England and Wales High Court (Patents Court) Decisions

David J Instance Ltd, David J Instance v. Denny Bros Printing Ltd [2000] EWHC Patents 112 (14th April, 2000)

CH 1995 I No. 3482
CH 1995 D No. 5843
CH 1996 D No. 5368
CH 1998 D No. 5476
HC 1999 No. 00381
HC 1999 No. 04282

DATED: 14 April 2000

Mr. Justice Laddie:

1. This is the trial of six sets of proceedings relating to five patents and three patent applications. All of the patents/applications are owned by Mr. David Instance or David Instance Limited ("Instance") and relate to self-adhesive multilaminar labels, that is to say self-adhesive labels which contain a leaflet or booklet. These are referred to as "leaflet/labels". In each action the parties are Instance and Denny Brothers Printing Limited ("Denny") who are rival manufacturers of leaflet/labels.
2. By the time that this matter came on for trial there appeared to be four issues to be resolved: (1) infringement; (2) validity; (3) entitlement and (4) threats. However the parties, in large part assisted by the sensible approach adopted by their respective legal representatives, have resolved, or resolved at least for the time being, many of those issues. In fact only two matters remain for determination, namely validity and threats. Furthermore, in relation to threats, there is no matter of substance which I am being asked to deal with at the moment. Instance admit they made threats. Insofar as it is said that Denny's products infringe some of Instance's patents, that is conceded. Therefore the threats will be justified unless the patents are invalid. So it is only validity which is in issue before me. If I find that unjustifiable threats have been made by Instance, then questions may arise as to the scope of the relief Denny should obtain. This is a matter on which Denny wishes both to amend its pleadings and adduce further evidence. Sensibly the parties agreed that this could be reserved to a later date after the issue of liability has been resolved.
3. So the only live issue before me is validity. Even here the parties have adopted an entirely sensible approach. Mr. Floyd, who appears on behalf of Instance, has only asserted a small number of claims to be independently valid while Mr. Watson, for Denny, has restricted his arguments on obviousness to one piece of prior art only. In addition there is a live dispute on an attack of added matter.
4. The number of patents in dispute before the court gives a misleading impression of the scope of the technology in dispute. In fact many of the patents are divisionals. There is substantial duplication and overlap between them. Only three patents need be considered: European Patent (UK) 0,628,941, GB 2,247,662 and GB 2,274,268. Of these only the first and last are said to be infringed.
5. This case is concerned in particular with leaflet/labels of the type which can be stuck to the side of cylindrical containers, such as those used to contain pharmaceuticals and agrochemicals. They are designed so that when they are placed on a product they will lie flat and shut but can be opened by the purchaser of the product to reveal the leaflet. The need and, in some cases, obligation to give ever greater quantities of information to the users of these types of products means that there is a growing requirement to supply them with leaflets containing various data. This is a comparatively recent phenomenon, although it is clear from the evidence before me that the use of leaflet/labels on the containers of a variety of products has existed since at least the early 1980's.
6. To understand what is at issue, it is convenient to commence with a consideration of the two UK patents '662 and '268. The latter is a divisional from the former. Their specifications are in identical terms and contain the same drawings.
7. In the art of mechanised and high speed application of labels to the sides of containers, the labels can be assembled on a web of backing material. This frequently has a siliconised surface which allows the labels to be detached from it at the point where they are to be applied to the containers. '662 illustrates two types of leaflet/labels. It is convenient to consider the one shown at figure 4 first.

Figure 4 of '662



 

8. This shows a leaflet (64) on a piece of release paper or backing (66) held in position by a covering of self-adhesive clear laminate (74), one corner of which (76) has been rendered non-adhesive by a patch of ink. The leaflet is also stuck to the release paper (66) by a layer of adhesive (68). The release paper has characteristics which will allow it to become detached fairly readily from the adhesive backing of the laminate (74) and the adhesive (68). In use, a web of the release paper carrying these leaflet/labels is brought close to the container onto which one of them is to be fixed. At the point of application the paper web passes round an acute bend. The leaflet/label, which is releasably attached to the paper, is sufficiently rigid not to follow the web round the bend. Instead it begins to peel off the web. It attaches itself to the container.
9. A second type of leaflet/label is depicted in Figure 2 of the patent as follows:

Figure 2 of '662



10. In this embodiment, as in the one shown in Figure 4, there is a laminar cover (12), a booklet or leaflet (10) and a release paper or backing strip (4). However in this case there is also a sticky base label (6) which lies between the leaflet and the backing strip, So, when the leaflet/label is applied to a container, it will have a three part construction of laminar cover, leaflet and the base label. Base labels are very well known and have been for many years. However, as depicted in Figure 4, at one end the base label is sandwiched between one end of the laminar cover and the backing strip. As shown in this drawing, the base label runs under the leaflet but it stops short of the other end of the laminar cover. So, at one end of the leaflet/label the laminar cover is directly but detachably connected to the backing strip while at the other end the laminar cover is not attached directly to the backing strip. As compared with the one shown in Figure 4, this leaflet/label is markedly asymmetrical.
11. The way in which these two constructions can work will be considered in a moment. Before turning to that, it is necessary to say something about a problem which can manifest itself in relation to leaflet/labels. Leaflet/labels can be applied to a wide variety of containers and to a variety of locations on such containers. If they are attached to planar surfaces, no particular problem (or no problem with which this case is concerned) arises. However a problem can manifest itself when such a label is applied mechanically to curved surfaces. If a single sheet sticky label is applied to a curved surface, it follows the curve and can stick to the surface. However in some cases it is not so easy to make a multilayer leaflet stick to the side of a cylinder. Subject to certain qualifications which I will refer to in a moment, this was explained succinctly in Mr. Floyd's skeleton argument as follows:

"One of the limitations of these leaflet/labels was that they could not be used on small cylindrical objects without rucking up and/or tending to lift off from the surface to which they were attached. This was because the sandwich construction sealed the leaflet at both ends. Consequently, when attached to a cylindrical container on the packaging line, the cover had to stretch around a wider radius than the base label. The problem can be appreciated by wrapping a booklet of Post-It notes around one's finger. If the free edges are pinched together, the booklet resists being wrapped. In the case of laminated leaflet/labels, the additional stiffness imparted by the laminar material meant that when in use, the leaflet/label was prone to peel away from the surface of the container."

12. This can be illustrated by the following figure which is deliberately drawn in an exaggerated way to emphasise the point:



13. It can be seen that although the outer surface and the inner surface of the leaflet are both going round 180^o, that is to say half the circumference of the cylinder, the former has to be much longer than the latter. The drawing also emphasises a number of other things. The same phenomena exist even when a single sheet of thin paper is wrapped round a cylinder. However because the paper is usually very thin, the differences in length between the outer surface and the inner surface are very small indeed and can be accommodated within the 'give' of the material from which the paper is made. The significance of the problem depends, among other things, on the thickness of the label, the distance it has to travel around the cylinder and the size of the cylinder. So the size of the problem, and indeed, whether it is a problem of any practical significance at all depends on these factors. Needless to say, the problem does not exist if the leaflet is applied to a planar surface.
14. It is now possible to return to the leaflet/label depicted in Figure 4 of '662. As there shown, there is a discontinuity between the right-hand end of the glue (68) and leaflet (64) on the one hand and the part of the laminate (74) on the right of the drawing on the other. If the left-hand end of the leaflet/label is applied to the side of a cylindrical container, the inner surface which was in contact with the release paper (66) will have to travel less far than the outer surface made up of the laminate (74). Tension will build up between these layers. However because the web is made up of release paper, as the application of the label to the container wall moves towards the right in the drawing, the forces will make the right-hand end of the laminate detach from the release paper, thereby relieving the tensions which had built up in the leaflet/label. The free-floating right-hand end of the laminate will then be attached to the container wall. It will be appreciated that by this means the far right-hand end of the laminate will have moved towards the extreme right-hand end of the layer of glue (68) and the leaflet as compared with its position when the leaflet is in its planar form. In fact the same thing would happen if the leaflet/label in figure 4 were to be applied from right to left instead of left to right as shown. In each case any tension building up in the leaflet/label as it is applied to the curved surface of the container will be released by the ability of the last piece of laminate to detach itself from the release paper. The design of the label enables the two ends of the label to move towards each other in the process of being applied to the container. This freedom of relative movement as between the two ends of the laminate is an integral part of the tension-releasing ability of the label.
15. I can now turn to the asymmetrical embodiment depicted in Figure 2 of the patent. As mentioned above, there is a base label (6) which is located under the leaflet and one end (i.e. the right-hand end) of the laminate (12). In this case, if the leaflet/label is to release the tension which might be generated if it is applied to a small cylindrical container, it must be applied to that container starting with the part shown on the right of the drawing. If this is done, then as the label passes round the surface of the container, tension will build up and, as the application moves towards the left, at some point the left-hand end of the laminate will detach from the release paper, thereby relieving the tension. The free left-hand end will then be attached to the surface of the cylindrical container. Once again, the far left-hand end of the laminate will have moved towards the far right-hand end. If, instead of this, the label is fed from left to right, the tension created during its passage round the container will not be released. The left-hand end will be clamped in position on the container but the right-hand end of the laminate is stuck firm on the base label (16). It is not detachably connected to the release paper.
16. Finally, before leaving the description contained in '662, I should mention the disclosure relating to the way in which the leaflet/labels are to be made. This is illustrated in Figure 3 of the patent. It is only described in relation to the asymmetrical leaflet/label of Figure 2. The apparatus is as follows:



 

17. A reel of release paper is loaded onto the machinery at 26 and is led through a variety of stages at which, one by one, the various layers of the leaflet/label are fed onto or cut in situ onto it. The laminate is depicted by the numeral 46 and is fed from a spool (48). The spool (58) is used to wind up for disposal the parts of the web of laminate which are released after the die cutters at station 50 cut away the excess material. The finished leaflet/labels (2) on the release paper web (4) are then fed onto what is called a "storage reel" (60). The way in which the web is fed onto that reel can be seen by examination of the drawing:



18. This (which is consistent with the way in which the leaflets are shown being applied to the web at 40) shows the labels being fed onto the storage reel in a way which would mean that they will be dispensed at the customer's plant with the left-hand end of the leaflet/label being released from the release paper and applied to the cylinder first.
19. It is against that background that I can turn to the invention covered by the '662 patent. The specification is short. The problem which it says the invention seeks to overcome is expressed as follows:

"A number of multilaminar labels are known. These labels can suffer from the disadvantage that they can be difficult for a user to open when the self-adhesive label is adhered to a product. The present invention aims to provide a convenient and elegant solution to this problem".

20. The elegant solution which is proposed to the only problem stated by the inventor to exist, is the provision of the non-sticking tab which enables the customer to more easily pull off the sticky clear laminate, so as to release the leaflet trapped between it and the container. However it is conceded before me that the broad concept of providing such a non-sticking tab (of the sort frequently found at the corners of packets of pre-packed meat or smoked fish) is not inventive. The invention for which protection is sought and which Denny is alleged to have used is quite different. It is the design of leaflet/labels which are capable of being applied to cylindrical containers in the manner set out above. None of this is described in the '662 patent. Not only does the patent not describe the tension releasing mechanism achieved by the separate releasable adhesion of one or both ends of the laminate to the release paper, but it does not even refer to the fact that the leaflet/labels are to be applied to curved surfaces. Nothing is said about the characteristics of the laminate, curvature of the containers to which the leaflet/labels are to be applied or the characteristics of the releasable bond between the laminate and the release paper. There is no suggestion that the asymmetric leaflet/label of Figure 2 must be applied in one direction rather than the other. Furthermore, as noted in paragraph 18 above, the patent illustrates the production of a reel of labels in which the asymmetric leaflet/labels are loaded in the wrong orientation for allowing them to be applied to the customers' containers in a way which would allow the tension in the label (if it exists) to be released. As Mr. Floyd put it, the strip of release paper carrying the leaflet/labels would need to be re-reeled before the labels could be used in a tension-releasing way. Needless to say, there is nothing in the patents about the need to re-reel and the claims to the method of manufacturing the labels are not limited so as to produce a reel of leaflet/labels orientated in the correct direction.
21. There is little doubt that the invention which the claimants now put forward as being at the heart of this case, is not an invention which had occurred to the patentee at the time any of the patents in suit were applied for. The only invention which Mr. Instance thought he had made was the creation of the non-stick flap which would assist the consumer in removing the laminate layer from the leaflet/label after the latter had been applied to the container. As I have said, that broad concept is now accepted as being obvious. Nevertheless Mr. Floyd says that this does not render the '662 patent or any of the other patents invalid. The objection that