Red Spider Technology v Omega Completions Technology [2010] EWHC 59 (Pat)

Case No HC08C01035[2010] EWHC 59 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Venue Royal Courts of Justice, Strand, London, WC2A 2LLDate 21/01/2010
Before
MR JUSTICE MANN
Between
RED SPIDER TECHNOLOGYClaimantOMEGA COMPLETIONS TECHNOLOGYDefendant
MR. D. CAMPBELL (instructed by Mishcon de Reya) for Claimant.MR. M. HICKS (instructed by James Love Legal) for Defendant.Hearing Hearing dates: 3 rd, 4 th, 5 th, 10 th, 11 th, 12 th, 17 th& 20 th November 2009
JudgmentMr Justice Mann :CHAPTER I – INTRODUCTION
[1]This is a patent action in which the claimant (“Red Spider”) sues the defendant (“Omega”) for infringement of its UK patent (number 2424438B) relating to a water injection valve for use in oil field exploitation. Omega denies infringement and claims that the patent is invalid for insufficiency, want of novelty and obviousness. There are also amendment and priority points. In addition Red Spider claim design right in a valve that it makes itself, and claims that Omega has infringed that right.

The patent in its industrial context; Red Spider’s valve and Omega’s valve

[2]It will be useful at the outset to set out the patent and the two valves which have figured in this case in their industrial context. It will also be useful to introduce some basic terminology. The explanation of the industrial context which follows is inevitably extremely simplified, but it will suffice for the purpose of this judgment.[3]Oil in a subterranean layer is generally exploited by drilling one or more holes down to it and exploiting it by pumping it up or having it rise as a result of pressure. The holes are of the order of 4 to 7 inches wide. Once drilled, they are lined with a series of linked pipes which prevent the hole from collapsing and which form a secure channel from the surface down to the oil layer. These lining pipes are called production tubing.[4]From time to time it is necessary to drop various pieces of equipment down the tube, both for the purpose of drilling it in the first place and for a wide range of testing, maintenance and other functions. Tools dropped down the tubing can be dropped down either on a wire (“wireline”) or on a work string. A work string is a series of connected solid piping sections which fastens to the end of the tool in question and which forces it up or down the production tubing and holds it in place when required. That is a generalised description of what a work string does. The expression “work string” is in fact an expression used in the patent in suit and in relation to which a serious question of construction arises. In describing it in the way that I have I do not in any way tend to pre-judge the construction question which arises.[5]Some wells (particularly later in their lives) require some additional pressure in order to revive or maintain the flow of oil. This can be achieved in a number of ways, one of them being the injection of large quantities of water down a pre-drilled hole of the diameter referred to above. Towards the bottom of the hole a valve has to be positioned to resist back pressure from the subterranean layer and to allow the passage of the pumped water from above. The valve which is the subject of the patent operates in this context, and Red Spider and Omega both make and sell valves which perform this function. The valve is fixed into the production tubing by a “packer” or “lock”. Quantities of water in the order of 15,000 to 50,000 barrels per day might be pumped down for this purpose.[6]Valves are used for a number of other different purposes in an oil well. Such valves can, for present purposes, be divided into two types – flapper valves and poppet valves. In the first the blocking mechanism (as its name suggests) is a hinged flap. The flap is kept in place by a spring of a chosen strength. When it is desired to open the valve, pressure is applied so as to overcome the spring and the flap opens in order to allow the passage of whatever it is that the operator wishes to pass. The pressure causes the flap to move away from its seat in order to achieve that. A poppet valve has a different sealing mechanism. The sealing is achieved by a poppet which is a “pointed” (or sometimes flat or even concave) feature on the end of a spring. The spring forces the poppet up against a seat in order to make a seal. When pressure is applied to the top of the poppet which is sufficient to overcome the force of the spring, the poppet moves down and away from the seat, allowing the appropriate material to pass. This can be illustrated from the patent drawings which are contained in Appendix 2 to this judgment. Figures 1A and 1B are cutaway drawings of a valve said to be in accordance with the invention. There are problems with these drawings to which I will come, but for present purposes they illustrate the poppet. The poppet is the feature shown with the numbers 104 and 84. The valve is shown in the orientation in which it would be in the well (the pointed end points down). Figure 1B shows the poppet in its “at rest” position, forced upwards by the spring which can be seen below it. In this position it forms a seal at about the point shown with the number 112. When pressure is applied from above, it is moved down into the position shown in Figure 1(a), allowing water to pass over it and out through ports in the side of the valve, in the manner which will appear below. When the pressure is removed, the spring forces the poppet back up into its seal. In its sealed position the valve is capable of resisting pressure from below. That is the essence of how a poppet operates. For the sake of completeness, I should add that sometimes a ball is used in place of a poppet thus configured, but that does not matter for the purposes of this judgment.[7]Red Spider and Omega both make water injection valves, used for the purposes described above. The Red Spider valve is shown in Appendix 3; the Omega valve is shown in Appendix 4; and they are shown side by side in the photograph and drawing in Appendix 5. To give some idea of scale, the Red Spider valve is about 25.5 inches long and the Omega valve is 44.25 inches long. They go down the well pointed end down. The valves are shown with the poppet making a seal; the poppet cannot be seen but it is behind the top housing. Below that top housing there are cutaway ports in the side of the valve. When pressure is applied from above, the poppet is forced down and it clears the ports which can be seen on the side of each valve. The water then exits through those ports. The Omega valve is much longer than the Red Spider valve. That is because the Omega valve incorporates a hydraulic damping mechanism in the longer extension at the bottom of the valve.[8]Much of the present case turned on what has been called the “cutaway” at the bottom end of the ports on the Red Spider valve. I have indicated the cutaway with a circle on the picture in Appendix 3. This cutaway is in fact said to be the invention in the patent in suit. It is the result of two features of the valve. First, there is a reduction in the diameter of the valve immediately below the ports. Second, the ports, instead of being windows in the side of the valve, are extended by milling through the slope which gives rise to the reduction in diameter so that there is a “flat” at the end of the ports and an increased area through which water can flow. A similar feature, though constructed in a different way, appears at the comparable point on the Omega valve – again, I have ringed it on Appendix 4. The effect of the cutaway on the Red Spider valve, in terms of areas through which water can pass, is said by Mr Alasdair Campbell to increase those areas. Without a cutaway the water flows through an annulus between the edge of the valve and the production tubing. With the cutaway three extra areas are added to the flow path, within the area of the annulus. This is said by Red Spider to achieve material improvements in the flow of water through (and beyond) the valve, to minimise pressure within the valve and to help avoid the adverse effects of debris.

CHAPTER II – WITNESSES

[9]I heard evidence from the following witnesses.

Mr Michael Reid

[10]He is the senior development engineer at Red Spider. He has a background in the oil business, and in 2003 he decided to form his own company with, among others, Mr Brown and Mr Skinner (both of whom also gave evidence to me). His evidence went to the manner in which the Red Spider valve was conceived, designed and manufactured, and he gave some evidence (very limited) as to what was said to be its commercial success. In the end much of his evidence was, as factual material, not controversial. He was a straightforward and honest witness.

Mr Irvine Brown

[11]He also participated in the design of the Red Spider valve, and drew some of the engineering drawings. His evidence was intended largely to corroborate that of Mr Reid, but since there was little dispute about the former there was little challenge to Mr Brown. Again, he was a straightforward witness.

Mr Andrew Skinner

[12]Mr Skinner joined with Mr Reid, Mr Brown and others in forming Red Spider in 2003. He has been in the oil industry for over 27 years, first having a “hands on” role with some equipment and in due course becoming an on shore supervisor. He then acquired roles in marketing and worked for other suppliers as a senior account representative. He gave some evidence about a visit to Red Spider’s premises by representatives of Omega, as did Mr Reid. At one stage that evidence seemed as though it was going to be important evidence in relation to the alleged copying of Red Spider’s design, but in the end it was not particularly relied on for that purpose. Mr Skinner also gave some other evidence, on which he was not materially challenged, as to the opportunity that an Omega representative had to see a physical Red Spider valve at a trade exhibition. He gave his evidence in a straightforward and unexaggerated fashion, and was a good witness.

Mr Alasdair Campbell

[13]Mr Alasdair Campbell – I shall have to use his first name to distinguish him from Mr Douglas Campbell, who was counsel for Red Spider – has an HNC and ONC in mechanical and production engineering from Lews Castle College, Stornaway, in 1986. He started work in the oil industry in 1990 as a design/sales engineer and then continued as a design engineer and technical specialist for various companies in the industry. In 2005 he set up his own well engineering consultancy. His evidence was always clear and, particularly when dealing with uncontentious matters, helpfully so. His views on various issues of professional opinion on which he was asked to give evidence were generally defensible, but on some occasions the manner in which he gave his evidence tended to suggest that he was arguing a case rather than giving a dispassionate opinion. This was not an overall characteristic of his evidence, but it is something that seemed to me to be apparent from time to time. Overall, on contentious matters I tended to prefer the evidence of Mr Moyes (Omega’s expert) to Mr Campbell’s.

Mr Mark Buyers

[14]Mr Buyers is the managing director of Omega. He gave evidence as to the genesis of the Omega valve, both in terms of why it was designed in the first place and then some limited evidence as to the manner of design, and in particular the extent to which the Omega valve was a copy of any feature in the Red Spider valve. There was at least one significant inconsistency between his witness statement and his cross-examination in terms of his evidence as to how it was Omega came to think about a water-injection valve in the first place, and I found certain aspects of his evidence of early meetings between Red Spider and Omega to have a limited degree of implausibility about them. This might have mattered more if there were more of a dispute than there ultimately transpired to be about copying by Omega of the Red Spider valve. However, since Red Spider’s case on copying was much more limited at the end of the day, and did not depend a lot on the evidence of Mr Buyers, those credibility points do not matter so much. It suffices to say for present purposes that I view certain aspects of Mr Buyer’s evidence (though not all aspects) with a degree of caution.

Mr Anthony LaPlante

[15]Mr LaPlante joined Omega in June 2005 as a design and development engineer with responsibility for new product design. He remained there until December 2006. He was the principal designer of the Omega valve. He started the design almost as soon as he arrived at the company. His evidence went to the extent to which Red Spider’s designs were copied, because if anyone copied then it must have been him. He therefore gave evidence of the design process. He has always denied that he copied the designs, though in the witness box he admitted that he got “inspiration” from the patent drawings. In the end it was not seriously put to him that he copied from any physical valve (he almost certainly did not see one at the time) and it was not put with any vigour at all that he copied from any photograph or drawing other than the patent drawings. He struck me as being an essentially honest though sometimes careless witness. His witness statement does not fully disclose the extent of his inspiration so far as the patent drawings are concerned, though it is not as bad as Mr Douglas Campbell sought to paint it from time to time, and in particular in his final written submissions. Having seen Mr LaPlante in the witness box, I am satisfied that his omissions are because he was not really focusing on all the relevant points and probably did not recollect and narrate events with sufficient care. On some occasions I got the distinct impression from the way in which he answered questions that he was accepting suggestions from Mr Campbell not so much because he thought about them carefully and thought they were right, but because he felt he had to give some answer and did not want to be disagreeable or did not want to give a qualified acceptance. These points go to the thoroughness of his evidence, but not his honesty. In the end, Mr Campbell did not seek to press Mr LaPlante beyond “inspiration” and into “copying” (in the sense of deliberate, calculated reproduction of precise features), so his credibility as a witness became less important. However, on one important matter I accept his evidence, namely whether he could have done the Omega design drawings that he did as quickly as he did without copying the Red Spider design. As will appear, I accept that he got no more than “inspiration”; what that means will appear hereafter.

