Glass & Ors v Freyssinet Ltd [2015] EWHC 2972 (IPEC)

Case No IP14M01755

[2015] EWHC 2972 (IPEC)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

INTELLECTUAL PROPERTY ENTERPRISE COURT

Venue Royal Courts of Justice, Rolls Building, Fetter Lane, London, EC4A 1NL

Date 21/10/2015

Before

HIS HONOUR JUDGE HACON

Between

GARETH KEVIN GLASSClaimant

ADRIAN CHARLES ROBERTSClaimant

NIGEL DAVISONClaimant

FREYSSINET LIMITEDDefendant

Richard Davis (instructed by Mathys & Squire LLP) for Claimant

Lindsay Lane (instructed by Dehns) for Defendant

Hearing Hearing dates: 8-9 September 2015

Judgment

Judge Hacon :

Introduction

[1]The Claimants are joint proprietors of UK Patent No. 2 426 008 (“the Patent”). They are also the joint inventors of the invention claimed in the Patent, entitled a “Treatment process for concrete”. They allege that the Defendant (“Freyssinet”) has infringed the Patent. Freyssinet denies infringement and counterclaims for revocation on the grounds of lack of novelty and inventive step.

[2]Mr Davis appeared for the Claimants and Ms Lane for Freyssinet.

The technology

[3]Reinforced concrete is concrete containing bars made from another material, usually steel, which confer added strength (known as ‘rebars’). The strength in compression of the concrete is complemented by the higher tensile strength and ductility of steel. Calcium hydroxide and alkaline salts within the concrete combine to create an iron oxide film on the surface of the steel which protects it from corrosion. That film may be broken down, typically by atmospheric carbon dioxide or carbon dioxide dissolving in rain water, creating carbonic acid, which enters the pores of the concrete and reacts with the iron oxide layer. Alternatively chloride ions from de-icing salts or seawater may destabilise the layer. Corrosion of the steel is then liable to occur. Rust created by corrosion occupies a volume greater than the steel it replaces, creating an expansive force which leads to cracking and spalling (surface failure leading to flaking) of the concrete. The structural capacity of the concrete accordingly suffers. In addition the cracks allow further ingress of water, accelerating the deterioration.

[4]At the priority date of the Patent (16 March 2005) a number of means were known to arrest the corrosion of rebars. One was ‘cathodic protection’. An electrochemical cell is created within the concrete in which the rebar acts as a cathode and this inhibits its corrosion.

[5]Two types of these electrochemical cells were known. In the first, a DC current supply is used to create an ‘impressed current’. An anode is located in the concrete and connected to the positive terminal of the current supply. The rebars are connected to the negative terminal so that they become cathodes. The concrete serves as the electrolyte. This is known as an impressed current cathodic protection system.

[6]An alternative arrangement relies on the difference in electrode potential between metals. Where, for instance, zinc and steel are electrically connected and both contained in an electrolyte, an electrochemical potential is created between them so that current will flow. The zinc will form the anode and the steel the cathode. The zinc anode will then corrode preferentially. The zinc (in this example) forms what is known as a sacrificial or alternatively a galvanic anode. In any such arrangement, the metal to be protected must be less electrochemically active than the metal which is to be sacrificed. Using the traditional language of chemists, it must be a more ‘noble’ metal than that of the sacrificial anode. This arrangement is known as a sacrificial or galvanic cathodic protection system.

The invention in summary

[7]The invention claimed in the Patent is a hybrid system for protecting steel rebars in reinforced concrete, combining the impressed current and sacrificial anode techniques. There is an initial impressed current phase in which an external source of DC current is used with the steel serving as the cathode and another less noble metal as the anode. This is followed by a longer sacrificial phase in which the external DC potential is no longer applied but the difference in electrode potential between the metals sets up a flow of a current and thus a sacrificial system to protect the steel.

The witnesses

[8]I heard expert evidence from Dr David Gareth John on behalf of the Claimants and from Dr Paul Lambert on behalf of Freyssinet, both of whom were very helpful. There was also evidence of fact from a number of witnesses on each side, all of whom I think were doing their best to give their evidence fairly. I refer to them in context below. The person skilled in the art The law

The person skilled in the art

[9]The person skilled in the art is likely to have a practical interest in the subject matter of the invention and practical knowledge and experience of the kind of work in which the invention is intended to be used, see Catnic Components Ltd v Hill & Smith

[1982] RPC 183

, at 242-3. The skilled person has an unlimited capacity to read with care the cited prior art which is deemed put before him (to be taken to include her) and, where appropriate, the patent in suit. He will consider the prior art having in mind both the common general knowledge retained by those in the technical field from which he is drawn and also the common prejudices that prevail among such individuals. He is unimaginative and is without any inventive capacity. One consequence is that he will not combine the teaching of one item of cited prior art with another unless either there is an express cross-reference or the combination would be self-evident enough to occur to his unimaginative mind, see Technip France SA’s Patent [2004] R.P.C. 46, at [6]-[10]. This case

[10]Ms Lane submitted that the skilled person would work for a specialist supplier of anodes and have a degree in materials science or civil engineering, which in either case would have included a module in corrosion. Aside from some minor debate about whether the skilled person would have further formal qualifications, on which nothing turned, this characterisation of the skilled person was accepted. I would add, for the avoidance of doubt, that the skilled person would be familiar with the manufacture of anodes used in the cathodic protection of steel rebars.

Common general knowledge

[11]Kitchin J summarised what constitutes common general knowledge in Generics UK Ltd v Pharmaceutical Co Ltd

[2008] EWHC 2413 (Pat)

; [2009] R.P.C. 4:

“[37] Thus the common general knowledge is the common knowledge in the field to which the invention relates. The notional skilled addressee is the ordinary man who may not have the advantages that some employees of large companies may have and information does not form part of the common general knowledge simply because it is known to some persons in the art. It must be generally known and generally regarded as a good basis for further action by the bulk of those engaged in that art before it becomes part of their common stock of knowledge relating to the art, and so part of the common general knowledge. That is not to say the skilled person must have it at the forefront of his mind. As Laddie J. explained in Raychem Corporations' Patents [1998] R.P.C. 31 at 40, it includes all the material which he knows exists and which he would refer to as a matter of course if he cannot remember it and which he generally understands is sufficiently reliable to use as a foundation for further work.”

[12]Freyssinet pressed for the inclusion of two particular items within the common general knowledge. The first was the use of titanium connectors. Connectors are used for the electrical connection of anodes to other parts of a cathodic protection system and I will say more about them below. Dr Lambert, Freyssinet’s expert witness, said that he spent the first twelve years of his career using only titanium connectors. I did not understand the Claimants to dispute that in non-specific terms it was part of the common general knowledge that titanium connectors were used.

[13]The second item concerned the use of arrays of discrete galvanic anodes embedded in concrete. Dr John, the Claimants’ expert, was of the view that discrete anodes formed part of the common general knowledge at the priority date but according to him the skilled person would have believed that they did not provide an economical repair and refurbishment option for reinforced concrete. Freyssinet wished to take the common general knowledge of discrete anodes further than that and suggested that a product called ‘Galvashield CC’, made by Fosroc International Limited (“Fosroc”), would have been part of the common general knowledge. Dr John accepted that Galvashield CC anodes were an off-the-shelf product of Fosroc, of which the skilled person would have been aware, and that the product included cylindrical anodes which could be inserted in holes in the concrete and connected by embedded wires. However the date by which the skilled person would have become aware of Galvashield CC anodes was not established. Dr John said that he did not recall seeing major presentations of the product at conferences he attended in the 2004/2006 period and was unable to say when the product was first advertised. I am not prepared to assume that knowledge of Galvashield CC anodes formed part of the skilled person’s common general knowledge in March 2005.

The Patent

[14]The Patent relates to the two-stage process for protecting the steel in reinforced concrete referred to above. Anodes are embedded in the concrete. There is what the Patent describes as a temporary and impressed high-current phase using a DC source, which is said to rapidly arrest the corrosion process by neutralising acidic corrosion sites and supporting the repair of the protective passive film on the steel. In addition, aggressive ions such as chloride ions are drawn away from the concrete and towards the anode.

[15]Then a long term and low-current sustained phase follows that inhibits corrosion. The same anode is used, which now becomes a sacrificial anode. It was common ground that ‘temporary’ as opposed to ‘long term’ and ‘high-current’ as opposed to ‘low-current’ are all used as relative rather than absolute terms.

