Factual and Procedural Background
The Claimants are joint proprietors and joint inventors of a UK patent relating to a "Treatment process for concrete" aimed at protecting steel reinforcement bars (rebars) in concrete from corrosion. They allege that the Defendant, Freyssinet, infringed this patent. Freyssinet denies infringement and counterclaims for revocation of the patent on grounds of lack of novelty and inventive step. The patent claims a hybrid cathodic protection system combining impressed current and sacrificial anode techniques, involving a two-phase electrochemical treatment of rebars embedded in concrete.
The case involved expert witnesses for both parties and focused on the construction of patent claims, novelty, inventive step, and infringement issues related to specific Freyssinet products and promotional materials. The court examined prior art references and the common general knowledge at the priority date of the patent, as well as the legal principles applicable to patent construction, novelty, inventive step, and infringement under the Patents Act 1977.
Legal Issues Presented
- Whether the Defendant infringed the Claimants' patent relating to a hybrid cathodic protection system for reinforced concrete.
- Whether the patent claims, particularly claims 1 and 12, are valid in light of the prior art and common general knowledge, addressing novelty and inventive step.
- The proper construction of the patent claims, including whether the second phase of the claimed method can be an impressed current treatment or is limited to sacrificial protection.
- The interpretation of what constitutes an offer to dispose of a product or an offer of a process under section 60 of the Patents Act 1977 in the context of alleged infringement.
- The applicability of indirect infringement provisions under section 60(2) of the Patents Act 1977.
Arguments of the Parties
Claimants' Arguments
- The patent claims a valid hybrid cathodic protection system comprising a two-phase treatment using the same anode for impressed current followed by sacrificial protection.
- Claim 1 should be construed narrowly to limit the second phase to sacrificial cathodic protection, not impressed current treatment.
- The Defendant's products, particularly the Galvastar 82 system, infringe the patent claims by offering anodes adapted for use in the hybrid method.
- The Defendant's distribution of promotional materials and data sheets constituted offers to dispose of infringing products or offers of the patented method for use in the UK.
- The Defendant's use of titanium connectors implies hybrid use consistent with the patent claims.
Defendant's Arguments
- The Defendant denies infringement and contends that claim 12 lacks novelty and inventive step based on prior art documents (Fosroc 1, Fosroc 2, Enser) and common general knowledge.
- The Defendant argues for a broader construction of claim 1, allowing the second phase to be an impressed current treatment as an alternative to sacrificial protection.
- The Defendant contends that promotional materials such as the GP Guard+ Data Sheet were drafts or not offers to dispose of infringing products.
- The Defendant asserts that the Galvastar 82 system is marketed and used as a galvanic (sacrificial) protection system, not a hybrid system.
- The Defendant challenges the Claimants' evidence on use and intention to use the products in a hybrid system within the UK.
Table of Precedents Cited
| Precedent |
Rule or Principle Cited For |
Application by the Court |
| Catnic Components Ltd v Hill & Smith [1982] RPC 183 |
Definition of the person skilled in the art and their characteristics. |
Used to characterize the skilled person as unimaginative, with practical knowledge relevant to the invention. |
| Generics UK Ltd v Pharmaceutical Co Ltd [2008] EWHC 2413 (Pat) |
Definition of common general knowledge in the relevant technical field. |
Applied to assess what was generally known to the skilled person at the patent priority date. |
| Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062 |
Principles on construction of patent claims. |
Guided the court’s approach to interpreting the patent claims in issue. |
| Consafe Engineering (UK) Ltd v Emtunga UK Ltd [1999] R.P.C. 154 |
Patent claim construction can evolve during trial and is not limited by pleadings. |
Supported the court's acceptance of new construction arguments despite lack of prior pleading. |
| Glaverbel SA v British Coal Corp. [1995] R.P.C. 255 |
Convention that subordinate claims are narrower than antecedent claims is not inflexible. |
Used to justify the court’s acceptance that claim 1 and claim 9 could have the same scope. |
| Swarovski-Optik KG v Leica Camera AG [2014] EWCA Civ 637 |
Claims of identical scope can be included in a patent; rigid application of canons of construction avoided. |
Supported the court’s approach to claim construction where claim 9 was as broad as claim 1. |
| Smithkline Beecham plc's (Paroxetine Methanesulfonate) Patent [2005] UKHL 59 |
Requirements for prior art to anticipate a patent: disclosure and enablement. |
Applied to assess whether prior art disclosed subject matter that would infringe the patent. |
| Ranbaxy UK Ltd v Warner Lambert Co [2005] EWHC 2142 (Pat) |
Clarification on anticipation by prior art with multiple alternative disclosures. |
Guided the court’s analysis of whether combinations of alternatives in prior art destroy novelty. |
| Ranbaxy UK Ltd v Warner-Lambert Co [2006] EWCA Civ 876 |
Confirmation of the High Court’s approach to anticipation and novelty. |
