Case No. IP-2018-000014

18.Only one item of prior art was cited: Australian Patent No. 638092 (‘Ono’). Both patents in suit were alleged to lack inventive step over Ono. The argument over inventive step largely came down to a single point: would a skilled person who read Ono in January 2010 and/or November 2011, knowing of the need for a better sealing solution for plastic food trays, have recognised that Ono provided the answer: the idea of creating a flange around the top periphery of the container and putting a suitable adhesive on it? 19.Linpac and Faerch’s case was that the long felt want proved just how clever the idea of the peripheral flange was in 2010 and 2011 and that Ono would have led the skilled person away from it. Quinn argued that the skilled person, fully aware of the gap in the market, would have grasped immediately that Ono provided the answer. Ono 20.The title of the invention claimed in Ono is ‘Method for manufacturing containers provided with a peelable closure’. The specification begins by stating what the invention is about: “The present invention relates to a method for manufacturing containers, in particular for food products.” 21.A passage immediately following was much relied on by the defendants: “The invention concerns more particularly the manufacture of containers for packaging foods and in which the package is closed by means produced when manufacturing the container. It concerns in particular containers which may be manually opened and are therefore preferably provided with closures termed peelable closures. Thus, the closing function must ensure: 1)A closure which is fluidtight throughout the life of the food and which must satisfy the following requirements: transports after the closing stage (packaging line, distribution, …); sterilization in an autoclave, usually for one hour at 121oC (resistance to this temperature and performance of the adherence…); storage which may be under tropical conditions for one year (40oC/90% relative humidity), and sudden variations in temperature due to thermal shocks (changing from -18oC 2)Easy opening with a constant force in use. 3)A closure on a clean surface.” 22.Linpac and Faerch argued that this passage sets out a number of ‘must haves’, attributes which all containers made according to the invention are bound to have. Most relevantly this included an ability to withstand autoclaving under the conditions specified. 23.In my view, if the skilled person paused after reading the passages I have quoted, they would not be certain that the ‘must haves’ (to use the defendants’ term) apply to all embodiments of the invention claimed. The words ‘more particularly’ and ‘in particular’ in the first paragraph of the second passage could suggest that the qualities of the container which follow, including the ‘must haves’, are qualities of preferred aspects of the invention, without necessarily being characteristics of every embodiment. The skilled person would read on before deciding which possibility is correct. 24.The five claims provide further guidance: “1. Method for manufacturing a container comprising a body defining an opening, a bead of thermoweldable material arranged in proximity to the opening, and a cover sealed on the bead, characterized in that the thermoweldable bead is injected in proximity to the opening when producing the body of the container or when sealing the cover. 2.Method according to claim 1, characterized in that the thermoweldable material is injected along one or more continuous and closed lines extending around the container. 3.Method according to claim 1 or 2, characterized in that the thermoweldable material is injected onto an edge portion of the container. 4.Container capable of being peeled open, characterized in that it is obtained by the method according to any one of the claims 1 to 3. 5.A method for manufacturing a container and/or a container made thereby substantially as hereinbefore described with reference to the drawings.” 25.None of the claims is limited by reference to the container being able to withstand any stated autoclave conditions or indeed that is characterised by any other of the ‘must haves’ except for easy opening, or peelability, which is required in claim 4. This would have suggested to the skilled person that the invention being disclosed encompassed, but was not limited to, a method for making a container which must withstand autoclaving conditions. 26.The skilled person would also note that page 3 of the specification states that the multilayered sheet employed for producing the containers can be chosen from a number of materials, among them polystyrene and polyester. The latter would be understood to include APET. The experts were agreed that neither polystyrene nor APET would be suitable for autoclaving. Their low glass transition temperature would cause the containers to buckle and melt. 27.On page 4 adhesives are listed for use in the Ono method. Mr Lynggaard said in his witness statements that the melting point of these copolymer adhesives were such that they too would melt in an autoclave, causing the sealed tray to open. Mr Strachan was asked in cross-examination whether he agreed with Mr Lynggaard about the unsuitability of the adhesives. He appeared to, although his answer was difficult to follow and suggests that he and counsel may have been at cross-purposes. I accept Mr Lynggaard’s evidence on this. 28.I have no doubt that the skilled person reading Ono would realise that the specification was proposing, as part of the invention disclosed, materials for the container and adhesives for the seal which would be unsuited to autoclaving. Mr Strachan and Mr Lynggaard each sought to explain this away in cross-examination. Mr Strachan gave a diffuse answer which I did not understand. Mr Lynggaard fell back on the ‘must haves’ at the start of Ono. I found them both unconvincing in this regard. 29.To my mind the skilled person would understand Ono to be teaching a method for making and sealing a container where the container may, but need not be, sterilized by autoclaving after sealing. The materials to make the container and to be used as adhesives would be selected according to whether autoclaving is to be used after the container is made and sealed. 30.Claim 1 of Ono requires that the adhesive be ‘arranged in proximity to the opening’. As I will discuss further below, the adhesive is added in the form of a ‘bead’. The reader is told this on page 5, lines 10-14: “The location of the bead will be chosen to be in a region which is the least likely to be soiled, a region resisting internal pressures, a region permitting a closure of the edge of the container, in particular on the upper or lower surface of the edge portion of the container.” 