[16]The transition from impressed current to sacrificial mode requires a change in the electrical connections. At the bottom of page 15 of the Patent the specification says this:

“At the end of the impressed current treatment, a long term low power cathodic prevention treatment is applied using the same anode. It is preferable to disconnect the power supply [5] at electrical connections [7] and [12] and to connect remaining sacrificial anode metal directly to the steel through electrical connection [13]. The activated discrete sacrificial anode may then be used in a long term cathodic prevention role to maintain steel passivity.”

Figure 1 shows the DC power supply [5] connected to the anode by connection [12] and to the steel rebars by connection [7]. Although the above passage uses the word ‘preferable’, the final sentence makes it clear that the reconnection indicated is necessary to allow the sacrificial mode to be engaged. Specifically, the anode and steel must now be directly connected to one another by means of the connection [13] referred to, in order for the electrochemical cell to function. That connection cannot be in place during the impressed current phase, otherwise it would operate as a short circuit between the positive and negative terminals of the DC source.

[17]I heard argument about two claims: 1 and 12. Claim 1 is a method claim, here divided into integers:(a) (A) A method of protecting steel in concrete comprising

(b) (B) a temporary electrochemical treatment adapted to improve the environment at the steel to arrest steel corrosion

(d) (D) the temporary electrochemical treatment is an impressed current treatment delivered using an anode and a source of DC power and is both high current and temporary relative to the long term electrochemical treatment and

(e) (E) the same anode is used in the long term electrochemical treatment and

(f) (F) the anode comprises a sacrificial metal element that undergoes sacrificial metal dissolution as its main anodic reaction and

(g) (G) the anode is embedded in a porous material in contact with the concrete. Claim 12 is product claim, the product being an anode suitable for use in the hybrid protection method: (A) An anode adapted for use in any of the methods claimed in claims 1 to 11 comprising (B) a sacrificial metal element less noble than steel with an impressed current anode connection detail wherein (C) the anode is a discrete anode adapted for embedment in a cavity in concrete and (D) the impressed current connection detail comprises a conductor connected to the sacrificial metal element to form an electrical connection between the conductor and the positive terminal of a source of DC power wherein (E) the conductor and the electrical connection are adapted to remain intact at potentials more positive than +500mV above the copper/saturated copper sulphate reference potential and (F) the conductor and the electrical connection are adapted to be disconnected from the positive terminal of the source of DC power. Construction The law

Construction

[18]The law on the construction of patent claims is well established, see Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd

[2009] EWCA Civ 1062

; [2010] R.P.C. 8, at [5]-[15].

Whether unpleaded arguments on construction can be raised at trial

[19]Later in this judgment I will say something about the consequences of a party running an argument at trial which has not been pleaded, in breach of CPR 63.20(1). Mr Davis complained, with justification, that this was exactly what Freyssinet was trying to do. He submitted that all such arguments should be disregarded.

[20]Mr Davis’s principal objection related to an argument advanced by Freysinnet on the correct construction of claim 1 – the one I consider immediately below. I have some sympathy with this. However I think arguments on the construction of a patent claim fall into a special category. The question of construction is liable to remain open up to and throughout the trial. The court is in no way limited in its conclusions on construction by submissions made by the parties and must do its best to arrive at the correct construction irrespective of either or both side’s preference, see Consafe Engineering (UK) Ltd v Emtunga UK Ltd [1999] R.P.C. 154, at [21]. In Scanvaegt International A/S v Pelcombe Limited [1998] F.S.R. 786 Aldous LJ, with whom Henry LJ and Sir Christopher Staughton agreed, pointed out that the construction of a claim need not be consistent with the evidence (at page 795-6).

[21]It would not be helpful for argument on construction as it develops during a trial to be interrupted by periodic challenges as to whether this or that proposed construction falls squarely within a pleaded case. I agree that it is possible for a party to be disadvantaged by a new argument on construction to the extent that they can claim to have been taken unawares and deprived of the opportunity to file evidence that would have been relevant to the opponent’s case now being advanced on a new construction of the claim. Parties in the IPEC would be very well advised to include all arguments in their pleading, including those on construction, to avoid any risk of having part of their case disregarded. Moreover, deliberately concealing an argument for tactical advantage is liable to be met with a severe sanction. But so far as construction is concerned, provided there is no deliberate concealment and the opposing party is unable to prove significant prejudice caused by a failure to plead the argument, parties are unlikely to meet with any resistance form the court as to the arguments they wish to advance. I emphasise the proviso. The points of construction in dispute Claim 1 – whether the second phase may constitute impressed current protection

The points of construction in dispute

[22]Ms Lane argued that the second phase, after the initial impressed current treatment, could be either a sacrificial cathodic protection phase or alternatively a further impressed current treatment. According to the correct meaning of claim 1 the former is preferred, but the latter is also covered.

[23]As indicated above, Mr Davis pointed out that this construction had not been pleaded. He submitted that if it had been the Claimants would have filed evidence to deal with it. I accept that there is an aspect of the argument on this point which is susceptible to expert evidence. In the end, however, I don’t believe that the Claimants are significantly prejudiced by any lack of evidence on their side. I will therefore consider the argument.

[24]Ms Lane relied on a passage at the foot of page 4 of the specification: “The technology is based on the use of a sacrificial anode metal in both a temporary impressed current role and preferably in a subsequent long term sacrificial anode role.” (Ms Lane’s emphasis)

[25]She also relied on claims 9 and 10:

“9. A method as claimed in any of claims 1 to 8 wherein the long term electrochemical treatment is sacrificial cathodic protection. 10. A method as claimed in any of claims 1 to 8 wherein the long term preventative treatment is impressed current cathodic prevention.”

The argument was that claim 9 must be construed to be narrower than claim 1, so claim 1 must encompass a long term electrochemical treatment which is an impressed current treatment and that this is the alternative expressly claimed in claim 10.

[26]I am not sure that in the end this point on construction is liable to take Freyssinet very far. If it were to succeed the Claimants could rely on claim 9 which, by common consent, has a scope the same as claim 1 as construed by the Claimants.

[27]The starting point in the construction of claim 1 must be the ordinary meaning of the words of the claim. There are two electrochemical treatments, one after the other (see integers (B) and (C)). It was common ground that characterising the first as ‘temporary’ (integer (B)) just means that it is shorter than the second treatment, which is ‘long term’. The first treatment is unambiguously an impressed current treatment (integer (D)).

(E) and (F):

“(E) the same anode is used in the long term electrochemical treatment and (F) the anode comprises a sacrificial metal element that undergoes sacrificial metal dissolution as its main anodic reaction …”

[28]I take this to mean that during the second, long-term phase, the main reaction of the anode is to undergo sacrificial metal dissolution. That is not obviously consistent with the second phase being an impressed current treatment. My attention was not directed to any passage in the specification which suggests that the anode will be sacrificed – indeed that its main anodic reaction will be sacrificial metal dissolution – during an impressed current treatment. Nor was this possibility advanced by Freyssinet’s expert. So I am left with the conclusion that the words of claim 1 appear to limit the second phase to being a sacrificial protection phase.

[29]On that construction claim 9 has the same scope as claim 1. It is true that this does not accord with the convention that a subordinate claim will be narrower than an antecedent claim on which it is dependent and that this convention can be used as guidance as to the construction of the antecedent claim, see Glaverbel SA v British Coal Corp. [1995] R.P.C. 255, at 281. But this is a convention, not an inflexible rule and can be ignored where the words of the antecedent claim or other matters suggest that it should be. In Swarovski-Optik KG v Leica Camera AG

[2014] EWCA Civ 637

the Court of Appeal construed claim 1 of the patent in suit to have the same scope as that of claim 3. Floyd LJ, with whom Kitchin and Sullivan LJJ agreed, said this:

“[52] This approach to the interpretation of claim 1 means that claim 3 does not add anything to claim 1. Mr Hicks deploys claim 3 to argue that claim 1 must be wider: he says that the patentee would scarcely have taken the trouble to include claim 3 if those restrictions were already present in claim 1. This is a common canon of construction of patent claims, but it must be remembered that it is not an inflexible rule of law. It is entirely possible for a draftsman to include claims of identical scope, as he unquestionably appears to have done in the present case by including claim 8. Rigid application of the canon of construction can lead to absurd results. It would do so here.”

