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	England and Wales High Court (Patents Court) Decisions
You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Handi-Craft Company & Anor v B Free World Ltd & Ors [2007] EWHC B10 (Pat) (06 September 2007) URL: http://www.bailii.org/ew/cases/EWHC/Patents/2007/B10.html Cite as: [2007] EWHC 10 (Pat), [2007] ECDR 21, [2007] EWHC B10 (Pat)

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IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

		06/09/2007

Introduction and Overview^[1]
1. This is a dispute about nursing bottles which are said to afford welcome relief to babies suffering from colic and posseting.

2. The moving spirits behind these bottles are two Americans, father and son: Mr Bob Brown and his son, Dr Craig Brown, a family doctor. Mr Brown Sr had just retired from the first claimant, Handi-Craft Co ('HandiCraft'), an established toy manufacturer in St Louis, MO when he was approached by his son with an idea for a venting system for a liquid nursing bottle. This system, he believed, would relieve the build-up of a partial vacuum above the level of the liquid which develops whilst a baby is feeding. HandiCraft saw the potential of the bottle and in due course began developing and manufacturing it. 'Dr Brown's Natural Flow'^[2] bottles were first marketed in the USA in 1997. The bottles are now manufactured both in the USA and elsewhere and there is no doubt that the product has been beneficial both to mothers and babies. It has also been commercially successful, turnover in 2005 in the USA being between US$ 6-10 million^[3].

   "What a miraculous bottle!! I had been struggling for weeks to wean my son from breast to bottle in readiness for my return to work. Feeding times have become a complete nightmare – my son would scream for up to an hour each time I tried to introduce a bottle and would end up drinking 1 oz maximum before I would give in and offer the breast. In desperation I tried using different makes of bottle but none seemed to make any difference until someone recommended Dr Brown's. On the first attempt, my son happily took 8oz from the bottle in approx. 5 minutes. This means that I can finally return to work without having to worry about daytime feeds. Thank you Dr Brown!" [Philippa from Wimbledon^[4]]

3. New Vent Designs Inc ('NVD'), an Illinois corporation and the second claimant was formed by Dr Brown to exploit the rights in the bottle. It is thus proprietor of the patent in suit EP (UK) ? 0845971 ('the Patent') and the Community trade mark in suit ? 1111418 : 'DR BROWN'S NATURAL FLOW' in respect of 'infant feeding bottles'. It also owns the copyright in the artistic work referred to in the pleadings as 'The Sign' and elsewhere as the 'Dr Brown's logo' – which is also in issue. HandiCraft has become the worldwide exclusive licencee of NVD in respect of these and other intellectual property rights in this country and elsewhere. The written agreements in question are in a Court bundle (G1) but for present purposes, nothing I think, turns on them.

4. This dispute initially covered a number of allegations including patent, trade mark and copyright infringement, passing off and conspiracy, together with allegations of sundry tortfeasance by six personal defendants and corporate tortfeasance by others. The product in dispute is a competitive nursing bottle called the B FREE bottle.

5. The dispute is the fallout from a distribution agreement for the Dr Brown's nursing bottles which 'went sour'. On 16 September 1997, HandiCraft granted exclusive worldwide distributorship in the Dr Brown's bottles^[5] to a Panamanian company, Action Trading SA ('SA'). This company (which is not a party to this action) is controlled by the seventh defendant, a Mr Amikam Berkovitch, who as the claimants see him, is the eminence grise behind this entire unfortunate and complicated litigation. As there are four Berkovitch defendants (the other three being Mr Berkovitch's wife and children), like Counsel, I shall refer to Mr Amikam Berkovitch simply as 'Amikam'. It was via SA that all the corporate defendants derived their distribution rights. By the end of 2001, SA was distributing the Dr Brown's bottle in 18 territories but on 3 July 2002 its distribution agreement was abruptly terminated by HandiCraft. This led to two bouts of litigation: proceedings in the USA and the present action.

6. The ensuing litigation has been conducted with determination, disagreement and acrimony. It should however be said that sensible concessions have been made by both Counsel. Thus, in his closing speech, Mr Iain Purvis QC who (with Ms Edwards-Stuart) appeared for both claimants was able to make proposals which had the effect of reducing the compass of this judgment. For example, the allegation of conspiracy was abandoned as were the cases against Amikam's daughter Yasmin and his son, Tamir. Mr Dominic Hughes who appeared for all but three of the defendants, also made important concessions relating to the corporate defendants and Amikam.

7. This action, which was commenced in April 2005, has had an interlocutory phase, having been the subject of a judgment, injunction and order of Laddie J dated 14 June 2005 – to which I shall refer later.

8. The pleadings in the case are convoluted, originally involving permutations upon five causes of action against twelve defendants and a full measure of joint tortfeasance scattered in between.

   The Defendants

9. I should next say something about the Defendants. The number of defendants rose from an initial four to twelve. Their number has now declined to seven. For this reason I have assumed the convention of from time to time referring to the defendants as D1, D2, D3 etc as well as referring to them by personal or corporate names-as seems contextually appropriate.

10. Before trial, settlements were reached with two well-known defendants, both UK companies: The Boots Co PLC ('Boots') (D3) and Mothercare (UK) Ltd ('Mothercare') (D4). Thereafter these companies have had conspicuously little to do with the litigation, their absence having been the subject of comment from time to time by the remaining defendants, particularly by a defendant in person, Mr Piero Alberici (D8). Boots and Mothercare were not represented at the hearing and henceforth in this judgment, when I refer to 'the defendants' without qualification, I intend to exclude Boots and Mothercare.

11. Save for Boots and Mothercare, all the other defendants personal and corporate in one way or another have had some connection with the Berkovitch family, husband and wife, Amikam (D7) and Dvora (D11). I have mentioned that the allegations of wrongdoing against the daughter Yasmin (D2) and the son Tamir ('Timi') (D9) were dropped by the end of the trial and as one would expect, Mr Hughes is highly critical of why they were sued in the first place. I shall refer to all the Berkovitches by their first names for convenience. I understand from Mr Hughes that the Berkovitches hold dual Israeli/British citizenship and reside both here and in Israel. I should also mention that the Berkovitch family speak and read English well. But Amikam does not apparently write English. This was why, so it was said, there is not a single document in this substantial case which was written by him^[6]. He got others (usually Mr Alberici) to attend to the writing of letters, having first given them instructions as to what to write.

12. I shall in fact refer to Tamir Berkovitch as 'Timi' as there is another defendant (D12) having the same first name.

13. The following companies are defendants and will be called 'the Berkovitch companies'^[7]:

    B Free World Ltd ('B Free') (D1) This company was incorporated on 15 June 2004. Yasmin was the sole director till January 2006 and Amikam has bee the sole director since. All the issued share capital was owned by Yasmin until some time prior to June 2005^[8].

    Action Trading Ltd ('Action Trading') (D6) This company was incorporated on 6 January 1999 as 'Dr Brown's Natural Flow Ltd' the name having been changed on 14 March 2000. Amikam has been a director of .this company from the start and Timi was a director from January 2001 to April 2004. Dvora owned all its issued share capital and acted as company secretary at various times. Action Trading is now in liquidation, the winding up order being dated 15 November 2006. Though in liquidation, it will still be necessary to make certain findings of fact relating to this company since Amikam and Mr Alberici are sued as joint tortfeasors in respect of certain acts carried out by it.

    Baby B Free Ltd ('Baby B') (D5).This company was incorporated in July 2001. The company operated the sales website: www. babybfree.com, the contents of which will be considered later. Timi was the director of this company till June 2005 and Yasmin was its secretary till the same date. Yasmin and Timi owned all the issued capital since incorporation and up to June 2005. After June 2005 one Eliyahu Harari stepped into the positions occupied by Yasmin and Timi. I am unsure whether this company is still trading.

14. Concerning these companies, Amikam said:^[9]

    "…I ran these companies and made all of the decisions relating to the strategic direction and expenditure of these companies." .

15. Mr Purvis submitted that these companies were at all material times no more than Amikam's alter egos and the pleadings raised the liability of the Berkovitches for the acts of these companies as their directors and/or as joint tortfeasors with them.

16. TTY General Trade Lines Ltd ('TTY') (D10) is an Israeli company with a registered office at 19 Ramban in Jerusalem: see the company search, X/25. Its first director was Dvora (until 2003). Thereafter Timi became the director and I believe, remains so. The shareholders (and founders) are Dvora's parents, Israel (99.9%) and Chaya Blattberg. The company is said to have three employees but (see later) this is doubtful. There remain some mysteries over TTY as Mr Purvis discovered when he cross-examined Mr Tamir Tirosh (D12) about the company^[10]. The company address is the private residence of the Blattbergs. Though both Amikam and Dvora have given its address as their address in their witness statements, they do not live there. There is also a PO Box address given in the company search which may be wrong and the telephone number is apparently Timi's own number. These discrepancies emerged by reference to the address for TTY on an invoice from TTY to Dvora dated 4 June 2002 at G/361.

17. Through an Israeli sub-contractor, TTY arranged for the manufacture of the Dr Brown's bottles from 2001 up to the time the parties went their separate ways. It now sub-contracts the manufacture of the B FREE bottles in issue. The person who at all material times has been responsible for getting things done at TTY (that is, manufacture, packaging/bottle design, sourcing, quality control, packaging printing, exhibitions, processing orders, and shipping – but, he said, not accountancy or any financial matters) was Mr Tamir Tirosh, an Israeli citizen living in a town in the north of Israel called Menahemia. Mr Tirosh, has stressed that he was at all times an independent contractor to TTY. He has not been a director or employee of any of the other corporate defendants and neither is he related to the Berkovitches. I accept this as being true. He is however a minority shareholder in SA^[11]. Mr Tirosh gave evidence which is of particular importance to the allegation of copyright infringement since it was he who was primarily responsible for the commissioning (in Israel) of the alleged infringement (a logo), indirectly on behalf of TTY.

18. Save for Action Trading (which is in liquidation), all the above defendants had a common legal representation during the case.

19. Mr Piero Alberici (D8) is a defendant in person having left the collective Berkovitch defence in March this year on perceiving a conflict of interest^[12]. He has since conducted his defence with skill, courtesy and determination, having had to make numerous trips from Newcastle-upon-Tyne (where his wife is unwell) to do so. Mr Alberici, who is a middle aged person, has at all material times worked as an independent marketing consultant. He has asked the Court to take into account that he has no legal qualifications and that prior to these proceedings he had no knowledge whatever of IP matters. He is now re-training as a child counsellor.

20. Mr Alberici is a defendant because from about May 1999 until some time during 2005, his main (but not sole) clients were the Berkovitch companies and in particular, Action Trading and B Free. He was latterly paid by way of commission. He has made it clear throughout his defence that at all times he took all his instructions from Amikam and sometimes from Dvora. I have already explained that he also acted as Amikam's English amanuensis. As I understand it, he was responsible for sales and marketing in the UK and Europe. Initially, in this capacity, he worked closely with a Mr Mark Roxburgh - another independent sales consultant working on commission. When Mr Roxburgh ceased to work for the Berkovitch companies, Mr Alberici assumed Mr Roxburgh's responsibilities as well. In the capacity of sales director, he became involved with the other defendants, corporate and personal (including Boots and Mothercare) in the launch of the defendants' B FREE bottle.

21. It was at one time suggested that Mr Alberici was an employee of one or other of the Berkovitch companies. I find that he was never an employee of any of these companies and further, that he was neither a shareholder, officer, director or manager of any of the aforementioned companies –except for SA (see above). I further find that he became a formal shareholder in SA for some procedural purpose connected with the US litigation.

22. A company which is not a party to this action but which much features in the events which have lead to the dispute, is the Panamian company SA. The Court was not told much about SA but it was informed on the basis of evidence given during the course of US proceedings consequent upon the termination of SA's distribution agreement, that Amikam has a controlling interest in this company and that Mr Alberici had a three per cent holding in it. Among the other shareholders are inter alia Mr Berkovitch's Israeli advocates, his London accountants and a retired Israeli general. Mr Hughes informed me that SA is now 'dormant', though what this signifies in Panama I am not sure.

23. Another player in these events is a Mr Mark Roxburgh to whom reference has just been made. He was not however, sued. It transpires that Mr Roxburgh ceased to act for the Berkovitch companies on 1 October 2004 and is now the sales director of Central Medical Supplies, Leek, Staffs, who are the distributors of Dr Brown's baby bottles in the United Kingdom: see X/4. Mr Alberici made an application to file witness statements from Mr Roxburgh and a Mr Mark Rycroft of a company called Lindam on the first day of trial. This was opposed by Mr Purvis who added that if these witness statements were admitted, he would want to cross-examine on both of them. Mr Alberici could give no assurance that either Roxburgh or Rycroft would be agreeable to coming to court voluntarily for this purpose and there the matter rested^[13]. I have paid no attention to them.

24. This is what Amikam said of Messrs Alberici and Roxburgh^[14]:

    "I also gave direction to Piero Alberici …who was in charge of marketing and Mark Roxburgh a sales manager consultant to Action [Trading Ltd] but I was not necessarily aware of all details of their activities."

25. There is dispute among the parties about the truth of the words from this quotation which are in italics and I shall have to return to this later. I should say that Mr Alberici was targeted by both sides for his allegedly blameworthy activities. Mr Roxburgh did not escape serious blame either but having the advantage of absence, appeared to come off better even though till his departure, he appeared in principle to have been Mr Alberici's senior.

26. In order to understand the structure of this litigation it will next be necessary to consider some history and for this purpose, I have borrowed liberally from and amended part of Mr Purvis' opening skeleton of argument which I find, contains an essentially correct account of events.

    History

27. Early days. From 1997 to June 2004, the Dr Brown's bottle was distributed in the UK and Europe by SA. This was originally effected under the written distribution and licensing agreement dated 16 September 1997. After originally using an established UK company, Lindam^[15] to distribute the bottles, SA started supplying the bottles direct to retailers in the UK in mid-2001. From this time the mark "Dr Brown's Natural Flow" was used everywhere. HandiCraft (and thus SA) also began using the logo which is the subject of the copyright allegation. The name "Dr Brown's" was incorporated into the blue and green oval logo on the bottle. On the bottom of the packaging appeared the following: "Handi-Craft Company, St Louis, Missouri, USA © 2003, the exclusive Licensee of the mark "Dr Brown's Natural Flow".

28. Examples of the Dr Brown's bottle (and a large number of other bottles as well) became court exhibits during the course of the trial.

29. I must next mention the reaction of the public to the appearance of the Dr Brown's bottle since it is of importance in relation to the allegation of passing off and to what happened when the rival B FREE bottle made its appearance in 2002. In May 2004, the claimants' was voted "Mother's Favourite" in a survey conducted by Mother & Baby magazine. The survey concluded [I/64] :

    "This is a classic case of you get what you pay for. It is worth the extra because it makes such a difference."

30. The above survey and parental testimonials were much used in the advertising and promotion of the Dr Brown's bottle by SA whilst they were distributing the bottle in the UK, in particular using the web-site which was operated by Baby B: babybfree.com ^[16] .

31. The Dr Brown's bottle also won a number of awards, including the prestigious Mother & Baby magazine "Gold Award" in 2002. Notice of this featured on the box in which the bottle was sold and in advertising^[17]. In the years to April 2004, over 220,000 Dr Brown's bottles were sold in the UK [G2/95-97] whilst over 2 million were sold by HandiCraft worldwide.

32. The US Proceedings. As already mentioned, during 2002, HandiCraft and SA had a serious disagreement arising out of Amikam's promotion of the use of "PES" rather than polycarbonate for the plastic material from which the body of the bottle was made. Amikam's belief was that use of the PES bottle constituted a health hazard since polycarbonate bottles tended to leach a chemical called bisphenol-A^[18] into the milk. The PES bottle is more expensive to make than the polycarbonate bottle however and, so it seems, HandiCraft have never been persuaded of its virtues. HandiCraft nonetheless permitted SA to have manufactured and to sell the new PES bottle as a Dr Brown's bottle for a while. Matters came to a head when SA started advertising the new bottles in a way which actually disparaged the polycarbonate bottles still being sold by HandiCraft in other parts of the world. As I see it (though this has nothing directly to do with the present dispute), the relationship then started to deteriorate: HandiCraft suspected underhand commercial manoeuvre on the part of Amikam (and SA) over the bisphenol-A saga whilst Amikam suspected greed in HandiCraft's preference for insisting on the use of polycarbonate^[19]. Suffice it to say that at this point (July 2002), HandiCraft terminated its distribution and licensing agreement with SA.

