|[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]|
Intellectual Property Enterprise Court
You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> Glass & Ors v Freyssinet Ltd  EWHC 2972 (IPEC) (21 October 2015)
Cite as:  EWHC 2972 (IPEC)
[New search] [Context] [View without highlighting] [Printable RTF version] [Help]
INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| GARETH KEVIN GLASS
ADRIAN CHARLES ROBERTS
|- and -
Lindsay Lane (instructed by Dehns) for the Defendant
Hearing dates: 8-9 September 2015
Crown Copyright ©
Judge Hacon :
The invention in summary
The person skilled in the art
Common general knowledge
" Thus the common general knowledge is the common knowledge in the field to which the invention relates. The notional skilled addressee is the ordinary man who may not have the advantages that some employees of large companies may have and information does not form part of the common general knowledge simply because it is known to some persons in the art. It must be generally known and generally regarded as a good basis for further action by the bulk of those engaged in that art before it becomes part of their common stock of knowledge relating to the art, and so part of the common general knowledge. That is not to say the skilled person must have it at the forefront of his mind. As Laddie J. explained in Raychem Corporations' Patents  RPC 31 at 40, it includes all the material which he knows exists and which he would refer to as a matter of course if he cannot remember it and which he generally understands is sufficiently reliable to use as a foundation for further work."
"At the end of the impressed current treatment, a long term low power cathodic prevention treatment is applied using the same anode. It is preferable to disconnect the power supply  at electrical connections  and  and to connect remaining sacrificial anode metal directly to the steel through electrical connection . The activated discrete sacrificial anode may then be used in a long term cathodic prevention role to maintain steel passivity."
Figure 1 shows the DC power supply  connected to the anode by connection  and to the steel rebars by connection . Although the above passage uses the word 'preferable', the final sentence makes it clear that the reconnection indicated is necessary to allow the sacrificial mode to be engaged. Specifically, the anode and steel must now be directly connected to one another by means of the connection  referred to, in order for the electrochemical cell to function. That connection cannot be in place during the impressed current phase, otherwise it would operate as a short circuit between the positive and negative terminals of the DC source.
(A) A method of protecting steel in concrete comprising
(B) a temporary electrochemical treatment adapted to improve the environment at the steel to arrest steel corrosion
(C) followed by a long term electrochemical treatment adapted to inhibit steel corrosion initiation wherein
(D) the temporary electrochemical treatment is an impressed current treatment delivered using an anode and a source of DC power and is both high current and temporary relative to the long term electrochemical treatment and
(E) the same anode is used in the long term electrochemical treatment and
(F) the anode comprises a sacrificial metal element that undergoes sacrificial metal dissolution as its main anodic reaction and
(G) the anode is embedded in a porous material in contact with the concrete.
Claim 12 is product claim, the product being an anode suitable for use in the hybrid protection method:
(A) An anode adapted for use in any of the methods claimed in claims 1 to 11 comprising
(B) a sacrificial metal element less noble than steel with an impressed current anode connection detail wherein
(C) the anode is a discrete anode adapted for embedment in a cavity in concrete and
(D) the impressed current connection detail comprises a conductor connected to the sacrificial metal element to form an electrical connection between the conductor and the positive terminal of a source of DC power wherein
(E) the conductor and the electrical connection are adapted to remain intact at potentials more positive than +500mV above the copper/saturated copper sulphate reference potential and
(F) the conductor and the electrical connection are adapted to be disconnected from the positive terminal of the source of DC power.
Whether unpleaded arguments on construction can be raised at trial
The points of construction in dispute
Claim 1 whether the second phase may constitute impressed current protection
"The technology is based on the use of a sacrificial anode metal in both a temporary impressed current role and preferably in a subsequent long term sacrificial anode role." (Ms Lane's emphasis)
"9. A method as claimed in any of claims 1 to 8 wherein the long term electrochemical treatment is sacrificial cathodic protection.
