Judgment on Excluded Subject Matter: Epoch Company Limited v Character Options, IP-2015-000153

28 March 2017

On 22 March 2017, His Honour Judge Hacon handed down judgment in patent infringement proceedings brought by Japanese-based toy designer Epoch Company Limited against Character Options Limited, a leading UK-based designer and distributor of toys and games.
The dispute, which concerned UK Patent No. 2498410 B for water fusible toy beads (commercialised by the defendant in the UK under the brand Beados Gems), began in September 2015 with the claimant’s unsuccessful attempt to secure an interim injunction against Character Options; the Court finding, under the American Cyanamid principles, that the balance of irreparable harm did not favour the grant of injunctive relief [1].
In giving his final decision, HHJ Hacon found Epoch’s patent to be invalid on grounds of obviousness, both as granted and as sought to be amended, over the defendant’s own earlier product. Had the patent been valid, it would have been infringed.
The judgment (a full copy of which may be viewed here) is of particular interest in so far as it addresses the issue of excluded subject matter under Section 1(2)(b) of the Patents Act 1977, a line of argument on which the defendant ultimately did not succeed.
On this point, Character Options contended that the patent claimed an aesthetic creation as such (and, thus, was excluded from patentability under the above section). In making this submission, in recognition of the limited jurisprudence on this point, the defendant invited the Court to apply the reasoning in the field of computer-related inventions, namely Aerotel Ltd v Telco Holdings Ltd, Symbian Ltd v Comptroller-General of Patents and HTC Europe Co. Ltd. v Apple Inc . The parties also referred to decisions from both the UK IPO and EPO, namely Gram Engineering Pty Ltd (BL O/275/08) and T 686/90 (HETTLING-DENKER/Translucent building materials), which were concerned with aesthetic considerations. 
The Court acknowledged that the HTC decision sets out the overall approach to be taken, i.e. as a matter of practical reality, whether the invention properly construed contributes anything to the art over and above the excluded matter.  Having considered the Gram and Hettling decisions, the Court directed that the correct approach in this context was to consider whether the invention created an aesthetic effect that could be achieved by any design or whether the only contribution to the art constituted a design or group of designs.  In this case, the Court concluded that the claimed fusible bead toy gives rise to an aesthetic effect that is not achieved by the creation of a particular design or group of designs and is therefore not an aesthetic creation as such.
Potter Clarkson LLP, in combination with Guy Tritton of Hogarth Chambers, represented Character Options, the successful Defendant/Part 20 Claimant. For further information concerning this decision, please contact Caroline Marshall or Richard Roberts

[1] [2015] EWHC 3436 (IPEC)

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