33. SA refused however to acknowledge the termination and continued to sell the Dr Brown's bottles in the UK and elsewhere as if the licence were still in force, the construction of the bottles, their packaging and the advertising used therewith not materially changing. In September 2002 HandiCraft raised an action in the District Court, St Louis, MO seeking to confirm the propriety of the termination and to recover damages. These proceedings finally resulted in judgment in HandiCraft's favour^[20] that the agreement had indeed been properly terminated. SA then attempted to obtain a retrial, but this was finally refused on 24 March 2005.^[21] SA were ordered to pay $1M in legal costs by the US Court [L/88] but so I was told, no money has ever been paid. The Court permitted SA to sell off existing stocks of the Dr Brown's bottle (made of course of PES). However, no account has ever been given of such sales nor has royalty been paid therefor. Another result of the US proceedings was that SA was prohibited from using the 'Dr Brown's Natural Flow' or 'Natural Flow' trade marks.

34. B Free is born. Not surprisingly, Amikam did not take the termination of the licence as a fait accompli. He believed that the UK market for the Dr Brown's bottle was 'made' by him, by those he paid to work for him and by SA. He also appears to have believed that HandiCraft had mischaracterised the bisphenol A debate so as deliberately to terminate SA's licence in order to take over the market which had so carefully been created^[22].

35. Amikam next decided to develop and launch a rival bottle, to be manufactured in Israel by TTY (D10), and to sell it under the name "B FREE".

36. The "B FREE" mark was I believe coined in 2001. It was first used by SA from sometime in 2002 onwards to describe the PES material which SA was by then using to make the Dr Brown's bottle - under licence . In fact, in 2001, Amikam established Baby B to run the website entitled "babybfree.com" from which he used to sell the Dr Brown's bottles. This had its own logo however which was quite different from the Dr Brown's logo. A few days after the judgment was handed down in the United States, Amikam also incorporated another UK company "Action Global Trading Limited", and (through that company) on 17 June 2004, applied for the registered trade mark "B FREE". Amikam changed the name of this company to "B Free World Limited" (that is 'B Free' or D1) in August 2004^[23].

37. The purpose of B Free was to trade in the new B FREE bottles in the UK. However, it did not do so until January 2005. Instead, Amikam moved swiftly to market the new bottles in the UK through his pre-existing companies Action Trading (for UK retail sales). The first B FREE bottles were first offered for sale at a trade fair in Cologne in September 2004 by TTY (the stand being manned by Tamir Tirosh –D12). Offline sales of B FREE bottles continued to be made mainly by Action Trading until Laddie J's injunction.

38. The present proceedings. These proceedings were commenced on 7 April 2005 against B Free, Yasmin, Mothercare and Boots, the remaining defendants having been joined later. At an early stage, the claimants moved for interlocutory relief against these four defendants and in a judgment dated 14 June 2005^[24], Laddie J granted comprehensive injunctive relief based mainly on what he regarded as strong cases of trade mark infringement and passing off.^[25] He hardly in fact considered the claim in patent infringement.

    "because it seems to me that it is much less significant than the passing off claim."

39. In spite of the fact that Amikam tendered no evidence at the time (he used Mr Alberici, for this purpose), the judgment of Laddie J was unreservedly critical of the Berkovitches and the strategy Amikam had adopted to launch the B FREE bottle. He endorsed Mr Purvis' submission on the evidence before him that the defendants (and Amikam personally) had deliberately chosen to try to persuade that part of the purchasing public interested in feeding bottles that the B FREE bottle was a re-incarnation of and even, an improvement on the DR BROWN'S bottle with which they were familiar.

    "Mr Purvis is quite right to suggest that at this stage the evidence strongly suggests that the defendants have embarked upon a campaign designed to teach the purchasing public and indeed parts of the trade in this country, that B FREE is the new name for DR BROWN's and to hijack in effect, DR BROWN's reputation for B FREE….it appears that a significant number of members of the public and the relevant trades in this country are likely to be deceived….the public has over a period of some months been taught to associate B FREE with the claimants' reputation….In my view the case of passing off at this stage is very strong"

40. I would add that all the evidence I have read and heard at trial strongly vindicate the soundness of Laddie J's interlocutory conclusions.

41. Trade mark infringement and passing off. At the opening of the case D1, D5 and Amikam gave undertakings which have made it unnecessary for me to consider at any length the numerous facts advanced to support this cause of action –though the B FREE logo is also the subject of both the passing off, trade mark and the copyright infringement case. I shall however need to address some of these facts in relation to the case made against Mr Alberici personally.

42. Suffice it to say that the strategy behind the development, launch and marketing of the B FREE bottles was plainly to create the impression in the minds of the public that they were simply an "improved" and re-branded version of the DR BROWN'S bottles with which they had become very familiar. The strategy was implemented in four ways:

    in the design, logo and get-up which was adopted to sell the B FREE bottles ;

    in the way the B FREE bottles were advertised to the public on the B Free website ;

    in the way in which the B FREE bottles were presented to retailers and the way retailers reacted to this presentation;

    the fact that neither Amikam nor any of those working with him such as Mr Roxburgh and Mr Alberici did anything to put the record right concerning the true facts.

43. I shall however pause in the general narrative at this juncture. Sensing no doubt the possibility of a tide of prejudice engulfing his clients' cases on causes of action other than conspiracy, trade mark infringement and passing off, Mr Hughes asked me to put aside the latter for the time being. He had in mind the allegations of patent and copyright infringement and asked for these to be adjudicated separately from all these other matters. I shall accept his invitation.

44. I have mentioned that by the close of the case, the Claimants no longer in fact relied on any allegation of conspiracy^[26].
    Patent infringement

    Introduction

45. The Patent in suit is EP (UK) no 0845971 entitled 'Nursing Bottle'. The earliest priority date claimed is 4 August 1995^[27], its proprietor is NVD and it is licenced under a sole and exclusive licence to HandiCraft. It is a proposal for a simple mechanical device. Its teaching is to my mind quite straightforward; it contains no technical terms and the technology involved is refreshingly simple.

46. I would mention at the outset that Mr Alberici though affected by the outcome of the patent infringement action, did not himself have anything of consequence to say about it, preferring to associate himself with the case put forward by Mr Hughes.

47. It is alleged that claims 1-7 are infringed by the B FREE bottle and of these claims the claimants have acknowledged that only claims 1-3 have independent validity. All the subsidiary claims are ultimately dependent on claim 1 and the real contest centred on claim 1 alone. There is a counterclaim by defendants D1, D5 and D6 for the revocation of claims 1-7 of the Patent on the grounds of anticipation, obviousness and insufficiency.

    Non-registration of licence

48. Paragraph 25B of the Defence reads as follows:

    If which is denied, the defendants in this Defence infringed the Patent as alleged or at all

    (1) The First Claimant became the exclusive licencee of the Patent by virtue of a transaction, instrument or event to which section 33 of the Patents Act 1977^[28] applies and, it being at all times practicable to register the same, the same was not registered within a period of six months of its date. In the premises, the First Claimant is not entitled to any damages or an account of profits in respect of acts prior to the date of registration, and/or

    (2) Further or alternatively, and in defence to the claim for damages or an account of profits, D2, D9 and D11 were not (at the date of the infringements complained of) aware and had no reasonable grounds for supposing that the Patent existed.

49. The Paragraph 25B(1) allegation was conceded by Mr Purvis to be well founded. The effect of non-registration (if any^[29]) may thus be a matter for consideration at another time.

    Innocent infringement.

50. Para 25B (B) of the Defence, raises a defence under PA '77, s 62(1) ('innocent infringement'). The defence was formally traversed in the reply^[30], but was hardly referred to at trial. The only factual evidence relating to it is that though the corresponding US patent is identified on the packaging for the Dr Brown's bottles, the Patent is not identified as such. During his closing address, Mr Hughes told me that if the Patent is valid and infringed, I need make a finding on this defence only in relation to Dvora.

    The Patent

51. The Patent was published on 24 October 2001. I shall begin by referring to some general introductory matters.

52. The Patent is entitled 'Nursing Bottles'. Such bottles

    'prevent the formation of a partial vacuum inside the bottle during nursing yet resist spills. The nursing bottle is easy to clean and prevents the formation of a partial vacuum without requiring gaskets. Moreover an embodiment of the present invention provides a nursing bottle having a vent unit which is adapted to fit inside the bottle.'

53. The main type of nursing bottle with which the Patent is concerned is what in fact most people call a 'baby bottle'. The Patent first describes traditional baby bottles in well -known terms though I should perhaps mention that both here and at various places in the narrative, the bottle is said to be suitable for use with any 'liquids' - and not just milk.

54. The narrative continues:

    [3]: 'A conventional nursing bottle is tightly sealed except for the small opening in the nipple. As the baby nurses, the liquid volume inside the bottle decreases and the air volume increases. However ambient air is unable to enter the bottle so a partial vacuum is created inside the bottle. The partial vacuum in turn impedes the flow of the liquid out of the nipple and forces the baby to suck harder to withdraw the liquid. As the baby sucks harder on the nipple, ambient air inadvertently and inevitably enters the baby's mouth and stomach. Excess air in the stomach and other parts of the alimentary canal causes colic, a condition characterised by abdominal discomfort and pain……

    [4]: Many attempts have been made to provide a nursing bottle with an air vent to enable ambient air to enter the container during use….. (and examples from the prior art are given). None of these nursing bottles completely solves the problem of venting the interior of the bottle at atmospheric pressure while preventing leaks and spills. Accordingly a demand still exists for a nursing bottle which prevents the formation of a partial vacuum inside the bottle during nursing and yet resists spills.'

55. The Patent next explains that the bottles proposed achieve this dual goal. The consistory clause follows. The Patent is therefore conceived in classic 'problem and solution' terms. Six embodiments of the invention are described but for present purposes only the fifth embodiment merits detailed consideration.

56. Before doing this however the Patent picks up several items of a general kind which are worth mentioning First, the Patent is concerned with 'nursing bottles' and not just with 'baby bottles' which, as noted, may contain any suitable 'liquids'.

57. Next, the 'nipple cap' is stated not to be part of the invention^[31]; it is often referred to in fact as a 'standard' nipple cap, the assumption being no doubt that any suitable commercial item may be selected for this purpose. The nipple cap is attached to the container before use. It comprises the rubber nipple itself and a collar portion having internal threading. 'Nipple' may mean the rubber portion of a nipple cap, the entire nipple cap, and any type of protruding member with a restricted opening designed to be held inside the mouth during use.'^[32]

58. The container for the liquid is described in §§10 and 11. It is 'preferably transparent' and has a threaded neck at its radial centre, 'adapted to receive a standard nipple cap'. The container is rigid or semi-rigid, being made of plastics or glass and 'preferably has a diameter of about 3-8cm so it can be handled easily by the small hands of babies'^[33]. Its capacity is 0.5 to 1 litre and apart from being 'typically cylindrical in shape' it is 'preferably rounded throughout all or most of its circumference'. This is borne out by the illustrations in the Patent which show a bottle having more the appearance of a milk or juice bottle than say, a yoghurt pot.

    The vent unit

59. At the heart of all the embodiments is the vent unit itself which detachably fits within the container: see [12]. This is called the 'liquid conduit-reservoir', the primary purpose of which is

    'to provide a portion of a passage for ambient air into the container when the bottle is inverted and the liquid contents are being withdrawn through the nipple.'

60. In view of an issue ('the asymmetry point') raised by the claimants' expert in response to the counterclaim^[34], I would observe at this point that the first four embodiments of the invention (depicted in figs 1-10 of the Patent but neither described nor reproduced here) involve an air vent which is located to one side of the bottle. These embodiments therefore require the bottle to be correctly oriented during feeding for it to function properly^[35].

    The fifth embodiment

61. The fifth embodiment (see Fig 16 below), which is described in §§ [16] – [20], corresponds in most respects to the Dr Brown's bottle which is on sale to the public. This embodiment makes use of a 'conventional container 602' and a 'conventional nipple 608 (see fig 15 below) that can be secured with a threaded ring-shaped collar 610 to the container.' The 'vent unit' 612 (left of Fig 16) is interposed between the container and the nipple/collar assembly.
    <

62. The vent unit is then described^[36]::

    '

    '[17:] The vent unit 612 comprises a reservoir tube 614 having a first end adjacent the top of the bottle 600 and an open second end projecting sufficiently downwardly in the container that when the bottle is inverted, the second end is above the liquid level in the inverted container. The vent unit further comprises a vent insert 616 which abuts between the reservoir tube 614 and nipple 608. The vent insert 616 prevents liquid from entering an airway while allowing air to flow from the reservoir tube 614 through the airway. The insert 616 includes curved slots 620 to permit liquid to flow through the insert from the interior of the container to the nipple. The vent unit airway 618 extends between the outside of the bottle and a point in the reservoir tube above the level of the liquid trapped inside the vent tube when the bottle is inverted. Thus, the airway 618 and the end of the reservoir tube connect the airspace which forms above the liquid when the bottle is inverted with the atmosphere, thereby preventing the formation of a partial vacuum inside the bottle as liquid is drawn through the nipple……

    [19] The vent unit has a threaded collar 626 for securing the unit on the threaded neck of the container. The top of the unit 612 has external threads on which the conventional collar 610 and nipple can be secured.

    <

63. The description next moves on to how the bottle works. The following is part of the relevant narrative:

    [20]: ….As shown in Fig 15, when the assembled bottle is inverted so that an infant can suck the liquid through the nipple, some of the liquid is trapped in the reservoir tube 614 and this liquid flows to the upper portion 622 of the reservoir tube…Because of the size of the upper portion 622 of the reservoir tube, and the length of the vent tube 630 the upper end of the vent tube and in particular the opening 632 in the lower end of the vent tube is above the level of the liquid trapped in the inverted reservoir tube. Thus there is a continuous air path from outside the bottle through the vent tube and through the lower portion of the reservoir to the air space in the top of the bottle. This allows atmospheric air to replace the volume of the liquid sucked through the nipple preventing the creation of a partial vacuum that would make it difficult for the infant to draw fluid from [sic] bottle'

    Claims 1-3

64. The parties conveniently broke down (and slightly edited) claim 1 as follows:

    A nursing bottle comprising:

    i. a container adapted to contain a quantity of liquid, an air passage and nipple, characterised in that the bottle further comprises:

    ii. a reservoir tube having a proximal first end and an open second end

    iii. the second end of the reservoir tube projecting sufficiently downwardly so that when the bottle is inverted, the second end of the reservoir tube is above the level of the liquid trapped in the inverted bottle

    iv. the air passage between the outside of the bottle and a point in the reservoir tube above the level of the liquid trapped inside the reservoir tube when the bottle is inverted

    v. the air passage and the reservoir tube allowing atmospheric air to flow into the bottle to prevent the formation of a vacuum within the bottle when liquid is withdrawn.

65. Claim 2 (similarly edited) reads as follows:

    A nursing bottle as claimed in claim 1, wherein the bottle prevents a vacuum being formed within the bottle when inverted , the nursing bottle having

    vi. a vent unit adapted to fit within the container

    vii. a reservoir tube having an upper and lower portion

    viii. the reservoir tube having a proximal first end adapted to fit adjacent the top of the container and an open second end projecting sufficiently downwardly in the container so that when the bottle is inverted, the open second end is above lhe level of the liquid trapped in the container

    ix. an airway in the vent unit extending between the outside of the container and a point in the reservoir tube above the level of the liquid trapped in the reservoir tube when the nursing bottle is inverted.

66. Claim 3 (similarly edited) reads as follows:

    The nursing bottle according to claim 2, wherein

    x. the vent unit includes a vent tube in communication with the airway having a distal end

    xi. the vent tube projecting into the reservoir tube sufficiently so the distal end of the vent tube is above the level of liquid trapped in the reservoir tube when the bottle is inverted

    The skilled addressee

67. Before construing the claims in issue I must first establish the identity of the notional skilled addressee and the common general knowledge which he (or she for the last time) is deemed to possess during the mid-1990's. It is through this notional person's eyes that the Patent falls to be construed and through him also that other matters relevant to this aspect of the case fall to be judged. I was not addressed at any length by counsel on the law relating either to the skilled addressee or the common general knowledge he is deemed to possess. It was I think assumed (correctly) that I was familiar enough with these matters. For the record however, the principles which I have followed have been conveniently set out in Terrell on the Law of Patents, 16th Edn, §§ 6.34-6.39.

68. Counsel seemed content for the identification of the skilled addressee to be left to the evidence of the two experts, Mr Stephen Tollman for the claimants and Mr Ilan Samson for the defendants. The primary application for the nursing bottles subject of the Patent is of course in the baby products industry. The experts' evidence on the matter was not very different and showed that the baby product industry is a well-defined undertaking which certainly includes the design and manufacture of nursing bottles and products ancillary thereto, such as nipples. According to them, the skilled addressee would therefore be a competent design engineer within that industry having experience of the needs and problems of babies and their parents, of the materials used to make products for babies and to some extent, of the manufacturing processes involved and of relevant commercial considerations. If necessary, he would be able to seek specialist manufacturing advice – but, as always under this head, he will be deemed incapable of inventive capacity. In Valensi v BRC [1973] RPC 337 at 377, Buckley LJ said:

    " the hypothetical addressee is not a person of exceptional skill and knowledge and he is not to be expected to exercise any invention nor any prolonged research enquiry or experiment. He must however be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors if a means of correcting them can readily be found."