[30]What of claim 10 in the Patent in this case? The first point to note is that “the long term preventative treatment” of claim 10 has no precise antecedent in claim 1 or any other of the preceding claims. Ms Lane assumed that it just means the same thing as “long term electrochemical treatment”. Mr Davis referred to two passages in the specification, the first on page 5:

“The life of the treatment process may also be extended by forming the sacrificial anode around an impressed current anode that may be used in a long term impressed current cathodic prevention role”

The second is on page 17:

“The use of an inert anode, such as MMC [mixed metal oxide] coated titanium wire, bar or tube, as the conductor around which the sacrificial metal is formed allows the anode to be used as an inert impressed current anode in a cathodic prevention role when the sacrificial metal around the inert anode is consumed. This extends the functional life of the anode system.”

[31]In other words, the specification contemplates a third phase, after the sacrificial anode has been consumed by the second. Beneath the sacrificial anode is another impressed current anode which comes into play, after the sacrifice is completed, “in a long term impressed current cathodic prevention role”. Mr Davis submitted that this is reflected by the words of claim 10 and is what claim 10 is all about. Although it is far from clear, I think Mr Davis is probably right.

[32]I therefore accept the narrower construction of claim 1 advanced by the Claimants.

Claim 12 – whether the discrete anode must have a particular shape

[33]Dr John suggested that the term ‘discrete’ would be interpreted by the skilled person to have a connotation of shape and that a ‘discrete anode’ would be taken to be an anode of pencil or small cylinder shape. Dr Lambert disagreed.

[34]The specification says this at the bottom of page 2 and the top of page 3:

“Discrete anodes are individually distinct compact anodes that are normally embedded in holes in the concrete or installed at locations where patch repairs to the concrete are undertaken. A good description of discrete anodes is given in (US 6217742).”

US 6217742 was not included in the trial bundle.

[35]Qualifying anodes as ‘discrete’ seems to mean that they are installed separately from one another in separate holes in the concrete or alternatively at the location of a patch repair. This is as opposed to anodes in the form of spray coatings or a mesh, referred to on page 2 of the Patent. It might be the case that at the priority date discrete anodes generally or even always had a small cylinder shape, although the latter seems unlikely because there was reference to hockey puck shaped anodes in the evidence. But there is nothing in the specification that limits the shape of a discrete anode. In my view there is no restriction on shape.

Claim 12 – whether the connection detail need be connected to the DC power supply

[36]Integer (A) of claim 12 requires that the sacrificial anode has “an impressed current anode connection detail”. Integer (D) states that this comprises “a conductor connected to the sacrificial metal element to form an electrical connection between the conductor and the positive terminal of a source of DC power”. Taken on its face this means that the conductor is connected to the sacrificial metal to form an electrical connection between itself (the conductor) and the positive terminal of the DC power source, although it would seem to make more sense if the conductor serves as an electrical connection between the sacrificial metal and the DC power source. That is how the impressed current is delivered to the anode during the first temporary phase, see page 15 and Figure 1.

[37]Ms Lane argued that the words of integer (D) are clear: the conductor must be connected to the power supply. I would agree if that integer were taken alone. But integer (F) requires that “the conductor and the electrical connection are adapted to be disconnected from the positive terminal of the source of DC power”. The precise distinction between the ‘conductor’ and the ‘electrical connection’ is not clear to me. It does not seem to matter though because plainly for the second long-term phase of operation, the positive terminal of the power supply must be disconnected from the anode. (And the negative terminal disconnected from the steel rebar. Then the rebar and the sacrificial anode must be directly connected to one another – see the last 6 lines of page 15 of the Patent. The word ‘preferable’ in that passage seems to add nothing, given the way the claims are worded).

[38]The logic of Ms Lane’s argument is that as soon as the system moves into the second, long-term phase, the anode falls outside claim 12. Yet integer (A) of claim 12 requires the anode is adapted for use in any of the methods claimed in claims 1 to 11. It was common ground that ‘adapted for use’ means ‘suitable for use’. On Ms Lane’s construction the claim 12 anode would not be suitable for use in the method of claim 1 as I have construed it, or for use in the method of claim 9 on any view. I therefore reject this narrow construction. As Mr Davis submitted, the connection detail need not be connected to the DC power supply.

The cited prior art

[39]Freyssinet relied on four items of prior art:(1) UK Patent Application No. 2 239 591 (“Fosroc 1”).

(2) PCT Application, publication no. WO 00/26439 (“Fosroc 2”).

(3) PCT Application, publication no. WO 01/71063 A1 (“Enser”).

(4) Common general knowledge. Novelty The law

Novelty

[40]The prior art must both(a) disclose subject-matter which, if performed, would necessarily result in an infringement of the patent and

(b) enable the invention in the sense that the skilled person would have been able to perform the invention, see Smithkline Beecham plc’s (Paroxetine Methanesulfonate) Patent

[2005] UKHL 59

; [2006] R.P.C. 10, at [19] to [33].

[41]A point of law which arises in the present case concerns what one of the cited items of the prior art discloses. Specifically, to what extent are alternative disclosures listed in, or otherwise derivable from, a single item of prior art each separately disclosed for the purposes of the law on novelty?

[42]In Ranbaxy UK Ltd v Warner Lambert Co

[2005] EWHC 2142 (Pat)

; [2006] F.S.R. 14, claim 1 of the patent in suit (referred to as ‘598) covered a compound called ‘atorvastatin calcium’. Pumfrey J considered the prior art (an application identified as ‘281) and the effect it had on the novelty of claim 1:

“[47] … Then, at page 44, lines 33-5 ‘598 says that the preferred isomer of this invention is the 4R, 6R-isomer of the compounds of formulas I, Ia and XII. So far as compound Ia is concerned, this is atorvastatin in its lactone form, and so far as compound XII is concerned it is the carboxylic acid, which can either be made following the explicit reaction scheme, stopping before the lactone or, as the patent says, may be produced from the lactone compound of Formula Ia by conventional hydrolysis of the lactone compound of Formula Ia (page 43 line 11). [48] On p.43, the application continues (l.15): “In the ring-opened dihydroxy acid form, compounds of the present invention react to form salts with pharmaceutically acceptable metal and amine cations formed from organic and inorganic bases. The term ‘pharmaceutically acceptable metal salt’ contemplates salts formed with the sodium, potassium, calcium, magnesium, aluminium, iron and zinc ions.” [49] It follows that the material claimed in claim 1 is an expressly specified salt (calcium) of the preferred isomer of one of the three materials explicitly specified. If one is in any doubt, it is easy to compare the final structural formula on p.12 of ‘281 against formula XII on p.40 of ‘598. They are identical, save that in ‘281 the calcium salt, and in ‘598 the acid, are shown. In fact, the synthetic route described in ‘598 actually produces a racemate. But this time, the precise enantiomer (4R,6R) is specified. This notation means the same thing as the [R-(R*,R*] … used in respect of the acid in claim 1 of ‘281. The evidence (which I have already discussed) was that resolution to obtain the enantiomers was common general knowledge. It is no answer to an allegation of anticipation that the specification gives clear and unmistakable directions to use the common general knowledge to produce a specific material. [50] I conclude that this is a clear case of anticipation of claim 1 of ‘281. ‘598 gives specific directions to make the three preferred enantiomers, one of which falls within the claim.” “In the ring-opened dihydroxy acid form, compounds of the present invention react to form salts with pharmaceutically acceptable metal and amine cations formed from organic and inorganic bases. The term ‘pharmaceutically acceptable metal salt’ contemplates salts formed with the sodium, potassium, calcium, magnesium, aluminium, iron and zinc ions.”

