English Courts discover the Formstein Defence suits the mould

On 24 August 2022, Nicholas Caddick QC (sitting as a Deputy Excessive Court docket Decide within the Mental Property Enterprise Court docket) handed down his resolution in Vernacare Restricted v Moulded Fibre Merchandise Restricted [2022] EWHC 2197 (IPEC), a case on open topped washbowls constructed from moulded paper pulp, resembling these utilized in hospitals, care properties and nursing properties.  The judgment addresses the characterisation of the expert individual, obviousness (together with the impression of economic success as a secondary consideration) and infringement on equivalence.


Vernacare and Moulded Fibre (“MFP”) are rivals within the moulded pulp washbowl discipline.  Vernacare owns two patents, GB 2446793 (the “793 Patent”) and GB 2439947 (the “947 Patent”), each with a precedence date of 2006, which relate to the form and composition of pulp washbowls.  Vernacare began infringement proceedings in opposition to MFP for its washbowl product.  For the 793 Patent, MFP ran a squeeze argument between non-infringement and obviousness over the widespread common data.  For the 947 Patent, MFP accepted that its washbowl infringed, however argued that the patent was invalid.

Vernacare had beforehand asserted the 793 Patent in opposition to Environmental Pulp Merchandise ([2012] EWPCC 41), the place HHJ Birss QC (as he then was) held the patent legitimate and infringed by some merchandise, however not others.  The findings of reality weren’t related to this case because the merchandise and proof have been completely different, however issues of regulation, and particularly problems with building, have been related, given the same old follow for one choose to comply with one other’s discovering, except the latter choose was satisfied that these findings have been fallacious.

The 793 Patent: Doctrine of Equivalents and the Formstein Defence

In 2006, single-use pulp moulded containers have been utilized in care settings as mattress pans, however not as washbowls.  The 793 Patent explains that one of many causes is that washbowls want to carry a higher quantity of liquid (as much as 4 litres) and present designs, which solely integrated a lip, would break when carried.

The answer proposed by the 793 Patent is a washbowl with inwardly projecting recesses on reverse sides of the bowl, as proven in Determine 1 beneath.  These recesses permit the washbowl to be lifted, and supply higher structural rigidity, with the close to vertical edges of the recess being notably essential to this rigidity.

Determine 1 Washbowl with recesses from the 793 Patent

The MFP washbowl doesn’t have separate recesses; as an alternative it has single, undulating, ridge that runs round the entire bowl, as proven in Determine 2 beneath.

Determine 2 MFP washbowl

The problems in dispute have been whether or not the MFP washbowl contained “an enclosing wall comprising recesses” and whether or not these recesses fashioned “grip means” for “facilitating lifting”.  The choose first thought of whether or not the MFP washbowl infringed beneath a ‘regular’ (that’s to say, purposive) building.  Given the 793 Patent claimed “recesses” there needed to be a number of recesses, and the wording of the specification meant that these recesses needed to have close to vertical sides.  Because the MFP washbowl was a single ridge with no close to vertical sides, it didn’t infringe on a standard building.  In making this discovering, the choose was in settlement with HHJ Birss QC, who had discovered {that a} comparable, single ridged product didn’t infringe.  Nevertheless, and in case he was fallacious on this primary difficulty, the choose discovered that the ridge was clearly a grip that facilitated lifting.

Having thought of infringement on a standard foundation, the choose proceeded to evaluate infringement by equivalence.  This was executed by the use of the three questions set out by Lord Neuberger in Actavis:

  1. Does the variant obtain considerably the identical lead to considerably the identical manner because the invention (i.e. the creative idea revealed by the patent)?
  2. Wouldn’t it be apparent to the expert individual on the precedence date, figuring out that the variant achieves considerably the identical consequence because the invention, that it does so in considerably the identical manner because the invention?
  3. Would the expert individual have concluded that the patentee nonetheless supposed that strict compliance with the literal that means of the related declare of the patent was a necessary requirement of the invention?

The reply to the primary two questions requires the identification of the patent’s creative idea.  Vernacare submitted that it was “to supply a moulded paper pulp bowl giant sufficient for use as a washbowl, with a grip means within the type of recesses”, while MFP thought of it “the usage of recesses with vertical sides”.  Nevertheless, the choose didn’t contemplate it essential to determine this level, as Vernacare would fail on two separate factors; the reply to the third query could be ‘Sure’, and MFP might depend on the Formstein defence.