Supported the principle that explicit disclosure of alternatives in prior art can anticipate a claim. |
| Gillette Safety Razer Co v Anglo-American Trading Co Ltd (1913) 30 R.P.C. 465 |
Optional features in prior art can still amount to disclosure for novelty purposes. |
Referenced to support that optional disclosures in prior art count as anticipatory. |
| Hallen Company v Brabantia (UK) Ltd [1991] R.P.C. 195 |
Commercial considerations are not relevant to inventive step. |
Applied to exclude cost-based arguments against obviousness. |
| Gerber Garment Technology Inc v Lectra Systems Ltd [1995] R.P.C. 383 |
Definition of "offer to dispose of" under section 60(1)(a) of the Patents Act 1977. |
Used to interpret whether promotional activities and sending data sheets constitute infringement. |
| Musion Systems Ltd v Activ8-3D Ltd [2011] EWPCC 012 |
Clarification of what constitutes an offer under section 60(1)(a) and the importance of commercial substance. |
Supported the court’s purposive approach to determining if an offer was made. |
| Grimme Landmaschinenfabrik GmbH & Co KG v Scott [2010] EWCA Civ 1110 |
Interpretation of section 60(2) on indirect infringement and knowledge requirements. |
Applied to assess whether Defendant knew or ought to have known about intended infringing use by ultimate users. |
| KCI Licensing Inc v Smith & Nephew plc [2010] EWCA Civ 1260 |
Summary and application of Grimme principles on indirect infringement. |
Supported the court’s approach to knowledge and intention in indirect infringement claims. |
Court's Reasoning and Analysis
The court began by characterizing the skilled person and the common general knowledge relevant to the patent, including the state of cathodic protection technology as of the priority date. It carefully construed the patent claims, particularly claim 1, concluding that the second, long-term phase of protection is limited to sacrificial cathodic protection rather than impressed current treatment. This was based on claim language indicating that the anode undergoes sacrificial metal dissolution as its main anodic reaction during the second phase, a fact unsupported by any specification passage or expert evidence suggesting otherwise.
Regarding claim 12, the court found no limitation on the shape of a discrete anode and rejected the Defendant’s narrow construction that the connection detail must remain connected to the DC power supply during the second phase. The court held that the connection detail need only be adapted for use in the claimed method, including being disconnectable, consistent with the patent’s two-phase system.
In assessing novelty, the court examined prior art documents Fosroc 1, Fosroc 2, and Enser. It found that Fosroc 1 did not disclose the combination of a sacrificial metal anode with a titanium or carbon fibre connector as required by claim 12, and thus claim 12 was novel over Fosroc 1. However, the court held that claim 12 lacked inventive step over Fosroc 1 and Fosroc 2 because the use of a titanium connector was an obvious alternative to the skilled person, supported by expert evidence and prior art teachings. Claim 1 was found to involve an inventive step over these prior art references.
The court rejected unpleaded arguments by the Defendant regarding Enser and certain constructions of claim 1, applying procedural rules that unpleaded arguments are generally disregarded unless no prejudice arises.
On infringement, the court analyzed the Defendant’s promotional materials and product offerings. It held that sending the GP Guard+ Data Sheet, a draft document for a hybrid system never marketed, did not amount to an offer to dispose of an infringing product or an offer of the patented method. The Claimants’ interpretation of the data sheet as an offer was not supported by the evidence, including the Defendant’s internal communications and the recipient’s perception.
The Galvastar 82 system was acknowledged as offered in the UK and capable of use in the hybrid method. However, the court found no evidence that the Defendant offered it for hybrid use in the UK; it was marketed and intended as a galvanic (sacrificial) protection system only. The presence of titanium connectors did not imply hybrid use, as titanium connectors could be used with galvanic anodes.
Regarding indirect infringement under section 60(2), the court found insufficient evidence that the Defendant knew or it was obvious that ultimate users intended to use the Galvastar 82 anode in a hybrid system. Evidence of hybrid use in Australia and the Defendant’s negotiations concerning hybrid systems abroad did not establish such intention in the UK market. Installation instructions limited use to galvanic protection, further undermining the Claimants’ case.
Holding and Implications
Claim 1 of the patent is valid but was not infringed by the Defendant. The court upheld the Claimants’ narrower construction of claim 1 and found that the Defendant’s products and promotional activities did not amount to infringement under the Patents Act 1977.
Claim 12 is invalid due to lack of inventive step. Although the Defendant’s products would have infringed claim 12 if it had been valid, the court found this claim obvious in light of prior art and common general knowledge.
The direct consequence is that the Claimants’ infringement claims fail, with no finding of infringement against the Defendant. The judgment does not establish new legal precedent but applies established principles of patent construction, novelty, inventive step, and infringement law to the specific facts of this case.