the patents cover something which the patentee never invented might possibly give rise to some form of attack based on lack of sufficiency, but no such attack has been launched here, nor is it immediately apparent how such an attack could be formulated. Furthermore, as Mr. Floyd says, the fact that the patents may cover an invention which Mr. Instance never made is not really in point. The important claims in issue all relate to leaflet/labels of a particular design. The main question to be determined in these proceedings is whether such products are obvious. There is no requirement for a patentee to set out the benefits of his invention in his patent. Furthermore, the claimants were at pains to point out during the trial that the absence of any description of the mode of use and alleged advantages of the leaflet/labels the subject of the patents is quite irrelevant. As Mr. Floyd said a number of times and as was said in evidence, even if the patents in suit are taken only to refer to applying the labels to planar surfaces, it would be immediately apparent to any worker in the field how the labels would work when applied to a cylindrical surface. Anyone in the art who saw the asymmetrical leaflet/label of Figure 2 of '662 would understand not only how it works but that it would have to be applied in a right-to-left direction. Similarly, the need to re-reel the storage reel in Figure 3 of the patent would be self apparent.
22. The latter submission is not in dispute. On the contrary, Mr. Watson relies on it. In any event, in my view it is correct. Anyone in the art who saw either of the types of leaflet/labels illustrated in '662 (and for that matter in the '941) would immediately understand how it could work if applied to labelling a curved container. He would not need to be told how to use it nor, in the case of the asymmetric label of Figure 2, would he need to be told from which end to apply it. That is not only the position now, it would have been the case at the priority dates of the various patents, i.e. in 1989.

Obviousness

23. Although '662 describes two types of leaflet/labels, by the time of the trial the claimants only sought to maintain the validity of the invention relating to one of them, namely the asymmetric design of Figure 2. No attempt was made to maintain the validity of the other type of design. Consistent with this, Mr. Floyd only seeks to maintain the independent validity of claims 6, 7, 10 and 11. At this point I will concentrate on Claim 6. It is dependent on Claim 5 which, in turn, is dependent on any preceding claim. Claim 6 at its broadest therefore gathers together the features of claims 1, 5 and 6:

"[Claim 1] – A self-adhesive label comprising a multilaminar label portion, a self-adhesive laminar material extending over, and adhered by its self-adhesive surface to, the multilaminar label portion thereby to form two self–adhesive edge portions thereof on opposed sides of the multilaminar label portion, a backing of release material to which one of the edge portions is releasably adhered by a self-adhesive rear surface thereof and an unadhesive portion which is located on the rear surface of the said one edge portion.

[Claim 5] – A self-adhesive label according to any one of the claims 1 to 3 further comprising a self-adhesive support piece which is carried on the backing of release material and to which the multilaminar label portion is adhered.

[Claim 6] – A self–adhesive label according to claim 5 wherein the edge portion other than the said one edge portion is adhered to a surface of the support piece."

24. It is the feature consisting of one end of the laminate cover being attached directly to the release paper, while the other is connected to the base label (item 6 in Figure 2 of '662), which is said to be the novel and inventive departure from the prior art. The only piece of prior art relied on by Denny consists of a type of leaflet/label made by it and first supplied to Vidal Sassoon in 1988. It is called the Kleerform label. It is, in substance, a leaflet/label having nearly all the features of the label in Figure 4 of '662. Mr. Sessions, who gave expert evidence on behalf of the claimants, illustrated it as follows:



25. Once again the self-adhesive, clear laminate cover sticks down to the release paper on either side of the leaflet. The advantage of this type of label is exactly the same as that depicted in Figure 4 of '662 namely that it can be applied to sharply curved container surfaces even if the leaflet is quite bulky. The presence of two distinct areas for sticking the label down, here shown as being to the left and the right of the leaflet, allows for the release of tension as it is applied to the curved surface. As Mr. Denny explained in the witness box, with two adhesive footprints the first sticks where you want it to stick and the second sticks where it wants to stick whilst wrapping it round a cylindrical container. Mr. Sessions also accepted that that was how a man in the art would understand the Kleerform label to work (Transcript Day 1 page 51). In fact there could be little dispute on this score. As I have already noted, it is the claimants' case that anyone in the art in the late 1980's who saw the illustrations in '662 would understand that the two types of leaflet/labels there depicted would be suitable for applying to cylindrical containers, even though there is not a word to that effect in the specification or any hint that it was intended that they be so used. I have no doubt that anyone who was shown the Kleerform label in 1988 would know that it was suitable for application to cylindrical containers (it was in fact applied to such containers by Vidal Sassoon) and, importantly, how it worked. It was promoted for use on cylindrical containers.
26. The invention is alleged to reside in placing a base label under the Kleerform type of leaflet/label in an offset arrangement as depicted in Figure 2 of '662. Mr. Floyd argues that not only was it not obvious to adopt the offset arrangement, but it was not obvious to place a base label under the Kleerform label even if it was symmetrically placed immediately under the leaflet, that is to say in the location indicated at (68) on Figure 4 above. He says that to arrive at the configuration now relied upon as inventive takes two steps. Neither is obvious alone. They are not obvious together. He accepts that the steps may be small but he reminds me that it is important not to be misled by the clarity of hindsight. Small inventive steps can always be made to appear obvious once they have been taken. He says that here the chronology points to the inventiveness of the offset arrangement. Denny had made the Kleerform leaflet/label in 1987 and sold it in 1988. It did not market a product with the offset arrangement until after it had been asked to do so by a customer in 1992. At the time of that request Denny was shown by the customer one of the Instance leaflet/labels with an offset back label, so Denny did not spontaneously come to the offset arrangement by itself.
27. On the issue of obviousness each side produced expert evidence. Mr. Sessions appeared on the claimants' side. Unfortunately he did not enter the relevant field until 5 years after the priority date and even then it does not appear that he was involved to a large extent in thinking up or designing new label designs. The expert produced on behalf of the defendants was Mr. Denny. Although he clearly had the relevant expertise, I have to bear in mind that he has a personal interest in the outcome of this litigation. Notwithstanding these points, I have come to the conclusion that both witnesses tried hard to be objective in the evidence they gave. Each was tripped up by skilful cross-examination, but the overall impression made on me was that Mr. Denny honestly believes that the offset arrangement was obvious from the date of introduction of the Kleerform label and Mr. Sessions honestly believes that, had he been in the relevant field at the time and had he been involved in the design of labels, he would not have hit upon it. In the end, as both sides accept, the decision on obviousness is one for me aided by the totality of the evidence adduced.
28. There is no dispute that there is no invention in adding a more or less permanent base label to a leaflet/label. For example if a leaflet/label has to be applied to the side of a can of agrochemicals, it may well need to incorporate a safety label which remains attached to the can even if the leaflet is removed. The sticky label must be at the bottom and the rest of the leaflet/label must overlay it. The question then is, how should the base label be incorporated. Mr. Floyd suggests that the obvious thing to do is to place it under the totality of the leaflet/label so that it extends from one end to the other. That would produce an arrangement as follows:



29. Such leaflet/labels have been made in the past and appear to have been accepted and used without complaint, although this may be because they were used only with thin leaflets and in circumstances where rucking up of the label did not occur or did not occur to any significant extent. But in my view it would be apparent to anyone in the art that this type of arrangement would not release the tension which could be built up in situations where a thick leaflet/label is passed round a tight curve. In particular it destroys the two footprint arrangement which anyone who saw the Kleerform label would immediately appreciate was the essential requirement if tension relief and the prevention of rucking was required. It appears to me that it would have been obvious to anyone in the art that if a leaflet/label was required which continued to have the benefits of Kleerform and also incorporate a base label, it would have to retain the multiple footprint arrangement. There are two obvious ways of achieving this, as illustrated below:

 

30. In fact the design on the left was put into production by one of Denny's licensees and supplied to Tippex in 1990 or 1991. I can see nothing inventive in this. It retains the multiple footprint feature which is apparent in Kleerform and just adds another layer underneath the mille-feuille constituted by the leaflet. Even Mr. Sessions was prepared to accept that it was 'less clever'.
31. I can see nothing clever or inventive in the design on the right. Once again it retains the multiple footprint requirement of Kleerform. If, for purely aesthetic reasons or because a large amount of information has to be included on the base label, the latter has to be or is chosen to be larger than the footprint of the leaflet mounted over it, it is difficult to see how a Kleerform-type label could be designed other than as illustrated by the drawing on the right. An example of a design using such an offset was shown to me during the trial. The customer wanted a label which carried a printed scale on it to enable the end user to determine the volume of contents in the container. That scale had to be located permanently on the container. The obvious place to put it is on a base label. On the other hand it was desired to have the scale visible even when the leaflet is in place. An obvious design solution is to have the scale printed on the edge of the base label and to have it protrude from under the leaflet. That is what was done. Mr. Sessions accepted that such a design is the sort of arrangement which customers might well want for aesthetic reasons. One passage from his expert report is illuminating on this subject:

"In 1989/90 it was very common for leaflet labels to have a base label or support piece on which the leaflet or booklet is mounted. This is a self-adhesive label in its own right, which is permanently adhered to the product in use. When this self-adhesive label performs the function of a leaflet/booklet carrier, it is commonly referred to as a "base label". ...

Traditionally, in leaflet labels, base labels have been used in a certain way as a carrier. The base label can carry text, which text can be basic information which stays adhered to the product if the leaflet is opened or removed, and as such can appear underneath the leaflet, and/or can be information additional to that contained in the leaflet printed on areas of the base label not covered by the leaflet. Structurally the base label provides the surface by which the label is adhered to the product. It also has served the function of assisting in the placement of the leaflet by defining the perimeters within which the leaflet needs to be applied." (emphasis added)