Mr Colin McHardy

[16]Mr McHardy gave some written evidence about one of the pieces of prior art. It was not challenged and he was not cross-examined, his witness statement was admitted into evidence without more.

Mr Peter Moyes

[17]Mr Moyes was called to give expert evidence on behalf of Omega. Since 1993 he has had a career in design and engineering in oil field technology. He is the inventor under a number of patents. I thought he was an impressive and careful witness. His independence is demonstrated by one feature which actually has an unfortunate effect. In the course of his report he had to deal with common general knowledge and “commonplace”. Unfortunately, he was not given any indication of the legal meanings which those expressions have in the intellectual property law, so his evidence on those points has to be viewed with a little more care. He was, nonetheless, a conscientious witness whom I believe to have been doing his best to assist the court.

CHAPTER III – THE PATENT

[18]The relevant claims in this patent are claims 1, 25 and (by a late change of tack on the part of Mr Campbell) 27. They are set out in Appendix 1 to this judgment. There is a conditional application to amend claim 1 to limit it to a water injection valve in the event that as granted it is anticipated by or obvious over a piece of prior art called Burt. The main points and disputes of construction arise in relation to the words “work string”, “the ports” and the following words: “and create an unimpeded flow path…with negligible pressure drop” in claim 1.[19]Before considering the description, it will be useful to point out those parts of claim 1 which are said to contain or refer to the inventive concept. It was not contended by Red Spider, as patentee, that there was anything inventive in a valve which was placed down a downhole tool, or the two methods of connection referred to (wireline lock and work string). Nor was it contended that there was anything inventive in having a valve in which the cross-section of the inlet port was less than the cross-section of the outflow ports. Nor was there anything inventive about having the outlet ports “located on the body”. The “sealing assembly” referred to was, it was accepted, a poppet, and there was nothing novel about having a poppet moved by a fluid to allow fluid to flow through the valve. Thus far claim 1 describes the normal workings of a non-inventive valve. Nor is there anything novel, in itself, about the idea of having an unimpeded flow path between the inlet and outlet ports, or in having a “negligible” pressure drop. It might or might not be possible to achieve that in any valve, but the idea of doing it, as such, was not relied on as being novel. Thus on its face the wording of claim 1 does not seem to describe anything new or capable of being an invention. In order to find an invention, Red Spider have to go off into the description. It is said that when that is done, one can see that the “ports” referred to are ports containing the cutaway (the view expressed by Mr Alasdair Campbell in his first report) or that in talking about “an unimpeded flow path….with negligible pressure drop”, the claim is in fact referring to an earlier reference to the cutaway in the description.[20]The description starts by stating:
“The present invention relates to valves typically used on downhole tools in oil and gas wells and in particular, though not exclusively, to a water injection valve.”
It then goes on to refer to the need to inject water and that valves are run down the wells: “typically made up to a wireline lock or retrievable packer”.[21]It then goes on to describe a then existing suitable valve:
“A suitable valve design comprises a body including a seat against which a poppet or other closing surface of the valve can rest. The poppet is biased towards the seat(s) to hold the valve in a closed position. Water passed down the tubing string of a well bore will arrive at the poppet, and the water pressure will work against the loading of the spring and force the poppet away from the seat. The water is then directed through ports in the poppet, whereupon it takes a convoluted path to return to a central path through the valve and exit at its base.”
That is a description which can be applied to a then existing valve known as the PES valve. It will be noted that such a valve does not provide a water exit through the sides of the valve. The water enters the top of the valve, passes through holes in the poppet and then exits through the base of the valve (which is essentially cylindrical in shape).[22]The description goes on:
“Such valves have a number of disadvantages. Typically these valves have a spring which applies a load to the poppet to keep the valve closed. Thus when water flows an initial pressure will open the valve, but there is a tendency for the valve to close again as the pressure drops when the fluid is flowing through the valve. A further disadvantage of these valves is in the arrangement of the ports through which the water flows when the valve is open. By the nature of the design, these ports are typically small in diameter and as such they increase the pressure drop through the valve. The convoluted narrow path also causes erosional problems through the valve and increases the potential debris build up in the valve which can cause the valve to fail.”
The description then goes on to describe how it is that some water injection valves are designed as high lift valves (i.e. valves which present less, rather than more, resistance to the water). This leads to low load spring designs with low resulting closing forces, which in turn can lead to problems with debris ingress.[23]At the foot of page 2 the patent goes on:
“It is an object of at least one embodiment of the present invention to provide a valve that overcomes at least some of the disadvantages of prior art valves. It is a further object of at least one embodiment of the present invention to provide a water injection valve having a high bypass flow area. A yet further object of at least one embodiment of the present invention is to provide a water injection valve which is a high lift valve.”
[24]Then comes the clause, corresponding to claim 1, and starting with the words:
“According to a first aspect of the present invention there is provided a valve….”
Immediately following that is an important paragraph:
“By creating a direct flowpath from the inlet to the outside of the valve through the ports, which is unimpeded, that is the cross-sectional area of the flow path is not reduced, the problems associated with a pressure drop through the valve are alleviated.”
Those are potentially important words because arguably they provide an internal definition of “unimpeded flow path”. I shall have to return to that later when considering the construction of the patent.[25]The description then goes on:
“Preferably the ports are arranged circumferentially on the tubular body. More preferably, a cross-sectional area of the ports is greater than half the total surface area of the tubular body. In a preferred embodiment there are two substantially rectangular ports located on the tubular body. The ports are arranged such that they take up a substantial portion of the tubular body to provide for maximum flow through of fluid when the valve is open. In the preferred embodiment portions of the tubular body between the ports provide longtitudinally arranged rails.”
[26]There then follow some paragraphs about the poppet and about a mechanism called a load adjuster which is not material for present purposes. On page 7 the description goes on:
“Embodiments of the invention will now be described, by way of example only, with reference to the accompanying figures in which: Fig 1 is a part cut-away cross-sectional view through a valve according to an embodiment of the present invention, shown in a (a) open and (b) closed configuration; Figs 2 [sic] illustrate a schematic view of the arrangement of the flow housing on the valve of Fig 1 wherein Fig 2(a) is rotated by ninety degrees with respect to Fig 2(b); Fig 3 is a cross-sectional view of a valve according to a further embodiment, wherein the left-hand side of the figure illustrates the valve in the open configuration and the right-hand side illustrates the valve in the closed configuration;…”
Further figures are referred to and the patent goes on:
“Referring initially to Fig 1 of the drawings, there is illustrated a valve, generally indicated by reference numeral 10, according to a first embodiment of the present invention. Fig 1(a) is the valve 10 in an open configuration, while Fig 1(b) is the valve 10 in a closed configuration…. Valve 10 comprises a top sub 12 including a boxed section 14 for connecting the valve 10 to an anchoring device, i.e. a lock or packer. Typically the valve is made up to an [sic] wireline lock or retrievable bridge plug and run to depth, usually in the packer tail pipe. Top sub 12 contains a bore 106. Bore 106 is the inlet to the valve 10 so that fluid passed down the work string can input the valve.”
Further descriptions are provided on page 12. The patent returns to cross-sectional areas and flow paths. It says: “On opening, fluid pressure acts on the poppet 84 and it is forced downwards against the spring 42. While pressure is maintained fluid flows freely and directly from the bore 106 to the ports 132 on the housing 18. Due to the cross-sectional area of the flow path 120 through the ports 132 greatly exceeding the input of flow path cross-sectional area at the bore 106, there is negligible pressure drop as the valve 10 is open. The pressure will thus remain substantially constant through the valve as it is opened and in use. The opened configuration is shown in Fig 1(a).” (My emphasis) The italicised words become important when construing the last integer in claim 1.[27]It is not until page 13 that one comes to a description of what is said to be the invention underlying this patent. I shall have to set out two paragraphs at length and I shall emphasise by underlining the parts principally relied on by Red Spider for these purposes. As will appear, these extracts must be read with Fig 2(a). That figure requires a little explanation, and it will be useful to set that out before returning to the relevant paragraphs of the description.[28]As the description provides, Fig 2 contains two views of the same valve. The experts accept that one of them is looking down into the port. The poppet can be seen at the top of the port and the cutaway can be seen where the figure “132” is shown on Fig 2(a). The port is shown as extending for the length of the main part of the body. Fig 2(b) shows the same valve rotated through 90 degrees. It is looking down on the “rail” which is the outer housing between which the two ports lie. The poppet can be seen peeping out of each side of the rail. In this drawing of the valve the poppet has a skirt extending below the poppet head – that explains why areas more than just the conical head of the poppet are showing at the sides of the rail.[29]With that in mind, I can return to page 13 of the description. The relevant two paragraphs (with underlined passages for emphasis) are as follows:
“Fig 2(a) provides a side view of the housing 18, while Fig 2(b) shows the same housing rotated by 90 degrees. Flow housing 18 comprises a tubular body 130 which has a diameter less than or equal to the diameter of the top sub 12. Oppositely arranged on the body 130 are two slots or ports 132. The ports 132 are arranged longtitudinally and cover a substantial portion of the valve 10, beginning at the top sub 12 and ending near the end cap 24. Ports 132 are substantially rectangular in cross-section, having a rounded portion 134 toward the end cap 24. The ports 134 [it is common ground that that is a mistaken reference – it should be 132] may be of any chosen dimensions but must provide a cross-sectional area that is greater than the cross-sectional area of the bore 106. Preferably the cross-sectional area of the ports is approximately an order of magnitude greater than the cross-sectional area of the bore 106. The shape in this embodiment is as a consequence of milling through a cylinder formed on a slope. Together the ports 132 remove a substantial portion of the body 130 to provide maximum flow of fluid through the valve 10. Portions of the body 30 remaining to either side of the ports 132 provide rails 136 used to help guide the poppet 84 through the valve without impeding its path. Thus it can be seen from Fig 2(a) that the poppet 84 and poppet skirt 68 are substantially exposed within the body 130. This cut-away to flow housing 18 results in the valve 10 having a high bypass flow area which minimises the pressure drop and erosion problems through the valve 10. This additionally reduce the debris build up potential as there are less surfaces, ledges or other surface areas which the flow path impinges on where debris could collect.”
[30]Page 14 introduces Fig 3:
“Reference is now made to Fig 3 of the drawings which illustrates a valve, generally indicated by reference 100, according to a second embodiment of the present invention…. Fig 3 illustrates the valve 100 enclosed (right-hand side) and open (left-hand side) configurations.”
There then follow several pages of description of various features of this embodiment which are not relevant to the present action, including a description of the poppet skirt. This is referred to at page 20:
“Returning to Fig 3, there is illustrated a poppet skirt 68. Poppet skirt 68 is threaded to the recess 88 on the poppet 84. The skirt 68 provides a streamlined profile running back to the threads 64 which attaches to the collet 109. Such a profile of the nose 104 together with the skirt 68 provides a streamlined flow passage 120 to maximise fluid flow through the valve in the open position. This is further enhanced by the design of the flow housing 18 located around the inner tube 34. This housing 188 is illustrated in Fig 2 and is described hereinbefore with reference to the Figure. In this way the relationship between the cross-sectional area of the flow path at the bore 106 is smaller than the cross-sectional area through the ports 132 as they are open. This cut-away to flow housing 18 results in the valve 100 having a high bypass flow area which [sic] negligible pressure drop and minimises erosion problems through the valve 100. This additionally reduced the debris build up potential.”
It will be noted that this last paragraph is a replication of the second underlined passage at page 13, with some additional words (and a different numeral for identifying the valve). It is somewhat misplaced, since the cutaway has not been referred to on page 20, but the page 20 passage does refer back to Fig 2. Red Spider accepts that Fig 3 does not itself show the cutaway. Fig 3 illustrates the valve 100 enclosed (right-hand side) and open (left-hand side) configurations.”[31]Page 22 contains some summaries:
“The principle [sic] advantage of the present invention is that it provides a valve having a high bypass flow area with a smooth flow path which minimises pressure drop and erosion problems through the valve while also reducing debris build up potential in the valve. Reduction flow is thus optimised and is only restricted by the bore of the anchoring device. It will be appreciated by those skilled in the art that modifications may be made to the invention herein without departing from the scope thereof. Additionally though a poppet is shown, any suitable arrangement of two sealing surfaces could be used. Yet further the size and number of the ports in the flow housing may be changed to vary the flow rate through the valve, while maintaining the desired relationship between the cross-sectional areas.”
[32]Thus the cross-sectional area point is referred to again.