[43]In short, the prior art ‘598 expressly disclosed three compounds and stated that the preferred enantiomer of each of them was the 4R, 6R-isomer. There were two selection steps from that disclosure to the invention claimed in the patent in suit. First was the selection of one of the three isomers. Secondly, ‘598 listed seven pharmaceutically acceptable metal salts of the compounds, one of which was the calcium salt. The calcium salt (one of seven) of the preferred isomer of a disclosed formula (one of three) was a compound covered by claim 1 of ‘281. Pumfrey J held that claim 1 of ‘281 was anticipated. This finding was approved by the Court of Appeal: Ranbaxy UK Ltd v Warner-Lambert Co

[2006] EWCA Civ 876

; [2007] R.P.C. 4, at [36] to [41]. The judgment of Jacob LJ (with whom Neuberger and Chadwick LJJ agreed) included this: “[39] So there is clear disclosure of the salts of the acid. Mr Thorley felt constrained to accept that there was a prior disclosure at this point of the salts of the racemates, including the calcium salt. What he submitted was not specifically disclosed up to this point was the salt of the pure enantiomer. And that is true. But on the next page ‘598 points out that there are two asymmetric carbon centres and goes on to say: ‘The preferred isomer in this invention is the 4R,6R-isomer of the compounds of Formulas I, Ia and XII above’. [40] To my mind this, in context, clearly teaches by way of explicit disclosure that one of the things you can make is the single enantiomer of the acid and it is that acid which can be used make the calcium salt. In truth that way of carrying out the teaching of the earlier patent would necessarily infringe the later claim. So that claim is invalid as lacking novelty. I reject Mr Thorley’s submission that one is here straying into the impermissible territory of obviousness. Alighting on atorvastatin calcium is merely picking one of the class of compounds disclosed by ‘598. If the claim were valid it would cover one of the alternatives explicitly taught by the citation. This is not a case of any adaptation of the prior art.” ‘The preferred isomer in this invention is the 4R,6R-isomer of the compounds of Formulas I, Ia and XII above’.

[44]Although I will be referring back to it, Ms Lane did not rely on this part of Pumfrey J’s judgment. She took me instead to the following passage which dealt with claim 2 of the patent in suit. Claim 2 was to a pharmaceutical composition of the compound claimed in claim 1. The relevant prior art disclosed that “if desired … a corresponding pharmaceutically acceptable salt [of avorstatin]” could be prepared by conventional means. Pumfrey J said:

“[52] It is occasionally said that there cannot be clear and unmistakable directions to do something which is described as optional. I do not agree: to describe the thing as optional is to describe the thing. It is rather like the disclosure of something as adjustable: it necessarily also discloses something that is not adjustable – see Gillette Safety Razer Co v Anglo-American Trading Co Ltd (1913) 30 R.P.C. 465.”

[45]This part of the judgment was not the subject of any comment by the Court of Appeal. It seems to me to address a related but slightly different point. If the prior art states that something – such as the production of a particular compound using the method disclosed – is ‘optional’ (to be taken to include language such as ‘if desired…’), that something is disclosed for the purpose of assessing novelty.

[46]Mr Davis argued that Freyssinet could not rely on what he called the ‘impermissible mosaicing of options of two lists’ contained within a single piece of prior art in order to allege lack of novelty over that prior art. He submitted that the important criterion is whether the claimed invention requires the combination of elements selected from more than one list in the prior art document. If so, the invention does not lack novelty over that prior art. Mr Davis drew my attention to the section on this topic in the Guidelines for Examination in the EPO (Part G – Chapter VI-10, November 2014):

“8. Selection inventions Selection inventions deal with the selection of individual elements, sub-sets, or sub-ranges, which have not been explicitly mentioned, within a larger known set or range. (i) In determining the novelty of a selection, it has to be decided, whether the selected elements are disclosed in any individualised (concrete) form in the prior art (see T 12/81). A selection from a single list of specifically disclosed elements does not confer novelty. However, if a selection from two or more lists of a certain length has to be made in order to arrive at a specific combination of features then the resulting combination of features, not specifically disclosed in the prior art, confers novelty (the “two-list principle”).”

[47]I am not sure about the two-list principle. If, for instance, a single prior art document discloses two lists of constituents and states clearly and wholly unambiguously that any one from the first list may be combined with any one from the second list, then to my mind this is exactly the same disclosure as setting out all possible combinations seriatim in a single list.

[48]I note that the section in the Case Law of the Boards of Appeal of the European Patent Office, 7th ed. dealing with novelty and the combination of different passages from a single document (section 3.2, pp.107-108) does not refer to the two-list principle. I am bound in any event by Ranbaxy and that seems to have been a two-list case.

[49]I think that an important criterion in determining whether a combination from within a single item of prior art deprives a subsequent claim to that combination of novelty is whether there is clear and unambiguous teaching, taking the prior art as a whole, that the relevant combination can be made. Absent such a clear and unambiguous indication, the prior art will not disclose subject-matter which, if (comprehensively) performed, would necessarily result in an infringement of the patent in suit (see Smithkline Beecham’s Patent at [22]).

[50]This leaves open a question impliedly raised by Mr Davis: whether the number of alternatives disclosed in the prior art – presented either as a single list of alternatives or in the form of unambiguously signalled combinations – can be sufficiently great such that none of them is individually deemed disclosed for the purposes of the law on novelty. The answer must be consistent with the law on selection inventions; otherwise such inventions would be stymied. However and notwithstanding Mr Davis’s submissions, in my view the question does not arise in this case.

Fosroc 1

[51]Fosroc 1 discloses a means of protecting rebars by cathodic protection, specifically in the gap between a section of concrete and another solid structure, such as another concrete section. The anode is attached to a body of deformable material and these are together inserted into the gap. The anode is pressed into electrical contact with the concrete surface and this ensures the creation of the electrochemical cell which will afford cathodic protection of the steel reinforcement. The use of deformable material allows the anode to be kept proximate to the concrete surface despite movement of the concrete caused by thermal expansion and contraction. The anode may be a sacrificial anode or alternatively an impressed current anode, but there is no disclosure of it serving the two functions successively.

Novelty of claim 12 over Fosroc 1

[52]There was no allegation that claims 1 to 11 of the Patent lack novelty. Freyssinet argues that the anode of Fosroc 1 is nonetheless adapted for use in the two-phase method of claim 1 and otherwise falls within claim 12.

[53]Mr Davis submitted that three elements of claim 12 are not disclosed in Fosroc 1:(1) The combination of an anode consisting of a metal less noble than steel and an impressed current connection detail;

(2) a discrete anode (of any type); and/or

(3) a discrete anode adapted for embedment in a cavity in concrete.

Combination of anode and connector

[54]Integer (B) of claim 12 of the Patent requires that the anode comprises a sacrificial metal element less noble than steel and an impressed current anode connection detail. The parties were agreed that the latter had to be suitable for use with an impressed current (see integer (A)).

[55]Freyssinet relied on the embodiment of the Fosroc 1 invention illustrated in Figures 1 and 2, and described at page 6, line 16 to page 7, line 27. This passage discloses that the anode may be zinc (or zinc alloy), aluminium (or aluminium alloy), carbon (or carbon fibre) or activated titanium. Of these, the first two (or their alloys) are less noble than steel. The impressed current connection detail, which Fosroc 1 refers to more briefly as ‘the conductor’, may be of titanium, steel, copper or carbon fibre. Titanium or carbon fibre would be suitable for use with an impressed current and meet the requirement of integer (E) of claim 12. The question under this head is whether the skilled person reading Fosroc 1 would interpret it to include the disclosure of a zinc or aluminium anode together with a titanium or carbon fibre connector.

[56]There was evidence from the experts on each side on the combinations of anode and connector but I don’t think I am assisted by it. Nothing turns on a proper understanding of any term of art so I am in as good a position as anyone to determine what is disclosed in Fosroc 1 in this regard. A relevant passage in the Patent is the following (at page 5, lines 3-7):

“The anode may be provided with a non sacrificial conductor to maintain electrical continuity through the anode. When the anode is an impressed current anode such as a mixed metal oxide coated titanium, the non sacrificial conductor may be a titanium wire. When the anode is a sacrificial anode, such as zinc, the non sacrificial conducted may be a steel wire.”

[57]This points away from the combinations required for claim 12 of the Patent. I was in any event shown no clear and unambiguous teaching in Fosroc 1 that a zinc or aluminium anode may be used for the task in hand together with a titanium or carbon fibre connector. For that reason I find that claim 12 does not lack novelty over Fosroc 1.

Discrete anode

[58]I have found that there is no limitation on the shape of a ‘discrete anode’ and the anode disclosed in Fosroc 1 is not a mesh or a spray-painted anode. In my view it qualifies as a discrete anode.

Adapted for embedment in a cavity in concrete

[59]The anode in Fosroc 1 was not embedded in a cavity in concrete, but Dr John accepted that it could be embedded. Dr Lambert shared that view. On that evidence I find that the anode in Fosroc 1 was adapted for embedment in a cavity in concrete. Inventive Step The law

Inventive Step

[60]The structured approach to obviousness is set out in Pozzoli SpA v BDMO SA [2007] F.S.R. 37. Ms Lane also referred to the guidance of Kitchin LJ in MedImmune Ltd v Novartis Pharmaceuticals UK Ltd

[2012] EWCA Civ 1234

; [2013] R.P.C. 27, at [89] to [93].

