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A Patent for a hanger…maybe, but not today

By Richard Kempner, Partner and Brian Whitehead, Consultant

Haseltine Lake Kempner has successfully defended Tesco against a patent infringement action brought by The Janger Limited, a UK-based garment hanger designer and manufacturer. The dispute concerns an in-store hanger designed for and used by Tesco, which was alleged to infringe Janger’s patent. Douglas Campbell QC, sitting as a judge in the Intellectual Property Enterprise Court (“IPEC”), held Janger’s patent to be invalid. That means that Tesco is free to continue using its hanger in stores.

The judgment, whilst breaking no new ground from a legal perspective, does raise a number of points of general interest. First, it provides an illustration of the monopoly provided by a valid patent. Tesco’s hanger had been designed without any knowledge of Janger’s patent, and it was not alleged that Tesco had in any way copied from Janger. Nevertheless, had the patent been upheld as valid, the fact that Tesco’s hanger was independently designed would not have provided it with a defence. Secondly, the prior art which Tesco used to invalidate the patent was from a slightly different, albeit very similar, field. The patent claims a hanger for garments and other articles, whereas Tesco’s prior art was a hanger for other hangers. (Yes, there are such things as ‘hangers for hangers’!). The judge held that that was irrelevant on the facts – the skilled person would appreciate that a hanger for hangers could also be used to hang garments, and would be prompted to make workshop modifications bringing it fully within the scope of the patent claims. Thirdly, another of the attacks on the patent’s validity was based on a disputed factual scenario as to whether a very similar hanger had been shown, without obligations of confidentiality, to Marks & Spencer, before the patent was filed. The judge decided that the earlier hanger had indeed been shown, but because it was in circumstances of confidentiality, it wasn’t a prior disclosure that could invalidate the patent.

The judge refused The Janger leave to appeal and awarded Tesco its costs at 92% of the maximum it could have recovered.

The IPEC, with its strict limits on scope of disclosure and witness evidence, is generally not suitable for cases which involve substantial factual (as opposed to legal) disputes. However, given the relative simplicity of the technology, and the fact that the parties were agreed as to the applicable legal principles, the court was able to accommodate a case with four factual witnesses and two expert witnesses into a two day trial, which is a credit to the IPEC’s streamlined procedure and the skill of its judges.

This victory for HLK’s client coincides with a win last night for HLK itself in the 2020 Yorkshire Legal Awards.