The addressee of the patent

[33]Red Spider’s case was that the skilled addressee was a designer of valves used in downhole tools in oil and gas wells. Omega’s case was that he was a designer of downhole tools, who had a knowledge of valves intended for the injection of water and other fluids. It seems that its case in this respect turned on the fact that there was in fact no such thing as a specialist who designed only valves. However, there is little material difference between these two views. If there were any significance in that difference it would lie in their respective common general knowledge - it might be thought that the common general knowledge of the latter would be wider than the former. However, both sides accepted there was little difference between their respective cases. A designer of downhole tools would know about valves, and the designer of valves would have a knowledge of at least some other downhole tools. In the circumstances of this case that makes little material difference. I can take either as being the skilled addressee.

The construction of the patent

[34]There are two principal points of construction arising in relation to the patent. The first (logically speaking) is to determine what the invention disclosed by Claim 1 is. In particular, does Claim 1, on its true construction, describe and claim the cutaway? The second is what is meant by “work string” in the claim.

Does the patent claim the cutaway as the invention?

[35]This is a point which it is (obviously) vital for the claimant to establish. Red Spider’s whole case is that it is the cutaway that is inventive. If the patent, and in particular Claim 1, does not disclose that as being the invention then Claims 1 to 24 fail. Mr Douglas Campbell accepted that there was nothing inventive in a valve whose outlet ports had a cross-sectional area which was greater than the inlet port, and there was nothing new in the other integers of Claim 1 as they appeared in that claim taken by itself. It was therefore crucial to his case that he be able to establish that Claim 1 can be taken to refer to the cutaway.[36]Mr Campbell sought to do that by relying on the reference to ports and the integer:
“and create an unimpeded flow path between the inlet and the ports with negligible pressure drop”
I shall call this the “flow path integer”. He said that the cutaway was the only candidate for achieving that objective. The reference to “ports” is such that it takes its meaning from that integer, and to work out what they mean one goes back into the specification. There one finds a reference to the cutaway on page 13 and in Figure 2, and when properly construed Figure 1 shows a long port extending into the reduced diameter portion of the valve (and therefore a cutaway) as well. Omega disputed that as a correct way of going about the exercise. According to the claim, the “must” is the cross-sectional area point. The cutaway is merely an embodiment, and anyone who approached the patent without having seen the valves which feature in this case would not appreciate that the cutaway was the invention. Mr Hicks for Omega also took a related sufficiency point. He said that the flow path integer above referred merely to the relative cross-sectional feature, which was not inventive. If it did not mean that then it was impossible to work out what it meant and the claim was insufficient.[37]These points boil down to this - do the words in the flow path integer refer to the cutaway, on the true interpretation of the patent? If they do, the inventive concept is properly disclosed, and if they do not then it is not disclosed and claims 1 to 24 fail, whether for insufficiency or want of novelty. I therefore turn to that question.[38]The nature of this debate should be noted. This is not a case in which the stated performance of the valve raises questions such as “how unimpeded”, or “how negligible”? Those words are not said to describe the effect of some particular physical aspect which is, or points to, the inventive concept and which is previously referred to in the claim. They are said to in effect to be definitional of the claim - in practice, a synonym for the cutaway.[39]This immediately raises a problem for Red Spider. Claim 1 is capable of being read, and is most naturally read, in a way which excludes that possibility. There is a description of a valve; the valve has ports; the ports are on the body of the valve (ie they are not within the valve); their cross-section has a particular minimum ratio when compared with the cross-section of the inlet port; there is a sealing assembly (a poppet or other mechanism) which is forced open; and an unimpeded flow path with negligible pressure drop is thereby created. I have added the “thereby” because that is how the claim might be thought most naturally to be read. The flow path integer looks as though it is a result of the successful implementation of the other integers, not something which is itself intended to describe a particular physical feature which lies at the heart of the invention. Taken by itself, the claim suggests that the invention is the ports on the body with the specified comparative cross-section. So this is not a promising start for Red Spider. However, the process of interpretation of a patent is not confined to looking at the claims in isolation. Under Article 69 of the European Patents Convention and section 125 of the Patents Act 1977 the extent of protection is determined by the claims, but the description and drawings can be used to interpret the claims. Mr Campbell seeks to get to his result by doing just that.[40]The exercise which is involved has been described, or elaborated, in a number of decisions. One of the fullest is the exposition of Pumfrey J in Halliburton v Smith [2005] EWHC Civ 1623. I will not set it all out, but I have it firmly in mind. I also take into account what Lord Hoffman said in Kirin-Amgen v Hoechst Marion Roussel [2005] RPC 90 at para 32:
“Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee or the author of any other document. Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, ‘the meaning of the words the author used’, but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would be understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of and background to the particular utterance. It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience.”
The audience in the present case is the skilled addressee. The question which will have to be addressed is how the skilled addressee would construe the flow path integer (and the reference to ports).[41]In my view the skilled addressee would start a consideration of Claim 1 by wondering what it was he had to construe in this respect and why he had to construe it. Leaving aside questions relating to “work string”, he would have a claim that seemed to make sense in the natural sense which I have identified above. He might have questions about how strictly the flow path integer had to be complied with, but that would strike him as a measurement problem. Those words, on their face, have absolutely nothing to do with cutaways or the shape of ports. They describe the results of an exercise, not the exercise itself. The invention seems to be about the whereabouts and relative sizes of the ports.[42]The fact that one has to look at the claim in the context of the specification and drawings does not, in my view, mean that one ignores the actual words used. The actual words are capable of having an important bearing on what the user of those words meant. However, the context is significant so it is necessary to go off to that context and consider if it demonstrates the words have, or might have, a different meaning, and if so what meaning. They do, after all, bear their own element of uncertainty, as observed above. In the present case the inquiry is whether those words mean the cutaway.[43]The disadvantages which the invention is expressed as seeking to overcome are those presented by the PES valve - premature closing of the valve because of pressure drop, and small ports which increase the pressure drop and convoluted pathways. The consistory clause then follows, and it is itself followed by important words which I will set out again, this time with some relevant emphasis:
“By creating a direct flowpath from the inlet to the outside of the valve through the ports, which is unimpeded, that is the cross-sectional area of the flow path is not reduced, the problems associated with a pressure drop through the valve are alleviated.”
The emphasised words seem to be defining the concept of an unimpeded flow path. It is defined in terms of the positioning and cross-section of the outlet ports. In other words, one does not measure the flow path and find it to be unimpeded as a matter of measurement; it is treated as unimpeded because of the position and area of the ports. Pressure drop (or its absence) is not defined in those terms, but it is assumed that an unimpeded flow path will remove pressure drop problems, and therefore that there will be no material pressure drop.[44]This analysis, if carried into the claims, would defeat Red Spider’s construction case. There is not a word here about cutaways. The trick seems to be that which the claim suggests - put the ports in the right place and make them big enough. The next passage of the description (set out above) continues the same theme.[45]Then come the references to the drawings, and to the drawings themselves. Figure 1 is said to be a cross-sectional view “through a valve according to an embodiment of the present invention”. Taken by itself for the moment, it does not seem to refer to the cutaway. One can see two ports, and they do not extend down to the reduction in diameter, so there cannot be a cutaway. It was suggested that there is a potential third port on the left hand side of the drawing, extending from the level of the closed poppet down to and through the reduced diameter. One would be looking at it sideways on if it existed on that drawing, and it is not easy to visualise.[46]The prime reason that that might be considered is Figure 2. That figure does seem to show longer, rectangular ports which extend across the reduction in diameter, and which show the cutaway. There are two of them. The body of the description describes it as a schematic view of the arrangement of the flow housing of the valve of Figure 1, ie it purports to describe the same valve as figure 1. This is the first time the description contains an apparent reference to a cutaway.[47]The description then describes the valve in figure 1. It is described as a first embodiment of the present invention. One can therefore expect to see the present invention in it, and referred to thereafter. There is no reference to its demonstrating a cutaway, or to any cutaway at all, at this part of the description. In the narrative of the content of the patent, set out above, I have quoted, with emphasis, the first paragraph (on page 12 of the patent) in which the outlet ports are referred to. The emphasised passage attributes “negligible pressure drop” to the cross-sectional area of the outlet ports, not to their shape or to a cutaway. The only port “pointed to” in the drawing is the one facing the viewer, but there is probably another one in a corresponding position on the opposite side of the valve. There is no suggestion of a third port at this point in the text.[48]Then one comes to the passages on pages 13 and 14 on which Red Spider’s case rests. There is no doubt that these passages refer to a cutaway; I have emphasised the relevant passages by underlining. The way in which Figure 2 is described when it is first introduced suggests that it is another way of looking at the valve in Figure 1, and not something different, and the context of these important paragraphs do not suggest it is any different either. As a matter of textual analysis, they purport to be describing the same thing. Red Spider’s case is that this reveals the invention. It is said to show what is meant by ports which fulfil the flow path integer. Mr Douglas Campbell said there was no other candidate for what the invention would be in this case.[49]I do not accept these arguments. The process of construction in this case does not require that one hunts through the specification to find an invention. The process involves going through the specification to find out what the claim means. Even if a description contains something which is said to be inventive, it does not follow that that is within the claim. In my view, and assuming for the present that the cutaway could be an inventive step, the claim does not refer to it. There is not even the slightest hint of any such thing in Claim 1, and it actually seems to point at something different – large outlet ports on the outside body of the valve. There is hardly anything in those references which, on its face, requires construing. But even if one then goes into the description one does not come to the conclusion that the cutaway is what the claim meant. The passage after the consistory clause suggests that it is large ports that do the trick. The paragraph in which the cutaway emerges starts by repeating this sort of factor. The cutaway is introduced by the words, “The shape in this embodiment …”, which suggests that there are other embodiments which might not include that shape or feature. If that is right then the cutaway cannot be the invention because the invention (whatever it is) can be achieved without it.[50]Mr Campbell’s case relied heavily on the appearance of cutaways in Figure 2, which the description of that figure suggested to be another schematic way of looking at Figure 1. Figure 1 showed the third long port. All this together showed that the patent was all about the cutaway. Again, I disagree. The drawings are not always wholly clear or consistent. Mr Alasdair Campbell accepted that there were erroneous inconsistencies between the two halves of Figures 1(a) and 1(b). Although the text suggests that Figures 1 and 2 were the same valve, they plainly are not. One only has to glance at them, and to see the different port arrangements, to see that they are not. I think it highly unlikely that Figure 1 was intended to reflect a long third port with a cutaway, on the left of the valve. Mr Alasdair Campbell said that an expert would conclude it was there when he had been to Figure 2 and then gone back to Figure 1 to try to reconcile them and work out what was being described. I do not accept that evidence. I think that the expert would come to the conclusion that there was a plain inconsistency. The third port, different in length from the others, is a highly unlikely design feature; even Mr Alasdair Campbell could not think of an engineering reason for doing that, and it is not reflected in any way in Figure 2. He thought that the short port in Figure 1 was a mistake. Again, that is highly unlikely. It is ostensibly a carefully drawn figure, although it does have errors and inconsistencies. If this patent were really intended to claim the cutaway it would be likely to have shown it clearly. Mr Moyes only got as far as thinking that Figure 1 showed a third slot when he had seen the physical Red Spider valve. Without hindsight (seeing the Red Spider valve) he thinks it shows only two slots. Hindsight is not an appropriate viewpoint for construing this point, and I accept that his view is how it would strike the skilled addressee. The skilled addressee would end up seeing inconsistent drawings, not two drawings with long slots and cutaways. He would certainly not see a series of drawings showing the cutaway, and conclude the shorter ports on Figure 1 were a mistake.[51]Red Spider’s case on construction is very heavily dependent on the drawings. If Figure 1 does not show the cutaway then it is very difficult to see how the cutaway would strike the skilled addressee as being the inventive concept, or that the cutaways is what the flow path integer and the Claim 1 reference to ports is referring to. The text does not support that case either. I have already drawn attention to the fact that the cutaway is referred to as being in “this embodiment”, which does support Red Spider’s case. To the same effect is the positioning of the reference to the cutaway in this patent. It is somewhat buried away on page 13, after a lot of other material which in no way hints at or suggests what is to come, and it is not referred to again until page 20 where it is apparently mentioned out of context (see above). If it really were the inventive concept underpinning Claim 1 one would not expect it to be treated in that manner.[52]When the material is thus viewed, it becomes increasingly apparent that Claim 1 cannot be taken to be referring to the cutaway. Its wording seems to be referring to something else, and if one goes to the description one finds that the difficult phrase (the flow path integer) is defined in terms of outlet port size and positioning. In my view the skilled addressee would think that that is what Claim 1 is referring to. He would not take short buried references to the cutaway as being what Claim 1 is really all about.[53]It follows that, properly construed, Claim 1 does not claim the invention relied on in this action. The consequence is that the patent claim fails in limine so far as it is based on that claim or its dependent claims.[54]However, there were other attacks on the validity of the patent, and full arguments were addressed to them, and I should address them, and certain infringement points, in case I am wrong on the crucial decision which I have just reached.