Claim 12 and Fosroc 1

[61]As I have indicated, the difference between the invention claimed in claim 12 and Fosroc 1 is that the latter does not disclose an anode of a metal less noble than steel with a connector made either of titanium or carbon fibre. The dispute in the evidence came down to whether it was obvious to the skilled person at the priority date to use a zinc anode in a Fosroc 1 assembly with a titanium connector.

[62]Dr Lambert maintained that it was obvious to use a titanium connector with a zinc anode because unlike steel it did not corrode and titanium crimped connections were known to be convenient to use. He also said that titanium wires were widely available and would have been familiar as a product to the skilled person. Dr John accepted in his report that a titanium connector could be used and that it had an advantage in that it would not corrode, though he thought that the advantage was more theoretical than practical. He also identified certain disadvantages of using titanium, namely a “slight” disadvantage of creating an additional mixed metal couple, reduced conductivity and the possibility that titanium could corrode. He said that these in combination with the higher cost of titanium would have provided a disincentive to use a titanium connector.

[63]With regard to the technical factors, in cross-examination Dr John summarised his view by saying that a titanium connector could have some advantages and other disadvantages. This did not amount to evidence that the skilled person would not contemplate the use of a titanium connector as an obvious option, even if one were to accept the suggestion that he thought that titanium might not work as well as steel as a connector. As to the higher cost, that is a commercial, not a technical, reason for preferring steel over titanium and therefore not relevant to inventive step, see Hallen Company v Brabantia (UK) Ltd [1991] R.P.C. 195, at 213 (Slade LJ giving the judgment of the Court of Appeal).

[64]Taking account of what both experts said I find that the invention claimed in claim 12 of the Patent lacks inventive step relative to Fosroc 1.

Claim 1 and Fosroc 1

[65]Freyssinet’s argument advanced at trial rested on its proposed construction of claim 1, i.e. that the second long term phase can be cathodic protection using an impressed current. I have rejected that construction. I find that the invention in claim 1 involves an inventive step over Fosroc 1.

Fosroc 2

[66]Fosroc 2 is a PCT Application with the title ‘Connector for use in cathodic protection and method of use’. It discloses an assembly for the cathodic protection of a steel rebar with an anode of a metal less noble than steel and a connector made of ductile material capable of being wound around the rebar. The claimed advantage is that the winding provides an easier and more reliable means of connecting the rebar to the anode. The assembly provides only galvanic protection. The specification includes this:

“The anode is preferably zinc but aluminium, cadmium or magnesium may be used. … The elongate connector is conveniently in the form of a wire, although other elongate forms may be used. The wire may conveniently be of steel, preferably mild steel. Preferably the wire is as noble or more noble than the steel of the reinforcement.”

Preferably the wire is as noble or more noble than the steel of the reinforcement.”

[67]The anode may be inserted into a hole in a concrete structure and a block of mortar may be cast around the anode. The assembly is marketed by Fosroc under the brand name ‘Vector Galvashield XP’ and is apparently well known to those in the art.

Claim 12 and Fosroc 2

[68]Mr Davis and Ms Lane both submitted that the attack of lack of inventive step in relation to claim 12 and Fosroc 2 rested on whether it was obvious to use a titanium connector in the Fosroc 2 assembly. Ms Lane pointed out that there was an express indication in Fosroc 2 that the connector could be more noble than steel and the obvious choice out of a few candidate metals was titanium. Mr Davis argued that while titanium was commonly used for impressed current systems, there was not one single instance of its use in a sacrificial anode system and that the reference in Fosroc 2 to a wire ‘more noble than the steel of the reinforcement’ would be taken to mean a grade of steel more noble than that used for the rebar.

[69]I have found above that the use of a titanium connector was an alternative obvious to the skilled person in the context of Fosroc 1. This was a system that either provided impressed current cathodic protection or alternatively galvanic protection. In Fosroc 2 the anode functions solely as a sacrificial anode. The issue therefore is whether this difference would have deterred the skilled person from using a titanium connector in March 2005.

[70]In his first witness statement Dr Lambert stated that the most obvious choice for a metal more noble than steel to make a connector was titanium. Its single disadvantage was that it was less malleable than steel, but this could be remedied by using a cable tie. In cross-examination Dr Lambert had difficulty with the idea of any sort of ‘replacement’ for a steel connector in the Fosroc 2 system on the ground that purchasers of the Vector Galvashield XP anode would take what they were given. I think this foundered on a misconception, at this point anyway, as to who the skilled person was: it was the supplier of such anodes, not the customer. At an earlier stage in the cross-examination it may be that Dr Lambert had the skilled person more accurately in mind when he said that mild steel is ideal, the material of preference for the XP anode because of its malleability, but the skilled person would consider using a connector other than steel and rejected the idea of replacing steel wire with a more noble grade of steel. Dr John accepted in cross-examination that titanium was one of a small number of possible options more noble than steel to use for the connector, bringing with it the mixture of advantages and disadvantages he had referred to earlier.

[71]The use of a titanium connector with a sacrificial anode was not conventional in March 2005 – it seems that it had never been used. But the express direction given in Fosroc 2 to use a connector of a metal more noble than steel would have brought titanium to the mind of the skilled person and despite his view that there would be disadvantages to titanium (as well as advantages), he would have regarded the use of a titanium connector as an obvious way to go in compliance with the direction. In my view claim 12 lacks inventive step over Fosroc 2.

Claim 1 and Fosroc 2

[72]Freyssinet’s argument in relation to claim 1 and Fosroc 2 was the same as advanced in respect of Fosroc 1. The invention of claim 1 is not obvious over Fosroc 2.

Enser

[73]Enser is another PCT Application. It discloses an impressed current cathodic protection system suitable for a concrete structure in an open air location, particularly bridge piles. It has a battery which can be mounted on the structure and an anode within a cement jacket which is positioned near the rebar to be protected. The anode is in the form of a mesh, preferably made of titanium with a catalytic coating, but the specification states (at page 11) that other suitable materials, including zinc, may be used.

Claim 12 and Enser

[74]Freyssinet argued that the difference between the anode disclosed in Enser and the claim 12 anode was that the Enser anode is not a discrete anode. Dr Lambert said in his first report that the skilled person would have been aware of discrete anodes and that the battery system used in Enser could equally well be used to power a series of discrete anodes connected by titanium wires.

[75]This argument was not part of Freyssinet’s pleaded case and was therefore not addressed by the Claimants’ expert, Dr John. In this court the arguments to be advanced at trial must be pleaded (CPR 63.20(1)). It is one of the features of procedure in this court that the parties set out their case, including their arguments, in the pleadings. This should not be done in full detail but sufficiently so that the opposing party is clear about the arguments to be advanced at trial for which it must prepare. This promotes both efficiency in drafting evidence in final form – no flurries of reply evidence to deal with points newly raised – and also the likelihood of well targeted offers being made and/or settlement being reached. In addition, breach of this rule risks providing a back door route to evading the effect of CPR 63.23(2) which, for similar reasons, is designed to require parties to finalise their approach to the case by the time of the CMC and by extension to limit the possibility of indulging in late amendments to a case, having only then given the issues fully considered thought. The rules provide for no express sanction for breach of CPR 63.20(1) but I take the view that unless the opposing party is in no way prejudiced or exceptional circumstances apply, the usual consequence will be that unpleaded arguments are disregarded at trial. (This without prejudice to what I have said above in relation to arguments on the construction of a claim.) I therefore take this argument from Freyssinet no further.

Claim 1 and Enser

[76]Freyssinet’s argument at trial in relation to claim 1 and Enser was that resorting to galvanic protection would be an obvious thing to do should the battery in the Enser system fail. This would then constitute a second galvanic phase. This view of what the skilled person would do if there were a battery failure was advanced by Dr Lambert for the first time in his first report. It was not pleaded, it was certainly susceptible of expert evidence and I therefore disregard it.

[77]Freyssinet’s other argument under this head assumed that the skilled person would substitute a conventional DC power supply for the battery referred to in Enser and also rested on its preferred construction of claim 1, i.e. that the second phase could provide protection by means of a reduced impressed current. This was not pleaded and I have rejected that construction. Freyssinet’s pleaded case was either not pursued or maintained only faintly. It required that the skilled person would have found the idea of a hybrid system obvious despite the absence of any reference to such a system in Enser, which I reject. For all those reasons I find that claim 1 is not obvious over Enser.

