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Skating towards Patent Infringement

On 10 October 2018 the Court of Appeal handed down a decision on Icescape Ltd v Ice-World International BV & Ors [2018] EWCA Civ 2219.  Although other issues were decided in this case, Lord Kitchin’s approach to infringement of patents following the decision of the Supreme Court in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48 is of most interest.

In brief this case was an appeal from the decision of the High Court.  Ice-World make mobile ice rinks and are the proprietors of EP (UK) 1,462,755 entitled “Cooling member for a mobile ice rink” (“the patent”).  Icescape designed, made and began to operate its own mobile ice rink.

In May 2015 Ice-World wrote to Icescape asserting that Icescape’s mobile ice rink infringed the patent.  Then, in May 2016 Ice-World sent letters to Icescape and a large number of its actual and potential customers asserting infringement.  In June 2016 Icescape issued proceedings complaining of the May 2016 letters and seeking relief for groundless threats of infringement, revocation of the patent and a declaration that none of its activities infringed the patent.  Ice-World responded, disputing that the patent was invalid and alleging infringement.  It accepted that it had written threatening letters but maintained that those threats were justified.  It also contended that if, contrary to its primary case, the patent was invalid, it had a defence to the claim for threats under section 70(2A) of the Patents Act 1977 (“the 1977 Act”) on the basis that it did not know and had no reason to suspect that the patent was invalid in that respect.

The High Court determined that:

  1. i) the patent was not entitled to priority and was invalid;
  2. ii) the mobile ice rink made by Icescape did not fall within the scope of the patent; and

iii)      Ice-World did not have a defence to the claim for unjustified threats under section70(2A) of the 1977 Act.

Ice-World appealed to the Court of Appeal.

As set out succinctly by Lord Kitchin in the decision of the Court of Appeal, the invention of the patent aims to provide a cooling member for an ice rink which can be installed (and dismantled) rapidly and which allows the rink to be made with different surface areas.  Claim 1 of the Patent was to a cooling member having numerous integers labelled A-E.  It was found during the High Court proceedings that all of the features of claim 1, except for integer C were common general knowledge.  Feature C relates to the provision of a joint member that is flexible and allows connected pipe sections to fold relative to each other for the purpose of transportation, and to unfold so that the ice rink can be installed quickly at a new venue.  Furthermore, it was accepted by Icescape that its mobile ice rink incorporated all of the features of claim 1 of the patent save for integers D and E.

Integer D recited that the feed and discharge manifolds extend in the extension of one another in the transverse direction, and Integer E recited that the feed and discharge manifolds are provided with a coupling member to make a fluid-tight connection.

Lord Kitchin affirmed the decision of the High Court judge that the patent was not entitled to priority.  Therefore, the issue to be decided was did Icescape’s mobile ice rink infringe the patent? and, if so, did Ice World have a defence to the claim for unjustified threats.

Infringement

The High Court judge determined that claim 1 was not infringed by Icescape’s rink and this decision was made prior to the Supreme Court’s decision in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48.  Since it was accepted that Icescape’s mobile ice rink incorporated all of the features of claim 1 of the patent save for features D and E, the debate was whether the scope of protection of the patent included a mobile ice rink without those features.

According to Lord Kitchin, the Court’s approach to interpretation of patents as set out in the decision of Actavis UK Ltd v Eli Lilly & Co is markedly different from that which the court’s in England had adopted since Catnic v Hill & Smith [1982].

The Court’s must now consider, through the eyes of the person skilled in the art:

  1. i) Does the variant infringe any of the claims as a matter of normal interpretation?
  2. ii) If not, does the variant nevertheless infringe because it varies from the invention in a way or ways which is or are immaterial? This is to be determined by asking the “Actavis questions”, which are:

(a)     Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, 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?

(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?

(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?

In order to establish infringement in a case where there is no infringement as a matter of normal interpretation, a patentee is required to establish that the answer to questions (a) and (b) above is “yes” and that the answer to question (c) is “no”.