The second construction point - communicating with a work string

[55]This point turns on the following integer of Claim 1:
“communicating with a work string providing a flow path of a first cross-sectional area.”
I shall call this “the work string integer”. The construction point arises in the following manner.[56]Omega says that “work string” in this integer means work string in the sense appearing above, that is to say a length of piping connecting the valve to the surface, and separate from the production tubing which lines the hole. “Communicating with” means actually communicating with - attached to - so that the water passes down the work string and into the valve. Omega’s valve is not used in that manner. When in situ it locks to the tubing string and water is passed down the production tubing, not down a work string within the production tubing. It is not sold for that purpose. There is therefore no infringement when it is used.[57]Red Spider says that in its context “work string” in this particular integer does not bear that wording. It means the tubing through which the fluid enters the valve, so it can mean the production tubing. “Communicating with” means “suitable for communicating with”. Since the Omega valve is suitable for communicating with the production tubing, or indeed with a work string, then Omega’s valve infringes (assuming Claim 1 to be valid). The claim is to a valve, not to a valve connected to a work string.[58]The main problem with the drafting is that on its face it contains a form of inconsistency. The claim suggests that the valve is suitable to be deployed by wireline but the valve “communicates” through a work string. One would not deploy a valve by both wireline and work string (using work string in the sense referred to above). The expert evidence was that one would expect deployment by wireline 90% of the time, and deployment by work string about 10% of the time. You would not deploy by both at the same time.[59]This led Mr Alasdair Campbell to think that the claim was badly expressed, and that the reference to work string was a reference to manner in which one provided a flow path into the valve. He said that the expression “work string” meant different things to different people, and since it could not realistically have the meaning that Omega attributed to it, it must mean simply the tubing down which the fluid passed, which he said was “tubing string”, and which could include the production tubing. Thus Claim 1 described a valve which could be positioned by wireline and then have water passed through it via the production tubing.[60]Mr Moyes did not accept that. He said that work string was something different from the production tubing. The production tubing sits in the well itself. Work strings are used to work within that. The concepts were distinct, and he considered that in Claim 1 “work string” meant work string and not production tubing. This was consistent with its use in claim 25 (and in its equivalent consistory clause in the description) where (as is in fact common ground) “work string” does not mean production tubing but means a string of tubular sections deployed in accordance with the description set out at the beginning of this judgment.[61]I was shown various definitions of “work string”. They show that there is no single clean definition in the industry, such that the skilled addressee would understand to be normally meant, but they all have in common the fact that none of them could really include the production tubing. The essence is that they are tubing strings used to convey some form of treatment or device into the well. None of the standard definitions would be capable of applying to the production tubing. It follows that Red Spider’s construction requires the words to be given a very unconventional meaning.[62]That would be appropriate if the conventional meaning produces an absurdity or produces conflicts which are best resolved by giving the expression its unconventional meaning. There seems to me to be a basis on which that can be argued. If the valve is to be used on the end of a work string, then either it is deployed by that work string or it is deployed by wireline and then a work string is connected in order to convey the liquid. If the former is to be done, then the reference to the valve’s being suitable for connection to a wireline lock becomes puzzlingly otiose. The latter would, according to Mr Moyes (whose evidence I accept on the point), would be irregular and uncommon, though technically feasible. It would be done in only a small percentage of cases. There is nothing in the description to suggest that the patent is dealing with specialist and highly unusual cases - in fact, it suggests the contrary. To use the conventional meaning would therefore require a pointless limitation or a great oddity in deployment. Those oddities go away if work string is taken, as Mr Alasdair Campbell says it should be, to mean the production tubing.[63]The rest of the patent sheds some, but not a lot, of light on the debate. Claim 25, and its preceding consistory clause, used work string in what is plainly the standard meaning of the term, and it does not mean production tubing. If one applies the principle that terms should bear the same meaning throughout the document then that would weigh heavily in favour of Omega’s interpretation. The remainder of the patent, however, points against that. There is just one other reference to work string, and that is on page 9. At that point, the description has just set out a short description of the figures, and it then goes on: “Referring initially to Figure 1 of the drawings there is illustrated a valve … according to a first embodiment of the present invention…To those skilled in the art, valve 10 is recognisable as a water injection valve but could equally be adapted to a check valve or other arrangement as would be found on a downhole tool for controlling fluid flow. Valve 10 comprises a top sub 12 including a box section 14 for connecting the valve 10 to an anchoring device ie a lock or packer. Typically the valve is made up to an [sic] wireline lock or retrievable bridge plug and run to depth, usually in the packer tail pipe. Top sub 12 contains a bore 106. Bore 106 is the inlet to the valve 10 so that fluid passed down the work string can input the valve.” (my emphasis)[64]The description says “the work string”, as though one has previously been referred to. It has not, and what is more it has specifically referred to deployment via wireline, which means the valve in this description has not been deployed by work string. I doubt if this passage was intended to refer to the odd situation of deploying by wireline and servicing by a subsequently attached work string. It looks from this as though a wrong expression has been used. If that is right then it supports the view that the draftsman used “work string” wrongly and actually meant production tubing.[65]Further support for this view comes from the opening paragraphs of the description. The second paragraph the contents of which are set out in paragraph 20 above. This refers to the valve typically run down the well made up to a wireline lock or retrievable packer - again, the wireline deployment is assumed. There is then a reference to water passing “down the tubing string of a well bore”. The expression “tubing string” was generally used in these proceedings to mean the production tubing. This paragraph is therefore describing a valve sitting in the well with water passing down the production tubing, and not down any attached work string. The rest of the patent is dedicated to setting out a valve which is a better valve when placed in that context. There is no suggestion (apart from Claim 1 itself) that another method of operating it is going to be suggested, other than Claim 25.[66]The description therefore provides no support for the view that the Claim 1 valve is to be used on the end of a work string strictly so called. In my view all that material points to resolving the oddity in wording in the manner proposed by Mr Alasdair Campbell, even though the use of the words would be technically wrong and inconsistent with their plain use in Claim 25. When claim 1 refers to “a first inlet communicating with a work string” it is describing the end of the valve at which the inlet is situated (the top end) and providing a context for the important factor of the cross-sectional area of the inlet valve. I regard that as a more satisfactory (or, to be more precise, less unsatisfactory) way of resolving the conflicts and oddities of Claim 1. In coming to that conclusion I am aware that it is one which goes against the normal plain meaning of the words, and produces an inconsistency of meaning with Claim 25. However, that is the way in which the material, in my view, points.