Common general knowledge

[78]Freyssinet’s case on lack of inventive step over common general knowledge alone was set out, in pleaded form, in a letter from Freyssinet’s patent attorneys dated 26 November 2014. At the CMC on 11 November 2014 I gave Freyssinet permission to do this. Of the two claims I have to consider, the particulars in the letter related only to claim 12.

[79]The argument boiled down to whether it was obvious to adapt two models of anode available at the priority date, the Galvashield XP and the Galvashield CC anodes, to use titanium as the material for the connector. I have found that Galvashield CC anodes did not form part of the prior art and have no reason to think that Galvashield XP did. Neither seems to have been referred to expressly in the letter of 26 November 2014. Claim 12 does not lack inventive step over the common general knowledge.

Infringement

[80]The Claimants’ case on infringement relies on the following Freyssinet documents:(1) A brochure entitled “Foreva Solutions, Controlling Corrosion of Concrete Reinforcements” dated May 2010 (“the Foreva Solutions Brochure”).

(2) A data sheet headed “Forever GP Guard+”, dated April 2010, which gives details of that system (“the GP Guard+ Data Sheet”).

(3) A page from Freyssinet’s website at www.freyssinet.co.uk, dated September 2010, advertising its Galvastar 82 anode (“the Galvastar 82 Webpage”).

(4) A data sheet providing information about the Galvastar 82 anode dated January 2013 (“the Galvastar 82 Data Sheet”). The Claimants alleged that offers were made by means of each of these documents. The third document added nothing of significance to the fourth and so I need say nothing about it. Direct infringement – the law

[81]This is a case in which infringement does not turn only on construction. I must therefore address some aspects of the law. I begin with section 60(1) of the Patents Act 1977 (“the Act”): 60. (1) Subject to the provisions of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the United Kingdom in relation to the invention without the consent of the proprietor of the patent, that is to say - (a) where the invention is a product, he makes, disposes of, offers to dispose of, uses or imports the product or keeps it whether for disposal or otherwise; (b) where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the patent; …

[82]The point of law concerns what is meant by an offer to dispose of a product within the meaning of s.60(1)(a) and offering a process or use within the meaning of s.60(1)(b). The first of these arose in Gerber Garment Technology Inc v Lectra Systems Ltd [1995] R.P.C. 383, a judgment following an inquiry as to damages. The award of the judge was varied on appeal, but not in relation to this point. Jacob J said this at page 411:

“11. Does advertisement or pre-contractual negotiation amount to infringement? This dispute of law arises in two contexts. First, in the United Kingdom Lectra's first actual sale was in 1987, their first advertisement in 1985. Lectra say that any price depression attributed to their early advertising must be discounted because that advertising is not an infringement. A threat to do so it may have been, but one cannot have damages for that, even though a quia timet injunction might have been possible. Damages can only be awarded in respect of infringements. The second context relates to the period near expiry. Lectra were in negotiation with one customer pre-expiry but the contract was only concluded after. Can such negotiations constitute an infringement in themselves? The question turns on section 60(1) of the Patents Act 1977: [Section 60(1)(a) set out] Does advertisement or any negotiation without a firm offer, amount to an “offer to dispose of”

. Miss Heilbron suggests not, relying on authorities in English law distinguishing between an “offer” and an “invitation to treat”. An offer, in contract, is an indication of terms of a contract by which the offeror will consider himself bound if the terms are accepted. Anything short of that, in pre-contractual negotiations or an advertisement, will not do. Most advertisements do not constitute that kind of an offer (contrast the classic case of Carlill v. Carbolic Smoke Ball Co. [1893] 1 Q.B. 256). The advertisements for the E95.3 were certainly not of the Carbolic kind. Mr. Floyd suggests that “offer to dispose of” should not be construed so restrictively, that the matter should be looked at as one of commercial substance. “Was the product being made available to the market?” was his way of looking at it. I have no hesitation in rejecting Miss Heilbron's legalistic argument. Section 60 is not intended to reflect the English law of contract. It is derived from Article 25 of the Community Patent Convention . (“CPC”) By section 130(7) of the Act, section 60 is one of those provisions:

“so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the … CPC.”

Article 25 of the CPC provides:

“A Community patent shall confer on its proprietor the right to prevent all third parties not having his consent: (a) from making, offering, putting on the market, or using a product which is the subject-matter of the patent, or importing or stocking the product for these purposes.”

I think the approach to construction of section 60 (and the CPC) should be purposive. A party who approaches potential customers individually or by advertisement saying he is willing to supply a machine, terms to be agreed, is offering it or putting it on the market. If that is to happen during the life of the patent he infringes. He is disturbing the patentee's monopoly which he ought not to do. So I think the early advertisements were infringements, not mere threats.” The question turns on section 60(1) of the Patents Act 1977: [Section 60(1)(a) set out] “so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the … CPC.” “A Community patent shall confer on its proprietor the right to prevent all third parties not having his consent: (a) from making, offering, putting on the market, or using a product which is the subject-matter of the patent, or importing or stocking the product for these purposes.”

[Section 60(1)(a) set out]

[83]This was considered by His Honour

Judge Birss QC in Musion Systems Ltd v Activ8-3D Ltd [2011] EWPCC 012:

“[48] A particular point which arises in this case and was not before Jacob J is a situation in which a defendant shows a customer one machine (machine A) for demonstrations but contends that a somewhat different machine (B) is what would be supplied to the customer if they are interested. In my judgment although this might raise a question of fact, it does not raise a point of principle. I must decide on the facts what was actually offered – A or B, both or perhaps the offer was so vague as to not amount to an offer of anything specific at all. [49] In my judgment the law does not require, for s60(1)(a) of the 1977 Act to be satisfied, that the person to whom the offer is made necessarily knows anything about how the product works or is configured. Offers to supply products are routinely made in business, without condescending to a detailed exposition of how a product works or is constructed. So long as a particular design is what is on offer, then in my judgment a product to that design is being offered. The customer does not need to know.”

Direct infringement –

This case

[84]There was no evidence of any disposal by Freyssinet of an infringing anode in the United Kingdom. By the time of trial the issues were(i) whether there has been an offer to dispose of an anode falling with claim 12 of the Patent in this country and

(ii) whether Freyssinet offered the method of claim 1 for use in the UK when Freyssinet knew, or it was obvious to a reasonable person in the circumstances, that the use of the method in the UK without the Claimants’ consent would be an infringement of the Patent.

The GP Guard+ Data Sheet

[85]The most significant allegation of direct infringement was that in 2013 Freyssinet sent to the First Claimant (“Dr Glass”) a copy of the Foreva GP Guard+ Data Sheet. It was not in dispute that this data sheet sets out a galvanic protection system falling within claim 1 of the Patent, employing an anode which falls within claim 12. The issue between the parties was whether sending out this data sheet constituted an offer within the meaning of s.60(1)(a) and (b). So far as s.60(1)(b) is concerned, Freyssinet accepted that if the supply of the data sheet constituted an offer of the claim 1 method for use in the UK, the rest of the subsection was satisfied – in other words on that assumption Freyssinet knew, or it was obvious to a reasonable person in the circumstances, that the use of the method in the UK without the Claimants’ consent would be an infringement of the Patent.

The evidence

[86]Between November 2012 and October 2013 Gillian Pollard worked as Marketing Administrator at Freyssinet’s UK office in Telford. One of her jobs was to deal with email inquiries. Often these involved requests for promotional literature which Ms Pollard would then send out in hard or soft copy.

[87]On 20 March 2013 Dr Glass sent an email to Freyssinet’s UK email address asking for a copy of two of its brochures. On the same day Ms Pollard responded, sending the requested brochures, one of which was the Foreva Solutions Brochure. Two days later Dr Glass sent a follow-up email asking whether there was a data sheet for the Foreva Galvastar 82 discrete anode system. Ms Pollard took two weeks to respond. In her unchallenged evidence she said that the delay was probably caused by her being unable to find the data sheet requested on the company’s IT system. On 5 April 2013 she did respond, with an apology for the delay, stating “Please see attached the only two data sheets regarding anode systems. Let me know if these are any use, if not I will ask our expert on this subject to call you.” Ms Pollard identified herself in the email as ‘Gillian Pollard, Marketing Administrator’. The data sheets attached were the GP Guard+ Data Sheet and another one.