10. A method as claimed in any of claims 1 to 8 wherein the long term preventative treatment is impressed current cathodic prevention."
The argument was that claim 9 must be construed to be narrower than claim 1, so claim 1 must encompass a long term electrochemical treatment which is an impressed current treatment and that this is the alternative expressly claimed in claim 10.
"(E) the same anode is used in the long term electrochemical treatment and
(F) the anode comprises a sacrificial metal element that undergoes sacrificial metal dissolution as its main anodic reaction "
" This approach to the interpretation of claim 1 means that claim 3 does not add anything to claim 1. Mr Hicks deploys claim 3 to argue that claim 1 must be wider: he says that the patentee would scarcely have taken the trouble to include claim 3 if those restrictions were already present in claim 1. This is a common canon of construction of patent claims, but it must be remembered that it is not an inflexible rule of law. It is entirely possible for a draftsman to include claims of identical scope, as he unquestionably appears to have done in the present case by including claim 8. Rigid application of the canon of construction can lead to absurd results. It would do so here."
"The life of the treatment process may also be extended by forming the sacrificial anode around an impressed current anode that may be used in a long term impressed current cathodic prevention role"
The second is on page 17:
"The use of an inert anode, such as MMC [mixed metal oxide] coated titanium wire, bar or tube, as the conductor around which the sacrificial metal is formed allows the anode to be used as an inert impressed current anode in a cathodic prevention role when the sacrificial metal around the inert anode is consumed. This extends the functional life of the anode system."
Claim 12 whether the discrete anode must have a particular shape
"Discrete anodes are individually distinct compact anodes that are normally embedded in holes in the concrete or installed at locations where patch repairs to the concrete are undertaken. A good description of discrete anodes is given in (US 6217742)."
US 6217742 was not included in the trial bundle.
Claim 12 whether the connection detail need be connected to the DC power supply
The cited prior art
(1) UK Patent Application No. 2 239 591 ("Fosroc 1").
(2) PCT Application, publication no. WO 00/26439 ("Fosroc 2").
(3) PCT Application, publication no. WO 01/71063 A1 ("Enser").
(4) Common general knowledge.
" Then, at page 44, lines 33-5 '598 says that the preferred isomer of this invention is the 4R, 6R-isomer of the compounds of formulas I, Ia and XII. So far as compound Ia is concerned, this is atorvastatin in its lactone form, and so far as compound XII is concerned it is the carboxylic acid, which can either be made following the explicit reaction scheme, stopping before the lactone or, as the patent says, may be produced from the lactone compound of Formula Ia by conventional hydrolysis of the lactone compound of Formula Ia (page 43 line 11).
 On p.43, the application continues (l.15):
"In the ring-opened dihydroxy acid form, compounds of the present invention react to form salts with pharmaceutically acceptable metal and amine cations formed from organic and inorganic bases. The term 'pharmaceutically acceptable metal salt' contemplates salts formed with the sodium, potassium, calcium, magnesium, aluminium, iron and zinc ions."
 It follows that the material claimed in claim 1 is an expressly specified salt (calcium) of the preferred isomer of one of the three materials explicitly specified. If one is in any doubt, it is easy to compare the final structural formula on p.12 of '281 against formula XII on p.40 of '598. They are identical, save that in '281 the calcium salt, and in '598 the acid, are shown. In fact, the synthetic route described in '598 actually produces a racemate. But this time, the precise enantiomer (4R,6R) is specified. This notation means the same thing as the [R-(R*,R*] used in respect of the acid in claim 1 of '281. The evidence (which I have already discussed) was that resolution to obtain the enantiomers was common general knowledge. It is no answer to an allegation of anticipation that the specification gives clear and unmistakable directions to use the common general knowledge to produce a specific material.
 I conclude that this is a clear case of anticipation of claim 1 of '281. '598 gives specific directions to make the three preferred enantiomers, one of which falls within the claim."