Loss of priority

[67]The Red Spider valve was sold before the patent application in this case. Priority is claimed from a prior application (number 0327021.2). Section 5(2) of the 1977 Act provides:
“(a) if an invention to which the application in suit relates is supported by matter disclosed in the earlier relevant application or applications, the priority date of that invention shall instead of being the date of filing the application in suit be the date of filing the relevant application in which the matter was disclosed...”
In the present case (and in the light of an abandonment of one point by Omega) this requires an inquiry as to whether the priority document discloses the Claim 1 integer that the outflow ports have a greater cross-sectional area than the inlet port. No other issue now arises. If the document discloses that feature, this attack fails.[68]The parties agree on the approach to be adopted, and invite me to follow Jacob LJ in Unilin Beheer NV v Berry Floor NV [2005] FSR 6 at paragraph 48:
“The approach is not formulaic: priority is a question about technical disclosure, explicit or implicit. Is there enough in the priority document to give the skilled man essentially the same information as forms the subject of the claim and enables him to work the invention in accordance with that claim?”
[69]Red Spider accepts that the actual words ultimately used to describe the cross-sectional ratio do not appear in the priority document. However, I am invited to say that the feature is disclosed by a combination of the following wording and elements: i) Pages 5 -6: “Advantageously the first tubular body includes a plurality of ports located thereon. Preferably the ports are arranged circumferentially on the first tubular body. More preferably the cross-sectional area of the ports is greater than half the total surface area of the first tubular body. In a preferred embodiment there are two rectangular ports located on the first tubular body. The ports are arranged such they take up a substantial portion of the tubular body to provide for maximum flow through of fluid when the valve is open.” ii) Pages 14-15: “Figures 5(a) and (b) provide a side view of the housing … Ports 132 are substantially rectangular in cross-section having a rounded portion 124 toward the end cap 24. The ports may be of any chosen dimensions.” iii) Figures 5(a) and (b). There are very similar to Figures 2(a) and (b) in the patent. Mr Hicks for Omega accepts that those drawings show outlet ports of a greater area than the inlet valve area.[70]Mr Douglas Campbell also sought to rely on two further matters. First, he relied on the closeness of the wording of some of the priority document when compared with the patent. I do not think that factor helps him. The document either discloses what it needs to disclose, or it does not. It has to stand by itself. He also sought to rely on the fact that it was an established piece of knowledge that outlet ports should be bigger than inlet ports, or you would get a bottleneck. He said the disclosure had to be read in the light of that. Again, I do not think that that assists him. The document discloses what it discloses. Unless that particular piece of common general knowledge (which is what it is) is implicit in what it discloses (or explicit) it does not disclose it.[71]Applying the method formulated by Jacob LJ, I do not think that this document does disclose the port ratio which it would have to disclose in order to achieve priority. The textual disclosure on pages 5 and 6 is about something different. It clearly does not disclose the port ratio explicitly, nor in my view does it disclose it implicitly. There is no hint of the point there. One can only get there if one takes Figure 5. That is said to be a “schematic” which shows ports which have the appropriate ratio. However, the passage at page 14 cited above contains a textual cross-reference, and it says in terms that “the ports may be of any chosen dimensions”. That is inconsistent with required ratios, and it therefore removes the force that the schematic might otherwise have had insofar as it shows the ratio. There is also a passage on page 17 which is similarly contrary to the ratio:
“Yet further the size and number of ports in the flow housing may be changed to vary the flow rate through the valve.”
Accordingly, all the document does is show a picture which is consistent with the ratio, but nothing points to the ratio itself. It therefore does not give the skilled man the same information as the patent.[72]The earlier document therefore gives no priority. It is accepted that if that is the case the sale of the valve before the application for the patent in suit amounts to a disclosure which invalidates the patent. The patent therefore fails for this reason too.

Novelty and obviousness - claim 1

[73]By the end of the trial the number of pieces of prior art which were relied on by Omega had been reduced to three. It will be convenient to consider novelty (so far as it is alleged) and obviousness together in relation to each of them. Obviousness over common general knowledge is also claimed. So far as claim 1 is concerned I am, of course, considering this point on the footing that I am wrong in my construction of claim 1 and the claim successfully claims the cutaway as the inventive step. I shall consider that claim first, and then consider claim 25, as to which there is also an obviousness attack.[74]There was no dispute as to law in relation to this head. So far as want of novelty is concerned, the parties were content that I should proceed on the principle expounded by Lord Hoffman in Synthon BV v SmithKline Beecham plc [2006] RPC 10:
“… the matter relied upon as prior art must disclose subject-matter which, if performed, would necessarily result in an infringement of the patent.”
So far as obviousness is concerned, the tests are as set out in Pozzoli v BDMO [2007] FSR 37: “(1) (a) Identify the notional ‘person skilled in the art’ (b) Identify the relevant common general knowledge of that person. (2) Identify the inventive concept of the claim in question or, if that cannot readily be done, construe it. (3) Identify what, if any, differences exist between the matter cited as forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed. (4) Ask whether, when viewed without any knowledge of the alleged invention as claimed: do those differences constitute steps which would have been obvious so the person skilled in the art or do they require any degree of invention?” (b) Identify the relevant common general knowledge of that person.[75]1(a) has been done already. I will deal with common general knowledge issues in the context of the particular art in question. The inventive concept is the cutaway (on the assumption on which I am currently proceeding). The other matters will be dealt with as they arise.[76]Before getting to the prior art, there is a question of commercial success that has to be considered. By an amendment at the beginning of the trial, Red Spider pleaded commercial success, and adduced some evidence to support that pleading. No disclosure on the point had been given, and in the light of the particulars given Mr Hicks was prepared to deal with the point without disclosure. The essence of the point was that the valve was conceived in 2004 after an indication from BP that they would welcome a better water injection valve after some failures in the North Sea oilfield. The valve was then developed and sold 10, 16, 40, 48, 28 and 18 units in each of the years 2004 to 2009 respectively. The marketing expenditure was very little, if anything, in most of those years. The bulk of the sales were in the UK or Norway - for North Sea exploitation purposes. These are said to be very good sales, especially for a new product. One of its original valves is said to be still functioning down its hole after 4 or 5 years. Omega had some rather hearsay evidence which suggested problems with the Red Spider valve, but it was not very strong.[77]I bear in mind the sort of points listed by Laddie in Haberman v Jackel International [1999] FSR 683 at para 32, cited Terrell on Patents, 16th Edn at para 7-81, to which my attention was drawn. That analysis shows that much more is required than demonstrating good sales if anything is to be made of the point. Laddie J lists a number of features which would have to be addressed. In the present case few, if any, are addressed in any detail, or indeed at all. Red Spider have proved little more than that they have been able to make a very significant number of sales of their valve, albeit mainly in local oilfields and not worldwide. The evidence does not really assist much in linking that to the inventive concept of this valve. Accordingly, I give this evidence little weight in the debate on obviousness.

Claim 1 - obviousness over common general knowledge

[78]In his first report (para 161) Mr Moyes listed a number of factors which he said were commonly known design concepts. Mr Campbell accepted most of them in his cross-examination. They included having ports on the body of the valve, the desirability of having the outlet ports greater in area than the inflow area, and increasing port area by increasing their width or increasing their number around the body of the valve. As listed, however, they did not include extending the port over a reduction in diameter (the cutaway). However, Mr Moyes did not say at that point that it was a commonly known design concept to extend a cutaway across a reduction in diameter.[79]However, elsewhere in his report he refers to two other features as being common and logical design extensions. The first is a reduction in diameter of a tool. This would commonly be done for reasons of economy of manufacture, weight-saving and space-saving in the hole. The second is elongating ports on the body of a valve, and improving flow by milling through the reduction in diameter to improve flow. He did not in terms say that this was common general knowledge, but he said it was not new in 2003 and appeared in other tools. He produced and referred to examples of tools showing this feature. Some were valves; some were not (there was a gauge cutter for scraping pipes, and a “bomb hanger” for suspending instruments from). They all demonstrated this feature. They all appeared in well-known catalogues, and his evidence was that it would be common practice for a designer to keep abreast of tools made by competitors and to have these features in mind in his own design.[80]Mr Hicks relied on these matters as making the cutaway an obvious feature within common general knowledge, or one which was obvious over common general knowledge. Mr Alasdair Campbell did not dispute that the equivalent of a cutaway was shown on all or most of the matters relied on by Mr Moyes, but disputed that the items would have been known to a designer (most or all of them were not known to him, in the sense of being carried in his head). Red Spider disputed that the feature was common general knowledge, or was obvious over common general knowledge. They said the process of putting these elements together was one which was one which was illegitimate in the manner described by Lewison J in Virgin Atlantic Airways v Premium Aircraft Interiors [2009] EWHC 26:
“284. Mr Meade submitted that it was not a legitimate attack simply to cast about in the common general knowledge, using hindsight to find disparate elements which, if assembled in the way disclosed by the patent in suit, would fall within the claims. One can perfectly well have an invention in a new assembly of known elements providing a new benefit, and many good inventions are just that. I agree.”
[81]I, too, agree, but I do not consider that that is what Mr Moyes has indulged in. I accept his evidence that a designer would keep abreast of the competition, and would be generally informed about existing designs of downhole tools. In that context the catalogues of major suppliers would be a resource on his bookshelf of the kind he would refer to in the manner referred to by Laddie J in Raychem Corp’s Patents [1998] RPC 31 at 40:
“In the case of standard textbooks, it is likely that all or most of the main text will be common general knowledge. In many cases common general knowledge will include or be reflected in readily available trade literature which a man in the art would be expected to have at his elbow and regard as basic reliable information.”
What Mr Moyes relies on is the basic knowledge of a designer and the material to which he would resort. The valves in the various catalogues are not common general knowledge (and are not relied on as such), but features of the tools can be common general knowledge if sufficiently apparent. In my view the ports exiting through a cutaway is sufficiently apparent on these tools that, as a technique, it should be treated as common general knowledge. Mr Alasdair Campbell said that he would not have remembered any of the items without being prompted, and that in relation to one that he was familiar with he had not remembered that it had a cutaway, but that is not the point. The tools demonstrate a construction technique, used to allow the freer passage of fluid, which falls to be treated as common general knowledge because of its prevalence and sufficiently clear appearance in the catalogues. Nor does it matter that most of the tools were not water injection valves, and that the purpose of some was not to allow injection at all, but to provide a passage for fluid coming the other way (upwards). They still demonstrated the construction technique of the cutaway.[82]If that conclusion is wrong, and common general knowledge stops at longitudinal ports in the body of the valve, then this material supports Mr Moyes’ view that the inventive step is an obvious one to take over that common general knowledge.

The prior art

[83]I will now consider the obviousness case based on prior art, on the assumption that the obviousness case is not hitherto made out.

Otis type T valve

[84]This is a valve such as appears in Appendix 6. The picture demonstrates a valve with a poppet (but without a seat) and with side ports in the casing of the valve. Mr Alasdair Campbell accepts it contains all the integers of claim 1 except: i) the requirement that the whole sealing assembly be within the valve (because the poppet seat is contained within the separate locking mandrel connected to the top of it); and ii) the cutaway.[85]The first is bridged by obviousness. As to the second (which is the key point), Omega say that either it had the cutaway, or it was obvious to add it. The allegation that it had the cutaway is based on drawings supplied by the manufacturer and said to be of this valve, one of which seems to show it. I am not satisfied that this drawing reflected anything in the public domain. It is a design drawing, and it does seem to show the port extending across the reduction in diameter at the bottom of the valve. However, the publicity drawing does not show that. I am not satisfied that the cutaway was in the form of the valve as sold.[86]As to whether it would have been obvious to add the cutaway, if I am right in my conclusions about common general knowledge and obviousness then it would have been obvious, but Omega does not need this piece of prior art because it would have won anyway. If I am wrong in relation to common general knowledge then I find it would not have been obvious to add the cutaway to this particular valve. This valve’s design included the ability to screw another tool on to the bottom of it. If that were done much of the point of adding the cutaway would have been removed because there would be another substantial tool impeding the increased flow below.[87]This piece of prior art therefore does not assist Omega.

Petroline type C

[88]This valve is shown in its marketing literature, which is reproduced Appendix 7. It does not have a reduced diameter. It has side ports and a form of poppet. There was a certain amount of debate about whether this valve had an unimpeded flow path and no pressure loss, but that fell by the wayside in the light of clarification about what that actually meant (it is said to mean the cutaway). If an obviousness attack is maintained, then the position is the same as in relation to Otis. If the invention is obvious over common general knowledge, then it would probably be obvious to modify this valve to introduce a reduced diameter and a cutaway. If it is not, then it would not be obvious to modify this valve in that way.

