12 months on since the Supreme Court's ground-breaking decision in Actavis v Eli Lilly confirming a role for a doctrine of equivalents when assessing the scope of protection of a patent, the Court of Appeal has had its first opportunity to consider the application of the test in Icescape v Ice-World. Whilst the Court of Appeal decided that the Patent was invalid as it was not entitled to its claimed priority date, it also said that, if the Patent were valid, Icescape's ice rink would have infringed under the doctrine of equivalents.
Ice-World, a mobile ice rink manufacturer and operator, owns patent EP (UK) 1,462,755 entitled "Cooling member for a mobile ice rink" which is for an ice rink with sufficiently flexible joints on the pipes carrying the cooling liquid, so that the pipes can be folded during transportation and then unfolded at the destination, making the ice rink mobile.
Icescape operates and leases mobile ice rinks, and had previously done so from Ice-World. However, when the relationship came to an end, Icescape started to design and manufacture ice rinks of its own using a similar structure as disclosed by the Patent to make its ice rinks mobile, but connecting its cooling pipes in parallel rather than in series. Ice-World sent a number of letters to Icescape's customers alleging infringement of its Patent and so the case began as a groundless threats action by Icescape.
The Court of Appeal decided that the Patent was invalid because, whilst the inventive concept of the Patent was disclosed by the priority document (a Dutch application), other elements of it were not explicitly or impliedly disclosed. Ice-World was also unable to rely upon the defence that it had no reason to suspect that the Patent was invalid and, accordingly, was liable for groundless threats. There had been reasons for it to suspect that the Patent was not entitled to priority, and it had failed to produce the necessary evidence to establish this defence. Whilst the 'no reason to suspect the patent was invalid' defence has now been removed from the groundless threats scheme, where it remains relevant, the case demonstrates it is a difficult defence to make good in practice.
Consideration of Actavis v Lilly
Had the Patent been valid, the Court said that Icescape's ice rink would have infringed under the Supreme Court's new test in Actavis v Lilly. Although the trial judge had been correct to conclude that it did not infringe the Patent on a purposive interpretation (albeit this was not an easy question), it did satisfy the aims of the Patent and did so in substantially the same way, and this would have been obvious to a person skilled in the art. Accordingly, the Court of Appeal reached a different conclusion on infringement.
Lord Kitchin, giving the leading judgment for the Court of Appeal (having since moved up to the Supreme Court), held that, when considering (under the first Actavis question) whether a variant achieves substantially the same result as a patent in substantially the same way, the Court must have regard to the problem underlying the invention and the patent's inventive core. The aim of the Patent was to provide a cooling element which could be installed rapidly, but still be reliable in operation. Icescape's ice rink satisfied this aim; whilst it did so using parallel connections rather than a series connection between the manifolds, this had nothing to do with the inventive core of the Patent.
On the second Actavis question, it would have been entirely obvious to the skilled person that, so far as the inventive core of the Patent was concerned, the Icescape rink would achieve substantially the same result, and in substantially the same way – indeed, it did so in precisely the same way.
As for the third Actavis question, namely whether the skilled reader of the Patent would have concluded that Ice-World nonetheless intended strict compliance with the literal meaning of the claim, Lord Kitchin said that the fact that the language of the claim does not cover the variant is not enough. It was again necessary to have regard to the inventive concept and core of the patent. Lord Kitchin found that there was no reason to believe that strict compliance with the literal meaning of the claims of the Patent was intended.
Lord Justice Floyd added further comments: "it is now clear from the Supreme Court's decision in Actavis that purposive construction forms but the first stage in the determination of the scope of protection conferred by the claims … there is a second non-interpretative exercise which 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". The claims, however, remain important and are the starting point for analysing variants. Further, he noted, there are issues still to be resolved, including the approach to the scope of protection when considering validity as opposed to infringement, and the approach to inventive variants.
The Court of Appeal also considered whether it was legitimate to take into account the prosecution file. Icescape argued that, if Ice-World could rely on the doctrine of equivalents, then it should be permitted to rely on the prosecution history, specifically that the EPO Examining Division had rejected an early version of Claim 1 of the Patent for lack of novelty, which led to it being amended.
In Actavis, Lord Neuberger said that the UK courts should adopt a "sceptical, but not absolutist" attitude to a patent's prosecution history. He said that there are two occasions when it would be appropriate to refer to the prosecution file: (i) where the point at issue is truly unclear under the specification and claims of the patent, and the contents of the file unambiguously resolve the point; or (ii) where it would be contrary to the public interest for the contents of the file to be ignored.
The Court of Appeal agreed to consider the prosecution file, but concluded that its contents did not ambiguously resolve the point as to the scope of protection of the claim, and therefore fell well under the Supreme Court's threshold. Nor was it contrary to public interest for the file to be ignored. Indeed, as Lord Kitchin put it, the case was a "very good illustration of why it is generally so unprofitable to explore the prosecution history".