UK: English Private Inventor Wins Patent Infringement Suit

This is the story of a successful individual inventor, how she came to make her invention, what the reaction of the industry initially was, and how she triumphed in the marketplace and (up to now) in the courts.

Mrs Mandy Haberman had a degree in graphic design from St Martin’s School of art and subsequently worked in the field of adult literacy. In 1982, she had a baby who suffered from severe feeding problems and could not suck from a bottle. She was dissatisfied with the equipment that was available to deal with the problem, and developed a special feeding bottle called the Haberman Feeder which is the subject of UK Patent 2169210 and is now marketed world-wide.

When infants no longer need a feeding bottle, but before they have learned to use an ordinary cup, they use a feeder cup which has a container closed by a lid and has a spout through which the child can suck the liquid contents into his or her mouth. The lumen of the spout is permanently open, and all the products available in the 1970’s and 1980’s leaked to some degree. Accidental contact between the products infants like at that age (strawberry- or chocolate-flavored milk) and a carpet can write-off the carpet, as happened when my children were young! By the early 1990’s although the idea of making a leak-proof trainer cup was known to manufacturers, nobody had come up with a design that was completely satisfactory. The products that were available fell into the following main categories:

• Cups that simply leaked.
• Cups with lids that could be rotated between ON and OFF states by the parent, but which could leak when ON and required parental intervention to turn them OFF.
• Cups with snap-on leak-resistant covers, again demanding parental intervention.
• Cups with complicated multi-part mechanical valves that were expensive to make and difficult to clean.

The evidence was that although numerous efforts had been made to design a truly leak-proof trainer cup, no existing design worked well, and that the solutions that had been suggested or put into production were complicated.

In the summer of 1990, Mandy Haberman visited the home of another parent and watched that parent’s child drinking from a trainer cup. Her friend was desperately trying to get the milk into the baby and stop the milk getting onto the floor. As a result, Mandy decided that she could design a better product, and in particular a trainer cup that would not leak, even if it was:

• turned upside-down and shaken vigorously for 10 seconds, or
• left upside down overnight.

Her idea was simply to combine a rubber slit valve that was well known for feeding bottle teats with the spout of a trainer cup. When the child wanted a drink, his or her suction would open the valve, and at other times the valve would close. Mandy built a prototype with a slit valve that worked so well that it could be left upside down for weeks on end without spilling any of its contents. In 1992 she filed a patent application to protect her idea of using a rubber slit valve to control the flow of milk through the spout of a trainer cup, and it was granted as patent GB-B-2266045. Claim 1 of her patent, with bullet points added to make the specified features easier to identify, read as follows:

"A drinking vessel suitable for use as a trainer cup or the like, comprising:

• an open-mouthed generally cup-shaped container; and
• a lid for the open mouth of said cup-shaped container,
• the lid having a mouthpiece associated therewith;
• the vessel being provided with valve means comprising a self-closing slit valve adapted to prevent flow of liquid from the interior of the container through the mouthpiece unless a predetermined level of suction is applied to the mouthpiece, and to enable a user to draw liquid through the mouthpiece by the sole application of suction thereto;
• the configuration of the valve means being such that said slit valve is adapted to open upon no more than a predetermined difference of pressure, greater within the vessel than outside, being present across the said valve."

Once she had finalized her prototype, she offered it for licence to 18 companies, mostly British, concerned with the manufacture of products for infants, but they declined to take a licence. Amongst the companies approached were the defendants in the present infringement proceedings, Jackel International Limited. Did they all make a mistake? Of course they did, as subsequent events were to show - a mistake that was smaller in scale, but was similar in kind to that made by record producers who turned down a then unknown pop group called "The Beatles." A strategic product planner responsible for developing a range of trainer cups, knowing the limitations of existing designs, and knowing that the trade was looking for a leak-proof product should have taken Mandy’s prototype very seriously.

Subsequently, Mandy found support from a company in Wales called V & A Marketing limited. At the time V & A was a very small company employing only five people. The judgment records the following milestones along the road to commercial development.

