14/07/2017
The recent UK Supreme Court decision in Actavis -v-Eli Lilly [2017] UKSC 48 addresses important issues relating to patent infringement including the way in which alleged “equivalents” should be dealt with. Other issues addressed include if and when it is permissible to have recourse to the prosecution of a patent when considering whether a variant infringes, and the scope of the concept of contributory, or indirect infringement.
The decision was given by the President of the Supreme Court, Lord Neuberger with the other Supreme Court Justices concurring. On the issue of equivalents, Lord Neuberger said that:
“…a problem of infringement is best approached by addressing two issues, each of which is to be considered through the eyes of the notional addressee of the patent in suit, i.e. the person skilled in the relevant art. Those issues are: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is “yes”, there is an infringement; otherwise, there is not.”
Lord Neuberger explained that issue (i) self-evidently raises a question of interpretation, whereas issue (ii) raises a question which would normally have to be answered by reference to the facts and expert evidence.
He went on to explain that the first question, of whether the variant infringed any of the claims is a matter of normal interpretation.
The second question is more difficult. What is it that makes a variant “immaterial”? Lord Neuberger referenced both of the previous lead decisions, Improver and then Kirin-Amgen and set out three questions:
- 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?
- 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?
- 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?
For infringement to be found, the answer to the first two questions must be “yes” and the answer to the third “no”.
Lord Neuberger stated that the questions are guidelines, not strict rules and they may need to be adapted depending on the fact pattern of a particular case.
The decision brings the UK law of infringement closer to that of Germany and may make it easier for patent owners to enforce their rights in the UK.
Look out for further analysis of this very significant judgment from us in the near future.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