Burt

[89]This piece of prior art is a US patent from 1944 No 22,483. A drawing is shown in Appendix 8. It is described as an “improved packer capable of efficient use in cementing, washing and acidization operations” in a well bore. The packer is the upper part of the device. Its job is to be lowered down the well and then expanded so that it sits firmly in the bore. Below it is a valve - it can be seen below the ball numbered 30 on the drawing (the ball is not part of the valve mechanism) and is more clearly shown in the blown-up drawing in Figure 3. The valve contains a poppet on a spring. The description describes how the poppet (20) is kept in a slightly open position by a ball catch (24) when the device is lowered in the well. However, when pressure is applied from above the poppet opens further, which causes the ball to fall out of the ball catch so that no longer works. When pressure is removed the poppet spring causes the poppet to seat itself fully and the poppet thereby seals the packer from pressure from below. When the packer has been fully expanded (by pressure) and is firmly in place, fluids can be pumped down, through the valve and into the well bore below.[90]Mr Moyes points out that although this valve is primarily designed for injecting chemicals (to which one has to add cement) it could be used for injecting water. The operating mode would be very similar when injecting water. He maintained that all the elements that one could see in the valve part of this piece of art were highly relevant - there was a poppet on a spring, it sat against a replaceable valve seat; it had a maximised output flow path; there was nowhere for debris to collect. The principal ingredients could just be lifted from this valve element.[91]Mr Alasdair Campbell had much more difficulty with this equipment. He said it was not an injection valve; it was a type of packer known as a retainer. It required high pressure to operate it because a high pressure had to be maintained to keep the seal between the packer and the well bore. The valve therefore needed a high opening pressure (provided by the spring) so that it did not release the sealing pressure. That meant that there would be a pressure drop across the poppet equal to the force of the spring, so the valve could not have a negligible pressure drop. That part of the flow path integer was therefore not disclosed. Furthermore, the valve was an integral part of the packer so it was not suitable for deployment with a wireline lock or packer, and that integer was not disclosed either. So far as obviousness was concerned, the pressure requirements of this valve, and the fact that it was not designed for long periods of continuous high rates of injection made it an illogical starting point for a designer; such a designer would be throwing away most of the equipment (the packer element above the valve); the patent was old; and a flow control engineer would never look at a packer for inspiration in designing a water injection valve.[92]There was considerable disagreement between the experts (not all of which was easy to follow) about the pressures involved in getting this sort of valve to work, and therefore (as far as Mr Alasdair Campbell was concerned) whether there was a negligible pressure drop between the inlet and outlet ports. However, this debate was, or became, somewhat misplaced for two reasons. First, the pressure reference is part of the flow path integer, and that integer became not a literal requirement of the invention, but a synonym for the cutaway. So pressure differentials, as a matter of fact, did not matter. Second, I think the debate was pointing in the wrong direction anyway. If pressure differentials matter, then they are differentials across the valve ie between inlet and outlet ports. One does not start to measure that until the poppet is forced down, by whatever pressure that takes. So the starting pressure point above the poppet, be it great or little, is just that - the starting point of the calculation of the pressures between the two outlets. It does not matter how great it is.[93]Omega rely on Burt as an anticipation. As an anticipation it fails because it does not have a first end for connection to a wireline lock or packer. It is already connected to something else (the actual packer) and this is not plainly a wire line packer. Technically, that element is not there and the anticipation claim fails.[94]However, it only just fails. In my view, all the other elements are there, including the equivalent of the cutaway, which one can see on the drawings. The cross-sectional ratio is present - Mr Alasdair Campbell did not contend otherwise. So is the cutaway, in effect. I do not think it matters that this is not a self-contained valve. The patent, when placed before a skilled addressee who is paying the appropriate amount of attention to a document such as this, would reveal to him a valve, albeit sitting on the end of another piece of tooling. He would see there all the elements of a valve, and would see one with an apparently clear flow path. As Mr Alasdair Campbell said, all the design principles underlying the patent in suit are there. I accept Mr Moyes’ evidence that it has all the ingredients, except that it is not suitable for a wire line deployment by itself. That is easily, and obviously, remedied. A separate valve would have to have a connection anyway, and it would be easy to make the top end suitable for a wire line lock or packer, wireline being the most usual way of deploying a water injection valve anyway. The fact that this particular valve is not specified to be, and as designed may not be fully designed to be, a water injection valve does not matter. Claim 1 (unamended) does not specify a water injection valve. Nor is its age a bar. It is a detailed and apparently thought-through design, and the skilled addressee would give it attention as such, irrespective of its age. One posits that this piece of prior art is put before him, not that he is sifting through lots of pieces of potential pieces of prior art with a risk that an old one would get overlooked.[95]That means that the invention is obvious over this piece of prior art.

The proposed amendment to claim 1

[96]Red Spider makes a conditional application to amend Claim 1 of the patent. In the event that the patent as granted fails, it applies to amend the patent to add a limitation to a water injection valve. I am invited to rule on whether that amendment would fail as being as bad as the existing claims (in effect).[97]In my view it is. My first point of decision is that the patent, properly construed, does not actually claim the inventive concept relied on. Adding the amendment does not change that point of construction. Since Red Spider does not claim that Claim 1 without the cutaway is inventive, the amendment does not save the patent from revocation on that basis.[98]So far as the successful obviousness attacks are concerned, it would not save the patent from those either. Principles of valve design in this field are reasonably generic, and so far as general common knowledge is concerned the skilled addressee seeking to design a water injection valve would have the same common general knowledge as is listed above. The fact that he was designing a water injection valve makes no difference to the obviousness of building in any of the features referred to above.[99]Had Burt been an anticipation, then the proposed amendment would have removed that attack because the Burt valve is not referred to as being a water injection valve. However, it does not remove the obviousness attack because it is obvious that the features disclosed in Burt can be used for a water injection valve. I accept Mr Moyes’ evidence that what Burt discloses is an injection valve. As such there is no reason why it, or its disclosed principles, cannot and would not be used to inject water as opposed to (or as much as) other liquids. It would be as obvious to use those principles (and to add a wireline deployment capability) for a water injection valve as for any other injection valve. As he said:
“I cannot see any significant differentiator between this and the valves here in front of me [viz the Red Spider and Omega valves]. They have all the same principal ingredients. It is a poppet; it is a spring; it is separately mounted and it has big windows; it has a replaceable seat; it has a connection which allowed it to be fit a packer or a bridge plug.”
[100]Accordingly, the proposed amendment would not save Claim 1 and its dependent claims, and I would not allow it.

Claims 25 and 27

[101]These claims appear in Appendix 1. The work string point of construction does not arise here. Both sides accepted that work string in this claim meant a series of tubes connecting the valve to the source of injected material. It does not mean production tubing.[102]Mr Douglas Campbell said that what was inventive here was the same as the inventive concept in Claim 1, that is to say the cutaway, which he said was encapsulated in the equivalent wording in sub-paragraph (e). The short answer to that it that the construction point fails for the same reasons as it fails in relation to Claim 1. Those words (the flow path integer) do not mean the cutaway. That being the case, Mr Douglas Campbell has no other case for the inventiveness of Claim 25, and has no material to beat Omega’s case (which I accept) that the integers of Claim 25 describe an obvious way of working a well. It will be noted that it does not confine itself to any particular type of valve (poppet, flapper or any other kind). Any valve will do provided it has the motherhood and apple pie objective of having no material internal resistance and maintaining pressure across the valve. There really is nothing new about that, and I did not understand Red Spider to be arguing otherwise. Mr Douglas Campbell accepted that he needed what he said was the inventive concept behind Claim 1 to make Claim 25 valid. It does not exist there, so it does not save him.[103]At this point in the reasoning (and very late in the day so far as this trial was concerned) Mr Douglas Campbell then has resort to Claim 27, which adds the limitation of a valve in accordance with Claim 1. But since I have held that a valve in accordance with Claim 1 does not claim the invention either, this does not help him.[104]It follows that Claim 25 (and its dependent claims, including claim 27) fall to be revoked for obviousness or want of novelty (it matters not which - they describe basic methods of working if Mr Douglas Campbell’s inventive concept is not claimed).

Infringement

[105]If the patent is revoked then obviously questions of infringement do not arise. I merely make the following points.[106]Even if Claim 25 is valid, there is no question of any actual infringement by Omega. It has never been suggested that Omega have actually worked the claimed method itself (it is a manufacturer/supplier, not an oilfield operator) for the purposes of section 60(1) of the 1977 Act, and there is no evidence that Omega supplies the means for connecting their valve to a work string for the purposes of section 60(2). Nor have they threatened to do that. The most Mr Douglas Campbell said was that they have not undertaken not to do it, but that is not evidence of anything other than the absence of an undertaking. On any footing this claim to infringement has not been made out even if Mr Douglas Campbell wins on everything else. The same applies to Claim 27.[107]So far as the other claims are concerned, it seems to me whether the Omega valve infringes would depend on whether it has the cutaways (on the assumption that the cutaways are within claim 1). So far as the description in the patent describes cutaways at all, it shows cutaways which produce a flat surface on the lower reduced diameter part. This is seen in the Red Spider valve itself - it is easier to see there than to elaborate further in words. If (contrary to my finding) the patent claims cutaways, then it is cutaways of that nature that are claimed. The Omega valve does not have its cutaways formed in the same way. Where the slots meet the reduced diameter portion they end at an angle, leaving an angled cutaway rather than a locally flattened surface on the reduced diameter portion; reference should be made to the photographs of the two valves. These are not cutaways of the same nature as those described in the patent. They are not the sort of thing likely to be produced by the process of “milling through a cylinder formed on a slope”. Accordingly, even if the cutaway were claimed, Omega would not infringe. I would add that I am assuming for these purposes that the cutaway claim should be taken to describe a cutaway of the type embodied in the Red Spider valve. If there were a claim to any other form of cutaway, based on the wording of the patent, I rather think there would be insufficiency problems; but I do not go into those.

Conclusion on the patent claims

[108]It follows that the patent falls to be revoked, and the patent-based claims all fail. CHAPTER IV – DESIGN RIGHT

The design right case – generally

[109]Red Spider claims design right in various aspects of its valve and claims infringement by Omega by virtue of the latter’s having copied certain parts. As will appear, the claim shifted from what seemed to be a conventional copying claim to one which is somewhat more indirect and more abstract.

Design right - relevant law

[110]The relevant statutory provisions are as follows. All references in this section are to the Copyright, Designs and Patents Act 1988.[111]Section 213 describes design right:
“213(1) Design right is a property right which subsists in accordance with this Part in an original design. (2) In this Part ‘design’ means the design of any aspect of the shape or configuration (whether internal or external) of the whole of part of an article. (3) Design right does not subsist in – (a) a method or principle of construction. ….. (4) A design is not ‘original’ for the purposes of this Part if it is commonplace in the design field in question at the time of its creation. …. (6) Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the design.”
I have omitted provisions as to which no issue arises. No issues arise as to the ownership of design right (if any), duration or the designer. (2) In this Part ‘design’ means the design of any aspect of the shape or configuration (whether internal or external) of the whole of part of an article. (3) Design right does not subsist in – (a) a method or principle of construction. ….. (4) A design is not ‘original’ for the purposes of this Part if it is commonplace in the design field in question at the time of its creation. …. (6) Design right does not subsist unless and until the design has been recorded in a design document or an article has been made to the design.”[112]Section 226(3) defines infringement:
“Design right is infringed by a person who without the licence of the design right owner does, or authorises another to do, anything which by virtue of this section is the exclusive right of the design right owner.”
[113]The prior provisions of this section define those exclusive rights:
“226(1) The owner of design right in a design has the exclusive right to reproduce the design for commercial purposes – (a) by making articles to that design …. (2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly.” (a) by making articles to that design …. (2) Reproduction of a design by making articles to the design means copying the design so as to produce articles exactly or substantially to that design, and references in this Part to making articles to a design shall be construed accordingly.”
[114]I shall return to the application of these provisions to the case in hand when I have dealt with the factual allegations of copying.

