Rockwater Ltd v Technip France SA & Anor

Factual and Procedural Background

The appellants, collectively referred to as Company A, are the patentees and exclusive licensee of European Patent UK No. 0478,742, relating to a method and device for laying flexible pipes offshore. The patent's priority date is 30th March 1990, with key claims being claim 1 (method claim) and claim 3 (device claim).

The patent had been subject to prior litigation. In initial proceedings, the trial judge held claims 1 and 2 valid and infringed, but construed claim 3 narrowly, deeming it invalid if given a wide construction. The Court of Appeal upheld the validity of the method claims but reversed the narrow construction of claim 3, finding it valid under a wide construction.

In the current case, Company B (the respondents) were found by the trial judge to have a device that did not fall within claim 3 and that the patent was invalid for lack of novelty and obviousness. No infringement of the process claims was alleged. Both sides accepted the prior construction determinations.

Representatives for Company A were Mr. Andrew Waugh QC and Dr. Justin Turner; for Company B, Mr. Simon Thorley QC and Mr. Thomas Mitcheson.

Legal Issues Presented

1. Does the accused device (the vessel referred to as Toisa Perseus) fall within claim 3 of the patent?
2. Is the patent anticipated (lacking novelty) by prior art, particularly the Recalde US and GB disclosures?
3. Is the patent obvious in light of the prior art and common general knowledge?

Arguments of the Parties

Appellant's Arguments

• The invention is intended for deep water use and requires a strong vertical tensioner capable of taking substantially all of the pull exerted by the flexible conduit seaside of the tensioner.
• The accused vessel's offset aperture and horn do not constitute the last substantial means of guidance; the vertical tensioner is the last substantial guide as per the patent’s purpose.
• The prior art, including Recalde, does not disclose an auxiliary tensioning means suitable for passing rigid accessories or a main tensioner capable of taking all seaside tension, thus lacking clear and unambiguous directions to anticipate the patent.
• The combination of features in the patent, including the auxiliary tensioner and the method of passing rigid accessories, represent an inventive concept not obvious from the prior art.

Appellee's Arguments

• The accused vessel’s moonpool doors and the attached horn provide the last means of guiding the flexible conduit, not the vertical tensioner alone.
• The Recalde disclosure anticipates the patent as it shows hardware capable of the claimed process, including tensioners and A&R winches.
• The patent’s inventive concept is the vertical tensioner taking all or substantially all of the pull and the method of passing accessories is known and adds nothing inventive.
• The device of the patent is obvious in light of prior art and common general knowledge, and the differences identified are minor or known.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by reaffirming the importance of the "person skilled in the art" as a notional, unimaginative technician with extensive common general knowledge but no inventive capacity, whose perspective guides claim construction and validity assessments.

The court reviewed the patent's technical background, emphasizing the differences between rigid and flexible pipes, the problems of laying flexible pipes offshore, and the known prior art solutions. It noted the longstanding recognition of problems in laying flexible pipes at depth, particularly regarding tension and bending stresses and the passage of rigid accessories overboard.

Regarding claim construction, the court applied the purposive construction principles under Article 69 EPC and the Protocol, emphasizing the inventor's purpose ascertained from the description and drawings. It rejected overly narrow or overly broad interpretations divorced from context.

The central dispute concerned the meaning of "last means for guiding" the flexible conduit on board the vessel. Company B argued that the moonpool doors and their attached horn constituted this last means, while Company A contended that the vertical tensioning means was the last substantial guide. The court found the latter interpretation correct, construing "last means for guiding" as the last means providing substantial guidance. It held that minor contact with the moonpool doors or horn did not amount to significant guidance and that the vertical tensioner performed the last substantial guidance function.

On novelty, the court applied established legal tests requiring clear and unambiguous directions in prior art to anticipate the patent. It examined the Recalde prior art in detail and found that it did not disclose a main tensioner capable of taking all seaside tension, nor an auxiliary tensioner suitable for passing rigid accessories as claimed. The court rejected the trial judge's finding that certain A&R winches in Recalde could serve as auxiliary tensioning means, noting lack of proof and practical impediments.

The court further found that Recalde did not clearly disclose that the tensioner must be strong enough to take all seaside pull, a key feature of the patent, especially for deep water use. It also noted that Recalde did not address the problem of overboarding rigid accessories under tension.

On obviousness, the court applied the Windsurfing structured approach and rejected the trial judge's approach as overly analytical and flawed by hindsight. It found that the inventive concept was a combination of elements: a vertical linear tensioner taking all seaside tension, serving as the last substantial guide; an auxiliary tensioner for passing rigid accessories; and the method of operation combining these to solve known problems.

The court concluded that the differences between the patent and Recalde were substantial and not obvious to the skilled person at the priority date. It rejected arguments that the invention was an obvious aggregation of known elements, emphasizing the long-standing nature of the problems and the lack of prior recognition of the claimed combination.

Holding and Implications

The court ALLOWED THE APPEAL, holding that the patent is valid and infringed.

The direct effect of this decision is that the patent claims, particularly claims 1 and 3, are upheld as valid and that the accused device falls within the scope of the patent. The court's detailed construction of "last means for guiding" clarifies claim scope for future cases. No new precedent beyond the application of established principles was established. The ruling reinforces the importance of purposive construction and careful assessment of novelty and obviousness in complex patent cases involving technical inventions.