section 69, and the exclusive licence were left for further argument.