" So there is clear disclosure of the salts of the acid. Mr Thorley felt constrained to accept that there was a prior disclosure at this point of the salts of the racemates, including the calcium salt. What he submitted was not specifically disclosed up to this point was the salt of the pure enantiomer. And that is true. But on the next page '598 points out that there are two asymmetric carbon centres and goes on to say:
'The preferred isomer in this invention is the 4R,6R-isomer of the compounds of Formulas I, Ia and XII above'.
 To my mind this, in context, clearly teaches by way of explicit disclosure that one of the things you can make is the single enantiomer of the acid and it is that acid which can be used make the calcium salt. In truth that way of carrying out the teaching of the earlier patent would necessarily infringe the later claim. So that claim is invalid as lacking novelty. I reject Mr Thorley's submission that one is here straying into the impermissible territory of obviousness. Alighting on atorvastatin calcium is merely picking one of the class of compounds disclosed by '598. If the claim were valid it would cover one of the alternatives explicitly taught by the citation. This is not a case of any adaptation of the prior art."
" It is occasionally said that there cannot be clear and unmistakable directions to do something which is described as optional. I do not agree: to describe the thing as optional is to describe the thing. It is rather like the disclosure of something as adjustable: it necessarily also discloses something that is not adjustable see Gillette Safety Razer Co v Anglo-American Trading Co Ltd (1913) 30 R.P.C. 465."
"8. Selection inventions
Selection inventions deal with the selection of individual elements, sub-sets, or sub-ranges, which have not been explicitly mentioned, within a larger known set or range.
(i) In determining the novelty of a selection, it has to be decided, whether the selected elements are disclosed in any individualised (concrete) form in the prior art (see T 12/81). A selection from a single list of specifically disclosed elements does not confer novelty. However, if a selection from two or more lists of a certain length has to be made in order to arrive at a specific combination of features then the resulting combination of features, not specifically disclosed in the prior art, confers novelty (the "two-list principle")."
Novelty of claim 12 over Fosroc 1
(1) The combination of an anode consisting of a metal less noble than steel and an impressed current connection detail;
(2) a discrete anode (of any type); and/or
(3) a discrete anode adapted for embedment in a cavity in concrete.
Combination of anode and connector
"The anode may be provided with a non sacrificial conductor to maintain electrical continuity through the anode. When the anode is an impressed current anode such as a mixed metal oxide coated titanium, the non sacrificial conductor may be a titanium wire. When the anode is a sacrificial anode, such as zinc, the non sacrificial conducted may be a steel wire."
Adapted for embedment in a cavity in concrete
Claim 12 and Fosroc 1
Claim 1 and Fosroc 1
"The anode is preferably zinc but aluminium, cadmium or magnesium may be used.
The elongate connector is conveniently in the form of a wire, although other elongate forms may be used. The wire may conveniently be of steel, preferably mild steel.
Preferably the wire is as noble or more noble than the steel of the reinforcement."
Claim 12 and Fosroc 2
Claim 1 and Fosroc 2
Claim 12 and Enser
Claim 1 and Enser
Common general knowledge
(1) A brochure entitled "Foreva Solutions, Controlling Corrosion of Concrete Reinforcements" dated May 2010 ("the Foreva Solutions Brochure").
(2) A data sheet headed "Forever GP Guard+", dated April 2010, which gives details of that system ("the GP Guard+ Data Sheet").
(3) A page from Freyssinet's website at www.freyssinet.co.uk, dated September 2010, advertising its Galvastar 82 anode ("the Galvastar 82 Webpage").
(4) A data sheet providing information about the Galvastar 82 anode dated January 2013 ("the Galvastar 82 Data Sheet").
The Claimants alleged that offers were made by means of each of these documents. The third document added nothing of significance to the fourth and so I need say nothing about it.
Direct infringement the law
60. (1) Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say -
(a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise;
(b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent;
"11. Does advertisement or pre-contractual negotiation amount to infringement?
