Rockwater Ltd v Coflexip SA & Anor

Factual and Procedural Background

This action was commenced by Company A seeking the revocation of European Patent (UK) 0 478 742 entitled "Device and Process for Unrolling Flexible Tubular Conduits Essentially Vertically". The Defendant, Company B, is the registered proprietor of the patent. Company B and Company C, said to be the exclusive licensee under the patent, counterclaimed for infringement involving Company A's ship deployed in pipelaying contracts in 2001 in two fields at varying water depths. Jurisdiction under the Patents Act 1977 was not disputed.

The patent had been previously litigated in the same jurisdiction involving different parties and a different pipelaying vessel. That prior litigation addressed infringement and validity, with some findings upheld and others reversed on appeal. This current action concerns different evidence, a different vessel design, and different prior art.

The patent concerns a process and equipment for laying flexible pipes and cables from a pipelaying ship, addressing problems with passing the pipe or cable from the ship into the water, particularly in deep water offshore oil and gas fields.

Legal Issues Presented

1. Whether the patent claims are infringed by the Defendant's apparatus and operations involving the pipelaying vessel.
2. Whether the patent claims are valid in light of prior art, specifically the Recalde US and Recalde GB patents.
3. The proper construction of key claim terms, including the meaning of "last means for guiding" in the apparatus claims.
4. The applicability of the Improver test for claim construction and infringement analysis.
5. The assessment of anticipation and obviousness of the patent claims based on the prior art.

Arguments of the Parties

Appellant's Arguments (Company B and Company C)

• The patent invention involves vertical tensioning means that take substantially all the pull exerted by the flexible conduit during laying.
• The apparatus claims cover devices suitable for operating the claimed process, not just actual use.
• The "last means for guiding" must be the tensioner, excluding other downstream guides such as flared devices.
• The prior art (Recalde US and GB) does not disclose all features of the claims, particularly the arrangement for passing rigid accessories through the tensioner under tension.
• The Recalde patents do not anticipate the claims and the patent is not obvious over them.

Appellee's Arguments (Company A)

• The Toisa Perseus vessel does not infringe because it includes a flared device downstream of the tensioner that acts as a "means for guiding," thus the tensioner is not the last guiding means.
• The flared device applies lateral force and guides the conduit during pipelaying operations, meeting the claim definition.
• The prior art discloses apparatus meeting all claim hardware features, including vertical tensioning means capable of gripping flexible conduits and auxiliary tensioning means for rigid accessories.
• The prior art apparatus is capable of operating the claimed process, including passing accessories through the tensioner using known techniques such as opening the tensioner and using abandonment and recovery (A&R) winches.
• The claims are anticipated by and/or obvious over the prior art, particularly Recalde US and GB, which teach vertical tensioners applying tension to operational lines arrays including flexible conduits.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by revisiting the technical background of submarine pipes, distinguishing rigid and flexible pipes and their physical behaviors relevant to pipelaying operations. It then summarized the prior litigation and emphasized that the current case concerns different vessels and prior art.

The court carefully construed the patent claims, particularly focusing on the meaning of "flexible conduit" and the phrase "last means for guiding" in the apparatus claims. It accepted that "means" refers broadly to any structure capable of guiding, not limited to traditional wheels or gutters.

The court analyzed expert evidence and prior findings, concluding that a "means for guiding" applies lateral force to direct the conduit and must be in average contact during normal operation. It rejected the argument that occasional contact devices are guides.

Regarding infringement, the court found that the Defendant's vessel includes a flared device downstream of the tensioner that acts as a "means for guiding." Since the tensioner is not the last such means, the apparatus claims are not infringed.

The court then examined the prior art patents Recalde US and Recalde GB in detail. It found that these patents disclose apparatus meeting the hardware requirements of the claims, including vertical tensioners capable of gripping flexible conduits and auxiliary tensioning means for rigid accessories. The court rejected the Defendant's construction that flexible conduits are not grasped or tensioned by the tensioners.

The court addressed arguments about the capability of the tensioners to handle axial tension on flexible conduits and the operation of passing accessories through the tensioners using known techniques such as opening the tensioner and employing A&R winches. It concluded that the prior art apparatus is capable of operating the claimed process.

On validity, the court held that claim 1 is not anticipated because the prior art does not disclose the process for passing accessories through the tensioner as claimed. However, claim 3 is anticipated because the prior art discloses hardware suitable for operating the process, including tensioners and auxiliary tensioning means.

Regarding obviousness, the court applied the Windsurfing test and concluded that taking all or substantially all of the tension on the vertical tensioner would have been obvious to a skilled person operating the prior art apparatus, both in shallow and deep water. The method of passing accessories through the tensioner by opening it and using A&R winches was known and obvious.

Therefore, all apparatus claims dependent on claim 3 also fail for obviousness. The court found no independent validity for subsidiary claims.

In conclusion, Company A succeeded on both infringement and invalidity issues.

Holding and Implications

The court held that the patent claims are NOT INFRINGED by Company A's vessel because the tensioners are not the last means for guiding the flexible conduit, due to the presence of a flared device acting as a guide downstream.

However, the court also held that the patent claims, particularly claim 3 and its dependent apparatus claims, are INVALID for anticipation and/or obviousness based on the prior art Recalde US and Recalde GB patents.

The direct effect of this decision is that Company A is not liable for infringement and the patent is revoked for lack of validity. No new precedent was established beyond the application of established principles of claim construction, infringement, anticipation, and obviousness in the context of complex pipelaying technology.