The allegations of infringement

[115]There was no allegation of copying the whole valve. The allegations of infringement were in relation to parts or aspects of the Red Spider valve. Those parts or aspects were: i) The overall shape and configuration of the Red Spider valve. ii) The flow windows (which includes the cutaway). iii) The outside diameter reduction below the flow windows. iv) The poppet (or one aspect of it). They are relied on individually and in combination.[116]The nature of the alleged copying is also significant because it sheds further light on the subject matter of the claim. Red Spider accepts Omega’s case that it was Mr LaPlante who did the designing of the Omega valve. It is alleged that in doing that designing he copied the above aspects. Originally it seemed that the allegation was one of actual copying, that is to say reproduction of the actual valve parts, having seen the valve itself, or having had access to drawings or photographs of the valve. The court was apparently to be asked to infer copying from the similarity of the two designs and access to those materials, and much emphasis was apparently going to be put on an allegation that the timetable within which the design took place was so short that it was explicable only on the basis that copying had taken place.[117]During the trial the allegation changed its shape. Although there remained a suggestion that Mr LaPlante had seen a photograph of the valve, it was no longer suggested that he produced designs from that photograph, or by seeing the real thing. Nor was it suggested in the end that for these purposes anyone else saw and relied on anything which amounted to a drawing of the actual valve. Instead, it became alleged that Mr LaPlante reproduced the various aspects of the Red Spider valve by working from the patent drawings. He also derived some information from others - thus it was said that while he originally designed the Omega valve with 4 ports, he later turned that into 3 ports when someone, probably Mr Buyers (or possibly Mr Forsyth), told him that the Red Spider valve had 3 valves (or so it was suggested). There was a suggestion that he saw a photograph or photographs, perhaps in publications, and there was a suggestion that he had access to a product description document (which had a photograph of the Red Spider valve on it), but the principal charge was that he copied from the drawings in the patent (or, more precisely, the patent application, but the drawings are the same).

The underlying difficulties of the copying allegation

[118]This way of putting the copying allegation leads Red Spider into serious difficulties in making its claim. The pleaded case, and the case as opened, contained allegations that Mr LaPlante copied from things which would (if proved) amounted to a copying of aspects of the Red Spider valve. However, the effective abandonment of those allegations means that Red Spider is relying on a source (for copying purposes) which is apparently not a reproduction of the Red Spider valve.[119]Infringement of design right involves an unlicensed “copying of the design so as to produce articles exactly or substantially to that design” (section 236(2) and (3)). So if Omega are to have infringed then someone (Mr LaPlante) must have copied the Omega valve by copying the valve itself or something which is a rendition of it (a drawing or photograph). The allegation (which I find proved) that he saw a photograph at some point can be put on one side for these purposes, because any reference to it was passing, and the principal source for Mr LaPlante was the patent application drawings. Those drawings are not, and do not seem to have been intended to be, renditions of the Red Spider valve. One can see from the history of those drawings that figure 2 preceded the design process for the Red Spider valve. There is no genuine sense in which it can be said to be a rendition of the Red Spider valve, as opposed to something embodying some of its “ideas” because neither the Red Spider valves, nor its design documents, existed at the time these drawings (figure 2) were actually created. This means that any “copying” from those drawings cannot be a copying of the Red Spider valve design.[120]The figure 1 drawings probably came into existence at a time after the design process of the Red Spider valve started, so it does not share the same chronological problem as the figure 1 drawings. However, no proper design chain was proved to show that the drawing actually was, to any extent, a drawing of the Red Spider valve, as opposed to a drawing of a valve which shared some of the Red Spider features. There was some evidence of common authorship, but no more than that.[121]Accordingly if Mr LaPlante copied features from the patent application drawings then in my view it is not proved that he copied the Red Spider valve. That is fatal to the claim. However, I do not rest my conclusion on that point alone. In what follows in this judgment I work on the assumption that I am wrong and that (subject to points made in the course of the analysis below) the patent application drawings are not disqualified by the above factors as being a source from which the Red Spider might be said to have been copied.

The subject matter of design right

[122]The subject matter of the claim requires further consideration in order to separate out what is protectable and what is not. I will consider each of the claimed aspects in turn.[123]The first is the overall shape and configuration of the valve. By this Red Spider meant the shape as a whole. It was not disputed that the overall shape of the valve was capable of being the subject of design right. The principal issue was whether it, or a substantial part, was copied.[124]Next is the flow windows, including the cutaway. Again, the actual windows and the cutaways in their form, and dimensions (or perhaps their relative dimensions) are in my view capable of being an aspect of the shape or configuration of the valve. However, in his final submissions Mr Douglas Campbell went further than that and advanced what he said was a “backup” case. This was to the effect that he was entitled to design right in “the concept of having rectangular windows” in a water injection valve, and, I think, the concept of the cutaway. This secondary case, which had not really surfaced clearly before, is contrary to the provisions of section 216. It is an attempt to seek protection for a method or principle of construction - the method or principle of constructing a valve with rectangular flow windows in housing of a water injection valve. Such an attempt is plainly excluded by subsection (3)(a). The relevant distinction is between real, particular designs on the one hand (which are capable of protection under the section) and ideas on the other. The most that Red Spider is entitled to is protection of the former. In Handor v Hawa International [2007] FSR 181 Neuberger LJ cited with approval an extract from a textbook: “The real meaning is this: that no design shall be construed so widely as to give to its proprietor a monopoly in a method or principle of construction. What he gets is a monopoly for one particular individual and specific appearance. If it is possible to get several different appearances, which all embody the general features which he claims, then those features are too general and amount to a method or principle instruction. In other words, any conception which is so general as to allow several different specific appearances as being made within it, it is too broad and will be invalid.” (para 13) The emphasis is mine. It helps to describe how far Red Spider is entitled to go. It is entitled to claim protection for its particular windows and cutaways, but not in the general idea of having them (in rectangular form so far as the ports are concerned) in the first place. This is a crucial distinction for the purposes of this case.[125]Next Red Spider claims the outside diameter reduction. The same distinction arises here. It is probably right to say that, subject to commonplace, the actual shape of the reduction of diameter, as manifested in the Red Spider valve, and is an aspect of the shape and configuration of that end of the Red Spider valve, is capable of attracting design right protection. However, the idea of doing that is not – it is a method or principle of construction. Mr Douglas Campbell made a primary and secondary case here as he did with the overall shape; his secondary case fails for the same reason.[126]The claim to the poppet underwent some changes in the course of the hearing. Originally what was claimed was the shape and configuration of the poppet and in particular its streamlined profile which has a 15 degree taper. Mr Alasdair Campbell’s report sought to compare the shape of the Omega poppet with the Red Spider poppet, and he pointed out similarities in the shape and angles. However, by the time of final speeches the only aspects of the poppet relied on were its streamlined quality and the 15 degree angle of its slope (the latter being the physical way of achieving the former). In my view the streamlined attribute, thus described, is not something protectable by design right. It is a concept, not a design. In terms of the Act, it is a method or principle of construction. What Red Spider are or may be entitled to claim design right in is their particular streamlined poppet This is the same point as is made above; but at least by the end of the trial Red Spider did not seek to do this.[127]The 15 degree angle claim is one which is more in line with the principles of design right. Mr Hicks submitted that such a small part of the whole could not be the subject of design right, either because it was not a real “design” or because it lacked originality. He sought to draw a parallel with a copyright claim to a single word, which he said would fail for similar (parallel) reasons. In my view copyright law does not assist on this point. Design right has its own statutory regime, and it is to Part III of the 1988 Act that one has to look for the criteria for design right. Design right can be claimed in “any aspect of the shape or configuration … of the whole or part of an article” (my emphasis). A Fulton Company Ltd v Fulton Isotoner (UK) Ltd [2004] RPC 16 indicates that part means part. That part of the Red Spider poppet which is the edge which is 15 degrees to the centreline is capable of being a “part” for these purposes, and therefore of attracting design right protection, subject to the statutory qualifications. However, design right still exists only in the actual design itself, not in the idea of a 15 degree poppet slope.[128]It was said that some aspects of design right which were relied on by Red Spider were commonplace. I do not intend to make any findings about that, in the light of other findings that I make which make it unnecessary to decide it.

