Boegli-Gravures SA v Darsail-Asp Ltd & Anor

Patent claims are construed by asking what the skilled person would understand the patentee to mean in context. Where a two-part claim is expressly based on identified prior art, the preamble should not ordinarily be construed to exclude that prior art unless the wording clearly requires it. Technical descriptors may bear an extended, functional meaning rather than a strict geometric meaning.

For novelty, prior art must disclose subject matter which would necessarily infringe and must disclose it sufficiently to enable performance. Obviousness is assessed without hindsight by the structured approach in [2007] EWCA Civ 588. Supply under section 60(2) of the Patents Act 1977 requires proof that the recipient is not entitled to work the invention. A director may be jointly liable where personal involvement goes beyond constitutional functions.

Boegli-Gravures SA owned European Patent (UK) No 1 324 877 for equipment producing satinized packaging foil bearing signs with an optical effect that changes with viewing angle or lighting. It alleged that Darsail-Asp Ltd supplied infringing rollers and foil samples, and that Andrei Pyzhov, a director and shareholder, was jointly liable.

The defendants denied infringement and counterclaimed for revocation for lack of novelty and obviousness over United Kingdom Letters Patent No 1 312 359 (Nielsen). The issues included construction of the claim preamble and the term “pyramidal”, infringement by supply and website offer, novelty, obviousness, and the personal liability of Mr Pyzhov.

1. Construction. The preamble of claim 1 was based on Boegli 911 and should not be construed to exclude the prior art it acknowledged. “Driven individually or in common” was disjunctive and covered the alternatives disclosed by that prior art. The rolls needed to be suitable for resilient pressure, not necessarily actually pressed together. “Pyramidal” meant roughly pyramid-shaped in a functional sense: the teeth had to perform the functions of satinizing and interpenetrating, not conform to a perfect geometric pyramid. The Protocol questions were unnecessary because the issue concerned the appropriate ordinary meaning in context, although the alleged variant would also satisfy them.
2. Infringement. The optical effect required by claim 1 could be a change in intensity; disappearance was unnecessary. Darsail’s HE and DLE rollers satisfied claim 1, with the HE rollers also satisfying claim 3 and the DLE rollers claim 2. The experimental-machine samples did not fall within claim 8 because the machine lacked a driving system. The Mayfair foil did fall within claim 8.
3. Supply and website. Under section 60(2) of the Patents Act 1977, supply to a person other than a licensee or authorised person was an essential ingredient. The test purchase therefore did not itself establish completed infringement because the purchaser’s status was not proved, but Darsail’s willingness to supply without enquiry established a threat. The website was an offer to supply rollers generally, but did not establish an offer to supply in the United Kingdom because its delivery terms were unstated.
4. Validity. Nielsen did not disclose the optical effect, nor would its optional instruction to vary projection height necessarily produce it. The novelty challenge therefore failed. Applying the structured obviousness inquiry, the defendants’ case depended on selecting a sequence of optional choices with knowledge of the invention. That was hindsight, and the patent was not obvious.
5. Mr Pyzhov. Shareholding, directorship, company size and general control were insufficient alone. His personal participation in negotiating and deciding the supplies, and his instructions to staff, went beyond constitutional functions and made him jointly liable.

Darsail had threatened to infringe and had infringed the Patent. The Patent was valid over Nielsen, and Mr Pyzhov was jointly liable.