Sparks fly as sharks fly, but attack on patent validity loses its bite

Sharks in the courtroom are nothing new according to some critics of the legal system, but they are usually referring to the lawyers who appear there, charging inflated fees and ruining their clients. In this note, occasional guest blogger Paul England (senior associate, Taylor Wessing, and definitely not a shark) gives us the low-down on a recent fairly economical patent dispute in which the only things inflated were the products made by the respective parties. This is what he tells us:

The Great White Infringer
The recent decision of His Honour Judge Hacon in the Intellectual Property Enterprise Court, England and Wales, in William Mark Corporation & Another v Gift House International Ltd [2014] EWHC 2845 (IPEC) is a very largely fact-based patent action concerning flying fish toys. The first claimant devises and markets toys and is the proprietor of the two patents in suit: GB 2482275 ("275") and a divisional of 275, GB 2483596 ("596"). Both are entitled "Flying shark", the invention of which is described in 275 in these terms: "flight of the toys can be controlled in both horizontal and vertical direction. Most preferably, such flying toys simulate with a high degree of realism movement of a fish in its natural habitat". The most important features of these are:
* 275, claim 1 - this can be summarised as a flying toy, comprising a body that includes a portion filled with lighter than air gas, in order to give neutral buoyancy; a moving surface and tail assembly, coupled to a first actuator and the body portion by an elastic element, such that it can move at variable and different angles to the forward motion of the body portion (ie a moving tail fin, but not necessarily one that propels the fish forward); a second actuator coupled to the body that can move a weight so as to change the pitch of the toy to allow for controlled ascent and descent (ie the fish can point its head down or up);

The patented Mark Shark
* 275, independent claim 9 - concerned with the tail fin assembly for a flying toy this can be summarised as comprising: a base plate with an actuator coupled to a moving surface such that the surface can move as described in claim 1; an elastic element that allows reversible coupling of the tail fin assembly to an inflatable and compressible body portion of the toy; and, configuration to allow application of a compressive force to the body via the elastic element (so as to maintain rigidity between body and tail fin);

* 596, claim 1 – primarily concerned with the movement of the weight to control pitch and provide for the weight element to comprise removable ballast;

* 596, claim 2 – contains the additional feature that "…the toy has a moving surface that is configured to move side-by-side for forward propulsion of the toy".
The defendant also devises toys, and imports for sale in the UK a flying fish known as a “Mega Flier”, which the claimants alleged, infringed its patents. The defendant argued that the patents were invalid.

Our guest blogger has left his mark
Further to an Order of Mr Justice Birss following this action's Case Management Conference, there were two issues to be decided on infringement, one of which was argued: did the defendant's products have an 'elastic element' within the meaning of claim 1 of 275? Judge Hacon held that the defendant's toys had plastic strips which were sufficiently elastic to serve as elastic strips as required by claim 1 of 275.

Invalidity was alleged on grounds of lack of inventive step over two items of prior art:
* Slater – disclosing an anchoring means on a full-sized airship. This comprises a magnet which, when the airship is brought to rest, attaches to an anchoring member on the ground. The airship also has a track support mounted lengthways along the underside of the main body, which allows the airship's gondola to slide forwards or backwards.

* Kinoshita – disclosing a mechanism for propelling a floatable structure filled with lighter than air gas. Such as a flying toy (exemplified by a flying fish in the specification). A powered fin swings to and fro in a vertical plane propelling the toy forward.
The judge held that claim 1 (and dependent claims) of 275 was not obvious over Kinishita, particularly as regards the second actuator and moving weight to control pitch claimed in 275. Further, there was no expert evidence to suggest that it was obvious on the basis of Slater to add a flapping tail to a toy. As regards independent claim 9, there was no evidence that it was obvious to adapt the base plate and plastic strip in Kinoshita to make the plastic strip elastic and have the surface move at variable and different angles. Slater also did not render claim 9 obvious. The result was that all claims of 275 were valid and the defendant's product infringed claim 1.

As regards 597, only Slater was relied upon. The experts accepted that removable ballast was a common feature of such toys and nothing was said to dispute that adapting the moving gondola to a moving weight that controls ascent and descent was obvious. However, the further feature of claim 2 which claimed forward propulsion by the side-to-side movement of the moving surface was not obvious over Slater. The result was that claim 2 of 597 was valid and infringed by the defendant's Mega Flier.