Fabio Perini SPA v LPC Group Plc & Ors

Patent claims directed to applying glue to a roll by rolling the roll over a slit require the rolling movement to play an active part in picking up the glue. A roll may pause over the slit, but glue applied entirely by a positive movement of a glue wire to a stationary roll falls outside the claims. The claims are not confined to an overflowing glue dispenser or to a particular physical form of slit. Novelty requires both disclosure and enablement. Obviousness must be assessed using the structured approach in Pozzoli v BDMO and without hindsight. A disclosure may nevertheless render a patent obvious where the skilled person would make the necessary modifications using common general knowledge. Liability for joint infringement requires a common design and conduct in furtherance of it.

Fabio Perini SPA sued four defendants for infringement of European Patents (UK) 0481929 and 0699168, concerning machinery and methods for sealing the tail ends of paper rolls. The defendants denied infringement and counterclaimed for revocation on grounds of lack of novelty, obviousness and insufficiency.

The dispute concerned three Rotoseal machines: the Original, Modified and Proposed machines. The court had to construe the relevant claims, determine infringement, assess the validity of both patents, and decide whether PCMC Italia, PCMC (UK) and LPC Group were liable for infringing acts.

1. Construction of patent 929. The phrase “glue is applied by rolling” requires the roll to play an active part in picking up the glue. It is sufficient that glue is already present in the slit when the roll rolls over it. A roll may pause over the slit, but glue applied entirely by a moving wire to a stationary roll is not applied by rolling.
2. The word “slit” in claims 16 and 17 is an ordinary English word meaning a long narrow opening, judged in context. The method claims were not limited by the more specific requirement in the apparatus claim that glue be dispensed by overflowing.
3. Infringement of patent 929. The Original Rotoseal infringed claims 16 and 17 because the glue was present in the gap when the roll rolled over it. The Modified Rotoseal did not infringe because the glue wire applied glue to a stationary roll. The Proposed Rotoseal would infringe.
4. Validity of patent 929. Under section 2(2) of the 1977 Act, the state of the art includes matter made available by description, use or other means. Lack of novelty requires disclosure and enablement. Neither JP 562 nor GB 445 necessarily disclosed all the claim features. The claims were also not obvious over either citation and were not insufficient.
5. Patent 168. The relevant claims did not require the dispenser and slit to be a single integral unit. The Original and Proposed Rotoseals would have infringed claims 1 and 7 if the patent had been valid. The Modified Rotoseal did not infringe because the moving member was not in its upper position when the roll passed over the slit.
6. The Casper memorandum disclosed a moving glue bar applying glue through a gap to a roll on a roll-off table. In light of the common general knowledge, it rendered claims 1 and 7 of patent 168 obvious. The subsidiary claims added only obvious implementation details.
7. Liability. PCMC Italia was jointly liable with LPC Limited. Its supply, installation and operation of the machine were carried out pursuant to a common design to operate it according to the infringing method. PCMC (UK) and LPC Group were not liable.