Glass & Ors v Freyssinet Ltd

For patent construction, the court must determine the correct meaning of the claims, even where the precise construction was not pleaded, subject to prejudice and deliberate concealment. A dependent claim is not necessarily narrower than its parent claim. For novelty, a single prior-art document anticipates a claim only where it gives a clear and unambiguous teaching which, if performed, would necessarily result in infringement. An optional disclosure may still be a disclosure for novelty purposes. For infringement, an offer under section 60 of the Patents Act 1977 is assessed as a matter of commercial substance, having regard to all relevant circumstances, including the putative offeree’s perception. Indirect infringement requires proof of the relevant ultimate users’ intended use in the United Kingdom.

The claimants were proprietors and inventors of a patent for a hybrid cathodic-protection process for reinforced concrete and an anode suitable for that process. They alleged that Freyssinet had infringed claims 1 and 12 by offering or supplying anode systems and related materials.

Freyssinet denied infringement and counterclaimed for revocation for lack of novelty and inventive step. The court considered construction of the claims, four items of prior art, common general knowledge, direct infringement through documents and marketing material, and indirect infringement through supply of an anode.

1. Validity. Claim 1 was construed as requiring the second, long-term phase to be a sacrificial cathodic-protection phase. The wording that the anode undergoes sacrificial metal dissolution as its main anodic reaction pointed to that construction. Claim 9 therefore had the same scope as claim 1. The convention that a dependent claim is narrower than its parent was only guidance and did not compel a different result. Claim 12 did not require a discrete anode to have a particular shape, nor did its connection detail have to remain connected to the DC power supply during use.

2. Novelty and inventive step. Novelty required disclosure of subject-matter which, if performed, would necessarily infringe, together with enablement. A combination selected from alternatives in one prior-art document was disclosed only where the document, taken as a whole, gave a clear and unambiguous teaching that the combination could be made. Fosroc 1 did not disclose the necessary combination of sacrificial anode and suitable impressed-current connector. Claim 1 was novel and involved an inventive step over the cited prior art. Claim 12 lacked inventive step over Fosroc 1 and Fosroc 2, but did not lack novelty over Fosroc 1. It was not obvious over Enser or common general knowledge.

3. Pleading and construction. Unpleaded arguments at trial would ordinarily be disregarded where they caused prejudice, subject to exceptional circumstances. Construction arguments were treated more flexibly because the court had to reach the correct construction, but parties were strongly advised to plead them.

4. Infringement. An offer under section 60(1) of the Patents Act 1977 was a question of commercial substance, not contractual technicality. The GP Guard+ data sheet merely supplied information and was not an offer. The Galvastar 82 material offered a galvanic system, not the claimed hybrid system. Under section 60(2), the claimants had to prove that Freyssinet knew, or that it was obvious to a reasonable person, that ultimate users intended to put the invention into effect in the United Kingdom. That was not established.

5. Disposition. Claim 1 was valid but not infringed. Claim 12 was invalid, although it would have been infringed had it been valid.