31.What this might mean is illustrated by Figure 2: 32.In diagram A, a bead of adhesive 6 is deposited on the flange 7 of container 1 (‘flange’ is the term used in the description of Figure 2). Diagram B shows the production of a seal when the lid is pressed onto the adhesive. Diagram C shows the lid being peeled off, illustrating the claim 4 embodiment in which the lid is peelable. 33.The idea of a flange as a platform for adhesive which will be used to seal the container is thus disclosed. The flange is located around the edge portion of the container, i.e. around the periphery. 34.Both Mr Pritchard and Mr Norris emphasised that Ono teaches the application of the adhesive in the form of a bead. Claim 1 requires this and there is no teaching of adhesive in any other form. Ono explains, to a limited extent, what is meant by a ‘bead’ of adhesive in a passage at the bottom of page 3: “According to an embodiment of the invention, the thermoweldable material ensuring the sealing of the container is injected onto the container, in particular onto the edge portion of the latter, along one or more continuous and closed lines extending around the container and termed hereafter beads.” 35.None of the parties suggested that ‘bead’ is a term of art. I am therefore in as good a position as anyone else to decide what the skilled person would make of it. A key question was the difference, if any, between a bead of adhesive as disclosed in Ono and a layer of adhesive as required by the inventions claimed in both the Linpac and Faerch Patents. 36.This was explored during Mr Norris’ and Mr Pritchard’s respective closing speeches. Mr Pritchard agreed that the bead may be of any shape, but the size of the bead must be such that when squashed during sealing it does not extend substantially across the width of the flange. He went on to say that the skilled person would know from his common general knowledge, and having read Ono, that if the bead, when squashed, extended right across the width of the flange the seal would be too strong and thus not peelable. Mr Norris added that for this reason Ono taught away from applying the adhesive with a roller because that would result in the adhesive extending across the entire width of the flange. In support of this, Mr Pritchard pointed out that Mr Lynggaard had said and Mr Shaw had accepted (as one would expect) that the skilled person would know that the seal strength for any given adhesive is proportional to the surface area of the adhesive once the container is sealed. The gap that Ono fills, Mr Pritchard said, is peelability. 37.Ms Edwards-Stuart pointed out the flaw in this explanation of what the skilled person would understand from Ono. As the experts had agreed, the strength of the seal is proportional to the surface area of the adhesive once the container is sealed – in the case of Ono, once the bead is squashed. This has nothing to do with the surface area of the flange. As Ms Edwards-Stuart indicated, the appropriate width of the adhesive might be Xmm to attain a seal which is secure and also peelable; if the flange is also Xmm wide, the squashed adhesive will extend across the entire width of the flange. If the flange is wider than Xmm, it will not. 38.In my view the skilled person would understand from Ono that the container is sealed using a bead of adhesive which is applied in the form of one or more continuous closed lines placed on a flange, located around the upper periphery of the container. The shape of the bead is irrelevant. The size of the bead must be such that the one or more lines of adhesive together sufficiently seal the lid to the container for the purpose contemplated. Peelability is in fact optional, but if the preferred peelable embodiment is wanted, the material chosen for the adhesive and the amount applied as a bead must be kept limited to the extent that it allows the lid to be peeled from the container. Ono does not discuss exact amounts, but Mr Lynggaard and Mr Shaw both agreed that a skilled person reading Ono would know how to aim for the correct amount. 39.Ono does refer to choosing the type of adhesive to ensure peelability. Immediately following the passage at the bottom of page 3 quoted above, Ono says this: “The material of the bead is preferably chosen so as to ensure that the region of peelability: between the surface of the container and the bead, or in the material of the bead (‘cohesive rupture’), or between the bead and the closure member.” 40.When the film is applied, the bead is inevitably squashed – see for example the diagrammatic representation in Figure 2 shown above. The experts were all crossexamined about the difference between a ‘bead’ and a ‘layer’ of adhesive. I did not find this helpful. I have already discussed the skilled person’s understanding of a bead of adhesive. It was common ground that ‘layer’ in this context is not a term of art either. It is an ordinary English word which I can interpret without expert evidence. It is not an especially precise term. I have no doubt that the skilled person would agree, if hypothetically asked, that once the lid is applied to the container in the Ono method, squashing the bead of adhesive, there is then a layer of adhesive between the flange of the container and the lid, as shown in Figure 2. 41.There was one other point which arose regarding the skilled person’s understanding of Ono. In their witness statements Mr Strachan and Mr Lynggaard were both at pains to point out that one of the embodiments of Ono was, to their way of thinking, unworkable. Mr Strachan said that he could see no way of modifying the device to make it work. This was an embodiment in which the bead of thermoweldable material, the adhesive, is applied to the flange during the process of producing the body of the container. It is the embodiment illustrated in Figure 1. 42.Mr Strachan and Mr Lynggaard may be right about the impractical nature of the Figure 1 embodiment. But Ono is clear that there is an alternative embodiment in which the adhesive is applied when the cover is sealed, i.e. after the container has been made. I have in mind page 3, lines 15 and 20, which are reflected in claim 1, quoted above (‘the thermoweldable bead is injected in proximity to the opening when producing the body of the container or when sealing the cover’ (my italics)).