    The Common General Knowledge

69. The evidence given by the experts on this topic was brief - perhaps because this is not a high-technology field and is one in which most of today's parents have had some personal experience. Nursing bottles have been used I suspect, for hundreds of years and most adults will (sooner or later) be familiar with them - and with their shortcomings. Of the latter, poor 'suck' (which may lead to colic) and leaking are the most common. Colic has been an eternal feature of early infancy and alleviating its cause and symptoms has been a longstanding preoccupation of those involved in making baby products. All this is very well known. But the detailed medical (as opposed to the practical) side of colic would not I believe, have formed part of the common general knowledge.

70. The evidence is that the addressee would certainly be expected to be familiar with all the major brands of nursing bottles which were generally available in the national and perhaps international markets during the mid-1990's. He would also be familiar with the principal materials from which they were manufactured and of the main structural characteristics and practical limitations of the bottles which were available from the manufacturer's point of view. He would know about colic and its supposed causes and would be aware of some of the measures which had by then been taken by manufacturers in the past to alleviate it. He would know about rubber nipples varieties of which were available commercially and of how they were detachably screw- fitted in collars in commercially available nursing bottles. He would be aware of a variety of containers available for use with nipple-collars as feeding bottles. These were of different capacities and design. He would know about basic hygienic practices (e.g. the need for sterilisation and cleaning) and simple medical considerations associated with the use of feeding bottles. He would also be aware of major safety legislation in this field., particularly of some compulsory EN standards. He would be expected collaborate (if necessary) with outsiders (for example, with materials and moulding specialists) in developing new products. In such cases, the addressee could become a temporary team.

    The expert witnesses

71. It has recently been said that in patent infringement cases, experts

    'come as teachers, as makers of the mantle for the court to don…What matters is how good they are at explaining things.'^[37]

    In view of the straightforward nature of the subject-matter and in spite of some experiments by the defendants' expert, I was not as much assisted by the experts' evidence in this case as I have been in others. I record however that both experts were, I think, doing their best to assist the court

72. For the claimants: Mr. Stephen Tollman came to this country from South Africa in 1977 where he trained as an accountant. He is presently managing director of a leading UK designer and supplier of baby feeding products, the Vital Group of companies, a position which he has held since 1996. Before that he worked for a number of companies having held various positions within the baby accessory and feeding field. He is obviously a successful businessman in this specialist market. I gained the impression that his area of expertise was more in the sales and marketing of these products than in their design and manufacture. He made it clear that he was neither an engineer nor was he an expert in blow moulding technology – though he said that he did possess 'certain knowledge about moulding of plastics': D6/732-733. Mr Tollman struck me as being a reliable, if a somewhat conservative witness and moreover a witness who in cross-examination was prepared to revise his initial views^[38].

73. For the defendants: Mr Ilan Samson. The man skilled in the art is deemed to possess not a scintilla of inventive capacity. Mr Samson who for certain purposes speaks to the court assuming the mantle of this notional person, is an unusual expert since for the last twenty years, he has worked simply as a full-time inventor. He holds a BSc (Hon) and ARCS in physics from Imperial College, London and has evidently been named as an inventor in a number of patents in a number of fields. In the baby products field, Mr Samson's best known invention relates to breast pumps but in this field he has also devised spill-proof cups and has proposed a venting baby-bottle teat. About one third of his inventions are in fact in the baby feeding field. He was criticised by Mr Purvis for trying to argue his client's case and for that reason was said to be an unsatisfactory expert. In his evidence, Mr Samson was I think prone to lecture, expressing lengthy views about what was and was not within the scope of a patent –and what was an infringement. I ascribe this licence to his unusual familiarity with the 'patent world' and have taken account of it. I also found that his answers tended at times to contain unnecessary rhetoric. I have no doubt however that when he kept to the point, Mr Samson was technically very competent.

    Construction: General observations.

74. The pervasive requirement for patent specifications to be construed by the skilled addressee in a purposive manner is so well known that I need not elaborate on it: see Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 243. Claims must be read in the light of the object of the invention. I have said that the Patent has been drafted in 'problem/solution' form. As one would expect, the practical advantage which Dr Brown proposes has been clearly stated in the specification: that is, colic relief. However none of the claims are limited by reference to this advantage. Claims do not of course have to be so limited but in a case like this, it would in my view be wrong to think that the skilled man would not have this benefit well in mind when understanding the contents of the Patent.

75. I was not addressed at any length on the law of construction of patents. For the avoidance of doubt, I should perhaps briefly record my approach to the matter.

    .

76. I begin with Article 69 EPC which provides as follows:

    'The extent of protection conferred by a European patent …shall be determined by the terms of the claim…Nevertheless, the description and drawings shall be used to interpret the claims.'

77. I have of course applied the Protocol on the Interpretation of this Article, the terms of which are so well-known that I need not set them out. Next, I have heeded the observations of the higher courts in two recent cases in particular, the first being the guidance given by the House of Lords in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9. In that case, Lord Hoffman said at § 32:

    "Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee….Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice however, that it is not, as is sometimes said, 'the meaning of the words the author used', but rather what the notional addressee would have understood the author to mean by using those words."

78. The language actually chosen is thus "of critical importance". I have also taken aboard Jacob LJ's concise re-statement of the proper approach to construction in Technip France SA's Patent, (above, fn 37) at §70 (less sub-paragraph (e) which was criticised by the House of Lords in Kirin-Amgen (supra)). Further, as Jacob LJ observed in Technip:

    'Pedantry and patents are incompatible.'

    Construction and the Patent

79. I shall next consider the meaning of some words and phrases used in the Patent concerning which issues of construction arose. These are my findings.

    (a) A nursing bottle. The term denotes the sum of a container for liquid, the vent unit which is at the heart of the invention and a nipple cap^[39]. In the claims and in the body of the specification, the Patent uses an unspecific term for such bottles. Obviously bottles used to feed infants and small children are of primary interest because the vent unit is intended to provide colic relief. However, nursing bottles could also be used in geriatric or trauma nursing – or indeed for veterinary applications. The latter are neither specifically referred to however – nor are they excluded. Nursing bottles have various capacities, shapes and diameters and may be made of glass or more commonly, of known types of plastic. All types of bottle are provided with a means of feeding liquid by suction, 'any type of protruding member with a restricted opening' in fact being suitable (see above). They are pre-eminently used to feed milk to infants via a nipple or similar protuberance. They are provided with screw threading on their necks to receive a 'nipple cap'. As noted, no particular type of nipple or nipple cap is proposed.

    (b) 'allowing atmospheric air to flow into the bottle to prevent the formation of a vacuum within the bottle when liquid is withdrawn' . The defendants stressed the importance of the words 'atmospheric' and 'to prevent the formation of a vacuum' arguing that any measurable negative air pressures within the bottle arising during feeding must be excluded from the claim; the complete elimination of even such a partial vacuum was at the very heart of the proposal of the Patent. These words were required, said Mr Hughes, to be taken literally.

    (c) In the post-Kirin-Amgen era, I was surprised by this argument since it ignores both the involvement of the addressee and the requirement for purposive construction of the Patent. A vacuum is of course a condition of degree which is capable of being measured in terms of e.g. cm. of water. Limiting values of in-bottle pressure are nowhere mentioned in the Patent. In context, the skilled reader would at once appreciate that this is a Patent which proposes a feeding bottle affording colic relief by saving the baby having to suck harder and harder against a growing 'partial vacuum' in the space above the liquid. It is as simple as that. The teaching is concerned neither with the subtle degrees of vacuum which might be of interest to scientists working in say, the Cavendish laboratory nor with say, a health and safety investigation of imploding baby bottles. Provided that a satisfactory degree of colic relief is achieved with the nursing bottle proposed in the Patent, small (particularly temporary) negative pressures (i.e. 'partial vacuums') above the liquid level are not in my view, excluded by any of the claims. That I think, is how the skilled addressee (and, so I would think, the layman too) would read this phrase.

    (d) In this connection, Mr Purvis reminded me of the approach of Lord Reid in Henriksen v Tallon [1965] RPC 434 in construing the phrase 'and prevents air from contacting the surface of the ink' Lord Reid said:

    "It would be a very artificial construction of the claim to hold that because an infringer's plug is not very efficient though sufficient for commercial purposes, therefore there is no infringement. That would simply be inviting infringers to take the invention but make it work inefficiently. This plug does prevent air from contacting the ink but it does not prevent all air from doing so. I think Lloyd-Jacob was right in holding that very substantial prevention was enough to constitute infringement."

    (e) 'projecting sufficiently downwardly so that when the bottle is inverted, the second end of the reservoir tube is above the level of the liquid trapped in the inverted bottle' These ordinary words hardly require elaboration; in my view, they are perfectly clear in context. The purpose of this limitation is to simply ensure that the ingress of atmospheric air is not impeded by antecedent passage through the liquid being consumed. Though the drawings of the fifth embodiment do not show a maximum liquid level, such a level is marked in the first embodiment (111) which:

    'is typically at or about the point of communication between the liquid conduit and the reservoir'^[40].

    (f) Colic relief The teaching of the Patent is to provide a certain advantageous vent unit for use within a nursing bottle. As a result, in their most common application, such nursing bottles afford relief to infants from the pangs of colic and to their carers from the inconvenience of posseting. But that is not the proposal of the invention. As I see it, the proposal of the invention is to provide means which allows air to enter the bottle from the teat end without having to pass through the liquid within, so as to abate the formation of a partial vacuum above the liquid being sucked from the teat. The thrust of the disclosure is therefore primarily physical and not physiological.

    (g) 'inverted' This word is frequently used in the Patent but does not require the bottle to be at an angle of about 180?: see for example, the description of fig 15 (col. 3).

    The B FREE bottle and its Blue Condom with Wings

80. I shall next describe the B FREE bottle which I should add, is available in (I think) two sizes. These bottles are made of PES^[41] but neither this fact nor their availability in different sizes are of relevance to the issue of infringement. In fact, save in one important respect, the B FREE bottle is in all material respects functionally identical to the fifth embodiment of the nursing bottle described as in the Patent^[42].

81. The B FREE bottle is also a vented feeding bottle, the major difference between it and the patented bottle being that the B FREE bottle is detachably fitted with what was called a blue condom with wings which is fitted around the free end of the vent tube 630 (see Figs 15 and 16 above). The condom, which is just a few centimetres long, is made of a blue latex (silicone) and at its distal end, it has a slit (thus functionally replacing the 'opening 632' in the air vent of the patented bottle^[43]). The two wings were added to the original condom as a safety feature but have no bearing on infringement^[44]. The blue condom operates in use as a one-way valve.

82. A significant fact which may be mentioned at this stage is that without the condom, both the B FREE bottle and the patented bottle work in just the same way^[45] and vis á vis colic relief, would be equally effective. What then is the effect of the condom?

83. When the baby sucks the teat of the B FREE bottle, the valve at first remains closed. At a certain stage however the suck causes a small negative pressure to build up above the liquid in the B FREE bottle causing the slit valve momentarily to open, admitting atmospheric air and thus neutralising the partial vacuum. When the baby stops sucking, the valve and the air passage shut and any remaining vacuum does not get vented. Thus, in use, there will be a small intermittent negative pressure above the liquid in the B FREE bottle. And so the process continues as long as the feeding progresses.

84. There is another difference which is said to arise as a result of the presence of the condom: the so-called 'diving bell effect'. In my view, this is a lesser matter altogether. The 'diving bell effect' arises because when the B FREE bottle is filled with liquid (and is upright) and the tube is inserted, the air in the tube gets trapped and liquid can hardly enter the tube. This is because the slit valve in the condom remains closed. On inversion, because of the 'diving bell effect', little or (as the defendants say) virtually no liquid can enter the reservoir tube.

85. For the foregoing reasons, says Mr Hughes, the B FREE bottle works in a different way to the patented bottle.

    Infringement

86. Mr Hughes relies upon the two differences in operation of the bottles to which I have referred, as enabling the B FREE bottle to avoid infringement. Assuming the Patent to be valid, I think he is wrong.

87. I must first record that from start to finish, and in spite of the careful explanations of Mr Samson, I became increasingly sure that the B FREE bottle was indeed the patented bottle which had been deliberately made to work slightly less efficiently. If that is so, that hardly helps Mr Hughes' case. This impression was fortified by a number of secondary indications. For example in one of the Merged Chronological Disclosure bundles [G3/31], there is a note from Mr Alberici to Amkam and others entitled 'What do we have to do to prepare for the change to B Free?'^[46]. This shows inter alia that the blue condom is optional. Para 2 of that document says:

    'Change the instruction leaflet

    -add the image of the condom

    –show the condom being cleaned

    - point out to mothers that it is optional

    -change all text and logos to say B-Free

    -remove all references to Handi-Craft and patent numbers

    Experiments

88. Both sides have performed experiments, all of which were carried out in connection with the parties' contentions on the issue of infringement and one of which was distinctly 'informal'^[47]. The defendant's second 'informal' experiment was in fact performed by Mr Samson in court (in my presence) at the beginning of the trial.

89. The Claimants' Notice of Experiments is to be found in A/11. The Claimants' two experiments relate to what they called the 'liquid levels' point and are further considered below. These experiments were repeated for the benefit of the Defendants and Miss Gillian Smaggasgale^[48] of W.P. Thompson & Co, the Claimants' Chartered Patent Attorney, attended the repetition on their behalf. Miss Smaggasgale was cross-examined on (inter alia) these experiments and for the record, I found her to be a fair, competent and clear witness.

90. The defendants' further experiments of 23 April 2007 ^[49] relied on a series of tests carried out on the B FREE bottle, the Dr Brown's wide neck bottle (and on other bottles) to establish the air pressures which develop inside those bottles when suction is applied by means of a peristaltic pump. The experiments were carried out under laboratory conditions by a testing house in Haifa (Technicon) on behalf of TTY as long ago as August 2004. They showed ('predictably' said Mr Purvis) that except for the 'fully vented' Dr Brown's bottle, all the six other bottles showed a small negative pressure created by the 'suction'. The lowest vacuum recorded during this test was in fact that generated by the B FREE bottle. There was cross-examination on these experiments which I do not propose to go into since it is common ground that there exists a very small negative pressure within the B FREE bottles whilst it is in use.

91. The results of the testing by Technicon were printed by TTY as a simple bar chart on the cardboard packaging for the bottle.^[50] In the 'best result' case (i.e. that shown by the B FREE bottle) the negative pressure is so slight as almost to require examination of the bar chart with a magnifying glass. The accompanying copy reads thus

    ' In a recent independent test various leading brands of bottles were tested for the level of vacuum (negative pressure) …The more negative the pressure level , the harder it is for your baby to feed…The B Free was proven to have the lowest vacuum making it the easiest way for your baby to bottle feed …'

    The result for the Dr Brown's bottle was not shown. The copy on the opposite face of the cardboard container reads as follows:

    'As the baby suckles liquid from the B Free bottle, air enters around the collar through the vent and up the tube in the centre. A conventional bottle without a vent causes feeding problems because of the vacuum, air bubbles and collapsing teats.'

92. Significantly, the second paragraph of the copy on the rear of the packaging ('What are the Benefits?') tells us more about the 'feeding problems'

    'The B Free air vent helps to eliminate the well-known causes of COLIC SYMPTOMS such as wind and posseting. It stops the creation of air bubbles in the milk….The B Free air vent also stops vacuum building up in the bottle and the problem of teats collapsing. This prevents the hard sucking needed with a conventional bottle and you will see the difference immediately.'

93. Let me first deal with what I call the 'partial vacuum' point, the relevant words of the claim (see 'Construction' above) being the following:

    'the air passage and reservoir tube allowing atmospheric air to flow into the bottle to prevent the formation of a vacuum within the bottle when the liquid is withdrawn.'.

94. As noted, Mr Hughes submits that the words 'to prevent the formation of a vacuum' must be construed literally; the pressure in the bottle must remain atmospheric. Since it is common ground that a very slight negative pressure exists within the B FREE bottle during use, this integer of the claim, he submits, is not taken.

95. I have no hesitation in rejecting this submission since it completely ignores the requirement of purposive construction previously mentioned. Mr Hughes' contention is of course literally correct but when one considers the purpose of the integer in context, it is quite obvious that such very small negative pressures have no practical effect on the benefit which the patented bottle delivers. In use, air enters the space above the liquid in the B FREE bottle and the partial vacuum therein is sufficiently diminished so as to prevent (or at least ameliorate) the well known 'feeding problems' – just as the printing on the B FREE packaging says.