32. If a leaflet/label meeting such design criteria is to be used on the side of a container and to take advantage of the known benefits of the Kleerform multiple footprint, it is difficult to see how it could be done other than as shown in the right-hand drawing in paragraph 29 above. This is, of course, the same as the Figure 2 arrangement from '662. In my view both of the above Kleerform-type products incorporating a base label were obvious at the priority date.
33. In coming to that conclusion I have considered Mr. Floyd's argument, set out at paragraph 27 above, that it took Denny a long time to arrive at its infringing design and then only after it had been shown the Instance leaflet/label. Behind this was the suggestion that there existed a long felt want. In my view the claimants came nowhere near proving that there was such a want. It will be appreciated that wrapping a label round a cylindrical container only becomes a problem if the diameter of the cylinder, the length of the label, the thickness of the label and any leaflet on it and the material from which the label is made are such as to give rise to significant rucking. As Mr. Denny said, and was not challenged, there has been a comparatively recent growth in the size, and therefore thickness, of the leaflets attached to products. There is no evidence before me that at the priority or in the few years thereafter there was a significant problem with existing leaflet/labels or that there was a pent up demand for a solution. If there had been, no doubt Mr. Instance would have referred to it in his patents and would have proclaimed that he had found the long-awaited solution. Even now there is no evidence that any substantial number of multiple footprint leaflet/labels are sold. Furthermore, the reason Denny did not suggest an offset design earlier was explained by Mr. Denny and not really challenged: Denny make labels to meet their customers' requirements. They are reactive. As Mr. Denny explained, no customer asked his company for a leaflet/label incorporating a base label at any time between the introduction of the Kleerform and 1992. The suggestion that Denny took a long time to arrive at its infringing design is not borne out by the evidence. I have little doubt that had a customer asked him at any time after the introduction of the Kleerform he would have arrived at the offset design without any difficulty. Anyone competent in the art would have done so.
34. Mr. Sessions suggested that he would have steered clear of the offset design because it would involve using labels and laminate films of different footprints and this would have necessitated the use of two rather than one die cutting stage. That two cutters would be necessary is not in dispute, but it was established that label manufacturers have used multiple die cutters in the past. It seems to me that this amounts to no more than a commercial disincentive to adopting an offset design. There was no technical difficulty in making such a product. I do not accept that the need for an additional die cutting station renders the design of the leaflet/label in suit inventive.
35. Finally on this issue, I should mention Mr. Floyd's argument that the offset design achieves certain technical benefits. For example he says that the use of a multi-layer leading edge in the offset label means that that leading edge becomes stiffer and therefore will lift off the storage spool and onto the customers' container more easily. Of course this is something of an illusion. Depending upon the characteristics of the material from which the laminate layer and base label are made, the multi-layer edge could be too stiff and therefore prove a disadvantage because it will tend to make the edge lift off the can. Therefore whether this is an advantage or not is dependent upon the materials from which the leaflet/labels are made. But even assuming that the claimed advantages exist, they do not advance the claimants' case. It is not suggested that the claimed advantages either singly or together cured any long felt and pressing problem with existing leaflet/labels. Indeed, if they are advantages at all, it is not shown that anyone in the art was aware that they were advantages which they were missing.
36. For these reasons I have come to the conclusion that Claim 6 in '662 is bad for obviousness. It was not suggested that any of the claims to similar constructions of label in other Instance patents could survive if this was obvious. It follows that Claims 1 of '268 and Claim 1 of '941 also fail. Mr. Floyd did not attempt to support the independent validity of Claim 5 of '941 at the trial.
37. This leaves another group of claims in '662 to be considered. The way that they came to be the subject of argument at the trial is somewhat unusual. As is normal practice in patent actions, the claimants notified the defendant which claims in each of the patents were alleged to be independently valid. In relation to '662 the claimants only asserted independent validity of claims 6 and 7. That was communicated to Denny before the exchange of experts' reports. However in Mr. Floyd's skeleton argument, for the first time, the claimants also asserted independent validity for claims 10 and 11. This put Mr. Watson in some difficulty because Mr. Denny had not concentrated on these claims in his expert report. I indicated to Mr. Floyd that I would be prepared to allow him to widen out the nature of the case his clients were making but it would almost certainly be on terms which would result in at least part of the trial being adjourned and subject to a suitable order as to costs. This course was not attractive to the defendant. Although it is applying to invalidate the whole of '662, it is not alleged to have infringed claims 10 or 11. Furthermore Instance admit that they have threatened Denny's customers. At least one major customer has ceased taking the Denny product. Denny says that this is due to the threats. It was apparent that Denny did not want to allow the trial to be adjourned. In the end Mr. Watson took the view that he could successfully attack these two additional claims even in the absence of detailed evidence from his own expert on the subject.
38. Claims 7, 10 and 11 all relate to the method of making the easy release tab at the corner of the laminate film (see 76 in Figure 4 of '662). As noted already, the broad idea of having such an easy release tab is conceded to be known or obvious. The only issue is how to achieve it. Claim 7 is as follows:

"A method of producing a succession of self-adhesive labels carried on a backing of release material, the method comprising the steps of:-

(a) releasably adhering a succession of multilaminar label portions to a backing of release material;

(b) either before, during or after step (a) applying a succession of patches of non-adhesive material to the backing of release material;

(c) applying a self-adhesive laminar material over the succession of multilaminar label portions and patches on the backing of release material, the laminar material being adhered thereto by the self-adhesive surface thereof; and

(d) cutting through the laminar material and the multilaminar label portions thereby to form the self-adhesive labels, each self-adhesive label including an edge portion of the laminar material having a respective one of said patches which is unadhered to the backing of release material."

