Court of Appeal tackles Actavis in Icescape v Ice-World

In the recent Court of Appeal Decision in Icescape v Ice-World, Lord Kitchen, who has recently been elevated to the Supreme Court, along with Lord Floyd and Lord Longmore, applied the new infringement approach established in the Supreme Court Decision in Actavis v Lilly.

Court of Appeal tackles Actavis in Icescape v Ice-World

Background
Ice-World, who is the proprietor of European patent No. 1462755, makes mobile ice rinks and leases them to third parties. Icescape also design and make mobile ice rinks, although in the past have operated a mobile ice rink leased to them from Ice-World.

Back in May 2015, Ice-World wrote to Icescape alleging that their mobile ice-rinks infringed EP1462755. In 2016, Ice-World also wrote to Icescape's customers and potential customers asserting infringement. In response, Icescape issued proceedings seeking (1) relief from Ice-World for what they alleged to be groundless threats of infringement, (2) revocation of EP1462755 and (3) a declaration of non-infringement.

Revocation of EP1462755 was sought on the ground that the patent lacked priority and consequently lacked novelty over prior use of the claimed invention by the Proprietor in the period between the priority date and the filing date. It was clear, and accepted by both parties, that if the priority claim was invalid, then the patent lacked novelty.

Invention
The invention relates to the use of flexible joint members to couple two sections of pipe together. The flexible joint members allow the two sections of pipe to pivot between two positions, one in which the two sections of pipe are extended longitudinally to form one long pipe and another in which the two sections of pipe are folded back. The advantage conferred by the joint members is that the pipes can be folded back for transport, eliminating the need to fully dismantle the pipework of the ice rink after each use and fully rebuild.

Validity
Claim 1 as granted was written in two-part form, the characterising portion containing five features, labelled A-E in the judgement for convenience. Upon review, it was found that features A, B, D and E in fact formed part of the common general knowledge and thus the invention lay in feature C which disclosed the flexible joint members.

The priority document from which EP1462755 claims priority disclosed features B and C but not features A, D and E.

The relevant question was thus: does the priority document disclose the "same invention" as EP1462755 and thus is the priority claim in EP1462755 valid?

In this regard, the Judge referred to Decision G2/98 of the Enlarged Board of Appeal of the EPO which taught that for priority to be valid the skilled person must be able to derive the claimed subject matter directly and unambiguously, using common general knowledge, from the previous application as a whole.

Ice-World argued that the invention related to feature C alone, which was disclosed in the priority document, and thus that priority should be held valid because the priority document described the "same invention" as the patent.

The Judge however rejected this approach, concluding that "the claim to priority depends upon the express or implicit disclosure of those features in the priority document and, since there is no such disclosure, the claim to priority must fail".

As a result, the patent was held invalid for lack of novelty over prior use of the claimed invention by the Proprietor in the period between the priority date and the filing date.

Infringement
Even though Ice-World's patent was found not to be valid, the question of whether the activities of Icescape would have infringed the patent if were valid, was also considered.

It was common ground between the parties that the Icescape rink incorporated all of the elements of claim 1 of the Ice-World patent with the exception of elements D and E, which require the coupling of specific elements and the fluid flow through them being in series, rather than parallel. Both the series arrangement and the parallel arrangement were known in relation to mobile ice rinks.

Lord Kitchen started by reviewing UK case law in relation to claim interpretation and thereby infringement -Catnic v Hill, Improver v Remington and Kirin-Amgen v Hoechst Marion were of course all given a mention. Where the Decision departed from the norm was when Lord Kitchen noted the "markedly different" approach to infringement analysis introduced by Lord Neuberger in Actavis v Lilly.

The two-step approach introduced in Actavis v Lilly is summarised below.

Step (1) Does the variant infringe any of the claims as a matter of normal interpretation?

Step (2) 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 these three questions:

a) Notwithstanding that it is not within the literal (that is to say, I interpolate, normal) 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?

For there to be infringement, the answer to step 1 must be "yes" or the answer to step 2(a) and 2(b) must be "yes" and the answer to step 2(c) must be "no".

Considering step 1 first, as the Icescape rink does not include features D and E of claim 1 of EP1462755, the answer to step 1 was "no".

Moving on to step 2, Lord Kitchen started with question (a) and noted in this regard that the inventive core of the patent is feature C, while features D and E are simply common general knowledge ways of implementing the inventive feature. As a result, the same result is achieved in substantially the same way. Moving on to question (b), Lord Kitchen considered that it would have been obvious to the skilled person that "so far as the inventive core of the patent is concerned, the Icescape system achieves substantially the same result as the invention and does so in substantially the same way".

Turning to the final question, namely question (c), Lord Kitchen firstly noted that the fact that the language of the claim does not cover the variant is not sufficient to justify a positive answer to this question. The Judge also noted that it is important to bear in mind the inventive concept and inventive core of the patent. As a result, Lord Kitchen Kitchen held that the answer to the question was "no", commenting that the "inventive core of the patent has nothing to do with the coupling of the elements together or whether the fluid flows through them in series or in parallel".

By reference to the prosecution file, Icescape argued in response that Ice-World had deliberately limited the scope of protection to a cooling member having all of the features of claim 1, including features D and E, in response to a novelty objection raised by the Examining Division and thus can't now assert that features D and E are an inessential part of the invention.

However, Lord Kitchen rejected this argument, observing that it was not possible to determine whether the objection was sound or whether Ice-World intended to surrender the ability to argue that features D and E were not essential, or that "the scope of the claims did not extend to a system in which the feed and discharge manifolds were connected in parallel rather than in series". Lord Kitchen also stressed that the correspondence does not unambiguously resolve the point in question and thus should be ignored.

Thus, in summary, the Court found that, had the patent been valid, it would have been infringed.

Threats
The sending of letters to the customers and potential customers of Icescape, threatening infringement action, constituted actionable threats under the UK Patents Act. Ice-Word tried to suggest that they had a defence, namely that the treats were justified as while the patent was declared invalid, Ice-World had no reason to suspect that this would be the case on the basis of expert advice they had received in the form of an opinion from a patent attorney.

This argument was however rejected on the basis that the opinion did not include a consideration of the priority issue (it was not clear why this was the case) and in view of the use the Proprietor had made of the invention between the priority date and the application date, the question of priority was critical. The Court held that without such analysis, Ice-World could not justify relying on the opinion.

Conclusion
The present case is the first Court of Appeal case in which the new guidance on infringement from Actavis v Lilly has been applied. Both Lord Kitchen, who made the main judgement, and Lord Floyd, who also gave his opinion, noted that Actavis v Lilly represents a markedly different approach than that set forth in previous UK judgements. However, both emphasised that the claims represent the starting point for infringement analysis and that the inventive concept and inventive core define the essential elements of the invention.

There are still issues to be resolved arising from the Actavis v Lilly decision, in particular the scope of protection that must be acknowledged when considering validity as well as infringement, and the approach to inventive variant. It is also not clear what role the prosecution file will play in determining the scope of protection a given claim enjoys. No doubt these issues will be addressed in future decisions.

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