This dispute of law arises in two contexts. First, in the United Kingdom Lectra's first actual sale was in 1987, their first advertisement in 1985. Lectra say that any price depression attributed to their early advertising must be discounted because that advertising is not an infringement. A threat to do so it may have been, but one cannot have damages for that, even though a quia timet injunction might have been possible. Damages can only be awarded in respect of infringements.
The second context relates to the period near expiry. Lectra were in negotiation with one customer pre-expiry but the contract was only concluded after. Can such negotiations constitute an infringement in themselves?
The question turns on section 60(1) of the Patents Act 1977:
[Section 60(1)(a) set out]
Does advertisement or any negotiation without a firm offer, amount to an "offer to dispose of". Miss Heilbron suggests not, relying on authorities in English law distinguishing between an "offer" and an "invitation to treat". An offer, in contract, is an indication of terms of a contract by which the offeror will consider himself bound if the terms are accepted. Anything short of that, in pre-contractual negotiations or an advertisement, will not do. Most advertisements do not constitute that kind of an offer (contrast the classic case of Carlill v. Carbolic Smoke Ball Co.  1 QB 256). The advertisements for the E95.3 were certainly not of the Carbolic kind.
Mr. Floyd suggests that "offer to dispose of" should not be construed so restrictively, that the matter should be looked at as one of commercial substance. "Was the product being made available to the market?" was his way of looking at it.
I have no hesitation in rejecting Miss Heilbron's legalistic argument. Section 60 is not intended to reflect the English law of contract. It is derived from Article 25 of the Community Patent Convention . ("CPC") By section 130(7) of the Act, section 60 is one of those provisions:
"so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the CPC."
Article 25 of the CPC provides:
"A Community patent shall confer on its proprietor the right to prevent all third parties not having his consent:
(a) from making, offering, putting on the market, or using a product which is the subject-matter of the patent, or importing or stocking the product for these purposes."
I think the approach to construction of section 60 (and the CPC) should be purposive. A party who approaches potential customers individually or by advertisement saying he is willing to supply a machine, terms to be agreed, is offering it or putting it on the market. If that is to happen during the life of the patent he infringes. He is disturbing the patentee's monopoly which he ought not to do. So I think the early advertisements were infringements, not mere threats."
" A particular point which arises in this case and was not before Jacob J is a situation in which a defendant shows a customer one machine (machine A) for demonstrations but contends that a somewhat different machine (B) is what would be supplied to the customer if they are interested. In my judgment although this might raise a question of fact, it does not raise a point of principle. I must decide on the facts what was actually offered A or B, both or perhaps the offer was so vague as to not amount to an offer of anything specific at all.
 In my judgment the law does not require, for s60(1)(a) of the 1977 Act to be satisfied, that the person to whom the offer is made necessarily knows anything about how the product works or is configured. Offers to supply products are routinely made in business, without condescending to a detailed exposition of how a product works or is constructed. So long as a particular design is what is on offer, then in my judgment a product to that design is being offered. The customer does not need to know."
Direct infringement this case
The GP Guard+ Data Sheet
"Please see attached the only two data sheets regarding anode systems. Let me know if these are any use, if not I will ask our expert on this subject to call you."
Ms Pollard identified herself in the email as 'Gillian Pollard, Marketing Administrator'. The data sheets attached were the GP Guard+ Data Sheet and another one.
"A party who approaches potential customers individually or by advertisement saying he is willing to supply a machine, terms to be agreed, is offering it or putting it on the market."
Jacob J rejected the approach of the defendants' counsel, using the English law on contractual offers as a guide, but did not expressly accept the submission of the plaintiff's counsel that the matter should be looked at as one of commercial substance. Jacob J undoubtedly did not intend his words above to be treated as if they were statutory and although the sentence I have quoted implies that the key criterion is the behaviour of the alleged offeror did he tell the putative offeree that he was willing to supply the product (irrespective of whether terms of sale had been settled)? I think Jacob J had in mind a more general approach. All relevant factors are to be taken into account to the end of assessing whether there was an offer as a matter of commercial substance. Such factors will certainly include the perception of the putative offeree.