Findings on copying

[129]In due course I shall have to consider the nature of what it was that Mr LaPlante took from the Red Spider valve, and whether it is actionable, but first it will be useful to make findings about what Mr LaPlante actually did.[130]Mr LaPlante had a background in engineering and before joining Omega in the summer of 2005 he had worked for Petroleum Engineering Services Ltd (PES), who made downhole valves. They made a valve for water injection and he had done a thesis on pressure drop through water injection valves. The Omega valve was his first design project after joining Omega. On or about 13th June 2005 he was given a list of tools by Mr Buyers and Mr Buyers suggested that he start by designing one of them. The list was for projects which:
“we have no customer for but ‘would be nice to do’. The Omega ethos has always been to be different and not to copy products but to ‘create a market’ with our own tools. In this way, we establish a divide between ourselves and our competitors. Presently, we have moved slightly to counter emerging competition from Caledyne, Red Spider and others. This means that we have to look at the offerings from these companies and if possible provide something superior.” 131. No. 3 on the list was “Injection Valve”, and was followed by the sentence: “Present injection valves appear to have a poor track record. Problems are leaks back through the valve when shut, vibration causing valves to ‘drop off’ and vibration affecting plug connection.”
Mr Buyers had heard that there were problems with the Red Spider valve. This document suggests that Mr Buyers expected Mr LaPlante to look at the products of others, and in cross-examination he confirmed that he did expect that.[131]Mr LaPlante was free to choose which of the projects he tackled first, and he chose the water injection valve because it was the simplest and because it involved a tool with whose general nature he was familiar (because of his prior employment). In the course of his design exercise Mr LaPlante searched for patents and downloaded, amongst other things, the Red Spider patent application which had drawings which are the equivalent of the actual patent drawings. He said that he downloaded the patent application for two purposes. First, so that he could see the claims and avoid infringement issues in the future, and second so that he could “see what’s out there”. He also had catalogue pages which he looked at to see what was on the market. I accept this evidence.[132]He ended up with the design that we now see. His witness statement denied copying the Red Spider valve to get there. It says that the main influence on him was the PES valve, though it also conceded influence from other valves. In his cross-examination he amplified this considerably. He accepted that he was “inspired” by the design shown in the patent drawings (together with other valves). Eventually it transpired that his use of the word “inspired” was intended to mean that he got ideas about various features. He denied copying them as actual features in the sense of reproducing what he saw. His evidence was sometimes inconsistent on this, and on occasions betrayed the sort of carelessness that I have referred to above. Thus at one stage he seemed to be agreeing with a suggestion that he drew inspiration from the patent drawings for the reduced diameter at the bottom of the valve. Then, when pursued in more detail, he denied that. I found his later denial more convincing.[133]His final position was that he was inspired (in the sense referred to above) by the streamlined poppet (though not the particular angle of the poppet), having the outlet ports on the casing of the valve, having a cutaway and the “overall shape and configuration” of the valve. The meaning of the latter, supplied by Mr Douglas Campbell for the purposes of his question in cross-examination, was “the entirety of the valve”. Mr LaPlante accepted it would have been “an inspiration” (my emphasis); he also referred to other valves which inspired him.[134]As I have observed, Mr LaPlante’s evidence en route was from time to time contradictory and confusing. By way of another example, he answered some questions on the cutaway before it transpired that he did not know what was being referred to by that expression. However, I accept he was being both accurate and honest in his evidence to the effect referred to in the preceding paragraph. The case of copying, or reproduction of the design, cannot be put any higher than that. A designer might look at another product, note some features as being useful and replicate them in such a way as amounts to reproduction of that actual feature. As Mr Douglas Campbell pointed out, there are various levels at which inspiration can be taken, ranging from the very general to something which amounts to reproduction. However, I find that Mr LaPlante took no more than the ideas behind the concepts that he referred to, and sometimes mixed them with the same ideas that he saw elsewhere. I find that for at least three reasons. First, I found him to be an honest and accurate witness on the point and accept that his “inspiration” did not go so far as copying in the sense of a perception of a detail of design and a precise (or fairly precise) reproduction of that very detail. He told me, and I accept, that he did not spend a lot of time with the patent drawings. Second, not only did I find him a credible witness on the point, I think that his evidence coincides with the probabilities in relation to the material that he had to work from. While figure 1 is a somewhat detailed drawing, it has its flaws, and it is much more likely that a designer would take (if anything) only ideas from it rather than particular details and copy them (as details). Third, it is consistent with what one sees when compares the Omega valve with the patent application drawings. One does not see reproductions of actual features; one sees, at most, common ideas differently implemented.[135]That last point requires a little elaboration. The patent drawings are not actually drawings of any real-life valve. Figure 1 has the air of a design drawing, but does not correspond to the actual Red Spider valve. Various features of the Red Spider valve (not least the ports and cutaway) do not appear in the drawing. Indeed, it does not purport to be a rendition of the Red Spider (or any real life) valve. Figure 2 is a schematic. Ports in the casing appear on all those drawings, but they are nothing like those in the Omega valve. In Figure 1 they do not run the whole length of the casing, and there are only two of them. I reject the suggestion that there is a third on the left hand side running through the reduced diameter portion. That is something which one would only look for if one knew there were valves (and particularly the Red Spider valve) which had that feature. Figure 2 shows elongated ports, but there are two, not three, and it is a schematic which can only give ideas - one could hardly say that, looking at it, the Omega valve is in any meaningful sense a copy of it (I deal below with the statutory test). The Omega cutaway is actually different from the flat plane cutaway which appears in Figure 2 (so far as one can tell from the drawing). Omega’s is different as a drilling-through exercise, ending with an angle, and therefore does not achieve a flat plane on the reduced diameter section. Looking at the Omega valve, Mr LaPlante can hardly have taken any more than the idea of the ports and the cutaway from these drawings. So far as the poppet is concerned, a conical poppet is a conical poppet. The only measurement which the Omega valve and the patent drawings have in common (or at least the only one relied on by the end of the trial) is the 15 degree angle of it. That is hardly enough to suggest copying. Since I think it fundamentally unlikely that a designer like Mr LaPlante would actually measure the angle off a drawing like the patent drawings, the most he will have seen is that it is streamlined, and then produce a suitable angle himself (he says that his CAD package actually defaults to 15 degree steps, which explains why he too had that angle - I accept that evidence). So far as the overall shape and configuration is concerned, the Omega valve has a similar overall aspect, but is differently dimensioned in terms of ratios of one part to another. One can see at most the idea translated, but not relevant particulars.[136]In summary, therefore, I do not think that Mr LaPlante took any more than ideas for various features of the valves from the Red Spider patent drawings. The ideas were at a fairly high level of abstraction.[137]It was also part of Red Spider’s case that Mr LaPlante found out that the Red Spider valve had three ports, not four, and that he copied that into his valve as well. We have his design drawings from when he first set about his project. The drawings all show a four port valve, not a three port valve. His final design was a three port valve. It is unclear from the drawings how and when that change was made. Red Spider says that this change was made because someone looked at the Red Spider design, told him that it had three ports, and that he changed his design accordingly. There was evidence, which I accept, that Mr Buyers was exhibiting at a BP “mini-exhibition” at which Red Spider was also exhibiting its valve in April 2005, and that he had an opportunity of seeing that it had three outlet ports. Some photographs existed from which the presence of three ports could be deduced. There was a Red Spider internal document on Omega’s file (though not on Mr LaPlante’s design file) which had a photograph of the Red Spider valve on it. It was a private document which ought not to have been there, but there was no evidence of how it got there. I think its presence betokens an interest in a competing product, which one would expect in a commercial organisation. I think it more likely than not that at some stage someone will have mentioned to Mr LaPlante that the Red Spider valve had 3 ports, if only because it was a noteworthy and interesting feature. It may be that that idea fed its way into Mr LaPlante’s thinking as he finalised the design for his valve, though it did not feature largely. I find that he did not deliberately create a valve which had three ports because the Red Spider valve had three ports. Had that been his intention, or the intention of someone else in Omega, I think it likely that Mr LaPlante’s designs would have had three ports from the outset. Furthermore, I can see no point in mimicking the number of ports, and none was put to Mr LaPlante.

Whether the applied inspiration is actionable as an infringement of design right

[138]This point must be taken separately in relation to each of the allegations of infringement, though some grounds has been covered already in the preceding section, and I shall have to add some more development in relation to the ports and cutaway. The question is whether Mr LaPlante “cop[ied] the [relevant part] of the design so as to produce articles exactly or substantially to that design”.[139]The first alleged copying is of the “overall shape and configuration”. By this allegation Red Spider seem to mean that one starts with the valve as a whole, and that the Omega design has been made “substantially to” the Red Spider design. It cannot be seriously contended (and was not contended) that it is a complete and exact copy.[140]If one is to find copying one must find similarities which can be said to be a copy of the aspect in question, and those aspects must not be excluded by the commonplace or method of construction exclusions. Red Spider has chosen to rely on the whole of the valve as the protected design, using a highly generalised method of description which (no doubt deliberately) follows the wording of section 213. This is essentially an allegation that the Red Spider valve has been substantially copied, so one has to look for relevant similarities. The assessment is an objective one: “Whether the design is made substantially to the plaintiff’s design must be an objective test to be decided through the eyes of the person to whom the design is directed.” (per Aldous J in C & H Engineering v F Klucznik & Sons Ltd [1992] FSR 421)[141]Carrying out that assessment, I find that the Omega valve does not have a sufficient level of similarity with the design of the Red Spider valve to amount to a substantial reproduction for the purposes of the section. They have similarities, but the Omega valve is not made substantially to the Red Spider design. There is a top element, but it is not the same, and so far as it amounts to a top sub which encloses the inlet port, then thus stated it is no more than a method of construction. There is a poppet, with a 15 degree angle, in both (not visible in the “shut” configuration), but the Omega poppet is not a copy of the Red Spider poppet, and the spring mechanism is different. Each has outlet ports in the body of the valve, but thus described that is no more than a method of construction, which is not an aspect which is protected by design right. Each has three ports, but that cannot be a copy of the patent drawings, because those drawings have 2. The shapes of the ports and cutaways on the Omega valve differ from those on the Red Spider Valve and the patent application drawings. The reduction in diameter is admittedly similar in concept and slope but differs in extent and shape. The lower end of each valve is very different, because the Omega valve has a housing for the damping mechanism. The overall dimensions are rather different. Taking the overall shape of each as a whole, there is not sufficient similarity to justify the objective conclusion that the one is a valve made substantially to the design of the other. This claim therefore fails.[142]The next aspect which is alleged to have been substantially reproduced is “the flow windows (which includes the cutaway)”. One must be careful to bear in mind the limits of the claim and the lack of protection for methods or principles of construction. The most that Red Spider is entitled to do is to point to its particular ports and cutaways and claim design right protection for those. It does that in claiming design right in those particular aspects.[143]When one looks at the Omega valve, and compares it with the Red Spider valve, it is apparent that the actual designs of the slots and the cutaway have not been reproduced, or substantially reproduced. The slots are differently designed - the Red Spider slot is rectangular; the Omega slots have a taper in width at the bottom end. They have different run-in angles at the top (45 degrees for Red Spider; 60 degrees for Omega.) The cutaways are different - the Red Spider cutaways are milled through so as to produce flats on the reduced diameter portion, whereas the Omega’s are not produced in that way. Red Spider’s designs have not been substantially reproduced.[144]I have already made some findings about the extent to which Red Spider’s 3 ports, as opposed to 4, found its way into Mr LaPlante’s thinking. Again, this does not amount to copying a valve substantially to the Red Spider design in this respect. The most that was conveyed to him was that the Red Spider valve had 3 ports - I find that he was not given the design to copy. He therefore received no more than the idea of having three ports. What was conveyed to him was not the Red Spider design, but the idea. That is a method or principle of construction. So if and to the extent that that played a part in his thinking, he was using no more than a principle of construction, which is not protected by the Act.[145]I therefore find that the ports and the cutaway designs are not infringed by the Omega valve.[146]Next is the reduction in diameter below the central port section. Both valves demonstrate this is a feature of their construction, and it is apparent from the patent application drawings. Both valves have the same slope - a 30 degree angle. It is not contended that this precise angle could have been copied from anything other than a detailed drawing, and it is unlikely that Mr LaPlante would have bothered to measure this as an angle from the patent drawings so as to reproduce it, and I find he did not. But that is the only relevant similarity. The valves reduce to a different amount in their reduced diameter section. The Red Spider valve reduces from 3.479” to 2.182”; Omega’s reduces from 3.6” to 2.75”. So the reduction is of a different length. The Omega valve has radiused blends on the diameter changes, both internally and externally; the Red Spider valve does not. It is impossible to see how the Omega valve can reflect the taking of anything more than an idea, and the idea of having a reduced section below the main valve section is, in my view, a method or principle of construction. The particular manifestation in the Red Spider valve was not, I find, copied by Mr LaPlante. I doubt if he took anything of any significance at all in relation to this aspect, but if he did then it was no more than the idea. Doing so did not amount to reproducing the Red Spider design within the meaning of the Act.[147]Last, Red Spider claims reproduction of the poppet, or to be more precise one feature of it. Mr Douglas Campbell oscillated between claiming design right in a streamlined poppet and the shape and configuration of the Red Spider poppet with a 15 degree slope to it (a feature shared by both valves in this case) but in the end his case came down to the latter. Other similarities in the shape of the ends of the two actual poppets featured in Mr Alasdair Campbell’s report, but it was not put to Mr LaPlante that he reproduced the whole shape of the poppet by copying from the patent drawings. The point came down to the angle of the poppet, which was 15 degrees in the patent application drawing. I have made my findings above about what Mr LaPlante took from the drawing - he drew “inspiration” from the fact that the poppet was streamlined, and did not copy the angle.

Conclusions on design right

[148]It follows that I find that the case based on infringement of design right fails. CHAPTER V - CONCLUSIONS

Overall conclusions

[149]The consequence of my findings is that the claims of the claimant shall be dismissed and the counterclaim shall be allowed so that the patent in suit falls to be revoked.