rw2We are a nation of food lovers, but how many of us fully appreciate the intellectual property and innovation involved in the process from field to fork? The food industry is a complex matrix combining agriculture, food processing, food packaging, storage and distribution and retail. Rachel Warren, Senior Associate provides further insight.

Food packaging in particular plays an important role in the food supply chain, and ensures that food is kept fresh and safe for consumers to eat. With consumers becoming increasingly aware of the environmental impact created by food packaging waste, the industry is under pressure to come up with innovative solutions to solve the environmental problem that food packaging waste creates.

We often take for granted (or do not give a second thought to) the technology and detail that goes into our standard food packaging to make life easier and more convenient for us. After reading the recent decision in Quinn Packaging Limited v (1) Linpac Packing Limited & (2) R. Faerch Plast A/S [2019] EWHC 2119 (IPEC) however, this IP lawyer will never again take for granted the technology and forethought that has gone into the ease with which she peels back her next ready meal whilst working late in the office.

What Happened?

Quinn Packaging Limited (Quinn) applied to revoke two patents; the first was owned by Linpac Packaging Limited (Linpac) and the second owned by R.Faerch Plast A/S (Faerch), both related to transparent trays with lids for food packaging. No doubt, this case arose either as a consequence of one (or both) of these patents being asserted against Quinn, or Quinn being aware that these patents existed, and were a barrier to entry into the market. Without removing the patents from the register, Quinn would not have had the confidence that it was free to use the technology protected by the patents without the risk that it would be subjected to an infringement action.

In his decision HHJ Hacon, sitting in the Intellectual Property Enterprise Court, held that both the Linpac and Faerch patents were invalid for lack of inventive step over and above a pre-existing Australian patent ("Ono") and permission to amend Linpac's patent (to potentially save it) was refused.

The relevant patents were:

The Linpac Patent

The Linpac patent sought to solve the following problems encountered in food packaging:

  1. the difficulty of attaching a lidding film to PET (polyethylene terephthalate) (it was known that PE (polythene) could be used);
  2. sealing lids to PET is prone to contamination; and
  3. containers made from multilayers of PET, EVA (ethylene vinyl acetate) and PE are less clear, and recyclable, more expensive and less easy to manufacture.

The patent and its claims taught that the solution to the above problems was to:

  1. only use PET (or another material which was clear and recyclable);
  2. introduce into the design of the container a 'peripheral flange' i.e. a horizontal surface extending around the upper periphery of the container;
  3. a layer of adhesive applied to the flange; and
  4. the lidding film then pressed on to the flange, sealing the container.

The Faerch Patent

The Faerch patent echoed what was stated in the Linpac patent but with a few changes. The solution proposed by the Faerch patent was to make the container from a material that has more than one layer (at least two), where each layer comprised at least 85% APET (amorphous polyethene trerephthalate). The invention also had a peripheral flange (termed in the patent as a 'substantially flat upward facing sealing surface') and a layer of adhesive is applied to the sealing surface so that a seal is formed when the lidding film is applied.

Inventive Step

The focus of this claim related to whether or not there was an 'inventive step' (i.e. were the inventions not obvious to a person skilled in the art). In other words, would the person skilled in the art who read the prior art in 2010/2011, knowing of the need for a better sealing solution for plastic food trays, have recognised that the idea of creating a flange around the top periphery of the container and putting a suitable adhesive on it would provide the answer. If so, the patents lacked an inventive step.

It was agreed by the parties that the skilled person is an engineer engaged in the design and manufacture of plastic packaging for products such as foodstuffs and that such a person was aware that there was a need for a better solution to sealing lidding film onto containers.

The claimant in the claim argued that the pre-existing Australian patent, Ono, formed a piece of prior art which invalidated the Linpac and Faerch patents for lack of inventive step. In essence, this means that what was claimed in the two patents would have been obvious to a person skilled in the art in light of what was taught in the Ono patent and their common general knowledge. It was claimed that Ono disclosed a method for manufacturing containers with a peelable cover sealed by thermoweldable beads injected on to the edge surrounding the container (a flange).

Linpac and Faerch made several arguments to prove that their patents were not obvious in light of the Ono patent. They said that in order to advance from Ono to either of the patents in suit, the skilled person would have to have done a number of things, i.e. to:

(a) ignore the 'must haves' on page 1 of Ono, in particular the requirement that the container must withstand autoclaving;

(b) ignore the only embodiment illustrated in Ono, in Figure 1;

(c) realise that Ono taught something useful about putting adhesive on the peripheral flange;

(d) ignore the fact that Ono taught applying the adhesive in the form of a bead;

(e) migrate from adhesive bead to adhesive layer; and

(f) choose a layer thinner than any bead taught in Ono.

The judge did not have any concerns about the person skilled in the art doing any of the steps above but did highlight that the key step to consider was (c). He said:

"I turn back to point (c) raised by Mr Pritchard and Mr Norris. For the reasons I have discussed, I take the view that the skilled person would understand that the method disclosed in Ono would include the idea of placing adhesive on a peripheral flange in order to seal the container. He or she would also understand that the Ono method is not limited to containers suitable for autoclaving, or to the Figure 1 embodiment, or to an arrangement other than one with a 'layer' of adhesive, or even to a layer outside the thickness range of 20 to 100µm. The skilled person would therefore have understood that Ono taught a helpful new way to seal lidding film to a container."

On the basis of the above HHJ Hacon ruled that both the Linpac and the Faerch patents were invalid. 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 judge said:

"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 cross-examined 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."

Application to amend the Linpac Patent

Finally, HHJ Hacon considered arguments from Linpac that they should have permission to amend their patent. The judge concluded that the amended claims would also lack an inventive step and therefore, they were not permitted.

Rachel Warren, Senior Associate in the Intellectual Property team said:

"Patent protection within the food and drink sector and in particular in relation to product packaging plays an essential role in this fast evolving industry. The technology incorporated into food packaging, whilst serving a unique purpose (for example assisting storage, or facilitating cooking or preparation), can also be used as a marketing tool to boost consumer sales. As a result, many of our clients are investing heavily in research and development into new technologies in this area knowing that they can use these innovative technologies as a product differentiator. It is imperative to protect any inventions with a patent filing; this ensures that you stay one step ahead of the competition, have a monopoly to use the relevant technology, or can create a revenue stream by licensing it to third parties. In addition, having a patent can enable a business to benefit from a reduction of corporation tax through patent box and any research and development costs may be reclaimed through tax credits. If you are considering launching a new type of packaging, it is also advisable to undertake patent clearance searches to determine if there are any patents in place which you may be infringing. Please do contact us if you have any questions about patent protection".

For more information contact Rachel Warren on rachel.warren@footanstey.com or +44 1392 685210.



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