96. The evidence is mostly one way. First, it was Mr Samson's view that the effect of the negative pressure in the B FREE bottle from 'the ease of drinking point of view' was 'negligible': D7/875 - 876.

97. In March 2004, Tamir Tirosh and Amikam are named inventors in a PCT patent application for the B FREE bottle^[51] whose operation was said to be 'essentially vacuum free'. According to this patent 'essentially vacuum free' operation means,

    'a container that does not require added sucking force to be applied by the user of the container to contain liquid from the container. Further no appreciable vacuum force is created in the container during use of the container due to venting….The definitions set forth herein for 'essentially vacuum free' and 'nearly vacuum free' contemplate that a minimal vacuum force will be created to draw air into the container as the liquid is exiting the container'

    In cross-examination, Mr Samson accepted that this was an accurate description of the operation of the B FREE bottle: D7/871 and 873. It will be recalled that by the date of application for this patent, the results of the Technicon tests (which the defendants now rely upon to deny infringement) were known to at least Mr Tirosh of TTY^[52]. In fact, even in February 2005, the B FREE bottle was still being promoted by Mr Alberici to retailers thus^[53]:

    '(ii) the medical references on the pack relate to the vacuum free system inside the bottle that is shared by both brands'

98. Mr Hughes' answer to these in-house views was that they were irrelevant for present purposes; they were of no probative value as they were mere puffs. In my judgment, that is no answer. The repeated view of the defendants was that though a miniscule vacuum undoubtedly existed, unlike the products of trade rivals, it had no appreciable effect upon the purpose and benefit of the product viz. to alleviate 'feeding problems'. Construed purposively, that is the entire aim of the integer in question. The existence of the minor partial vacuum above the liquid in the B FREE bottle is insufficient to impair its benefits to a baby.

99. There was other evidence on the 'partial vacuum' point as well, but I need not refer to it. In my view this is an argument on non-infringement which must fail.

100. I should next deal with gaskets which (see the Patent §5) are said not to be required in the patented bottle –the benefit being I think, that there is less to keep clean if there are no gaskets. It seems to be proposed as a minor advantage. Mr Hughes says that on his expert's definition of the word, the blue condom may properly be regarded as a gasket and that this should be borne in mind on the issue of construction of the claims. Mr Purvis did not accept this definition but that notwithstanding he observed that this word did not occur in any claim and thus, need not be considered in relation to infringement. In fact, Mr Samson was not as definite about this point as Mr Hughes led me to believe. He said that the word 'gasket' is "not a particularly precise term" and that the slit in the blue condom "could" be called a gasket^[54]. Mr Purvis submitted that the argument was irrelevant. I agree. The 'no gasket' benefit was not apparently considered worth identifying in any claims and I am not as it were, 'equitably' importing it into the claims in issue via the back door.

101. Mr Hughes' final non-infringement argument (the so-called 'liquid levels' point) was associated with the attack on the Patent based on insufficiency (see below). Para 3 of the Grounds of Invalidity [A/9] reads as follows:

     'Further or in the alternative, claims 1 to 7 do not specify how much liquid is to be placed in the container for the purposes of testing infringement of those claims notwithstanding that the outcome of the infringement test (as set out in claims 1-7) may be dependent on the quantity of liquid in the container.'

102. The core point here centred on the fact that the Patent nowhere prescribes the level of liquid which is to be used in the patented bottle for the claimed results to ensue. Mr Samson developed the point (which has a number of facets including the 'diving bell effect') in his first witness statement [§§75-81]. The liquid levels point touches the requirements that:

     i The container is 'adapted to contain a quantity of liquid'

     ii 'the second end of the reservoir tube project[s] sufficiently downwards so that when the bottle is inverted the second end of the reservoir tube is above the level of the liquid trapped in the inverted bottle.'

     iii The air passage [is] above the level of the liquid trapped inside the reservoir tube

103. I confess to finding Mr Samson's evidence on this point unreal - for a number of reasons. At one stage for example he envisaged filling the entire container with liquid^[55] . There is of course no precise level to which a bottle should (or must) be filled – as every parent knows. The approximate quantity of liquid which is to be offered to the baby is first dependent upon there capacity of the bottle and which is determined by the manufacturer. It also depends on the age of the baby. Moreover (in my experience at any rate) the appropriate liquid level within such a container is approximately indicated in some way on the bottle itself. In my view, the reader of the Patent would fill the bottle to the sort of level which on angled inversion for feeding, results in it being in the approximate position illustrated (for example) on the B FREE packaging to which I have already referred.

104. The Defendants' third point on non-infringement was the subject of Mr Samson's 'informal' experiment with the B FREE bottle in the witness box^[56]. Mr Samson wished to demonstrate that because of the 'diving bell effect' only a very little liquid collected in the bottom of the reservoir after inversion whilst a number of drops of liquid adhered by surface tension to the walls of the reservoir above the vent tube. I observed this myself and I also observed that within a matter of seconds, some of these drops trickled down into the pit of the reservoir^[57] below the level of the air vent. I remain unconvinced by this experiment that the Defendants' experiments advance their case on non-infringement an iota.

105. Before leaving the 'liquid levels' topic, I should take up the following from Mr Samson's evidence^[58]:

     " I would add that, on reading the Patent, the purpose behind the requirements in the claims relating to the liquid levels in the bottle and in the reservoir tube is probably to prevent leakage." [Emphasis added]

     In my view, though leakage is obviously undesirable in any nursing bottle, that cannot be right. The primary purpose of this feature is a facet of the primary purpose of the Patent itself viz. to allow the passage of ambient air from outside the container into the space above the liquid being withdrawn so as to replace the partial vacuum being thereby created, without passage of air through the liquid in the container. Mr Tollman's evidence (with which I respectfully agree) put the point thus^[59]:

     "Many other design features have been incorporated into bottles which claim to reduce colic. However, none of these allowed air to enter the bottle from the teat-end and pass into the bottle entering at its base without passing through the liquid."

106. I have also considered the brief evidence on infringement of claims 2 and 3 but in the light of my findings on claim 1, I do not consider it to be necessary to add anything more concerning these claims. In my view, if the Patent is valid it is infringed by the B FREE bottle.
     Validity of the Patent

107. The Grounds of Invalidity [A/9] challenged claims 1-7 of the patent and are fourfold:

     (1) Non-entitlement to the earliest priority date. As noted, this has been conceded but does not now appear to take the counterclaim forward in any material respect. I need not further consider this allegation;

     (2) Lack of novelty in the light of two patents

     (i) US Patent ? 5, 449,098 and

     (ii) Swedish Patent ? 8200147;

     (3) Obviousness in the light of the two patents abovementioned and common general knowledge, and

     (4) Insufficiency. I have set this pleading out above. As pleaded this appears to me more like a complaint of ambiguity than a proper ground of insufficiency. But I need not I think, go into this. As it turned out, this ground became more of a 'squeeze' argument on infringement than a traditional attack under this head.

     Novelty

108. As will be seen, it is my view that neither of the prior art citations anticipate any of the claims in issue. In reaching this conclusion, I should nonetheless record my approach to the matter – though again I was not addressed by Counsel on this topic. I have followed the classic guidance given by Sachs LJ in General Tyre & Rubber Co v Firestone Tyre Co [1972] RPC 4567 at 485^[60]. For anticipation to occur the antecedent document must contain clear and unmistakable directions to do what the patentee has claimed in the claim under consideration.

     Obviousness: the law.

109. I was not specifically addressed at length on this subject and again I did not detect dispute between the parties as to the general principles to be applied. The burden is of course on the Defendants to make good this objection. The approach to obviousness which I shall adopt is the fourfold, structured approach proposed by Oliver LJ in Windsurfing International v Tabur Marine Ltd [1985] RPC 59 at 73:

     " …The first [step] is to identify the inventive concept embodied in the patent in suit. Thereafter, the court has to assume the mantle of the normally skilled but unimaginative addressee…at the priority date and to impute to him what was, at that date, common general knowledge of the art in question. The third step is to identify what if any, differences exist between the matter cited as being 'known or used' and the alleged invention. Finally, the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention."

     When the issue is one of obviousness, I have of course also borne in mind the numerous warnings against the danger of ex post facto analysis and the temptation of hindsight assessment. I was also reminded that in adjudicating obviousness, the important evidence is that of the properly qualified expert witness.

110. I have already considered the first two stages of the Windsurfing analysis but it may be worth while identifying what I consider to be the inventive concept of the Patent: it is a nursing bottle wherein any partial vacuum above the liquid which forms as the liquid is consumed, is relieved by enabling ambient air to enter the bottle from its teat end to pass through the bottle to enter the space above the liquid without passing directly through it.

     US Patent ? 5,449,098 [Offman] September 1995

111. The Offman patent is entitled 'Fluid flow controller for bottle'. The bottle within which the Offman 'controller' is mounted, is neither described as a being nursing/baby bottle nor is it one, since it has no teat (or teat collar) or anything remotely similar. Offman is not therefore an anticipation of any of the claims of the Patent and I shall therefore pass on to the attack based on obviousness. I would mention that neither party knew whether Offman's proposal had ever been put into practice – though because of the way it is made, Mr Purvis was sceptical as to whether it would be possible to do so.

112. The Offman controller is for use with narrow-necked bottles where it is said to prevent what Mr Purvis colourfully termed 'glugging' - by which he means (I think) the tendency in such bottles for the contents to emerge unevenly as a result of the simultaneous passage of air into the bottle to relieve an intermittent partial vacuum which develops as a result of the bottle being emptied. Though its application to carbonated drinks is certainly highlighted, the disclosure is clearly not limited to use with any particular liquid since its mode of operation does not depend on the nature of the liquid in the bottle. It is merely for soft drinks^[61]. There is provision for closure of the bottle containing the 'controller' by means of a screw cap and co-operating collar. One may also, I think, safely assume that the reader would understand that consumption of liquid would be via the lips or by pouring it into a glass. The end purpose is however to ensure the smooth egress of the contents of the bottle. Offman begins thus:

     'The invention relates to an apparatus which is attached inside a narrow-necked bottle such as one used for the storage of soft drinks. Narrow necked bottles are often used to limit the discharge of gas from a soft drink. With the use of the present invention, when the bottle is inverted the fluid inside the bottle flows out of the bottle smoothly.'

113. Offman proposes a number of variations but the basic idea is the same: the partial vacuum which intermittently develops in the space above the fluid as the contents are consumed, is alleviated by the provision of replacement air via a venting hole in the side of the neck and the 'controller'. The 'controller' is a combined tube and 'reservoir' fitted in the neck of the bottle (or the collar) which allows ambient air to flow through the tube and into the space above the fluid. The reservoir is a manifold or bulb which also isolates any fluid flowing down the air tube when the bottle is inverted, thus ensuring an unimpeded passage of air into the space above the liquid.

114. Not surprisingly, it was common ground that what was absent from Offman was only the pre-characterising features of claim 1 of the Patent; the rest is there^[62]. This, said Mr Purvis, is vitally important since Offman's bottle is simply nothing like a nursing or feeding bottle. In reply, Mr Hughes pointed out that neither the Patent nor Offman are concerned with the mode of delivery of the liquid to the mouth once it has got out of the container; the teaching of neither disclosure was directed to that. He also invited me to note (correctly) that the Patent is not limited to any particular design of liquid container even if Offman is directed to narrow-necked bottles in general. In order to understand Offman's disclosure it is best to describe the proposal in a little more detail.

115. Reproduced below are Figs 2, 3, 5 and 6 of the Offman patent.
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116. With reference to all the figures reproduced in this judgment, the air inlet hole numbered 12, is a narrow passage which allows ambient air into the reservoir 7 via a co-operating aperture in the neck of the bottle 2. The function of the reservoir 7 is to contain the small amount of liquid in the tube 9 (or 10) which flows down it when the bottle is inverted for drinking. When this happens, all that liquid will occupy the upper part 23 of the reservoir 7, thus permitting air to flow into the bottle via the tube. Leakage is avoided by pointing the vent 12 upwards in the reservoir. The reservoir is 'affixed' to the inside opening of a flat disc-shaped ring 8 which carries a number of holes 11 through which the liquid 1 being consumed, flows. The disc-shaped ring 8 may either be 'affixed' to the inside wall of the bottle neck or in other embodiments (see fig 6 below for example), to the inner wall or top of the open detachable cap 17 which may be closed by an outer cap 22 threaded to engage with the detachable cap 17. In the latter case, the co-operating air vent 19 is made in the side of the detachable cap.
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117. In use, the bottle is partially inverted at an angle suitable for drinking. When liquid is consumed, ambient air enters the air inlet hole 12 (or 19) and flows through the unfilled end of the reservoir 7, up the tube 9 to the air cavity above the fluid 4. The tube 9 is affixed to the reservoir at an angle such that when the bottle is inverted the open end of the tube 15 is located at the corner of the container which contains air 14. In this way, only the small amount of the liquid which had been in the tube prior to its angled inversion will flow into the top of the reservoir.

118. The Claimants' expert Mr Tollman^[63] was critical of how the controller might be made to work in practice. But in at least fig 6 it is intended to be detachable for re-use in the same or another bottle. If it is re-used it will no doubt also have to be cleaned. On cross-examination, Mr Tollman agreed that this would indeed be so: D6/729-732.^[64]
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119. Fig 5 shows part of the controller fitted into the neck of a bottle prior to its angled inversion. The top of the reservoir is large enough to contain the entire amount of liquid which was in the tube 9 before angled inversion. Figure 3 shows a perspective view of the controller.
     <

     Col 2 line 61-Col 3 line 2 of Offman reads as follows:

     ' The lower part of the reservoir 13 should be as large as the top part of the reservoir 23 in order to contain the full amount of liquid which will flow into it when flow is stopped due to stoppage of drinking and holding the container upright. The liquid which was contained in the top part of the reservoir 23 will not leak outside the bottle through the air tube 12 but rather will be contained in the bottom part of the reservoir 13 and then slowly continue flowing down the tube 9 to the bottom of the bottle'

     Mr Hughes submitted that this passage showed that the bottle could be put to the mouth i.e. drunk from directly – or it could be poured into for example, a glass. I agree^[65].

     .

120. The narrative summarises the practical benefit of the Offman proposal thus:

     'The present invention results in a steady, strong, fluid flow from a narrow-necked inverted bottle without a resulting gurgling and intermittent flow.' [Col 3, lines 6-10].

121. As previously mentioned, the only physical difference between the device the subject of claim 1 of the Patent and Offman's flow controller is. that claim 1 is for a nursing bottle which must therefore be fitted with some form of nipple and nipple cap – what in the Patent are described as a 'conventional nipple' and a 'standard nipple-cap'. For present purposes, the important point is this: Both Offman's bottle and the nursing bottle of the Patent work on a 'liquid trap' method of relieving the partial vacuum above the liquid being consumed, without allowing ambient air to pass through the liquid. The obviousness argument with regard to the Offman citation was thus unusual since what is lacking in it is stated in terms not to form part of the invention the subject of the Patent; it is found (as one would expect) in the pre-characterising part of the claims. It was common ground that Offman plus nipple and nipple-cap would fall within claim 1.

122. One thus quickly arrives at the last stage of the Windsurfing enquiry; one is in truth considering an analogous application of a bottle working in the same way as that proposed in the Patent. The essential question on obviousness is therefore: Would it have been obvious to the skilled addressee at the priority date, looking for improvement in nursing bottles, with Offman to hand and without knowledge of the invention, to consider fitting a standard teat / teat cap combination onto the Offman bottle?

123. The issue was considered by the parties in a practical and commercial way. The experts addressed the obviousness question from the point of view of whether the addressee would be

     (i) likely, and

     (ii) able

     to make such a change. I have two difficulties about this. First, I have grave doubts whether commercial considerations should feature in the obviousness enquiry. As Oliver LJ said in Windsurfing (supra at p.72):

     " What has to be determined is whether what is now claimed as inventive would have been obvious, not whether it would have appeared commercially worthwhile to exploit it."

     Furthermore, it must not be forgotten that when the enquiry relates to obviousness, evidence of commercial considerations is usually what has been called, secondary evidence. Like long-felt want or commercial success for example^[66], it may be relevant as an aid to assessing the primary evidence. In this case, most of the expert evidence was in my view, secondary evidence.

124. Mr Purvis said that the answer to the question posed in paragraph 122 above was firmly 'no'. He submitted that the proposal of Offman was a 'curiosity' and would have been regarded by a designer of baby bottles as hardly more than the utterance of an amateur or of a mechanical eccentric. It was 'fiddly beyond belief'^[67]. The addressee would at once appreciate that the proposal was incapable of being commercially manufactured and would not even bother to investigate whether a nipple and cap could be fitted onto Offman's 'pop' bottle. In a word, the skilled man would give up. Though he stressed the 'extreme difficulty' in getting Offman to work at all, I noticed nevertheless that Mr Purvis never went quite so far as to suggest that Offman simply would not work.