Lord Kitchin applied these principles to this case and begun with question (i) – saying that a normal interpretation meant a purposive interpretation.  Integer D calls for the feed and discharge manifolds to extend in the extension of one another in the transverse direction.  Whilst integer E must be read with integer D and requires these feed and discharge manifolds to be joined together by a fluid tight connection.  Therefore, Lord Kitchin determined that the natural reading of these two integers in light of the teaching of the specification and the common general knowledge is that the two manifolds are connected together in series so that the fluid does not leak as it flows between them from one to the other.  Accordingly, he determined that the High Court judge arrived at the correct conclusion, and that the Icescape system is not within the normal meaning of claim 1, since the manifolds of the Icescape system are connected together in parallel.

Lord Kitchin then moved onto question (ii) and considered whether the variant differs from the claimed invention in ways which are immaterial by asking the Actavis questions.

The first Actavis question, (a) required Lord Kitchin to consider whether the Icescape system achieves substantially the same result in substantially the same way as the invention.  The inventive core of the patent is the provision of the joint member (70) – integer C.  This forms a connection between the rigid pipe sections which is fluid tight and flexible and allows the connected pipe sections to fold relative to one another for the purpose of transportation.  It is this feature which makes the patented system different from the conventional systems which formed part of the common general knowledge.  By contrast, integers D and E are simply common general knowledge ways of implementing that inventive concept.  Focusing on that inventive core, as required by question (a), Lord Kitchin was satisfied that the variant does achieve the same result in substantially the same way as the invention.  Accordingly, Lord Kitchin determined that the answer to question (a) is “yes”.

Lord Kitchin also found that it would be obvious to the person skilled in the art, reading the patent and knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention.  Thus, he also determined that the answer to question (b) is “yes”.

When addressing the third Actavis question, (c): would the skilled reader of the patent have concluded that Ice-World nonetheless intended that strict compliance with the literal meaning of the claim and, in particular, features D and E, was an essential requirement of the invention? Lord Kitchin considered whether integers D and E are an essential part of the invention.  To answer this he looked at the inventive concept and inventive core of the patent.  In his judgment the answer to this question is plainly “no”.  There is no reason why the skilled reader would have thought that strict compliance with integers D and E was an essential requirement of the invention.  The inventive core of the patent (integer C) has nothing to do with the coupling of the elements together or whether the fluid flows through them in series or in parallel.

Accordingly, when using the new approach to interpretation of patents as set out in the decision of Actavis UK Ltd v Eli Lilly & Co, Lord Kitchin found that the Icescape system does fall within the scope of protection of claim 1 of the patent.  This is a different conclusion from that of the High Court judge.

However, although Lord Kitchin found that the acts the subject of the threats did constitute an infringement, he also determined that Ice-World had failed to make good the defence under section 70(2A) of the 1977 Act.  Therefore the appeal was dismissed.

Conclusion

Using the new approach to interpretation as set out in the decision of the Supreme Court in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48 Lord Kitchin came to a different conclusion from that of the High Court judge on the issue of infringement.  It is now clear that purposive construction is only the first stage in the determination of the scope of protection conferred by the claims, and represents the minimum protection afforded by the patent.  The second, non-interpretative stage allows the patentee a degree of protection outside the normal, purposive meaning of the claims where the variant from the claim achieves substantially the same effect in substantially the same way.

As pointed out by Lord Justice Floyd, “it should not be thought, however, that the claims do not continue to have an important function.  It is variants from the claim which have to achieve substantially the same effect in substantially same way as the invention.  The claims remain the starting point for the subsequent analysis of variants”.  The claims are not merely as a somewhat vague guideline.

Furthermore, a number of issues remain unresolved, such as the approach the Court must take to the scope of protection when considering validity as opposed to infringement, and the approach to inventive variants.

TLIP has experience in handling litigation. If you require advice on the interpretation of patents and how these new “Actavis questions” are applied, then do not hesitate to contact an attorney at TLIP Ltd.  We would be glad to be of assistance.

A copy of the full decision can be found here: https://www.bailii.org/ew/cases/EWCA/Civ/2018/2219.html.