Red Spider Technology v Omega Completions Technology

A patent claim is construed objectively through the eyes of the skilled addressee. The description and drawings may interpret the claims, but cannot be used to insert an inventive concept which the claim does not disclose. A performance requirement such as an unimpeded flow path may describe the result of other integers rather than a particular physical feature. Priority requires explicit or implicit technical disclosure of substantially the same subject matter. Obviousness is assessed using the structured inquiry concerning the skilled person, common general knowledge, inventive concept, differences and obviousness. Design right protects particular designs, not general ideas, methods or principles of construction. Copying ideas from patent drawings does not reproduce the protected design.

Red Spider sued Omega for infringement of a UK patent concerning a water injection valve used in oil-field exploitation. Omega denied infringement and counterclaimed for revocation on grounds including insufficiency, lack of novelty and obviousness. Red Spider also alleged infringement of design right in aspects of its valve, including its overall configuration, flow windows and cutaway, diameter reduction and poppet.

The central patent issue was whether claim 1 claimed the alleged inventive cutaway, and how the reference to a work string should be construed. The priority issue concerned whether the earlier application disclosed the claimed relative cross-sectional areas. The design-right issues concerned the distinction between a particular design and an unprotectable idea or construction principle, and whether Omega had substantially reproduced Red Spider’s designs.

1. Patent construction. The claims had to be construed objectively for the skilled addressee. Under Article 69 of the European Patents Convention and section 125 of the Patents Act 1977, the description and drawings could assist interpretation, but the court could not search the specification for an invention which the claim did not disclose. Claim 1 naturally referred to outlet ports on the valve body having the required relative area and to the resulting flow performance. It did not claim the cutaway. The patent therefore failed in limine so far as claim 1 and its dependent claims were concerned.
2. The expression “work string” in claim 1 was construed, despite its ordinary meaning and inconsistent use in claim 25, as referring to the tubing through which fluid entered the valve, including production tubing. That construction resolved the drafting oddities created by the claim’s reference both to wireline deployment and to communication with a work string.
3. Priority and validity. Applying the technical-disclosure approach in Unilin Beheer NV v Berry Floor NV [2005] FSR 6, the priority document did not disclose, expressly or implicitly, the required port-area ratio. The pre-application sale therefore invalidated the patent. On the assumption that the cutaway was claimed, it was obvious over common general knowledge and, in particular, the Burt prior art. The proposed amendment limiting the claim to a water injection valve would not cure the defects.
4. The court applied the novelty principle stated in Synthon BV v SmithKline Beecham plc [2006] RPC 10 and the obviousness framework in Pozzoli v BDMO [2007] FSR 37. Claims 25 and 27 were also invalid because the alleged inventive concept was not claimed and the claimed method was obvious. The infringement claims could not succeed; in any event, there was no evidence that Omega had performed or supplied the claimed method within section 60(1) or (2) of the Patents Act 1977.
5. Design right. Under Part III of the Copyright, Designs and Patents Act 1988, design right protects a particular aspect of shape or configuration, not a general concept, method or principle of construction. The court applied that distinction to the windows, cutaway, diameter reduction and poppet. Omega had taken ideas or design concepts, but had not substantially reproduced the protected designs. The design-right claim therefore failed.
6. The claimant’s claims were dismissed and the counterclaim was allowed. The patent was revoked.