39. This is directed to preventing the corner of the self-adhesive laminar layer from sticking to the release paper. Mr. Floyd accepts that there are two ways of doing this. One is to put a non-stick or stick-defeating surface on the release paper. The other is to put that surface on the underside of the laminate. Either way achieves the objective of inserting a non-stick barrier between the laminate and the release paper. Claim 7 is directed to the first of these two alternatives. Mr. Watson says that both are obvious. Mr. Floyd says that the second is but the first is not. This really is not a subject which admits of much analysis. I have no doubt Mr. Watson is right. It is difficult to imagine anyone in the art thinking of one of these alternatives without thinking of the other.
40. Claims 10 and 11 can be considered together. They are as follows:

Claim 10: "A method according to any one of claims 7 to 9 wherein the patch is printed onto the backing of release material."

Claim 11: "A method according to claim 10 wherein the patch is composed of ink."

41. Although Mr. Floyd says that each of these is independently valid, he does not advance any argument to support the suggestion that if printing was known or obvious, use of ink was not. In my view the claims stand or fall together.
42. Since I have already held that applying a non-stick or stick-defeating surface to the release paper is obvious, the only question is whether it is obvious to do that by means of a printing process. The argument against taking that step is that printing would not be an attractive option where the substrate has a siliconised surface. The release paper is intended to make a poor footing for the adhesive on the back of the laminate and it will be likely to make a poor footing for printing ink. This subject was put to Mr. Denny in cross-examination and is recorded in the following extract from the transcript:

"Q. ... so far as printing is concerned you have given evidence in your own statement which is back at tab 1 of bundle 5 at page 45, paragraph 137, at the bottom of the page. I just want to make sure there is no misunderstanding about this. You say: 'Whilst claim 7 refers to applying patches of non-adhesive material to the release material ....' and we have discussed that. Then you say: '.... claim 10 covers printing the patch and claim 11 covers a patch made of ink. However, the release material is coated with silicone, selected for its repellent qualities (as confirmed by Mr. Sessions) and the effectiveness of this method was always doubtful....' So again that is something which would not have occurred to you to have done until you saw it demonstrated that it had been made to work by Mr. Instance?

A. I am not saying it would not have occurred to me to do it but the effectiveness of it would have been a major question mark for the effectiveness of it in my mind.

Q. You would not be sure whether it would work?

A. I think it would depend a great deal on the chemistry and the practical way it was to be done.

Q. You would have tried other things in preference because you would not be sure enough of that method to warrant trying that?

A. I would try other things first, yes. That would not be one of my favourite things to do first because I would have doubts about how effective it could be made and I think rightly so.

Q. The answer to my question is question (sic), yes, you try other things first because you would not be sure whether the inking method would be likely enough to work to warrant trying it?

A. Yes, I think that is probably correct."

43. Taken as a whole, this passages suggests that Mr. Denny would have thought of using printing but it would not have been the first to be tried because getting the ink right might have been difficult. It is worth bearing in mind that the patent contains no teaching as to the type of printing ink to use. It is not suggested that anyone would have any difficulty in finding or needs instructions on how to find or make a suitable ink. It and these claims are concerned only with the general concept of using an unspecified form of printing with an unspecified type of ink. I accept Mr. Denny's approach as one which would have occurred to persons skilled in this art. Mr. Floyd places particular emphasis on the last question and answer in this extract from the transcript. He says that this amounts to evidence from Mr. Denny that the potential difficulties with printing are such that it would not be obvious to try using it. This is, of course, skilful cross-examination. But I do not think Mr. Floyd's argument is fair to the evidence as a whole. In fact on analysis it will be appreciated that his last question carries two, inconsistent, suggestions. On the one hand it is putting to Mr. Denny that of the things that he would try, printing is not the first, and secondly it suggests that printing would not be tried at all. Having seen Mr. Denny in the witness box and having re-read this transcript, I have come to the conclusion that Mr. Denny was consistently answering the first of these questions and never intended to say that printing was not worth trying. In any event, whatever may have been extracted from Mr. Denny under cross-examination, I have come to the conclusion that on a balance of probabilities a man skilled in the art would have considered using printing to apply the non-stick patch, although he might well have tried other expedients first. In the circumstances these two claims fail for obviousness also.
44. It follows that all of the claims asserted to be independently valid fail for obviousness. In the circumstances it is not necessary to consider Mr. Watson's argument of added matter.