[88]Ms Pollard said that she was conscious that she was not sending Dr Glass what he had asked for but was doing her best by sending what she thought were the most relevant documents she could find. Some time later in June she spoke to her line manager, Graham Stanford, about this. Mr Stanford was sufficiently concerned about what Ms Pollard had sent out to take the trouble to draft an email to be sent to Dr Glass. Ms Pollard duly sent the email to Dr Glass on 21 June 2013 which said that the wrong brochures had been sent to him in error.

[89]The explanation of the origin of the GP Guard+ Data Sheet came from Alain Huynh-Tong who is the Marketing Director of Freyssinet International Cie (“FIC”), a sister company of Freyssinet. He said that in 2006 FIC became aware of the Claimants’ company, Concrete Preservation Technologies Ltd (“CPT”). In 2007 there were negotiations between the two companies regarding the possibility that FIC could distribute CPT’s hybrid cathodic protection system (of the sort protected by the Patent) under Freyssinet’s name and trade marks. FIC was optimistic that an agreement could be concluded and produced draft documents that would be used in the marketing of the hybrid system under Freyssinet’s marks. One of these was the GP Guard+ Data Sheet. Mr Huynh-Tong emphasised that it was a draft and pointed out that it contains obvious errors and a mixture of French and English.

[90]According to Mr Huynh-Tong, the talks between FIC and CPT never formally broke down, just came to an end without agreement. He said that technical people at FIC, though not he, became sceptical about the hybrid system and developed instead Freyssinet’s own system which was purely galvanic, with an anode system given the trade name ‘Foreva Galvastar 82’. Confusingly, it is also sometimes marketed as the ‘Foreva GP Guard’ anode.

[91]In short, Mr Huynh-Tong’s evidence was that so far as cathodic protection systems are concerned, Freyssinet has only ever marketed and sold the Galvastar 82 anode. The GP Guard+ Data Sheet was a draft prepared for a project with the Claimants that was abandoned, relating to an anode that has never been put on the market by Freyssinet.

[92]Mr Stanford’s evidence was that Freyssinet had never offered a hybrid anode system and nor, so far as he was aware, had any company in the Freyssinet Group.

[93]Dr Glass said that in 2012 he became interested in Freyssinet’s Galvastar 82 anode because of information about it on Freyssinet’s website. In 2013 there followed the email exchanges with Ms Pollard. Dr Glass stated that when he received the GP Guard+ Data Sheet he recognised it as an English translation of part of a document he had seen before. This was a document in French headed ‘Foreva GP Guard+’ dated April 2007 which does indeed seem to be an earlier French version of the GP Guard+ Data Sheet.

Analysis

[94]The short summary of the relevant law in Gerber was:

“A party who approaches potential customers individually or by advertisement saying he is willing to supply a machine, terms to be agreed, is offering it or putting it on the market.”

Jacob J rejected the approach of the defendants’ counsel, using the English law on contractual offers as a guide, but did not expressly accept the submission of the plaintiff’s counsel that the matter should be looked at as one of commercial substance. Jacob J undoubtedly did not intend his words above to be treated as if they were statutory and although the sentence I have quoted implies that the key criterion is the behaviour of the alleged offeror – did he tell the putative offeree that he was willing to supply the product (irrespective of whether terms of sale had been settled)? – I think Jacob J had in mind a more general approach. All relevant factors are to be taken into account to the end of assessing whether there was an offer as a matter of commercial substance. Such factors will certainly include the perception of the putative offeree.

[95]Freyssinet cannot have intended to offer a hybrid system because it had none to offer. I do not doubt that had an appropriate employee above Ms Pollard’s pay grade been asked by Dr Glass about the GP Guard+ Data Sheet, he or she would have said that there was no such product marketed by Freyssinet. Mr Davis submitted that the 2007 French version showed that a hybrid product had been on offer outside the UK and that this was relevant to how the sending of the GP Guard+ Data Sheet to Dr Glass should be interpreted. I do not accept that. The French version is consistent with Mr Huynh-Tong’s evidence that FIC had ambitions to market the Claimant’s hybrid system in 2007. There was no evidence that any part of the Freyssinet Group has ever sold a hybrid system and Mr Stanford said he had no knowledge of any such sale. He was anyway clear that Freyssinet itself (the UK company) had never marketed a hybrid system. It is not apparent to me why, in 2010, someone in the Group decided to translate the 2007 data sheet into English. However I accept that the GP Guard+ Data Sheet was a draft. It was apparently kept on the Freyssinet IT system and retrieved by Ms Pollard in an effort to provide a response to Dr Glass’s request which was as helpful as possible. Freyssinet never intended that it should constitute any kind of offer to anyone.

[96]Dr Glass does not appear to have interpreted the GP Guard+ Data Sheet as an offer to supply a hybrid system to him or his company. I can see why not. Dr Glass had asked for information. He had not presented himself as a potential purchaser, just someone interested in becoming better informed. Having provided brochures to him earlier, Ms Pollard indicated in her email of 5 April 2013, attaching the GP Guard+ Data Sheet, that she was sending what might be of use but would have to refer to an expert if her attachments were not what Dr Glass wanted.

[97]I do not believe that the exchanges between Ms Pollard and Dr Glass had the flavour of a negotiation about the supply of anything (other than brochures or data sheets). So no part of that correspondence could have been an offer to dispose of any product to Dr Glass or the offer of any system for Dr Glass’s use. Specifically, the email of 5 April 2013 and the GP+ Guard Data Sheet attached to it together constituted just the provision of information which Ms Pollard hoped that Dr Glass might find useful, nothing more. In my view both sides almost certainly understood this, at the time anyway.

[98]I therefore find that neither claim 1 nor claim 12, had it been valid, was infringed by the supply of the GP Guard+ Data Sheet. The Galvastar 82 Data Sheet Claim 12

The Galvastar 82 Data Sheet

[99]Freyssinet acknowledged that if I accepted the Claimants’ construction of claim 12, as I have done, i.e. that no connection to a power supply is required, the offer of the Galvastar 82 system by Freyssinet would infringe claim 12 if it were valid. Claim 1 100. It is not in dispute that Freyssinet has offered its Galvastar 82 system for use in the United Kingdom by distribution of the Galvastar 82 Data Sheet and indeed by other means. Nor is it disputed that the system could in practice be used for the hybrid method within claim 1 of the Patent. What matters is whether Freysinnet actually offered it for use in the UK as a hybrid system. This is not self-evident: the Galvastar 82 system is described in the Galvastar 82 Data Sheet as a ‘Galvanic protection solution’. In line with my discussion above with regard to the GP Guard+ Data Sheet the question is whether, notwithstanding this, there was an offer of a hybrid system when viewed as a matter of commercial substance.

Claim 1

[100]Mr Davis argued that marketing the Galvastar 82 system did amount to offering a hybrid system for four reasons:(1) The anode has a titanium connector and that implies hybrid use.

(2) The Galvastar 82 Data Sheet advises a check to ensure that no short circuits are present; this is consistent only with use of an impressed current part of the time.

(3) The Galvastar 82 is a copy of the Claimants’ ‘DuoGuard’ hybrid product, which was the subject of the negotiations referred to by Mr Huynh-Tong.

(4) The Galvastar 82 was supplied in Australia for hybrid use.

[101]It was in the end common ground that titanium connectors could be used with galvanic anodes, so they do imply hybrid use. The first reason falls away. What the Galvastar 82 Data Sheet was copied from is irrelevant, as is any use made of the Galvastar 82 system outside the UK. The third and fourth reasons also have no substance.

[102]I think the only potential support for the Claimants’ case is the indication in the Data Sheet relied on regarding short circuits:

“Hold point to check the potential difference between anode and reinforcement to ensure that no short-circuits are present.”

The experts disagreed in their reports as to whether an instruction to avoid short-circuits implied protection by impressed current for at least part of the time. But in cross-examination Dr John, Freyssinet’s expert, admitted that the avoidance of short circuits was something to be avoided wherever possible, including in a sacrificial system. He said that the suggestion that a galvanic system should be monitored for short circuits was not surprising, though he would not expect this to be a ‘hold point’.

[103]I find that the Galvastar 82 system was not offered in the UK for hybrid use and so claim 1 was not infringed by any such offer.

