P own a UK Patent with a priority date in 1994 which covered a container for multiple disks.  P considered their patent to be infringed by B=s ADouble Push Tray@ - an injection moulded plastic tray designed to hold two disks.

Construction      Claim 1 of the patent in suit is as follows:-

AContainer for a plurality of discs, particularly compact discs, comprising a tray like body defining seats for accommodating at least two discs said tray-like body including a first region for accommodating at least one first disc and at least a second region for accommodating at least one second disc located at a higher level than said first region the discs being axially retained in said seats so that each of the discs can be individually gripped and axially detached for removal from said seats in which they are retained characterised in that said at least one second disc is arranged in said second region so as to be spaced from, and to partially overlap said at least one first disc in an axially offset manner.@

P contended that Aregion@ referred to the precise 3-dimensional position of the disc in the container.  However, it was held that Aregion@ refers to the moulded depression in the tray.  P also contended that the term Aaxially retained@ means that each disc must be retained by means that hold the disc to prevent movement perpendicular to the plane of the disc in its retained position.  However, it was held that Aaxially@ means about the axis of rotation, and that Aaxially retained@  means retained by a central coupling device.

Infringement      The alleged infringement involved a plastic tray having a single recess with a flat floor which can accommodate two discs.  The disks are stored in the tray parallel to one another and at an acute angle to the floor of the tray.  Each disc is held in place at points on its periphery.  One disc is held by a slot in the vertical wall of the container and by two flexible tabs, and the other is held by a slot in a pillar let into the floor of the tray, and by two flexible tabs.  Thus, there are no regions at different levels.  Further, the discs are not axially retained.  Even if P=s broader interpretation is taken, the discs cannot be axially detached, since a lateral movement is required to release them from the slots.  Accordingly, the patent was held not to be infringed.

Obviousness      P contended that there was a prejudice in the industry against packaging which involved overlapping discs, or discs with their edges or play sides in contact with their packaging due to the risk of damage.  However, it was held that although there were perceived disadvantages in packaging discs in contact with their containers, whether those disadvantages meant that discs would not be packaged in that way was a matter of customer preference.  It was also held that  the idea of overcoming a prejudice must consist in overcoming a false prejudice - Aa lion in the path@.  In this case, the problem of discs being in contact with their packaging is just the same now as it always has been, and thus there was no false prejudice to overcome.

It was conceded that packaging partially overlapping discs in trays was not known at the priority date.  However, the question of packaging multiple discs only became a perceived problem shortly before the priority date, so this could not be a case of Along felt want@.

The Ainventive concept@ was held to be finding a way of reducing the height of the known 2:1 container without exposing the discs to serious risk of damage, the solution being to overlap them and physically separate them.  The difference from the state of the art was held to lie in the fact that the discs partially overlapped, that their axes were offset and that they were physically separated.  P=s expert was unable to explain why the invention was clever without resorting to features not included in the claims, whereas D=s expert, was able to design a container for overlapping and physically separated discs within 45 minutes.  It was held that the evidence led inexorably to the conclusion that if you wanted to reduce the height of a 2:1 container, it was obvious to overlap the discs and separate them physically.  Working out how to do this would also have been obvious.  Accordingly, the patent was held to be invalid.