125. On the other hand, Mr Hughes saw no reason for initial rejection on the part of the skilled man; at once appreciating what Offman taught regarding the relief of the partial vacuum, he would work from it. Moreover, so Mr Hughes submitted, he would have had no particular difficulty in adapting the bottle neck to take a standard nipple and cap combination and then, if called upon to do so, having it manufactured. If it was necessary for present purposes to go that far he would legitimately be able to consult with (for example) a plastics expert as how best to achieve it.

126. When the issue is obviousness, the views of the experts are vital. So what do they say? Both address the question raised in paragraph 122 above.

127. Before considering this evidence however I must address what I believe to have been threshold misunderstandings about the approach to the prior art. This involved both experts. Mr Tollman basically rejected Offman because his view was that (inter alia) in their work, baby bottle designers do not look seriously at the potential utility of products sourced from other industries^[68]. Mr Samson on the other hand assumed that the baby bottle designer had undertaken a general search in the prior art for useful ideas for improving baby bottles before stumbling upon Offman^[69]. Neither of them apparently appreciated that for the purpose of assessing obviousness, Offman (alone) had been given to the addressee by a notional but unseen hand, that he was assumed to take a practical interest in it whether he liked it or not and then, with the mentality of constructive optimism, he had to express an informed technical view on it in the light of the common general knowledge.

128. Mr Samson's view was robust: the principle of operation of the Offman bottle would strike the skilled man looking for improvement in baby bottles, as an attractive starting point. He would at once see the virtue in the 'liquid trap' method of relieving the partial vacuum and at once be aware of the 'downstream' benefit to the nursing baby. Furthermore, he would not consider Offman difficult to adapt in order for it to carry one of the numerous commercially available teats/teat caps with which he was familiar.. Indeed a design engineer in the baby bottle field who did not recognise the potential of Offman, said Mr Samson, would not last long in his job^[70]. In spite of sustained cross examination about the practicality of ever making Offman a reality he said ^[71]:

     " I am saying that it is totally practical. I would agree that there are easier ways of making a bottle like that, but this thing is totally make-able."

129. In his witness statement, Mr Tollman raised a numerous practical difficulties about being able to do anything at all with Offman – assuming that the skilled man went so far as to try to adapt Offman to the baby bottle field in the first place. A propos the latter, he said first of all that in the baby product field there was no 'cross-fertilisation' from other fields; the addressee would not therefore be interested in Offman from the start. He said^[72]:

     " The specialist nature of the field means that there is a high barrier to entry for general manufacturers and consequently there is there is a limited scope for a cross-fertilisation from one field to the other."

     Mr Samson disagreed, noting that inter alia plastic moulding techniques are common to other fields^[73]. I need not resolve this debate because I believe that Mr Tollman starts from a mistaken premise (see above); however hermetic the baby bottle field may be, the skilled man is assumed for present purposes to have Offman in his hands and not to throw it straight into the wastepaper basket.

130. I should however deal with more of Mr Tollman's evidence on Offman since on cross-examination, he had to retreat on a number of points from views previously expressed in his Report. In fact, in this way, a number of Mr Tollman's initial difficulties with Offman disappeared completely. Thus:

     On four occasions, he stated that Offman was for fizzy drinks (Mr Purvis' 'pop' point) and that Offman's real intention 'is to keep gas/air in the liquid'^[74]. He agreed that this was not so: D6/719-722.

     Offman was not limited to the liquid in the container being poured; it could be drunk from the bottle too: D6 /722-724

     Offman and the device in the Patent worked in the same way: D6/724-726.

     The innards of Offman are not permanently attached to each other and the fig 6 embodiment was detachable:D6/726-732.

     'Asymmetry of the Offman bottle'. I have already touched upon this^[75]. In addition, Mr Alberici cross-examined Mr Tollman about an angled feeding bottle made by Mr Tollman's company, Vital: See Court exhibit 7 and D7/822-825.This feature in Offman would not I consider, have deflected the skilled reader.

     Cleaning problems were not as bad as he had first suggested. It was noted for example that both parties' bottles were provided with little cleaning brushes for this purpose.

131. I noted that not much was said about the shape of the Offman container other than it was 'narrow-necked' and thus suitable primarily for soft drinks. In a document put to Mr Tollman entitled 'The history of the feeding bottle', under the chapter 'Upright Feeders' one reads as follows:

     'Upright feeders have been around since the early 20^th century. Many of the early models were crude affairs made in low quality glass and were mainly the narrow-neck type with pullover nipples.'

     An illustration of such bottles is provided, next to the more common wide necked bottles. Thus the fact that Offman's containers are narrow-necked does not rule it out for either direct use or adaptation for use as a nursing bottle^[76]. Indeed, the Patent itself envisages a container whose external diameter may be 'about 3-8cm so that it can be held easily by the hands of small babies' (col. 4 line 1).The neck of such containers would of course be rather less than their external diameter and Court exhibit 5 is indeed a narrow necked version of the Dr Brown's bottle. I see no compelling evidence of difficulty in adapting a container of the sort described by Offman to take commercial nipples/nipple collars; indeed there is no evidence of which I am aware to suggest such a difficulty.

132. The evidence on the difficulties of possible manufacture of the innards of the Offman device was lengthy, complex and conflicting. Since a good deal of it went more to commercial considerations than anything else, I need not go into it at any length. I was far from convinced that such difficulties were grave.

133. Let me take one example, however: Mr Tollman saw problems with the manufacture of the Offman tube and reservoir. D6/732-737. Mr Hughes therefore put two items to him in this connection. First, there was a small plastic laboratory pipette which resembled the controller (Exhibit 6). He then invited Mr Tollman to consider inner part of a narrow-necked Dr Brown's bottle. He agreed that both could be made by blow moulding^[77] but in relation to the latter he added: ' not of that size indicated in the illustrations'. The illustrations he was referring to were those in Offman. However, the illustrations in a patent specification are not of course to be regarded as working drawings: Terrell (16^th edn) 7-102. Again I remained unconvinced of real difficulty.

134. The upshot of all this evidence is twofold. First, I do not believe that the Offman proposal is the absurdity that Mr Purvis would have us believe. It would certainly require working on, probably with a plastics blow moulder but I entirely reject Mr Purvis' contention that 'the manufacture of Offman was a research project in itself'. More significantly, the evidence relating to Offman made me think that of the two experts, the evidence of Mr Tollman (who frankly said he was not an engineer^[78]) was less reliable on this citation than that of Mr Samson. In addition to his scientific background and his continuing interest in technical matters, Mr Samson had worked with people in the baby product industries: Report F/1/§8.

135. In my judgment, the Offman citation would at the priority date give the skilled addressee all he required to design a nursing bottle falling within claim 1 of the Patent using no more than his common general knowledge. The fitting of a nipple/nipple cap to the Offman bottle (which is anyway not part of the invention of claim 1) could be effected using commercially available products to fit on the Offman liquid container- which in the fig 6 embodiment, was already threaded to take a detachable cap. More likely however, the neck of Offman would be modified in accordance with current nursing bottle design thinking. This could be done in association with a plastics blow moulder if necessary. I do not think that any of this involves any degree of invention and thus the attack on the Patent based on Offman succeeds.

     Claims 2 and 3 and Offman.

136. Both claims 2 and 3 of the Patent are dependent on claim 1 but were said by Mr Purvis to be independently valid. Claim 2 adds integers to limit the nature of the vent unit and the reservoir tube. In claim 3, the vent tube projects into the reservoir sufficiently so that its distal end is above the level of liquid trapped in the reservoir when the bottle is inverted.

137. The parties seem to have paid little attention to these claims and I have in fact found rather little extra expert evidence directed to them – apart from general assertions of validity or invalidity as the case may be^[79]. In his first report however, Mr Samson did condescend to some detail regarding in particular, claim 3^[80] . He considered that the presence of a 'vent tube .projecting into the reservoir tube etc' if absent in Offman (which he thought however was only arguable) was a trivial matter and was certainly not a feature whose adoption involved the taking of an inventive step. A propos claim 3, Mr Hughes also pointed to the wording of claim 1 (d) of Offman (which is of course part of its disclosure). This states that the air inlet tube is inserted into the reservoir. If that is done, he said, it need not be flush with the side but it must be above the level of any liquid trapped therein. I agree.

138. In summary, claim 1 being in my view invalid, there is no extra matter in claims 2 or 3 which on the evidence could save the Patent.

     Swedish patent ? 8200147 [Andersson] 1982

139. This is undoubtedly a proposal for a nursing bottle which 'eliminates the risk' of air bubbles getting into the baby's food and into its stomach thus causing 'stomach ache'. Again, there was no evidence that it has been used commercially. We all worked from a rather poor translation from the Swedish so allowance for this must be made in the passages quoted below. Several embodiments of Andersson are described but I need only focus on that depicted in fig. 1 reproduced below. I would add that it was common ground that a baby is not fed from an inverted bottle in the vertical as shown in fig 1, but rather at a variety of angles.

140. The nipple end 24/29 of the bottle is entirely conventional being screw – fitted to the container 10 via a screw ring 26. Item 23 is the baby food and 22 the air space above it.
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141. The Andersson proposal consists of a double -walled container for a 'liquid baby food such as gruel', the outer container being marked 10 and an inner 'separate insertion pipe' fitting within 10 - being marked 13 in the diagram. This leaves a narrow 'outer space'18 between the container proper 10 and the insertion pipe 13.The container has an external thread 11 (which co-operates with the screw ring 26) and an inward facing flange 12.The insertion pipe also has a flange 14 which lies against the container flange 12 and clearance is provided between the two by radial spacing ridges 15. Suitable clearances are arranged between the various constituent members such that there is an air passage from around the screw ring, past the threading, between the flanges, into the narrow cylindrical space 18.The insertion pipe 13 does not go all the way to the bottom of the container however, but only so far as to leave an annular space 19 above the bottom 20 of the container to allow air to pass into the space above the food. Arrows indicate the direction of airflow when the bottle is in use.

142. The container is now filled with baby food, the insertion pipe placed in the food in the container and the teat/teat collar screwed onto it. The bottle is ready for use. It is inverted (at a convenient angle) and the teat given to the baby. As the baby sucks 'a certain underpressure is obtained in the container'. As a result, outside air now 'bubbles up through food which is situated in the outer space 18'. The air bubbles rise up to the top of the container through the feed and out over the annular space19 thereby relieving the partial vacuum in the space 22. The narrative continues (trs p 4, ll 7-10):

     'Thereby the desired pressure compensation is obtained which results in that the child may suck out food from the air free food inside the pipe 13.'

143. Another passage from Andersson seems worth quoting (trs. p3, ll 20-25):

     'In order for the feeding bottle to operate in the best possible way, the pipe 13 shall lie relatively close to the wall of the container 10 so that the volume of the food enclosed in the outer space 18 will be small in relation to the volume baby food which is situated in the inner space which mainly is constituted by the interior of the pipe 13.'

144. There are diagrams of other embodiments all of which (like fig 1 above) show air bubbles present in the feed locked in the narrow annular passage 18.

145. The Andersson bottle clearly has the same overall purpose as that in the Patent, namely to prevent colic through ingestion of air by a nursing baby struggling against an increasing partial pressure in the bottle. However, does Andersson work in the same way as the device subject of claim 1? In my view it does not.

146. In fact, the experts had to do some guessing as to how Andersson worked. In so far as they could make practical sense of it, they disagreed, much of their disagreement stemming from the use in Andersson of the word 'gruel'^[81] (just once) in the phrase 'liquid baby food such as gruel' and the consequences of using (or rather, not using) such a high consistency feed. A topic of debate for example, was the likelihood of leakage arising were milk to be used instead of gruel. There is no need to take time with this; in my view, the addressee would consider the use of any liquid baby food to be within the ambit of the disclosure. Whether leakage were to render the device unsaleable or not would be a matter of trial and error.

147. However, it is the claimants' case that as baby drains the contents of 'the interior of pipe 13', the small volume of liquid feed trapped in the annular space 18 remains where it is, bubbles still streaming up through it as long as the baby sucks. Follow- on arguments arose as it whether this hypothesis had properly been put to the experts. My view may be briefly stated; when I read Andersson for the first time this is exactly how I understood it to work and subsequent evidence has not changed my mind. There were no experiments and it is for the defendants to show that this explanation is plainly wrong. I have several times stated how I believe the bottle of claim 1 works^[82]: it provides a liquid trap so as to allow air to relieve the partial vacuum above the liquid in the bottle without passing through that liquid. This is not Andersson.

148. Mr Samson suggested^[83] that if a very little liquid baby feed was initially placed in the Andersson bottle and the bottle was inverted and tilted for feeding, then there might indeed just be a direct air passage from the ambient to the space above the feed and no air would need to pass through the feed. The Patent, said Mr Hughes, was virtually silent as to how much liquid was to be placed in the bottle before a feed; the bottle could be full or virtually empty. In my view the imagined use of such tiny quantities of liquid is a fair example of the sort of improbable scenario that arises mainly in the trial of patent cases. Both the Patent and Andersson propose devices for nursing babies and not dormice and even if Mr Samson's hypothesis (for that is what it is) is correct, I do not think for a moment that the skilled addressee reading Andersson would have in mind Mr Samson's grotesque possibility.

149. Having dealt with the experts' views on Andersson, I shall next consider the specific attacks made on the Patent based on it.

150. I do not think that one can find either an air passage or a 'reservoir tube' as called for in claim 1 anywhere in Andersson, let alone a reservoir tube in which liquid is trapped 'when the bottle is inverted'. The attack based on lack of novelty clearly fails.

151. As for obviousness based again on the Windsurfing approach, it is rather difficult to know where to begin. There have it seems, been quite a number of proposals for relieving the partial vacuum above liquid in bottles which is caused by the liquid being in some way drawn off – resulting in some positive benefit to the user of the bottle. But that is not enough. Save for Offman (which does this in exactly the same way as that proposed in the Patent), the means used to do this are all different. Some proposals may be more effective that others. Andersson appears to be just another such proposal. The several steps required to bring Andersson within claim 1 would involve in reality a radical restructuring of his basic teaching and I cannot find any compelling reason for so doing without the benefit of hindsight. What would be required involves re-thinking the whole Andersson proposal. Indeed, working with gruel, for all I know, Andersson may work well enough for there be no incentive for any change at all.

     Patent infringement and validity: Conclusion

152. In my judgment, the Patent is invalid on the ground of obviousness in the light of Offman only and thus, this part of the claim fails. If I am wrong about validity and the Patent is valid, it is infringed as alleged. The attack on validity based on Andersson, fails in any event.

     Copyright Infringement

     Tamir Tirosh [D12]

153. Evidence relating to the origination of the B FREE logo was given primarily by Tamir Tirosh [D12], so it will be convenient to record my assessment of Mr Tirosh as a witness at this juncture. In § 16 above, I accepted Mr Tirosh's evidence that at all material times he was an independent manager/consultant/contractor to TTY – in effect their factotum in Israel except significantly, in respect of any financial matters. All financial matters were dealt with by the director, Mr Blattberg. It will further be recalled that all (or virtually all) the Dr Brown's and B FREE bottles sold in Europe at the times of interest in these proceedings were manufactured in Israel for TTY and that Mr Tirosh was in charge of this and of the dispatch of the packaging and bottles to the UK.. He received his instructions mainly via TTY, but also on occasion, directly from Amikam (or sometimes, from Mr Alberici) acting usually on behalf of Action Trading [D6] but also on behalf of the other UK corporate defendants. I find that Mr Tirosh was at all material times paid by TTY (only) and that though he had working contact with Amikam, Mr Roxburgh and Mr Alberici, he played no part in any decision-making by any of the UK corporate defendants

154. All three of his witness statements refer inter alia, to this - and to the origination of the logo. His third witness statement was devoted to correcting errors in his second witness statement and in addition, asking for his first witness statement (which was made for the interlocutory proceedings), to be withdrawn entirely. Mr Tirosh was cross-examined. He understood and spoke English quite well. Nonetheless, I found some of the answers he gave to be confusing and on more than one occasion, I had reason to think he was being evasive. I do not however suggest that he was trying to mislead the court. Though I have therefore treated his evidence with caution, I would not place it in the unsatisfactory category in which I have put evidence from the Berkovitches (see below).

155. He stressed that he was just doing the job for TTY (or their client, Promedico – see below) who paid him 'a fixed monthly payment'. I also accept that he believed that he personally had done nothing blameworthy within the jurisdiction.