The Foreva Solutions brochure

[104]This brochure published by Freyssinet offers a variety of means to control the corrosion of rebars. There is a table on page 3 which sets out three phases of corrosion: incubation, initiation and propagation, and three solutions offered of which the third is ‘electrochemical protection of the reinforcements’. That last solution is itself offered in three forms, each of which is identified by one of Freyssinet’s trade marks. They are, exactly as set out in the table:

“Foreva®Inhib”, “Foreva®GP (galvanic current)” and “Foreva®CP (impressed current)”

. Foreva Inhib, as explained on page 5, involves the application of a corrosion inhibitor which diffuses into the pores of the concrete and forms a shield around the rebar, preventing anodic corrosion on the surface of the steel. In other words, it is not a cathodic protection system of any type considered in these proceedings.

[105]That leaves the other two. The reader is expressly told that one is a galvanic system and the other an impressed current system. I was not shown anything else in the brochure which expressly contradicts that offer of one or other of those systems, or which says anything about a hybrid system.

[106]However Mr Davis drew my attention to page 6. That page is headed “Phase 3, Preventing the Progression of Corrosion”. There are two sub-headings, “By Glavanic Protection” and “By Cathodic Protection”. This reinforces the impression that just the two alternatives are on offer. The point which Mr Davis made, though, is that the second anode presented under the “By Galvanic Protection” heading is identified as the “Foreva® GP Guard+”. The sentence in which that trade mark appears reads “The Foreva® GP Guard+ solution is a galvanic protection system…”, but Mr Davis pointed out that the GP Guard+ Data Sheet reveals that in fact this is a hybrid system. So, he argued, notwithstanding what the brochure said, in fact this was an offer of a system within claim 1 of the Patent and an anode within claim 12.

[107]I am not at all convinced by the argument. I must come to a realistic view as to what was being offered on page 6. Certainly there was no express offer of a hybrid system and nothing in the brochure to make the reader think that Foreva GP Guard+ is a hybrid system. On the contrary, the reader is expressly told it is a galvanic system. In fact the evidence shows that Freyssinet had no hybrid system to offer. So if a potential purchaser, having read page 6, inquired about the Foreva GP Guard+ system on that page, he or she would have been offered a galvanic protection system. The potential purchaser would not have had access to the GP Guard+ Data Sheet and so would not even have been led to ask about the rogue ‘+’ in the trade name. I find there was no offer of a hybrid system in the Foreva Solutions Brochure. There was a typo on page 6. In

Direct infringement – the law

[108]Section 60(2) of the 1977 Act provides as follows: (2) Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom.

[109]Section 60(2) was considered in detail by the Court of Appeal in Grimme Landmaschinenfabrik GmbH & Co KG v Scott

[2010] EWCA Civ 1110

; [2011] F.S.R. 7. The main points from that judgment were summarised by the Court of Appeal shortly afterwards in KCI Licensing Inc v Smith & Nephew plc

[2010] EWCA Civ 1260

; [2011] F.S.R. 8, insofar as the judgment in Grimme was relevant to the facts of KCI Licensing. Save for one additional point the summary in KCI Licensing is also sufficient in this case. Jacob LJ, who gave the judgment of the Court, said this:

“[53] After the decision of the judge and shortly before the hearing of this appeal, this Court gave judgment in Grimme Maschinenfabrik GmbH & Co KG v Scott (t/a Scotts Potato Machinery) [2010] EWCA Civ 1110; [2011] F.S.R. 7 and clarified the scope and proper interpretation of s.60(2), including the requirement of knowledge. So far as relevant to this appeal, it held: i) The required intention is to put the invention into effect. The question is what the supplier knows or ought to know about the intention of the person who is in a position to put the invention into effect – the person at the end of the supply chain, [108]. ii) It is enough if the supplier knows (or it is obvious to a reasonable person in the circumstances) that some ultimate users will intend to use or adapt the “means” so as to infringe, [107(i)] and [114]. iii) There is no requirement that the intention of the individual ultimate user must be known to the defendant at the moment of the alleged infringement, [124]. iv) Whilst it is the intention of the ultimate user which matters, a future intention of a future ultimate user is enough if that is what one would expect in all the circumstances, [125]. v) The knowledge and intention requirements are satisfied if, at the time of supply or offer to supply, the supplier knows, or it obvious to a reasonable person in the circumstances, that ultimate users will intend to put the invention into effect. This has to be proved on the usual standard of the balance of probabilities. It is not enough merely that the means are suitable for putting the invention into effect (for that is a separate requirement), but it is likely to be the case where the supplier proposes or recommends or even indicates the possibility of such use in his promotional material, [131].”

I would add to this that the supply or offer to supply must have happened in the United Kingdom. Likewise the relevant suitability is for putting the invention into effect in the UK and the relevant intention is to put the invention into effect in the UK. In

Direct infringement – this case

[110]The argument on indirect infringement adds nothing to the Claimants’ case in relation to claim 12. I therefore need only address claim 1. The Claimants argued that the supply by Freyssinet of its Galvastar 82 galvanic anode constituted an infringement of claim 1 pursuant to s.60(2).

[111]The issue is whether Freyssinet knew, or it was obvious to a reasonable person in the circumstances, that at least some ultimate users of the Galvastar 82 anode would intend to use it in a hybrid system. Freyssinet need not have known about this intention on the part of the ultimate user. That intention is something to be assessed on the balance of probabilities having considered all the relevant circumstances.

[112]Mr Davis supported his inference of an intention on the part of purchasers of the Galvastar 82 anode to use it in a hybrid system by the following:(1) Evidence referred to that the Galvastar 82 anode was put into effect in a hybrid system by a Freyssinet company in Australia.

(2) FIC (one of the French Freyssinet companies) liked the Claimants’ hybrid system and wanted to copy it.

(3) The use of the Galvastar 82 anode would have been compliant with relevant standards.

(4) There was no good reason for Freyssinet to use titanium connectors unless there was an intention on Freyssinet’s part to supply the Galvastar 82 anode for use in a hybrid system.

[113]In Sydney there is a 220 metre tall octagonal building known as the ‘MLC Tower’. In 2013 the tower underwent extensive refurbishment, including work done by Freyssinet Australia Pty Ltd (“Freyssinet Australia”) to protect the concrete from corrosion using a Galvastar system. Mr Davis submitted that this must have been a hybrid system because(i) a letter dated 26 February 2012 from one of the owners of the building, the GPT Group, indicated an intention to use ‘Hybrid Cathodic Protection’ and

(ii) emails sent in late August 2012 from the Managing Director of Freyssinet Australia to two unidentified individuals indicating Freyssinet Australia’s intention, at that point anyway, to use something called ‘Foreva hybrid CP’.

[114]I am not persuaded by this first point. It was not established that the anode ultimately used on the MLC Tower was the same as the Galvastar 82 anode offered in this country by Freyssinet. Even if it was, Freyssinet Australia may have been at liberty to use the anode in Australia for a hybrid system because there was no patent protection. I can infer nothing from this about the intention of customers of Freyssinet in the UK.

[115]As to the second point, Mr Huynh-Tong explained that FIC liked the Claimants’ hybrid system well enough to enter into negotiations to take a licence. It does not follow that Freyssinet in the UK decided to market the Galvastar 82 anode for hybrid use. Such a suggestion is not credible without evidence that the anode was indeed marketed as such. There was none.

[116]Regarding the third point, assuming that use of the Galvastar 82 anode in a hybrid system would comply with the regulations, this of itself proves nothing about its actual use.

[117]As to the last point, I have already indicated it was common ground that titanium connectors could be used with galvanic anodes.

[118]There was one further matter in the evidence. Dr John accepted in cross-examination that any installation of a Freyssinet system would be done in accordance with Freyssinet’s installation instructions to ensure both that it functioned properly and that the warranty remained in force. On this evidence it is fair to assume that all ultimate users of the Galvastar 82 anode intended to use it in accordance with Freyssinet’s instructions. There was no suggestion that the instructions permitted any use of the anode other than as advertised: as a galvanic anode only.

[119]I find that the Claimants’ claim of indirect infringement of claim 1 fails.

Conclusion

[120]Claim 1 of the Patent is valid but not infringed. Claim 12 is invalid; it would have been infringed had it been valid.

Cited in 1 later judgment

Bapco Closures Research Ltd & Anor v Selpac Europe Ltd 2016