Jushi Group Company, Ltd (a company registered in the People's Republic of China) v OCV Intellectual Capital, LLC (a company registered in the United States of America)
| Jurisdiction | England & Wales |
| Judge | Lord Justice Floyd,Lord Justice Kitchin,Lord Justice Henderson |
| Judgment Date | 19 June 2018 |
| Neutral Citation | [2018] EWCA Civ 1416 |
| Docket Number | Case No: A3/2017/1073 |
| Court | Court of Appeal (Civil Division) |
| Date | 19 June 2018 |
[2018] EWCA Civ 1416
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
INTELLECTUAL PROPERTY ENTERPRISE COURT
HHJ Hacon
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Kitchin
Lord Justice Floyd
and
Lord Justice Henderson
Case No: A3/2017/1073
Justin Turner QC (instructed by Bristows LLP) for the Appellant
Iain Purvis QC and Tom Alkin (instructed by Mewburn Ellis LLP) for the Respondent
Hearing date: 09 May 2018
Judgment Approved
This is an appeal from a decision dated 6 February 2017 of HHJ Hacon sitting in the Intellectual Property Enterprise Court by which he dismissed an action brought by the appellant, Jushi Group Co., Ltd (“Jushi”), to revoke European Patent 1 831 118 (“the patent”) belonging to the respondent OCV Intellectual Capital, LLC (“OCV”). The judge held the patent was valid and (on the basis of an admission) consequently upheld OCV's counterclaim for threatened infringement in relation to one of Jushi's products. Jushi appeals, arguing that the judge ought to have found the patent invalid for lack of novelty and obviousness.
The facts
The patent claims a priority date in December 2004. The invention claimed is a glass fibre or “strand” for inclusion as reinforcement in other materials such as glass-reinforced plastic. The American Society for Testing Materials (“ASTM”) defined a number of standard categories of glass for use in glass fibre, including the ranges of constituents that make up that type of glass. In 2004 by far the most widely used category was ‘E-glass’, or electrical grade.
To make glass fibres the chosen constituents are first heated to produce a molten glass. The molten glass passes, under gravity, through a pattern of holes, to emerge as fibres which are subsequently cooled and treated further. For this process to work, the formation of solid crystals within the molten glass, a process known as ‘devitrification’, must be avoided. The ‘liquidus’ temperature of the glass is the lowest temperature at which the glass is wholly free of crystals. In addition, the glass should be of the correct viscosity. The temperature at which the glass will achieve the desired viscosity is known as the “log 3 forming temperature” or the “fibre forming temperature”.
One of the significant costs of glass production is that expended on heating, and so using a process with a low fibre forming temperature offers an important cost advantage. On the other hand, to ensure that the production of fibres occurs without devitrification, the fibre forming temperature should be, as a rule of thumb, at least about 50 0C above the liquidus temperature. This differential is known as the forming or fiberizing range or as ‘the Delta-T’.
The composition of the glass plays a key role in determining its properties. Various oxide components are used to control properties. They are classified as network formers, intermediates and network modifiers. Network formers include principally silicon dioxide (SiO 2) and boron oxide (B 2O 3) which form a molecular chain network which holds the glass together. Network modifiers include the monovalent oxides of the alkali metals (lithium, sodium and potassium) and the oxides of divalent alkaline earth metals (calcium, magnesium, barium and strontium). The inclusion of these oxides disrupts and pushes apart the network, reducing the softening point of the glass, its processing temperature and its viscosity. Network modifiers can also disrupt and delay glass devitrification. Intermediate oxides can act either as network formers or as network modifiers. Aluminium oxide and titanium oxide are intermediate oxides.
The claimed invention is a glass strand comprising a number of listed constituents. Each is required to be present either in a specific range of percentages by weight, or in a range specified for a pair of components. In addition, the ratio of calcium oxide to magnesium oxide (“CaO/MgO”) is required to be less than or equal to 2. Finally, three of the constituents (Al 2O 3, MgO and Li 2O) taken in combination must constitute at least 23% of the total percentage by weight. Claim 1 reads:
“1. A glass reinforcement strand whose composition comprises the following constituents in the limits defined below, expressed as percentages by weight:
SiO 2 58–63%
Al 2O 3 12–20%
CaO 12–17%
MgO 6–12%
CaO/MgO ≤ 2, preferably ≥1.3
Li 2O 0.1–0.8%, preferably ≤ 0.6%
BaO + SrO 0–3%
B 2O 3 0–3%
TiO 2 0–3%
Na 2O + K 2O < 2%
F 2 0–1%
Fe 2O 3 < 1%
wherein the composition has an Al 2O 3 + MgO + Li 2O content equal to 23% or higher.”
