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Before and after snapshot – how Actavis affects infringement

28 November 2018

In a recent decision by the Court of Appeal, Judge Lord Kitchin applied the principles of Actavis vs Eli Lilly (Actavis) to rule upon a patent infringement dispute in Icescape v Ice-World (see here).

As previously reported, the landmark Actavis judgement was a 2017 decision from the Supreme Court that essentially changed the decades-old understanding of infringement in the UK (see here).  The Actavis decision effectively introduced a doctrine of equivalents, and opened up the possibility of referring to the prosecution history. Interestingly, on the issue of infringement in Icescape, the first High Court decision from which this Court of Appeal case was referred was decided before Actavis. It is therefore possible to make a direct comparison of the outcome before and after Actavis.

The Actavis decision also raised important questions, including some about the role of equivalents in novelty.

In this article, in addition to examining the difference in outcome before and after Actavis, we will summarise which of these questions have been addressed by Lord Kitchin.

Background

Icescape v Ice-World assessed whether Ice-World’s patent for a mobile ice-rink cooling member was valid and infringed by the defendant. The patent (EP (UK) 1462755) discloses an ice-rink cooling system, comprising a feed and a discharge manifold, which are connected in series. Each pipe connecting the discharge and the feed manifold includes a rigid section extending from each manifold, connected by a flexible junction. The junctions allow groups of pipes to be folded against each other to facilitate easy transportation of the system.

The first question to be decided by Lord Kitchin was whether Ice-World is entitled to priority in respect of their patent. Due to differences between the priority document and the patent, the Court decided that the priority claim and therefore the patent was in fact invalid.

Infringement

Despite the invalidity of the patent, the Court of Appeal still considered the question of infringement. Although Icescape’s rink also included flexible tubing, they maintained that there was no infringement, as the discharge manifold of Icescape was connected in parallel, rather than in series. In the lower instance proceedings, the High Court concluded that there was no infringement, in light of the claim construction guidelines set forth by Improver.

The decision by the High Court was issued before Actavis v Eli Lilly was concluded, hence the approach to interpretation of the claims taken by the Court of Appeal was “markedly different”. It took account of modified Improver questions or, as Lord Kitchin referred to them, Actavis questions.

Lord Kitchin began his deliberations by determining whether Icescape’s variant falls under the scope of the claims by way of the normal interpretation. The judge ruled that the skilled person would have read the claims to mean that elements of the system are connected in series, but the defendant’s system does not follow this structure. As Icescape’s system did not fall under the scope of normal claim construction, Actavis questions had to be applied.

Lord Neuberger’s “literal interpretation” from Actavis was understood by the Court of Appeal as “normal (i.e. purposive) interpretation”. This is in line with the rulings of other judges who considered Actavis during infringement cases they tried.

Lord Kitchin then asked Actavis questions to establish whether or not infringement took place. To find infringement, the answer to questions a) and b) must be “yes”, and the answer to question c) is “no”.

a) Does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?

Yes: The claimed inventive concept was found to be the provision of a fluid-tight flexible joint member. Lord Kitchin held that the different arrangement of discrete elements is an immaterial modification which is obvious in view of the common general knowledge, hence the variant and the invention disclose the same inventive concept.

b) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?

Yes: It was considered that arranging the manifolds in a specific way did not affect how the flexible tubing performed its function.

c) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention.

No: Lord Kitchin concluded that the inventive concept does not lie in the fluid flowing through pipes arranged in series or parallel. There was no reason why a skilled reader would have thought that strict compliance with these features was an essential requirement of the invention”.

Consequently, the defendant would have been found to infringe the patent, had it been valid.

The ruling in Icescape has reaffirmed that the meaning of the words in a claim is of a lesser significance compared to the inventive concept that the claim is aiming to protect. This is in line with the recent rulings which applied the precedent set by Actavis to determine if infringement took place.

Prosecution History

With respect to the use of prosecution history to determine the scope of the patent, Lord Kitchin concluded that this was not needed. The defendant submitted evidence that supposedly showed the intention by the applicant to remove features defining a specific arrangement of elements in the system. Nevertheless, Lord Kitchin rejected the defendant’s claim, arguing that:

“it is impossible to discern in the correspondence any suggestion that Ice-World was surrendering an ability to argue that [the relevant features] were inessential or that Ice-World was accepting that the scope of the claims did not extend to a system in which the feed and discharge manifolds are connected in parallel rather than in series”.

Since Actavis, no infringement case tried in the UK courts passed the threshold above which it would be appropriate to consult the prosecution history.

Novelty

After Icescape v Ice-World, it is still unclear what effect Actavis has on the law of novelty. Hypothetically, a claim may be limited by introducing a non-essential feature to overcome a novelty objection. Some have suggested that to keep to the maxim that “whatever infringes a patent would have been novelty destroying if done before the priority date” it is necessary to introduce considering of equivalents to novelty assessment.  Accordingly, applying the Actavis questions could potentially lead to a conclusion that the claim of the new application is anticipated by the equivalent from the prior art, because they have the same inventive core. This issue did not arise in this case.

Summary:

  • By applying Actavis questions to determine whether infringement took place, the Court of Appeal overruled the High Court’s decision on infringement in favour of the claimant. The High Court relied upon Improver questions to formulate its decision, i.e. the law before Actavis.  This shows that the landscape really has changed, and it may be worth revisiting old infringement opinions;
  • Lord Kitchin’s decision in Icescape v Ice-World confirms how the Court understands the meaning of “literal interpretation” of the claims, which is normal (i.e. purposive) interpretation, making this a little clearer;
  • This dispute did not meet the criteria for referring to the prosecution history to answer a question of equivalents, showing that this is likely to be maintained as a high bar;
  • Icescape v Ice-World did not consider the effect of the doctrine of equivalents on the law of novelty. Lord Kitchin, who has been recently appointed a Supreme Court judge, may address this issue when another infringement case is tried at the highest instance court. Watch this space.

Pawel Pietruszka
Advanced Engineering group

If you require further information on anything covered in this briefing, please contact Pawel Pietruszka (ppietruszka@withersrogers.com; 44 1926 310 700) or your usual contact at the firm. This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP, November 2018