Court of Appeal keep their cool over Actavis

October 2018

The Court of Appeal has in the case of Icescape Ltd v Ice-world International EWCA Civ 2218 [2018] applied the Supreme Court’s Actavis decision on infringement.

The case concerned a system for mobile cooling of ice rinks. The appellants (Ice-World) were the proprietors of EP (UK) 1462755 (the Patent). At first instance in 2016, the patent was found not to be entitled to the claimed priority and to be invalid. Furthermore, the mobile rink made by the respondents (Icescape) did not fall with the scope of the Patent. There was also an issue regarding unjustified threats, but this did not need to be considered further.

Between the first instance decision and the appeal the UK’s Supreme Court in the Actavis case laid down a new test for considering whether a variant infringes a patent. 

The test to follow is a 2-stage test: (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 added 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.

Although Ice-World’s appeal was ultimately dismissed, and the patent still held to be invalid, the Court of Appeal held that a different finding of infringement would have followed using the application of the Actavis questions.

Paraphrasing the Actavis questions, Lord Kitchen stated that:

The whole approach to interpretation and scope of protection therefore involves the following steps, considered through the eyes of the notional addressee:

i) Does the variant infringe any of the claims as a matter of normal interpretation?

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 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?”

This was elaborated further on by Lord Justice Floyd, who said that “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”.

Acknowledging that issues still remain, especially with respect to the approach of the court when need to look at validity as opposed to infringement, nonetheless applying the approach in Actavis presented no difficulty for this case. Crucially however, it would have led to a different outcome on the issue of infringement had the patent been valid.