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Gowling WLG – Patent Seminar 2018

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stacked-booksIPcopy was present for the annual patent seminar at Gowling WLG last week.

Carrying on the format from previous years, Alex Brodie opened up the proceedings with a look at UK court statistics. Gowling WLG’s case counting exercise attempts to catch as many cases as possible but Alex Brodie noted that not all cases are published or commented on and so there may potentially be some that are not included.

Having acknowledged the counting process behind the statistics it was noted that the total number of patent decisions in 2017 shows a slight fall from previous years – 62 total cases versus 79 (2016) and 75 (2015). This fall may be an example of a Brexit effect but it was highlighted that there have also been some significant cases this year and there are only so many judges to go around.

Last year’s seminar highlighted a potentially unsettling swing in the stats. In 2015 there was a roughly equal split between cases that were patentee friendly to cases that were defendant friendly. In 2016 however 20 out of 24 cases that related to infringement and validity went the way of the defendant. The 2017 figures however show an even split again between patentee and defendant decisions.

One of the big cases last year was, of course, the Actavis v Eli Lilly decision in the Supreme Court that brought the Doctrine of Equivalents to the UK along with, limited, prosecution history estoppel. This case unsurprisingly took up a large part of the seminar and included interesting assessments of how the case might have been decided in front of French or German courts.

Looking again at the UK Supreme Court decision Lord Neuberger’s judgement indicated that “ a problem of infringement is best approached by addressing two issues…”. These two issues being the two “limbs” of the infringement assessment:

  1. does the variant infringe any of the claims as a matter of normal interpretation; and, if not,
  2. 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 (i) or (ii) is “yes” then there is infringement.

As far as limb (i) was concerned, Gordon Harris noted that the term “normal interpretation” in limb (i) could simply be the process of “construction” in documents or it could relate to purposive construction (with or without the Improver questions). It was also noted that there is no reference to “purposive construction” in Lord Neuberger’s judgement.

For limb (ii), Lord Neuberger suggested that this was more than just a question of construction but should also include consideration of the extent, if any, to which the scope of protection of the claim should extend beyond the meaning of the words of the claim to the notional addressee. In this regard some reformulated protocol questions were regarded as relevant.

The reformulated questions are reproduced at the bottom of this post but it is noted that question (1) shifts the focus on to the inventive concept of the patent and away from the wording of the claims. Question (2) is probably the most controversial reformulation since the notional addressee is now taken to have knowledge post the priority date of the patent in question. Question (3) also shifts the focus away from the claim wording and it was noted that, even if a sensible reading of the claim excluded the variant, this is not necessarily a bar and consideration needs to be given to whether strict compliance with the claim wording is “essential” to the overall inventive concept.

The Actavis case also introduced the idea of prosecution history estoppel to the UK with Lord Neuberger’s conclusion that reference to the file wrapper should be restricted to certain limited cases – (i) where the point at issue is truly unclear if only looking at the specification and claims or (ii) if it would be contrary to public interest for the file contents to be ignored.

Interestingly Gordon Harris highlighted that having set up the conditions for looking at the file wrapper Lord Neuberger did not apply file wrapper estoppel in the way most people would have expected since he looked at the file and then concluded that the Examiner’s objections had been incorrect and so the claim limitation was not essential.

There have been a few cases since the Supreme court decision in which the Doctrine of Equivalents has been discussed. In the lengthy (700 paragraph) decision in Illumina v Premaitha Henry Carr J indicated that normal interpretation means purposive construction. A further Supreme court case this year (Warner-Lambert v Generics & Actavis) should however provide the Supreme court with the opportunity to say what limb (i) means.

In the look at Actavis v Eli Lilly from the French perspective Céline Bey suggested that although Lord Neuberger’s approach on the Doctrine of Equivalents was in line with a French judge’s approach, the approach in relation to the impact of the prosecution history may have gone the other way such that a French judge may not have found for infringement like the UK court. Carsten Schulte also looked at the Actavis decision from the German perspective and noted that in Germany the prosecution file cannot be referred to even in exceptional cases. As such the German courts would decide the case on an assessment of the basis of the Doctrine of Equivalence only.

The Gowling WLG seminar included a look at a number of other issues that cropped up during 2017 including the treatment of “legal priority” (i.e. chain of title issues in priority as opposed to questions of substantive priority when deciding if the same invention is present in the priority case). In FKB v AbbVie Henry Carr J found an apparently convoluted way to find a chain of title. Actavis v ICOS also considered legal priority but shifted the evidential burden away from the patentee and in Accord Healthcare v Research Corporation Technologies it was suggested that there is no obvious public interest in striking down a patent on such a ground.

The approach of the judges to legal priority in the above three cases is interesting especially in light of the EPO ‘Opposition Board approach recently in revoking a Broad Institute patent relating to CRISPR technology.

Mark Richardson 6 February 2018

Reformulated Improver Questions

1. “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?”

2. “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?”

3. “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?”


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