The Formstein defence (named after a call in a German case) is the place an alleged infringer is ready to escape infringement beneath the doctrine of equivalents, if the scope of the declare is so expanded as to learn onto the prior artwork.  There have been obiter discussions of its availability in different UK instances (e.g. by Birss LJ in Fb v Voxer [2021] EWHC 1377, and by HHJ Hacon in Technetix v Teleste [2019] EWHC 126 (IPEC)) however in neither case was the defence determinative because the patents have been discovered invalid.

MFP argued {that a} moulded bowl with an undulating ridge working across the aspect partitions was a part of the widespread common data, some extent with which the choose agreed.  Because the MFP washbowl merely applied this educating, it might avail itself of the Formstein defence.  Alternatively, the expert individual would have concluded that the patentee did intend strict compliance with the wording of the declare, as in any other case the declare could be invalid for obviousness.

Thus, the 793 Patent was held to be legitimate however not infringed.  

The 947 Patent: The Expert Individual and Obviousness

The opposite cause that pulp bowls weren’t beforehand used as washbowls was that soaps would penetrate, and thus disintegrate, the pulp construction.  The answer proposed by the 947 Patent is the usage of a fluorocarbon sizing agent as an additive to the pulp combine.  MFP argued that this was apparent over two items of prior artwork, each Japanese patent purposes that disclosed the usage of fluorocarbons in pulp meals containers, the fluorocarbons being added to enhance resistance to water and oil.

The important thing difficulty in deciding whether or not these prior artwork paperwork rendered the 947 Patent apparent was the id of the expert individual and their widespread common data.  MFP argued that the expert individual would have had a background in chemistry, and specialised in pulp compositions.  As such, this expert individual would have been conscious of fluorocarbons, and that they might forestall the degradation of pulp by detergents.  In contrast, Vernacare argued that the expert individual was a designer, who was conscious of typical compositions of pulp merchandise, however was not an skilled in pulp formulation and didn’t have a ample data of chemistry to know what components could possibly be added to attain specific properties within the remaining product.  The choose most well-liked Vernacare’s characterisation, discovering that not one of the witnesses steered that pulp moulding corporations would make use of a person with a background in chemistry, as an alternative searching for exterior recommendation from a specialist as and when essential.

Due to this fact, the expert individual when offered with the prior artwork, wouldn’t consider extending the usage of a fluorocarbon from an oil and waterproof meals container, to a detergent resistant washbowl, as they’d not realise that oil and water resistance might also confer detergent resistance.

Business Success and Lengthy Felt Want

Vernacare additionally tried to indicate lengthy felt need and business success as secondary indications that the 947 Patent was not apparent.  Vernacare submitted proof making an attempt to indicate that the necessity for detergent resistant disposable pulp washbowls had been felt since different pulp merchandise had first been launched in care settings within the Nineteen Sixties.  On this regard its fundamental argument was that the usage of non-disposable washbowls which required cleansing elevated the chance of cross-contamination.  It additionally submitted figures exhibiting it had offered over 27.5 million models in 2018.

The choose thought of the components on secondary indications set out by Laddie J in Haberman v Jackel [1999] F.S.R. 683 (and accepted by Jacob LJ in Schlumberger v Electromagnetic Geoservices [2010]

EWC Civ 819).  He famous that the proof didn’t recommend that the shortage of disposable wash bowls was an issue in 2006, since, regardless of the hypothetical drawback of cross-contamination with reusable bowls, there was no proof of any precise infections.  The proof that Vernacare did submit was post-priority and largely originated from Vernacare itself as a part of its advertising efforts for its new product.

On the subject of Verncare’s gross sales, a single variety of models in isolation meant nothing.  The choose knew nothing of the revenue margin or the general measurement of the market, and there was no proof on whether or not these gross sales have been because of the originality of the invention or the success of its advertising.  Accordingly, the choose didn’t contemplate there to be any help for Vernacare’s case on lack of obviousness.  Given this difficulty required a witness of reality from every occasion, it is going to be fascinating to see if Vernacare is penalised in prices (assuming that the events don’t decide on prices).

However the shortage of success of Vernacare’s pleas of economic success and long-felt want, the 947 Patent was held to be legitimate (and, as famous above, infringement was admitted)/


This judgment is essential because it represents the primary case the place a Formstein defence is determinative of the problems, and confirms that this defence is on the market within the English courts.  It additionally gives a helpful instance of the character of proof required when arguing for secondary indications of obviousness.

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