     The pleadings relating to copyright infringement

156. The amended particulars of claim identify the subsistence of copyright in a logo (called 'the Sign' throughout the pleading –and indeed elsewhere^[84]) which consists of the words 'DR BROWN'S' in an oval setting having a 'turquoise green' border , the word 'DR' being printed in the same tone of green as the border and the word 'BROWN'S' in clear 'see-through' stencil effect: A/2/§4. There is also a detail in this mark upon which Mr Hughes relied: a stylised stethoscope may be seen just above the words 'DR BROWN'S'. This stethoscope may perhaps be better appreciated by using a magnifying glass. I reproduce below an enlarged rendering of the Claimants' logo^[85].
     <
157. Infringement is alleged by allegations of both primary and secondary infringement and also by multiple joint tortfeasance.

158. Primary infringement^[86] [A/2/§29] is said to arise by copying (or by copying a substantial part of) the claimants' logo, by issuing copies thereof to the public in the UK and/or by authorising the same. Primary infringement is alleged against B Free, Baby B Free, Action Trading, Yasmin, Amikam, and Timi Berkovitch, Mr Alberici, Mothercare and Boots.

159. Secondary infringement^[87] [A/2/§30] is alleged by the importation, possession sale etc of B FREE bottles bearing the logo in the knowledge that they bore infringing copies. This is alleged against the same defendants less Mothercare and Boots. Particulars of knowledge of a very general kind are given, including notoriety in industry that logos are the subject of copyright. Specific notice is not mentioned.

160. As already noted, some of these defendants including Mothercare, Boots, Action Trading, Yasmin and Timi are no longer in the action.

161. Joint tortfeasance. In a separate section of the pleading, joint liability for copyright infringement with B Free and/or Action Trading by the importation of articles bearing the logo with the relevant knowledge is also alleged against TTY [A/2/33]. And in addition, joint liability with TTY is alleged against Mr Tirosh [A/2/36-37] – in effect, a joint co-liability.

     The origin of the B FREE logo

162. Since subsistence and ownership of the copyright in the logo is now conceded and furthermore and since a degree of copying is admitted to have taken place (but not however, copying of a 'substantial part' of the copyright work), I need not record more than the brief facts relating to 'copying'.

163. The original defence pleaded a case of completely independent design (see the deleted parts of para 29 of the Amended Defence (in A/3)). The defendants now plead that they are 'not presently aware of all the details concerning the origin of the B Free logo'. The defence of TTY and Tamir Tirosh is also relevant to this allegation: see A/8, particularly § 5(3) thereof. Authorising the use of the logo in the UK is specifically denied by Mr Tirosh on the basis that that was done by others, particularly by Mr Blattberg (i.e. by Dvora Berkovitch's father) 'acting on behalf of TTY'.

164. First, I reproduce below an enlarged copy of the alleged infringing logo. The word 'free' in this logo has the same clear 'see through' stencil effect as the word 'Brown's' has in the claimants' logo^[88].
     

165. During 2001, a substantial (and independent) Israeli company, Promedico Ltd ('Promedico'), who were former distributors of Dr Brown's bottles in Israel, began to distribute B FREE bottles in Israel for TTY. Mr Tirosh, who was involved in this, said that Promedico needed inter alia a new logo for this purpose and that Promedico therefore commissioned a local self- employed designer, one Zmira Geva, to do the necessary work –with the help of Mr Tirosh as TTY's representative. Mr Tirosh's job was, so he said, to 'guide' her. In §§ 15 and 16 of his second witness statement Mr Tirosh described the process:

     '15 At the end of the year 2001 Promedico an Israeli company was appointed by TTY the Products' sole distributor in Israel. Since according to the Licence, the Sign could be used only on Dr Brown's Bottles, Promedico resolved in January 2002 to develop a new logo comprising Action Trading's trade mark B FREE for marketing all the Products including Dr Brown's bottles manufactured by TTY and distributed by Promedico in Israel. under the Licence.

     For that purpose, Promedico commissioned Mrs Zmira Geva a self-employed designer who designed the B Free trade mark. My directions to Mrs Geva were that the B Free trade mark should be different from the Sign. Mrs Geva and I were aware of course of the Sign but at no time was there a depiction of it in front of us when Mrs Geva designed the B FREE trade mark under my guidance. I made sure that the features of the B Free trade mark inter alia the typeface , were completely different from those used in the Sign.'

166. Mrs Geva was not called to give evidence nor were there any written instructions to her regarding her design brief^[89].

167. One working day before this cross-examination, the defendants unexpectedly (and without convincing explanation) produced a number of new documents apparently retained by Mr Tirosh on behalf of TTY. Among these was a contemporaneous page from Mrs Geva's 'work in progress': X/23. This is a black and white copy and shows three oval logos of the kind under consideration. All three incorporate both the words B FREE and surprisingly, 'Dr Brown' (sic) within the same oval, the only apparent difference between them being in the typeface of the word 'Free'. Mr Tirosh confirmed that the colour scheme of the original was the same as the of the B Free logo in issue. I found Mr Tirosh's account of his working with Mrs Geva, confusing.

     Copying of a 'substantial part'

168. Counsel drew my attention to the leading modern case on this topic: Designer's Guild v Russell Williams [2001] 1 WLR 2416 (HL) particularly the speech of Lord Millett at pp 2425-2426:

     " Once the judge has found that the defendant's design incorporates features taken from the copyright work, the question is whether what has been taken constitutes all or a substantial part of the copyright work. This is a matter of impression, for whether the part taken is substantial must be determined by its quality rather than its quantity. It depends upon its importance to the copyright work. It does not depend upon its importance to the defendant's work….The pirated part is looked at on its own …and its importance to the copyright work assessed . There is no need to look at the infringing work for this purpose.".

169. I was also referred to Copinger 15^th Edn, §§ 7-57 and 7-59 where the authors pose the question:

     "Have the essential features and substance of the copyright work been adopted?"

170. Mr Hughes submitted that the logo in issue was what he called 'a simple artistic work'. He said that in such cases the courts look to virtually exact reproduction of an artistic work for infringement to be found. He relied for this submission on the well-known case of the 'hand on the voting slip': Kenrick v Laurence (1890) 25 QB 99. The more simple the copied idea, the less likely it is to constitute a substantial part of the copyright work, he submitted.

171. In my judgment, in copying the Dr Brown's logo, Mrs Geva took a substantial part of the Claimants' copyright work. I have reached this conclusion first as a matter of impression unaffected by the circumstances of the copying. The one logo makes the same visual impression on me as the other: see paragraph 172 below. Though the artistic work in issue may not be of inherent aesthetic merit or the outcome of exalted drafting achievement, the skill and labour which go into devising logos for products and services cannot these days, be under-estimated. Thousands of pounds are regularly paid for the creation of simple logos^[90]. Indeed it may be that in this area of design, the really simple logos are the most effective and successful commercially.

     Conclusions

172. I have re-read the cross-examination of Mr Tirosh ^[91] (together with other relevant matters relating to the allegation of copyright infringement) and, have come to the following conclusions on the facts.

     First, Mrs Geva copied a substantial part of the 'Dr Brown's' logo when she designed the B FREE logo: CDPA '88 s 16(3) (a). In comparing the two logos a reasonable person would not use a magnifying glass. Rather, the two are to be compared at the same sort of distance from the eye as a purchaser or user of an object to which such logo was affixed or printed would be likely to see it.

     The substantially copied features are: an oval logo partly framed within a thin turquoise green surround, the interior of the oval being entirely Oxford blue in colour. The use of two groups of stylised lettering therein wherein the first group of letters is in the same turquoise green colour as the surround and the second group in see-through stencil, piercing the Oxford blue colour of the oval.

     Mrs Geva did what she did under the direct instructions of Mr Tirosh. I do not believe Mr Tirosh's evidence that his directions to Mrs Geva were simply that the new logo was to be 'different' to the Dr Brown's logo. There was more to it than that. I have noted that there is no evidence as to how Mr Tirosh had his contribution to the design process, defined by TTY – who after all, were paying him at the time.

     All this copying was carried out in Israel. Further, there is no evidence that anyone except Promedico (and possibly TTY) authorised such copying. In any event, if it occurred, this was again done in Israel. With regard to the allegations against Amikam and his companies and Dvora, there is no evidence of any particular authorisation uttered from this country – though I have no doubt that at the time, he and Dvora were well aware of what was being done by TTY and by Mr Tirosh .

     Mr Alberici played no part whatever in the origination of the B FREE logo-in spite of some suggestion that he did^[92]. He neither copied nor authorised the copying to which I have referred. In fact there is no evidence that Mr Alberici knew anything about the origination of the B Free logo until around the time of these proceedings.

     The allegations of primary infringement against Amikam, Dvora the Berkovitch companies and Mr Alberici, therefore fail.

     Regarding secondary infringement, the situation is different, since it involves issues of importation, possession and distribution etc together with the relevant knowledge. B FREE bottles ( and the printed packaging threfor) all bearing the B FREE logo in issue were undoubtedly imported and/or distributed in the course of business and/or sold within the jurisdiction by all of the UK corporate defendants. I will show in the next section that these companies were Mr Berkovitch's alter ago (as indeed he now admits). They therefore possessed the relevant knowledge at the time these acts were carried out. Amikam's liability as director of Action Trading will also be considered in the final section – as will the allegations made against Dvora. In my judgement, the UK corporate defendants are therefore secondary infringers of the copyright in the logo.

     The liability of TTY depends first on the circumstances of importation and will be considered later: see paragraph 211.

     I shall also deal with the case of joint tortfeasance against Mr Tirosh.with TTY when I deal with the allegations against TTY. I can however say now that the part of the case against Mr Tirosh personally, based on alleged licencing or authorising the use of the logo by the UK corporate defendants in the UK is not supported by any facts (A/2/36, last sentence).

     With regard to the secondary infringement alleged against Mr Alberici, the situation is more complicated. The relevant acts alleged are 'importing, possessing and distributing in the course of business, selling and offering for sale [B FREE bottles and packaging]' in the jurisdiction with the relevant knowledge. Mr Alberici certainly offered bottles for sale within the jurisdiction but I have found no specific evidence that Mr Alberici did any of these things with the relevant knowledge..

     Moreover, in the light of my earlier findings regarding origination, it is clear that Mr Alberici did not know that the B FREE logo was an infringing copy. But did he have reason to believe it was? Can he be imputed with constructive knowledge?

     In this connection, I have taken into account two matters. First, it is well established that in secondary infringement cases, suspicion is not enough –which is why a solicitor's letter containing a sufficient summary of the facts (relating to subsistence, ownership and identification of the work in issue) is invariably sent to put the recipient on adequate notice before action. In this case I have been unable to find a letter to Mr Alberici of this kind, sent within the relevant period, before he was personally made a defendant. Secondly as Mr Alberici frequently pointed out, he knew nothing of intellectual property law until he became involved in this case. Though ignorance of the law is of course no excuse, it seems to me all the more important when laymen are made personal defendants in copyright infringement actions, that proper advance notice is given.

     With regard to the possession of the requisite knowledge, the burden is on the claimant^[93]. I do not therefore believe that any case of copyright infringement has been made out against Mr Alberici.

173. I shall conclude this section with a quotation from the interlocutory judgment of Laddie J. Concerning his impression of these two logos (but in the context of passing off), he said this ^[94]:

     "They look very similar from a distance and no doubt to those who are minded to think that there is a connection between the defendants' B FREE product and the claimants' product, the similarity of the design of the logo would reinforce that view."

     I completely agree.

174. I have appended to this judgment as Annex A a side-by-side reproduction in colour of the two logos.

     Passing off and Trade Mark infringement

175. This is the part of the case with which Laddie J was almost exclusively concerned at the interlocutory stage. I have read his judgment^[95] and in the introductory part of the present judgment, I have referred to some of the facts and matters which led him to the conclusions he reached. It is fair to say that he took a very poor view of the activities of the then first two defendants, that is, B Free and Yasmin Berkovitch. His comments about Amikam (who was not yet a defendant) were even more astringent. I have of course have had the benefit of the bigger picture, having seen much more of the case. As a result, I am able fully to endorse what Laddie J has to say about those three defendants. I do not propose to record more facts than are necessary in this judgment – particularly in the light of Mr Hughes' concessions on passing off and trade mark infringement and the abandonment of the conspiracy charge.

176. It is clear in the light of the considerable evidence available at trial that from about Spring of 2001, Amikam orchestrated a group of persons (mostly his family), to assist him in varying degree in executing a deliberately illegal and dishonest course of commercial conduct in relation to nursing bottles. He intended to hijack the considerable goodwill which had by then been built up in England around the Dr Brown's bottles to launch what was to become the B FREE bottles. He did this by falsely portraying the B FREE bottles to both trade and public as being improvements on the Dr Brown's bottles when they were not. And having himself been intimately connected with establishing the Dr Brown's bottles on this market, he was in an unrivalled position to do so. This is text book passing off and was rightly entitled 'The Deceptive Scheme' in the Claimants' pleadings: A/2/§15. It is the foundation of the causes of action in passing off and trade mark infringement and I shall have more to say about it.

177. Not surprisingly, Laddie J's order^[96] reflects the serious view he took at the time. The order is truly comprehensive restraining D1 and D2 (in general terms) from dealing in feeding bottles incorporating the claimants' air vent (by reference to a sample) or from using the marks 'Dr Brown's' or 'B FREE' or either the claimants' logo or the B FREE logo, in relation to feeding bottles. D1 and D2 are also enjoined from making any misrepresentation to the public (for example) that any products sold under a different name are products previously known as Dr Brown's.

178. Before trial, Mr Hughes offered certain undertakings under this head. By the time of his closing submissions, Mr Hughes sent revised draft undertakings to the Court on behalf of B Free (D1), Baby B (D5) and Amikam (D7). The first two paragraphs of these undertakings (injunctive relief and delivery up etc) have been drafted in terms which are commonly used at the conclusion of a successful passing off and trade mark infringement action. It remains to be seen how far these can usefully be incorporated into part of the order I shall make at the conclusion of this case. The third paragraph however relates to damages and is in very much draft form. Moreover Amikam is prepared to submit to an enquiry or account only in respect of 'passing off due to the packaging'. If (as I suspect), 'the packaging' is intended to refer just to the cardboard box in which the B FREE bottle was sold, in my view, Amikam's offer falls short of the mark.

179. The first thing which struck me about these undertakings is that they do not concern the corporate defendant through which most of the infringing activity complained of passed: Action Trading (D6). In his witness statement, Amikam says of D1, D5 and D6^[97]:

     "..I ran these companies and made all the decisions relating to the strategic direction and expenditure of these companies."

     This admission, which could hardly be in broader terms, was amply borne out by Amikam's cross-examination and by other evidence. Why this is of importance is because, although Action Trading is now in liquidation, Amikam was at all material times its director when it was in full swing. Mr Purvis epitomises the relevant pleading^[98] by arguing that Action Trading was simply Amikam's £2 alter ego and that therefore, whatever may be the corporate status of Action Trading now, he is jointly and severally liable with it for any tortfeasance established against it when it was trading –both as a director (see A/2/§14/c) and as a joint tortfeasor.

180. As unconditional undertakings are now offered in respect of the pleaded activities of B Free and Baby B, the case against these companies in passing off and trade mark infringement must stand admitted. Had Action Trading not gone into liquidation, those same pleaded acts would I think, a fortiori have led to the same result against it. How does this affect Amikam who was not only the director of Action Trading at all material times but (on his own admission) its driving force as well?

     Director's liability

     The law

181. The law on this subject is well-developed and reference was made in this connection to inter alia C Evans & Son Ltd v Spritebrand Ltd [1985] 1 WLR 317 which, as Mr Hughes reminded me, was a decision on a preliminary issue. From this case and Counsel's submissions I have come to the following conclusions regarding the position of directors of companies which are tortfeasors:

     The liability of a director is a specific and recognisable instance of general joint tortfeasance : see below.

     If the alleged tort is not one for which the claimant must prove a particular state of mind or knowledge then if the facts sufficiently implicate the director personally in the tort committed by the company, he may be liable together with the company.

     Directors are the company's agents and therefore, under the general principles of agency, they are inherently at risk of being jointly and severally liable with the company for acts committed by it.

     The facts

182. The only remaining director relevant to this enquiry is Amikam and the only relevant company is Action Trading – Amikam's directorship of B Free having begun only last year. I have carefully reviewed the evidence of Amikam's working relationship with Action Trading and have no doubt that he is jointly and severally liable with it in respect of its passing off, trade mark and copyright infringements. Before its liquidation, Action Trading was in fact his principal alter ego.
     General Joint Tortfeasance

     The Law.

183. I was referred by counsel to extracts from Terrell 16^th Edn §8-38-8-44 for an overview of this subject. I am fairly familiar with the authorities cited in these chapters, particularly The Koursk (see below), Morton-Norwich v Intercen, Unilever v Gillette and Unilever v Chefaro. I was also asked to consider the more recent case of Generics (UK) Ltd v Lundbeck A/S, (CA), Unrep. 2 August 2006. I regard the following observation of Mustill LJ in Unilever v Gillette [1989] RPC 583 at 608 as being of relevance to the present allegations of joint tortfeasance:

     " As to the authorities on the subject, if I am right in the view just expressed that they are really cases on the facts, I suggest that there is little to be gained by matching the circumstances of each case against each of the allegations in the draft amended statement of claim."