At [0007] the patent refers to the conditions under which E-glass can be fiberized. These are said to be highly advantageous in that the working temperature is relatively low, at around 1200°C, the liquidus temperature is about 120°C below the working temperature, and its devitrification rate is low.
The ASTM specification for E-glass left it open to make glasses which did not contain boron or fluorine compounds. The specification points out at [0011] that the fiberizing conditions for boron-free E-glass were less favourable than those for boron-containing E-glass, but the glass remained economically acceptable and had a specific Young's modulus at an equivalent level.
At [0012] the patent acknowledges as prior art U.S. Patent 4 199 364 (“Neely”). Neely is reported as disclosing an inexpensive glass containing neither boron nor fluorine which has mechanical properties comparable to those of E-glass.
At [0014] the patent explains that, in bulk, R-glass (another ASTM category) is known for its good mechanical properties, especially as regards the specific Young's modulus, which is around 33.5 MPa/kg/m 3. However, the melting and fiberizing conditions were more constrictive than in the case of the E-glass, and therefore the final cost of R-glass was higher.
At [0016] – [0017] the patent explains the object of the invention:
“Other attempts at increasing the mechanical strength of glass strands have been made, but generally to the detriment of their fiberizability, the processing then becoming more difficult or imposing the need to modify existing fiberizing installations.
There is therefore a need to have glass reinforcement strands having a cost as close as possible to that of E-glass and exhibiting mechanical properties at a performance level comparable to that of R-glass.”
Particular attention is drawn to the CaO/MgO ratio at [0022] to [0024]:
“Lime (CaO) is used to adjust the viscosity and to control the devitrification of the glasses. The CaO content preferably lies in the range from 13 to 15%.
Magnesia (MgO), like CaO, acts as a viscosity reducer and also has a beneficial effect on the specific Young's modulus. The MgO content lies in the range from 6 to 12%, preferably from 7 to 9%.
The CaO/MgO weight ratio proves to be an essential factor for controlling devitrification. The inventors have identified that a CaO/MgO ratio not exceeding 2, but preferably greater than 1.3, promotes crystallization of the glass in several phases (anorthite: CaO.Al 2O 3.2SiO 2 and diopside: CaO.MgO.2SiO 2, or even forsterite: 2MgO.SiO 2 or enstatite: MgO.SiO 2) which enter into competition for growth at the expense of the liquid phase. This competition has the effect of limiting the maximum growth rate of the crystalline phases and therefore reducing the risk of the glass devitrifying, and of allowing it to be fiberized correctly.”
At [0028] the patent explains that “[p]referably” the sum of the Al 2O 3, MgO and Li 2O contents is “equal to 23% or higher, thereby making it possible to obtain very satisfactory specific Young's modulus values (of greater than 36 MPa/kg/m 3) while still having good fiberizability”. Despite the use of the word “preferably”, it is common ground that the skilled person would understand that this feature has been incorporated into and become a requirement of the claim.
The patent also includes a table of results either obtained or calculated for various compositions of glass. The table includes two comparative examples, one of which (example 7) is example 5 of Neely. At [0046] the patent claims that:
“[0046] … the examples according to the invention exhibit an excellent compromise between melting and fiberizing properties and mechanical properties. These fiberizing properties are particularly advantageous, especially with a liquidus temperature of around 1210°C, which is much lower than that of R-glass. The fiberizing range is positive, in particular with a difference between T(log η=3) and Tliquidus of more than 50°C, and possibly up to 68°C.
[0047] The specific Young's modulus of the glass obtained from the compositions according to the invention (Examples 1 to 5) is markedly higher than that of E-glass and also improved over that of R-glass and the glass containing no Li 2O (Example 6).
[0048] Remarkably, with the glasses according to the invention, substantially better mechanical properties than those of R-glass are thus achieved, while appreciably lowering the fiberizing temperature, bringing it close to the value obtained for E-glass.
[0049] The glasses according to the invention crystallize in three phases. At the liquidus, the phase is diopside, which is more favourable as it is less refractory than anorthite (Example 6). The maximum growth rate of diopside is lower than in the case of the glass of Example 7 for which the CaO/MgO ratio is 2.14 (a reduction of at least 50%).
[0050] The glass strands according to the invention are less expensive than R-glass strands, which may advantageously be replaced in certain...
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