Rockwater Ltd v Technip France SA & Anor

Under European Patent Convention Article 69, patent claims must be construed purposively in the context of the description and drawings. The claims remain decisive, but their language must reflect the inventor’s widest disclosed technical purpose.

A prior publication anticipates only if it gives clear and unmistakable directions which inevitably produce what falls within the claim. Obviousness requires assessment of the inventive concept as a combination, not reconstruction through hindsight. A product claim for a device suitable to operate a process may be infringed where the device is capable of that operation, even if the alleged infringer says that it is not its intended normal use.

The appellants, collectively called Coflexip, owned or exclusively licensed a European patent for a method and device for laying flexible offshore conduits. The method used a substantially vertical linear tensioner and auxiliary tensioning means to pass rigid accessories through that tensioner.

Laddie J held that Rockwater’s vessel, the Toisa Perseus, did not fall within claim 3. He also held the patent invalid for lack of novelty and obviousness over the Recalde patent publications. Earlier litigation concerning the same patent, involving Stolt, had already construed parts of the claims and identified the inventive concept.

The appeal raised whether the vessel fell within claim 3 and whether Recalde clearly disclosed, or made obvious, the patented combination.

1. The appeal was allowed. The Court held that the patent was valid and that the Toisa Perseus infringed claim 3.

2. Under Article 69 of the European Patent Convention, the claims had to be read purposively in their full documentary context. The patentee’s purpose was to bring a flexible conduit from horizontal to approximately vertical before it was subjected to substantial tension. Thus, the claim expression “last means for guiding” meant the last means providing substantial guidance. The vertical tensioner performed that function. The vessel’s offset moonpool aperture and flared horn did not provide substantial guidance and did not prevent infringement.

3. There was an independent basis for infringement. Following the earlier construction in Stolt, claim 3 covered a device suitable for operating the claimed process. With its moonpool doors open, the vessel was capable of operating the process. An assertion that this was not its intended normal mode of operation could not avoid the claim.

4. Recalde did not anticipate. Applying the test in General Tire v Firestone Tire & Rubber [1972] RPC 457, the prior publication had to contain clear and unmistakable directions for every claim element. Recalde did not clearly disclose an auxiliary tensioner positioned and usable to pass accessories through the opened main tensioner. Nor did it clearly disclose a main tensioner capable of taking substantially all of the sea-side pull while leaving the flexible conduit virtually tensionless on the ship side. Its abandonment-and-recovery winch could serve the claimed function only after unspecified substantial modification.

5. The patent was also not obvious. The judge had treated the inventive concept as an isolated vertical tensioner and had divided the combination into apparently easy steps. That was an error of principle and hindsight reasoning. Applying Windsurfing v Tabur Marine [1985] RPC 59, the Court held that the combination of a sufficiently strong vertical tensioner, low ship-side tension, and an auxiliary tensioner for accessories was far from Recalde. The long-standing availability of individual components reinforced the conclusion that the combination involved an invention.

• Court of Appeal (Civil Division): Allowed Coflexip’s appeal in [2004] EWCA Civ 381; held the patent valid and infringed.
• Patents Court: Laddie J had held that Rockwater’s device did not fall within claim 3 and that the patent was invalid for anticipation and obviousness.