• V & A first went to the market with a version of the trainer cup that was less than glamorous, being described in the judgment as "dull" and having "unconsidered aesthetics." They decided to launch the product at a trade exhibition, but selected the wrong one, an exhibition for organizers of nursery schools and creches, not for trade buyers of baby products. They learned of their mistake only a few days before the exhibition opened, and because they had already incurred costs they decided to go ahead. To quote from the judgment:

• UK sales began in March 1996 and by 1998 had reached 2 million cups, achieved on the basis of an advertising expenditure of £2100 and expenditure at exhibitions of £15,000, sales being achieved almost entirely by word of mouth and by recommendation from mother to mother. Exceptionally for a new product from a small and unknown source, V & A succeeded in having their product accepted by major supermarket chains such as Safeways and Tesco’s within a few months from launch. Their tactics are described in the judgment:

During a follow-up interview, Tesco’s buyer took only 10 minutes to decide to buy the Anywayup Cup.

• In August 1996, a US company called The First Years Incorporated approached Mandy for a licence, and they are now her exclusive US licensee, selling trainer cups under the name Tumble Mates.
• The Anywayup Cup is now sold through Cow & Gate and through MAPA GmbH.

Once the Anywayup Cup had become established on the market, Jackel decided to market a similar product, taking the view that Mandy’s patent was invalid for lack of inventive step. To paraphrase another Mandy (Rice-Davies: famous in 1963 for her involvement in the Profumo affair): Well they would say that, wouldn’t they? Fundamentally Jackel’s case was that nothing that Mandy had done was outside the range of normal workshop variation that was available to skilled people, and that she had merely solved a known problem with simple and readily-available expedients, namely a well-known slit valve applied to a well known form of drinking cup. They referred to a number of prior patent specifications, including in particular Fig. 9 of US-A-5079013. Mandy and V & A denied Jackel’s allegations and pointed to the commercial success that they had achieved.

The opinion of Mr. Justice Laddie is of legal interest because of the way in which he sought to decide between the evidence of experts in the field employed by the opposing parties, both of whom put forward reasonably held but conflicting opinions. It could be difficult to resolve the conflict created by such evidence because:

Laddie J. accepted that the defendants had put forward a strong case of lack of inventive step, but went on to conclude that the key question was:

He then went on to produce a systematic list of the matters that were of value in determining whether an invention was obvious or not:

1. What was the problem that the patented development addressed?
2. How long had that problem existed?
3. How significant was the problem seen to be?
4. How widely known was the problem and how many were likely to be seeking a solution?
5. What prior art would have been likely to be known to all or most of those who would have been expected to be involved in finding a solution?
6. What other solutions were put forward in the period leading up to the patentee’s development?
7. Were there factors that would have held back the exploitation of the solution, even if it was technically obvious?
8. How well has the patentee’s development been received? Once the producvt or process was commercialized was it a commercial success?
9. Was all or much of the commercial success due to the technical merit of the development – i.e. because it solves the problem?

In the present case, there was no dispute about the problem that Mandy’s patent sought to solve, nor was it disputed that the problem had existed for a long time. The evidence established that numerous solutions to the problem had been put forward, but that they were all complicated.

Based on the above findings Mandy’s patent was held to be valid and infringed. The writer understands that the decision of Laddie J. is under appeal, so that the present decision simply has the status of a half-time score. Nevertheless, it is of legal interest because of what it says about the evaluation of evidence as to obviousness, as well as being an encouragement to private inventors and those working in the small business sector.

What, then, are the lessons that a private individual or small business can derive from Mandy’s experience. I suggest that they are as follows:

• An inventor is likely to make a worthwhile invention in a technical field in which he or she has worked or has special experience. Mandy had become alerted to the way in which infants drink and deficiencies in existing equipment for them because of the problems that she had encountered with her own child. It is no coincidence that she made two significant inventions in that field.
• In order to obtain a sensible decision concerning a product to be licensed, it is vital to make contact at the appropriate level, with somebody who can take a strategic view of new product development, who is sufficiently senior not to be influenced by "not invented here" and has a sufficiently broad viewpoint to appreciate what the invention can do for the potential licensee.
• If the product has been launched and proves successful, the cost of a patent or trademark infringement action should simply be written into the budget. Hopefully the invention will have a quiet life, in which case the budget earmarked for legal expenses simply becomes part of the profit.