Manvers Engineering Ltd & Anor v Lubetech Industries Ltd & Ors

For a patent claim requiring an oleophilic layer in a self-supporting wall, a product containing a separate oleophilic liner placed against a supporting frame does not necessarily satisfy the claim. The court must construe the claim as a whole and identify whether each integer is present. A base containing holes through which liquid can pass is not “impermeable”.

For obviousness, a proposed development is not obvious where it requires a series of non-obvious modifications to the prior art. Added matter is assessed by comparing the application and patent through the eyes of the skilled addressee. Subject matter is added unless clearly and unambiguously disclosed, expressly or implicitly, in the application as filed.

The claimants alleged that the defendants’ oil-spill containment products infringed UK Patent GB 2 428 032. The defendants denied infringement and challenged validity on anticipation, obviousness and added matter grounds.

The patent concerned a portable collector comprising a mat with an impermeable base layer and oleophilic material, together with self-supporting, water-permeable walls containing oleophilic material. The defendants’ products used a separate oleophilic liner within a supporting base unit. The principal issues were whether that configuration satisfied the claim integers, whether US Patent No US 6,558,769 (“Chwala”) anticipated or rendered the patent obvious, and whether portability constituted added matter.

1. Construction and infringement. The patent described a collector having a horizontal mat, made up of layers including an impermeable base and an oleophilic layer, to which self-supporting walls containing oleophilic material were fixed. The defendants’ basic liner had no walls, while the Plus liner’s walls were not self-supporting and lacked an impermeable base. The assembled products did not contain a self-supporting wall comprising an oleophilic layer. The separate liner was supported by the frame; it did not become a layer of the wall.
2. A base containing holes through which oil or water could pass was not “impermeable”. Accordingly, most product versions also failed that integer. None of the products was capable of being rolled up for the purposes of claim 8.
3. Validity. Chwala did not anticipate. Its walls were not disclosed as comprising oleophilic material, and the alleged close contiguity between the absorbent pad and impermeable base could only be reached by a contrived reading. The obviousness attack also failed. Applying the guidelines in Pozzoli v BDMO [2007] FSR 37, the proposed route required several significant and non-obvious changes to Chwala.
4. Added matter. Under section 72(1)(d) of the Patents Act 1977, the comparison between application and patent was conducted through the eyes of the skilled addressee. Applying Bonzel v Intervention (No 3) [1991] RPC 22 and European Central Bank v Document Security Systems [2007] EWHC 600 (Pat), portability was implicitly disclosed by the description of the collector as light, easy to deploy and easy to remove. The patent therefore contained no added matter.
5. The patent was valid but not infringed.