Novelty in design and novelty in arguments don’t always translate into the desired results in the IP world. Fresh from very engrossing Kiddie trunk cases, the UK High Court [(2014) EWHC 2845 (IPEC)] recently examined buoyant flying toys shaped like fish. Both parties devised and sold toys. The defendant sought to prove that the claimant’s patents were invalid. The particular problem addressed by the patents was that flying toys with propellers and without much lateral movement which did not appeal as realistic when they toy was a swimming animal or fish. The patents are issue sought to provide vertical and horizontal movement by means of a movable surface attached to the tail assembly. The toy was propelled by a moving tail and had an actuator aiding in controlling ascent and descent.
The defendants argued that toy would have a broad construction and cover embodiments other than products which children play with. For instance, the invention could be used with appropriate sophistication for surveillance. They argued that the toy was obvious since a person skilled in the art – a person engaged in designing toys would adapt the prior art [(US patent no. 4,272,042 ("Slater")] and arrive at the flying fish toy. The court opined that toy airship to be propelled by a moving tail would be unusual. A person reading Slater may think of using the features in a toy but may not use a moving tail for propulsion.
Commercial success argument
Twice the claimants used the ‘commercial success’ questioning the defendant as to why they had not arrived at the ‘patented’ design if it were so obvious. The court was not impressed by this argument and preferred to go by the evidence.
hough a bath toy floating in water, flying toys using elastic strips and propellers were known prior to the patent, the court concluded that propulsion of a neutrally buoyant toy through the air (as opposed to a bath toy through water) was not obvious over stated prior arts.