The Galvastar 82 Data Sheet
It is not in dispute that Freyssinet has offered its Galvastar 82 system for use in the United Kingdom by distribution of the Galvastar 82 Data Sheet and indeed by other means. Nor is it disputed that the system could in practice be used for the hybrid method within claim 1 of the Patent. What matters is whether Freysinnet actually offered it for use in the UK as a hybrid system. This is not self-evident: the Galvastar 82 system is described in the Galvastar 82 Data Sheet as a 'Galvanic protection solution'. In line with my discussion above with regard to the GP Guard+ Data Sheet the question is whether, notwithstanding this, there was an offer of a hybrid system when viewed as a matter of commercial substance.
(1) The anode has a titanium connector and that implies hybrid use.
(2) The Galvastar 82 Data Sheet advises a check to ensure that no short circuits are present; this is consistent only with use of an impressed current part of the time.
(3) The Galvastar 82 is a copy of the Claimants' 'DuoGuard' hybrid product, which was the subject of the negotiations referred to by Mr Huynh-Tong.
(4) The Galvastar 82 was supplied in Australia for hybrid use.
"Hold point to check the potential difference between anode and reinforcement to ensure that no short-circuits are present."
The experts disagreed in their reports as to whether an instruction to avoid short-circuits implied protection by impressed current for at least part of the time. But in cross-examination Dr John, Freyssinet's expert, admitted that the avoidance of short circuits was something to be avoided wherever possible, including in a sacrificial system. He said that the suggestion that a galvanic system should be monitored for short circuits was not surprising, though he would not expect this to be a 'hold point'.
The Foreva Solutions brochure
Indirect infringement the law
(2) Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.
" After the decision of the judge and shortly before the hearing of this appeal, this Court gave judgment in Grimme Maschinenfabrik GmbH & Co KG v Scott (t/a Scotts Potato Machinery)  EWCA Civ 1110;  FSR 7 and clarified the scope and proper interpretation of s.60(2), including the requirement of knowledge. So far as relevant to this appeal, it held:
i) The required intention is to put the invention into effect. The question is what the supplier knows or ought to know about the intention of the person who is in a position to put the invention into effect the person at the end of the supply chain, .
ii) It is enough if the supplier knows (or it is obvious to a reasonable person in the circumstances) that some ultimate users will intend to use or adapt the "means" so as to infringe, [107(i)] and .
iii) There is no requirement that the intention of the individual ultimate user must be known to the defendant at the moment of the alleged infringement, .
iv) Whilst it is the intention of the ultimate user which matters, a future intention of a future ultimate user is enough if that is what one would expect in all the circumstances, .
v) The knowledge and intention requirements are satisfied if, at the time of supply or offer to supply, the supplier knows, or it obvious to a reasonable person in the circumstances, that ultimate users will intend to put the invention into effect. This has to be proved on the usual standard of the balance of probabilities. It is not enough merely that the means are suitable for putting the invention into effect (for that is a separate requirement), but it is likely to be the case where the supplier proposes or recommends or even indicates the possibility of such use in his promotional material, ."
I would add to this that the supply or offer to supply must have happened in the United Kingdom. Likewise the relevant suitability is for putting the invention into effect in the UK and the relevant intention is to put the invention into effect in the UK.
Indirect infringement this case
(1) Evidence referred to that the Galvastar 82 anode was put into effect in a hybrid system by a Freyssinet company in Australia.
(2) FIC (one of the French Freyssinet companies) liked the Claimants' hybrid system and wanted to copy it.
(3) The use of the Galvastar 82 anode would have been compliant with relevant standards.
(4) There was no good reason for Freyssinet to use titanium connectors unless there was an intention on Freyssinet's part to supply the Galvastar 82 anode for use in a hybrid system.