William Mark Corporation & Anor v Gift House International Ltd
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
- HIS HONOUR JUDGE HACON
Areas of Law
- Intellectual Property Law
2014
INTELLECTUAL PROPERTY ENTERPRISE COURT
United Kingdom
CORAM
AI Generated Summary
In this case regarding flying fish toys, the court examined whether the Defendant’s Mega Fliers toy infringed upon the First Claimant’s patents. The court found that while some claims in the patents were invalid for obviousness over prior art, claims related to elastic elements and toy construction were valid. The court held that the Defendant’s products infringed upon these valid claims, affirming both patent infringement and certain claims' validity.
Judgment
Judge Hacon :
Introduction
This is an action about flying fish toys. The First Claimant devises and markets toys. The Defendant devises and imports toys for sale in this country, in particular flying fish known as “Mega Fliers”.
The First Claimant is the proprietor of United Kingdom Patent Nos. GB 2482275, for an invention entitled “Flying shark” (“275”) and GB 2483597 for an invention also entitled “Flying shark” (“597”). The Second Claimant is the exclusive licensee of the First Claimant in respect of the two Patents. The Claimants allege that the importation and sale of Mega Fliers by the Defendant infringes both Patents. The Defendant admits the acts complained of but says that its Mega Fliers do not fall within the scope of either Patent and also that both Patents are invalid.
The Claimant’s pleaded case alleges in addition infringement of four registered community designs (“RCDs”). In a letter dated 4 November 2013 the Defendant conceded that three of the four RCDs were valid and infringed. The Defendant also agreed to submit to an injunction and damages among other relief, so the Mega Fliers flying fish have been forcibly withdrawn from the market in any event. In June 2014 all parties agreed to withdraw their respective cases in relation to the fourth RCD, so all issues regarding the RCDs have now fallen away. The trial was solely concerned with the two Patents.
The Defendant has a counterclaim alleging that the Claimants made unjustified threats of proceedings for infringement of the Patents to the Defendant’s customers.
The Patents
The 275 Patent is the parent of 597. Both share the priority date of 6 November 2009 and similar specifications.
The 275 Patent
The invention claimed in 275 is an improvement on a known type of toy, that is to say neutrally buoyant flying toys. These are filled with a lighter-than-air gas such as helium. The prior art referred to in the Patent includes toys with one or more propellers to provide propulsion and directional control. The disadvantage identified in the specification concerns those flying toys which are configured as a fish or other swimming animal. The specification says that propeller-based propulsion often looks unrealistic on a fish and is therefore undesirable.
The specification of 275 refers to two items of prior art which have addressed this problem. The first is US patent no. 5,197,029 (“Kinoshita”), which is also one of the items of prior art cited by the Defendant in these proc