184. When two or more persons' involvement in the commission of a tort is, on the facts, part of a common (and not a similar) design, they are joint tortfeasors. Facilitating the commission of the tort (such as by supplying an article to someone) is not however enough whereas authorising it may be. The court must therefore first identify the 'design' and then come to a conclusion as to whether the parties' designs are co-incident. Thereafter, liability will depend on the facts and in the end, the court has to make a value judgement in the light of that evidence. If there has been a full trial (as opposed say, to an application for a strike out), the court will be in a particularly good position to assess joint liability.

     Some facts

185. As for the allegation of 'common design' in the present case, we are principally concerned with passing off. There is also an allegation of joint tortfeasance against Mr Tirosh in respect of the same passing off and also of copyright infringement by the import of bottles etc bearing the B FREE logo by TTY. The 'common design' in relation to passing off is in fact Mr Purvis' 'Deceptive Scheme': to filch the claimant's undoubted goodwill in this country which is associated with the Dr Brown's baby bottle, in order to deceive the trade and public into thinking (contrary to the fact) that their B FREE bottle was a new and improved version of it.

186. It said by Mr Hughes (and also by Mr Alberici) that passing off has been perpetrated by the Berkovitch companies and/or by Amikam himself and not by any others. Time and again, Mr Alberici stressed that he was an independent person and that everything he did in relation to the marketing and sale of B FREE bottles was directed, approved and supervised by Amikam. Mr Tirosh likewise stressed that he was merely an independent person doing an ordinary job for TTY. The problem for both Mr Alberici and Mr Tirosh is that they were both highly valued, key persons when the acts complained of were carried out, both of them being in positions of trust and responsibility within organisations of very modest size. In fact, in Mr Tiroshs' case, it seems likely that he was the only independent person working for TTY. As such, in my view, Messrs Alberici and Tirosh were bound to exert themselves to the best of their ability on behalf of those who paid them. These relationships were intended to be mutually productive^[99] and not just 'arm's length' commercial transactions; they involved actions not aims. As far as the UK corporate defendants, Amikam and TTY, were concerned, that was the sole reason for these gentlemen being at there at all.

187. The difference between Mr Tirosh and Mt Alberici is that Mr Tirosh is a resident of Israel - and so are his employers and this introduces a territorial consideration into the enquiry so far as he is concerned.

188. In Sabaf SpA v MFI Furniture Centres Ltd [2005] RPC 209 at 218, Lord Hoffmann said this of joint tortfeasance:

     " The test for such secondary liability in English law is whether the acts were done pursuant to a common design so that the secondary party has made the act his own."

189. A related argument advanced by Mr Alberici was that in the present case, the 'act' could in truth, never have been 'his own'; it was always being done for or on behalf of one of the UK defendant companies or for Amikam personally. But that is a misunderstanding of what Lord Hoffmann is saying since it overlooks the element of commonality; on the same facts, it takes two (or more) to be joint tortfeasors, each in his own way being a wrongdoer.

190. Much of the evidence as to who did what was given by the Berkovitches so I should next assess them as witnesses.

     Th Berkovitches as witnesses

191. All the family spoke good English, indeed in the case of the children, very good English. They all struck me as being astute, resourceful and uncompromising people. In addition, Amikam was both socially and physically a powerful personality and a persuasive person. On the other hand, the children had I think, genuinely less commitment to their father's unswerving dedication to business, giving the impression of having been nudged into the baby bottle business by their parents. Although Yasmin and Timi are no longer defendants, their evidence is still relevant to this aspect of the action since at the time, they were in theory performing a number of functions in conjunction with the ongoing defendants, corporate and individual.

192. The collective impact of the evidence of the Berkovitch family, spoke more of rehearsal than truth. For example, in cross-examination, whenever a useful answer might have been be expected, the usual Berkovitch reply was variations of: "I just can't remember". In particular, the evidence of Amikam and Dvora was so obviously loaded with self-interest that I became sceptical about just about all of it, even down to the addresses they gave on their witness statements^[100]. I am therefore of the view that in relation to all important matters on which Amikam and Dvora gave evidence, unless a fact is capable of independent verification or assessment for comparison, I shall not accept it. There is one qualification to be made in the case of Amikam. As the hearing went on, Amikam willingly accepted more and more personal responsibility for the events which had occurred –leading no doubt to his undertakings. But he was also quick to blame both Mr Roxburgh and Mr Alberici for what had happened - as and when convenient.

193. In view of this, of Amikam's undertakings and what I have already said about him, in what follows I shall be most concerned to assess the roles of Dvora, Mr Alberici and of TTY and Mr Tirosh. In order to do this however, I must first record some further facts.

     Further facts: Who did what?

194. I have already commented on the complexity of the pleadings. My task in sorting out the allegations of joint liability was made no easier by the Claimants' 'scattergun' approach to the evidence. Conspiracy may have gone but Mr Purvis still had first to demonstrate the existence of The Deceptive Scheme in relation to each of the personal defendants. This led to some false starts. As Mr Hughes noted, the facts on tying the defendants togrther came to some extent from documents used in the US proceedings - which are presently irrelevant.^[101]

195. Not surprisingly, the evidence on this part of the case occupied a fair time at trial. I shall not review it in detail however even though it is interconnected since its effect overall can I hope, be appreciated with fair accuracy simply by focussing on individuals.

     Amikam Berkovitch: Joint liability

196. I have already held Amikam to be jointly liable with Action Trading as its director. It seems to me abundantly clear in addition that Amikam:

     Was the source and origin of all major and even many minor decisions made by or on behalf of the three corporate defendants in the jurisdiction, and

     Exercised great personal influence over his family at all material times.

     Exercised substantial control over Messrs Roxburgh and Alberici.

     Was still angered over the past history of this dispute^[102]. This resentment in my view, made objectivity in answering any 'sensitive' questions put to him very difficult.

197. Amikam also played a major role in the commercial activities of TTY as may be seen from the extracts from his depositions in the US proceedings: see L/16-24. Mr Tirosh, who had been working with Amikam before he provided consultancy services to TTY^[103], gives further details of the close relationship with TTY^[104].

198. Within the limited circle involved both here and in Israel, communication seems to have been informal, regular and easy. Much of Amikam's direction was oral as he was not happy about writing in English (a fact confirmed by Mr Alberici). Thus, the numerous letters concerning all sorts of matters which were signed by Mr Alberici tend to create a false impression of authorship and command. They were I think, largely (but not all) written by Mr Alberici as Amikam's amanuensis – just as Mr Alberici contends.

199. It was Amikam who hired Messrs Roxburgh and Alberici, established what their duties were to be and in major matters, supervised their day to day work. They looked to him to be paid. They reported to him on developments of significance to the business on virtually a daily basis. I accept however that Amikam left the details of how his wishes were to be implemented to those having delegated authority as the following extract from Mr Tirosh's cross-examination shows^[105]:

     Q. So Amikam Berkovitch would give you instructions as to what to make and you would make them; is that right?

     A. Amikam Berkovitch was not giving specific instructions because he is not a person of many details.

     Q. So who was giving you instructions as to what to make?

     A. In terms of packaging, most of the time Mr. Alberici.

     And later (under cross-examination by Mr Alberici) at p1055:

     Q. When I contacted you to make changes to the packaging, was your understanding that I would have done that with the prior approval of Mr. Berkovitch?

     A. Yes.

200. Save in so far as it concerns patent infringement, I find that the allegations of general joint tortfeasance made against Amikam in the amended particulars of claim, para 14(c) also to have been proved^[106].

     Dvora Berkovitch: Joint liability

201. Pleadings. The amended pleading which affects Dvora is drafted only in relation to her activities for and on behalf of B Free: A/2/§38^[107]. It will be recalled that B Free was in fact Yasmin's company and was the corporate vehicle specifically chosen to sell B FREE bottles in early January 2005^[108] some months before the interlocutory injunction was made. The pleading^[109], is limited to an allegation that in every case, Dvora personally infringed the copyright in the logo by issuing copies of it to the public without the consent of the Claimants (i.e. an allegation of primary infringement) and that she personally passed off B FREE bottles 'by disposing of articles likely to deceive the public'. The particulars relied on were the same as those pleaded in relation to the allegations against B Free. The only relief sought against Dvora is for damages and there is no allegation raised against her of joint tortfeasance. The case nevertheless proceeded as if the pleading against her had been made on a broader basis. This may have occurred because as Dvora saw it, Action Trading and B Free were in reality the same 'entities'. The activities of the one company seamlessly merged into the other see D9/1145 and 1148-1149. But that is not the way it was pleaded.

202. The facts. Dvora was in fact, neither an employee of Action Trading nor of B Free. Her status vis a vis these companies at the time was somewhat clarified in cross-examination where, particularly in her evidence regarding how she was paid, she made some astonishing remarks^[110] . In cross-examination, it emerged that the intermittent payments made to her ('I was paid from time to time'^[111]) were not salary but were payments from Amikam to one or other of these companies as repaid director's loans^[112]. Having in her witness statement said that she owned two shares in Action Trading, she later admitted that she in fact owned the entire company: D 9/1133.

203. Dvora worked from the family home at 2 Emmett Close, Shenley, Herts^[113] but as the invoices (together with other documents) show, she was more than a mere 'office assistant' as Mr Hughes suggested. But she was not a salesperson either since her dealings were with TTY and retailers only and in the latter case, by paper only..

204. In my view, Dvora played an important part in the smooth day to day running of both Action Trading and B Free. She was personally in charge of processing all orders of B FREE bottles from TTY for both Action Trading and B Free: see X/26 A and B, together with the cross-examination thereon: 9/1136-1140. If things went wrong with a delivery for example, she sorted the problem out. She was told what and how much to order by Messrs Roxburgh and Alberici. She was of course thoroughly familiar with the products themselves and performed a part in securing their safe passage from TTY in Israel to a warehouse near Aylesbury and thence to retailers and the public: see D8/1121-1122 and D9/1158-1162. In doing this she certainly issued of copies of the claimants' logo to the public but always on behalf of these two companies. She was not a primary infringer of copyright. By the same token , she was not personally passing off. She may well have been a joint tortfeasor with those companies, but, as I have said, that is not what is pleaded.

205. I would also mention in view of the following section which relates to TTY, that Dvora's evidence of her dealings with TTY (of which she was a director) was in my view, not to be believed: see X/ 30 and D9/1153. Moreover, she looked upon all the corporate defendants as 'Me and my husband, an entity. I mean as a family': D9/1148.

     TYY and Mr Tirosh^[114]: Joint liability

206. I have already to some extent, considered the facts touching TTY (and Mr Tirosh) in relation to copyright infringement. But to conclude the matter I must establish some facts regarding whether TTY and Mr Tirosh can be said to have committed any tort within the jurisdiction as alleged.

     The facts

207. All the B FREE bottles were manufactured in Israel for TTY and were shipped by TTY into the UK against orders from one or other of the UK corporate defendants. The shipping was by sea which was arranged from Israel. Exhibit X/26 is an example of a TTY invoice to B Free; the bottles were shipped marked 'C&F'.

208. Regarding ownership of the goods so shipped, Mr Tirosh's evidence was clear; he was entirely responsible for shipping the goods into the UK as far as the port of entry, on behalf of TTY: D8/1047. Thereafter, ownership of the goods on landing remained with TTY until they were paid for:D8/1046-1048 and X 30.

     Liability of TTY

209. Copyright infringement. TTY were the importers into the jurisdiction of bottles and packaging bearing the logo and, subject to the statutory question of knowledge or 'reason to believe', are therefore secondary infringers as alleged in para 31 of the amended particulars of claim. As to knowledge or 'reason to believe', the origination of the infringing logo has been the subject of detailed findings earlier in this judgment. Acting through Mr Tirosh, TTY was intimately involved in the substantial copying of the claimants' logo and in addition, were in frequent communication with Amikam over all manner of dealing in B FREE bottles and with Mr Alberici in dealing with (at least) the packaging. This, together with the particulars given in sub-paras (a)-(c) of the amended particulars of claim makes me sure that TTY are secondary infringers of copyright as alleged.

210. Passing off. As for passing off, it is said that TTY had put on the market in this country, deceptive products (viz B FREE bottles) likely to cause confusion to the public and damage to the Claimants and that it is both directly liable for passing off itself and in addition, is liable with B Free and/or Action Trading for all their acts of passing off: see paras 34 and 35 of the amended particulars of claim. Passing off by B Free stands admitted and I have already recorded my views regarding this cause of action vis-à-vis the activities of Action Trading, above. In this connection, in paragraph 53 of the claimants' closing written submissions, Counsel assembled thirteen factual matters^[115] which in combination, so Mr Purvis submitted, could legitimately be relied upon to inculpate TTY as joint tortfeasors as pleaded. I agree.

211. I therefore find the allegations of joint liability (only) against TTY, proved as alleged.

     Liability of Mr Tirosh.

212. The pleadings allege joint liability with TTY: see para 37 of the amended particulars of claim.

213. I am driven by the evidence to think that Mr Tirosh is in reality at least 'half' of TTY and probably much more. Mr Purvis not unreasonably suggested that he was TTY. It employs no one else^[116] and the evidence concerning Mr Blattberg is conflicting. Whereas Dvora paints her father as a sprightly octogenarian this is not the picture I got from Mr Tirosh. Timi, the other director, judging by the 'laid back' impression he made as a witness, seemed to me to be quite uninterested in baby bottles. He was in fact a professional basketball player with the Newcastle Eagles. Mr Tirosh saw to the design of the infringing logo (see above), he procured the manufacture of the product and its packaging by sub- contractors: D8/896-897,994,997-998 and 1005-1006. It was he who received and implemented orders fro the UK corporate defendants and as I have shown, it was he who single-handedly saw to the shipping of the goods into the UK. He represented TTY at international shows such as the baby products fair at Cologne in September 2004 where the B FREE bottle was launched and where he demonstrated it to for example representatives of Mothercare: see D8/1049.

214. I am satisfied from the evidence that Mr Tirosh did not personally carry out any of the acts of copyright infringement or passing off complained of; these were nominally effected by TTY (see §§ 209-210 above). All these acts were however procured and implemented by him as part of a bipartite, common design with TTY. In truth, in doing all this, he was acting as TTY's (only) agent and as such, he is jointly liable with TTY: see The Koursk [1924] P 140 at 155.

     Passing off: Mr Piero Alberici's Liability

215. Finally I come to the allegations made against Mr Alberici which in the light of my decision on copyright infringement, are now confined to the allegations of passing off and trade mark infringement – the latter being a relatively minor matter. The relevant pleadings are to be found in the amended particulars of claim, paras 12, 14(c), 15 ('The Deceptive Scheme'), 26 (trade mark) and 27 (passing off). The general allegation, which is one of joint tortfeasance, is made in Para 12 which reads as follows:

     ' [Mr Alberici] is an employee, part owner and officer of Action [Trading] but describes himself as a 'consultant' to B Free World Ltd. He was or is a consultant and employee of Action Trading… In his capacity as a consultant to B Free World Ltd, [Alberici] signed a statement of truth on behalf of B Free World Ltd. His witness statement in these proceedings establishes that he is in day to day charge of sales and marketing for B Free World Ltd and for Action Trading Ltd. The claimants will say that in the premises [Alberici] is directly responsible for carrying out of all the acts of sale and offer for sale of feeding bottles ….by B Free Ltd and Action Trading Ltd which are complained of in these proceedings and is therefore jointly and severally liable with B Free World Ltd and Action Trading Ltd for those acts.' [Added emphasis]

216. Some time was spent in cross-examination in establishing Mr Alberici's relationship to the Berkovitch companies since he is on record as saying different things about this at different times. The correct position is I believe, this: Mr Alberici was at all material times a consultant to the UK corporate defendants, probably more with Action Trading than with the others. He was paid on a commission basis by one or other of the companies or possibly, by Mr Berkovitch himself.

217. Before coming to the facts I should first say that Mr Alberici had a singularly difficult task in this case which was made harder by the fact that he was a litigant in person. His first problem, as previously mentioned, was that he was the author of many letters of importance which are relevant to the issue of passing off. As he has explained, most of these letters were in truth dictated by Amikam who cannot it seems, write English. Had they been written and signed by Amikam the case against Mr Alberici would I think have seemed weaker - but certainly not non-existent. It is virtually impossible at this distance from events to sort out which letters and e-mails are to be regarded as Mr Alberici's own and which Amikam's. Secondly, after Mr Roxburgh's departure from Action Trading on 1 October 2004, Mr Alberici became UK sales and marketing director. This was a position of responsibility and trust in what was a very small organisation. Thirdly, Mr Alberici struck me as an alert, dynamic and intelligent man with general experience of commerce albeit more on the marketing and sales side. All this inevitably has an impact on the view I have taken on the allegation of joint tortfeasance –which is the substance of the case against him.

