INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| WILLIAM MARK CORPORATION
CHINA INDUSTRIES LIMITED
|- and -
|GIFT HOUSE INTERNATIONAL LIMITED
Dominic Hughes (instructed by Berry Smith LLP) for the Defendant
Hearing date: 24th June 2014
Crown Copyright ©
Judge Hacon :
The 275 Patent
"While such mechanism is significantly more realistic, several disadvantages remain. Among other things, directional control (lateral and up/down) is not possible using such fin mechanism." (at )
"Here multiple control elements contort substantially the entire body of a flying toy to so produce astoundingly realistic flight motion. However, such devices are hardly considered toys as the manufacture is extremely expensive and requires highly sophisticated personnel." (at )
"The inventors have discovered that numerous flying toys can be manufactured in a simple and effective manner, wherein 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."
(i) A flying toy, comprising
(ii) a body portion that includes a lighter-than-air gas, wherein the body portion has a volume sufficient to provide neutral buoyancy to the toy;
(iii) a moving surface that is coupled to a first actuator and the body portion, wherein the first actuator is configured such that the moving surface is movable at variable and different angles relative to a forward directional axis of the toy;
(iv) a second actuator coupled to the body portion and configured to allow movement of a weight element in parallel or perpendicular direction relative to the forward directional axis; and
(v) wherein the weight element is coupled to the body portion such that the movement of the weight element changes pitch of the toy while the toy is flying to thereby allow for controlled ascent or descent of the flying toy;
(vi) wherein the moving surface is coupled to a tail assembly, and wherein the tail assembly is removable from the body portion; and
(vii) wherein the tail assembly is coupled to the body portion via an elastic element such as to allow application of a compressive force to the body.
Body and tail assembly
First actuator for the moving surface
Second actuator and pitch control
Attachment of the body to the tail assembly
(i) A tail fin assembly for a flying toy, comprising:
(ii) a base plate comprising an actuator that is coupled to a moving surface such that the moving surface is movable at variable and different angles relative to a forward directional axis of the toy;
(iii) an elastic element coupled to the base plate and configured to allow reversible coupling of the tail fin assembly to an inflated and compressible body portion of the toy; and
(iv) wherein the base plate and toy are configured such as to allow application of a compressive force to the body via the elastic element.
The base plate
"…the tail fin assembly preferably comprises a relatively rigid base plate (e.g., polyethylene or polycarbonate plate, 1-2mm thickness) upon which the movable surface and the actuator moving the surface is installed."
Claim 9 requires the base plate to comprise an actuator which in turn is coupled to the moving surface. Also attached to the base plate is the elastic element. These are all configured to allow (a) reversible coupling of the tail fin assembly to a compressible part of the body of the toy and (b) the application of a compressive force to the body via the elastic element. Claims 10 to 12 are dependent on claim 9.
Claims of 275 do not require the moving surface to propel the toy forward
"…various neutrally buoyant flying toys, and especially remote controlled neutrally buoyant flying toys are presented that have a mode of propulsion in which at least one moving surface (most typically a tail fin) of the toy oscillates in a controlled manner to thereby provide forward and lateral motion control"
Claims of 275 do not require control of lateral direction
The 597 Patent
(i) A neutrally buoyant flying toy, comprising
(ii) a body portion that is at least partially filled with a lighter-than-air gas in an amount effective to render the toy neutrally buoyant;
(iii) an actuator that is coupled to the body portion and that is configured to allow movement of a weight element parallel or perpendicular to a forward directional axis of the toy such that movement of the weight element changes pitch of the toy relative to the forward directional axis while the toy is flying to thereby control ascent or descent of the flying toy; and
(iv) wherein the weight element further comprises removable ballast elements.
"The flying toy of claim 1 wherein the actuator is configured to allow movement of the weight element parallel to the forward directional axis of the toy when the toy has a moving surface that is configured to move side-to-side for forward propulsion of the toy."
The expert witnesses
"[The skilled team] would know how to solve design difficulties by not only conventional means but by considering alternative ways, without having to be directed, but by referring to and utilising the prior knowledge contained within this varied and fast moving industry."
(i) whether the Defendant's products have an 'elastic element' within the meaning of claim 1 of 275 (7th integer);
(ii) whether the Defendant's products have a 'tail portion that is filled with lighter-than-air gas' within the meaning of claim 11 of 275.
The skilled person
The 275 Patent
(i) US patent no. 4,272,042 ("Slater")
(ii) US patent no. 5,194,029 ("Kinoshita")
Construction of claim 1 of 275
Meaning of 'toy'
The prior art
275 and obviousness
Integer (i) Slater did not disclose a toy. Mr Rehkemper did not agree with Mr Manning that a skilled person could make a toy airship after reading Slater because of the practical difficulties in translating a real airship into a toy.
Integer (iii) Contrary to what Mr Manning said, this integer was not disclosed in Slater. The moving surface relied on by Mr Manning was a rudder or vertical aileron, not a flapping tail for propulsion.
Integer (vi) Mr Rehkemper agreed that Slater did not disclose a removable tail portion. However he accepted that it was practical to make the tail removable in a toy for easier and lower cost shipping.
Integer (vii) Mr Rehkemper agreed that Slater did not disclose coupling of the tail to the body via an elastic element. In cross-examination he agreed that it was common to use rubber band to attach appendages in toys.
"…a soft, flexible, thin plastic strip having one end attached adhesively to the rear end of the floatable structure 1 and the other end attached adhesively to the base member of the framework 2' of the vertical fin 2."
The rear end of the floatable structure marked 1 was what Mr Manning identified as the base plate.
(a) that the moving surface is moveable at variable and different angles relative to a forward directional axis of the toy;
(b) an elastic element coupled to the base plate;
(c) reversible coupling of the tail fin assembly to the body; or
(d) a compressive force to the body via the elastic element.
The 597 Patent
"…the toy has a moving surface that is configured to move side-to-side for forward propulsion of the toy".
Outstanding issues relating to infringement