218. As a witness, I found Mr Alberici to be a person trying to assist the court yet having a firm instinct for self- preservation. He tried to answer questions put to him and did not suffer from failures of memory. Nevertheless I have received some of his evidence with considerable caution since a number of the answers he gave by way of explanation for what he wrote in letters, are scarcely credible. I have already paid tribute to his industry and courtesy in the way he conducted his case^[117]. I have also borne in mind his inheritance, that is, the fact that before his appointment as Mr Roxburgh's successor, the seeds of what is the present dispute had already begun to flower thanks to Amikam's basic decisions coupled with the resource and efforts of Mr Roxburgh. Mr Alberici thus found himself in charge of a rapidly moving fait accompli. He was nevertheless made well aware of a good deal of Amikam's strategy with regard to the B FREE project by the time he took it over – and, as Mr Purvis observed, he could always have refused to continue with a dishonest course of action at any time.

219. In fact, I must say at the outset that Mr Alberici's case is largely a plea in mitigation.

220. I shall begin by identifying the main elements of what the pleading calls 'the Deceptive Scheme' ^[118] in which Mr Alberici is said to have been a participant (see above). This is the entrée for the both the passing off and trade mark infringement allegations. The main elements of the Deceptive Scheme are the following:

     (i) The selection of the logo

     (ii) The adoption of the packaging so as to be as close as possible to the Dr Brown's packaging

     iii) Numerous letters and e-mails to retailers implying a changeover from one brand to the other : see for example G/102

     (iv) Similar statements made to retailers at meetings

     (v) Presentations to retailers: Mothercare, Boots etc

     (vi) The changes to the Baby B website^[119]

     (vii) The 'adoption' of awards and technical reports belonging to Dr Brown's bottle

     (viii) The B FREE South African advertising.

     Mr Alberici was cross-examined on all these matters and I find as a fact that he was involved to varying degree in all of these activities at various times. I also find that at least three other people were involved in the Deceptive Scheme, the first two having a greater responsibility for it than Mr Alberici: Amikam as prime mover, Mr Roxburgh as first agent for the implementation of Amikam's wishes and the B FREE South African distributor. I also find that this active deception continued until sometime during November 2004, about a month after Mr Alberici had taken over complete responsibility for sales and marketing from Mr Roxburgh – probably finishing at a meeting with Mothercare when the truth had to be revealed^[120] . I also have taken into account Mr Alberici's ongoing complaint at trial that because (as he saw it) of the deliberate lack of co-operation from Mothercare and Boots (particularly with documents) and Mr Roxburgh's reluctance to provide him with real help, he was hampered in properly presenting his account of the facts.

221. In view of the fact that at least some of the acts mentioned above are now admitted to amount to passing off, I am not proposing to re-visit the evidence relating to them in this judgement. Some of them are in fact described in the judgement of Laddie J.

222. In relation to the following matters in particular (taken in no particular order), Mr Alberici offered no adequate explanation in my view. These (inter alia) are relied on by Mr Purvis to inculpate Mr Alberici as a joint tortfeasor:

     His cross-examination on the documents in G2 from 121-135. In particular, Mr Alberici's letter to Mothercare dated 23 September 2004 and signed by him as 'Sales & Marketing Director' [G/121] where he says :

     "Mothercare need to be kept fully informed of all the initiatives that we are undertaking to complete the rebranding of Dr Brown's Natural Flow to B.free®. The plan is to commence the changeover in week commencing 18 October but some alteration may take place before that date."

     The Mothercare 'shelf barker' generally. His immediate response to a request for a logo to use on the deceptive Mothercare shelf-barker [G2/126 and 184] being nothing more than an attempt to demonstrate that he could respond quickly, was not credible: [T10/1455/5-T10/1456/13]. I accept however that later in November, the situation with Mothercare was clarified by Mr Alberici: see X39.

     "A new name and a new design" [G2/184] being a reference to the Mark II model and a new name for the range rather than the product itself [T3/369/10-T3/372/21];

     "Change the instruction leaflet. Add the image of the condom, show the condom being cleaned, point out to mothers that it is optional" [G3/31] was a reference to the reservoir tube and not the condom being optional [T11/1504/4-T11/1506/9];

     The Baby B website (dated November 2004) wherein the brand B FREE was callously inserted in place of references to 'Dr Brown's'. Copy pages are at G2139-147. The last page invites the reader to contact Mr Alberici for more information.^[121]

     The email to Timi [X/41] said by Mr Alberici to be nothing more than an attempt by him (allegedly at the request of Amikam) to train Timi to be more "manager-like" [T/10/1616/20-T10/1418-19]; and

     The email to 'b.free' [X/42] said to be no more than a report on some training he had been getting from Lazy Grace in relation to other projects [T10/1419/9-T10/1422/20].

     The fact that before he took over from Mr Roxburgh he was copied in on Mr Roxburgh's overtly dishonest emails: see for example G2/119 'Dr Brown's Natural Flow to B Free-Brand -name change-18 October 2004'. This e-mail contains the sentence 'Unless notified separately, all orders received for Dr Brown's natural flow products will be substituted by the B Free® equivalent item'.

223. In my judgment, Mr Alberici was deeply involved in the Deceptive Scheme both before and after Mr Roxburgh's departure. I am not convinced by his explanations and his presently contrite demeanour will not help him. As one of Amikam's two marketing arms (and later, his sales and marketing director) Mr Alberici must have been aware of all the major elements of the Deceptive Scheme. In my judgment, he is jointly liable with Action Trading and with B Free in passing off - and in trade mark infringement.

     Conclusions

     Patent infringement: The patent infringement action fails. The Patent will have to be amended to delete claims 1-7 (and any matter which is redundant in the light of such amendment).

     Copyright infringement. The B FREE logo is a substantial copy of the Claimants' logo (the 'Sign' as pleaded). It has been infringed by the UK corporate defendants. It has also been infringed by Amikam as joint tortfeasor with the UK corporate defendants. It has also been infringed by TTY as importers of the bottles and packaging bearing the logo and by Tamir Tirosh as joint tortfeasor with TTY. It has not however been infringed by either Dvora or by Mr Alberici.

     Passing off and trade mark infringement. Trade mark infringement and passing off has been established against the UK corporate defendants. Amikam is again a joint tortfeasor in relation to these causes of action with the UK corporate defendants, as is Mr Alberici. The action against TTY and Tamir Tirosh also succeeds on the basis of joint tortfeasance

     Having regard to the complex structure of these proceedings, to the mixed nature of my findings, to the undertakings offered, to the settlements which have occurred and to the fact that concessions were made towards the end of the case by the Claimants, some care will no doubt be required when it comes to drafting an appropriate order.

     I will hear counsel on such order and on the question of costs in due course.

     ANNEX A

     
     

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Note 1   Trial bundles will be referred to by binder number, tab and where appropriate by page number or paragraph number e.g. B2/2/18 or B2/2/§18. Transcripts will be referred to by day and page number e.g. D3/187    [Back]

Note 2   Usually abbreviated to ‘Dr Brown’s’.    [Back]

Note 3   Rhodes I, C/1/2-3    [Back]

Note 4   From among the numerous testimonials in I/104    [Back]

Note 5   Save for the USA.    [Back]

Note 6    A draft letter corrected in both Hebrew and English by Amikam was in fact found towards the end of the trial    [Back]

Note 7   All have the same registered office and all were referred to by Laddie J in his judgment on the interlocutory application as ‘Mr Berkovitch’s £2 companies’. I also refer to these companies as the ‘UK corporate defendants’, D10 being an Israeli company.    [Back]

Note 8   Yasmin asserts that she was always a director “in name only” [D/11/90].     [Back]

Note 9   D/7/65    [Back]

Note 10   D8/1041-1046. See the next paragraph    [Back]

Note 11   D8/985.    [Back]

Note 12   And (as it emerged in evidence) a sub-dispute with Mr Berkovitch involving allegations of unpaid commission with which I am not concerned.    [Back]

Note 13   The witness statements are at D/14 and 15.    [Back]

Note 14   D/7/63    [Back]

Note 15   Mr Mark Rycroft, of whom mention has been made, was at all material times director of this company.    [Back]

Note 16   See the archived web-site pages at, for example, I/46-53.    [Back]

Note 17   See for example H/11    [Back]

Note 18   Hence the name (and later the registered trade mark) ‘B FREE’ for the defendants’ bottles in issue.    [Back]

Note 19   D/7/3-6    [Back]

Note 20   June 2004    [Back]

Note 21   See Witness Statement of Rhodes [C/1/§ 36].    [Back]

Note 22   See D/7/§§ 7-8.    [Back]

Note 23   G2/225    [Back]

Note 24   A/28    [Back]

Note 25   The order is at A 26. The issue of delay was raised by the defendants at the hearing before Laddie J – to no avail. During the course of the present hearing it was again raised after it emerged that the Claimants knew of the existence of the allegedly infringing bottles even earlier than the date in issue before Laddie J. I was informed that the point was conceded by Mr Purvis after the conclusion of the hearing. Mr Hughes has recently expressed the intention of seeking to re-open the matter after delivery of this judgment.    [Back]

Note 26   ‘Overarching’ conspiracy as Mr Purvis called it.    [Back]

Note 27   Entitlement to this date was challenged in the Particulars of Invalidity and it was conceded that the Patent was entitled only to its second priority date, 19 January 1996. Nothing turns on the point.    [Back]

Note 28   Hereafter ‘PA ’77’.    [Back]

Note 29   See The Intellectual Property (Enforcement etc) Regulations 2006, schedule 2.    [Back]

Note 30   A/10    [Back]

Note 31   Col 3, ll 54-55    [Back]

Note 32   Col 4, ll 3-7    [Back]

Note 33   Col 4, ll. 19-20    [Back]

Note 34   See Tollman, §§ 45-46    [Back]

Note 35   See the asymmetric NUK teats of Exhibit 14.    [Back]

Note 36   For clarity I have omitted repeated part references.    [Back]

Note 37   Per Jacob LJ in Technip France SA’s Patent [2004] RPC 919 at 927.     [Back]

Note 38   See below, particularly in relation to the two prior art citations.    [Back]

Note 39   Already considered: see § 56 above.    [Back]

Note 40   Col 4, ll 12-16.    [Back]

Note 41   see § 31 above.    [Back]

Note 42   Henceforth referred to as ‘the patented bottle’.    [Back]

Note 43   See Fig 16supra.    [Back]

Note 44   D7/882    [Back]

Note 45   See for example Tollman §72(6) and Samson D 7/888-889    [Back]

Note 46   Cross-examination on this put its date as approximately June or July 2004. See D11/878    [Back]

Note 47   There was an initial sub-dispute as to the propriety of some of the Notices of Experiments. I reviewed what was involved and rapidly formed the view that argument and submission on this aspect of the case would be a waste of time and money. I would add that the Claimants (and Mr Tollman) had had adequate notice of all the experiments and made no suggestion of needing to do further experiments in reply. I therefore treated all the notices as having been properly served etc and in addition, permitted Mr Samson to perform his ‘informal’ experiment with a baby bottle in the witness box. There was no further objection regarding this course of action from either party.    [Back]

Note 48   But not their expert, Mr Tollman.    [Back]

Note 49   X/1    [Back]

Note 50   Court Exhibit 14B for example shows the six results in which an internal negative pressure arose during testing.    [Back]

Note 51   PCT WO 2005/089060. This is to be found at G2/257.    [Back]

Note 52   X/1 is dated 17 August 2004.    [Back]

Note 53   see G2/206     [Back]

Note 54   Samson I F/1/§74    [Back]

Note 55   See F/1/20    [Back]

Note 56   See footnote 41    [Back]

Note 57   The repeat of Mr Samson’s informal experiment is the subject of a separate un-numbered transcript.    [Back]

Note 58   F/1/§ 81.    [Back]

Note 59   E/§ 23.    [Back]

Note 60   See also Terrell 15th Edn 7.14 – 7.16    [Back]

Note 61   I record at this juncture that after some initial skirmishing on the point, the experts agreed that this was so.    [Back]

Note 62   See for example Tollman E/§ 49.    [Back]

Note 63   Tollman § 47    [Back]

Note 64   Confirmed by Samson III, F/3,§3    [Back]

Note 65   Again, this was a matter in which after initial disagreement, the experts seemed agreed.    [Back]

Note 66   Which are not relied on in this case. This is not the same thing as prejudice in a particular field (often called ‘mindset’) which may legitimately form part of the factual evidence falling within common general knowledge. This was part of the claimants’ case here .    [Back]

Note 67   D7/925    [Back]

Note 68   E/§50    [Back]

Note 69   D7/933    [Back]

Note 70   See Samson 1 §37 and Samson 3 §§ 2-4    [Back]

Note 71   D 7/925. See also Samson III F/3 §§ 2-4.    [Back]

Note 72   Tollman Report, E/§ 30    [Back]

Note 73   Samson III, F3/3/§4    [Back]

Note 74   § 52. That is not Offman’s stated intention either: See Col3 ll 6-10    [Back]

Note 75   See §60.    [Back]

Note 76   The makeshift use of soft drinks bottles to nurse sock lambs with milk is well known and continues to my knowledge to day .    [Back]

Note 77   D7/820-821 and D6/737     [Back]

Note 78   D6/732.    [Back]

Note 79   See Tollman E/§§ 76 and 79 and Samson I F/1/§ 35    [Back]

Note 80   Samson I F/1/41    [Back]

Note 81   Swedish ‘välling’.    [Back]

Note 82   See §104. I am supported by the experts’ evidence. See inter alia Tollman E/1/§23 and Samson D7/878    [Back]

Note 83    Drawing on G3/117 itself based on adapting a schematic drawing in Andersson    [Back]

Note 84   No doubt in order to differentiate it from the B FREE trademarks simpliciter.     [Back]

Note 85   The reproductions of the logos in this judgment are not in colour. The issues canvassed hereafter really require these logos to be viewed in colour. See Annex A.    [Back]

Note 86   CDPA ’88, s 17    [Back]

Note 87   CDPA ’88, ss. 22, 23    [Back]

Note 88   Though it may not be apparent from copies of this judgment the same shade of ‘turquoise green’ is used in both logos. See Annex A.    [Back]

Note 89   D8/1031    [Back]

Note 90   The logo recently created for the London Olympic Games coming to mind in this context.    [Back]

Note 91   D8/1017-1038    [Back]

Note 92   See D8/1055    [Back]

Note 93   Springsteen v Flute International [1999] FSR 180 (not cited)    [Back]

Note 94   § 13    [Back]

Note 95   A/25    [Back]

Note 96   A/26    [Back]

Note 97   § 13    [Back]

Note 98   A/2/§14    [Back]

Note 99   Mr Alberici for example, was paid by commission.    [Back]

Note 100   See the evidence of Mr Tirosh, D 8/1044-1045    [Back]

Note 101   Because they antedated the events of present interest. See Mr Herzog’s cross examination D 4/498. Mr Herzog was HandiCraft’s US attorney.    [Back]

Note 102   D9/1269-1270    [Back]

Note 103   D8/981    [Back]

Note 104   See for example, Tirosh III, §6    [Back]

Note 105   D8/987    [Back]

Note 106   Save again as to patent infringement.    [Back]

Note 107   Though a broader allegation involving Dvora, B Free and Action Trading is made in relation to the ‘knowledge’ to be imputed to TTY: see A/2/31 (c).    [Back]

Note 108   Dvora was of course working for Action Trading (in the same premises as B Free) selling the Dr Brown’s bottles.    [Back]

Note 109   An allegation of patent infringement apart.    [Back]

Note 110   D9/1131-1132.    [Back]

Note 111   D9/1128. She agreed that this was a salary: D/91129    [Back]

Note 112   She has in fact never paid personal tax in the UK, it emerged. See the letter to the court dated 24/5/07, two days after this evidence was given, from a UK accountant, Mr I Goldin –who was at one time a shareholder in SA :X/44.    [Back]

Note 113   D9/1149    [Back]

Note 114   Timi said that ‘TTY’ is the first letters of the forenames of Amikam’s three children : D 8/1084    [Back]

Note 115   With references.    [Back]

Note 116   D8/1000    [Back]

Note 117   His written submissions were lengthy and well researched.    [Back]

Note 118   A/2/§15..     [Back]

Note 119   All contained Bundle I. For a good example, compare I/65 with I/140    [Back]

Note 120   In the light of Mothercare being informed of the true position by Mr Mark Rycroft of Lindam: see fn 15    [Back]

Note 121   See the cross-examination on this at D10/1432-1437.    [Back]