#19707 - 19. Patent Infringement - Intellectual Property Law

WEEK 19

PATENT INFRINGEMENT

Reading; Bently and Sherman 6^th Ed: 647-648, 666-681 16 pages

Bently and Sherman 6^th Ed: 629-645; 688-694; 696-705.

RELEVANT CASES:

• Catnic Components v Hill & Smith [1982] RPC 183

• Improver Corp v Remington [1989] RPC 69

• Kirin-Amgen v TKT [2003] RPC 31 63

• Actavis v Eli Lilly, [2017] UKSC 48

Notoriously complex area of law owing to the consequence of the evidential nature of the inquiry. Further, it has long been accepted that the scope of the patent monopoly should not be limited to situations where the infringing act takes place in relation to a product or process that is exactly the same as the patented invention.

How broadly can a patent be read?

How much of the invention must be taken?

Britain’s entry into the European Patent Convention (EPO) 1973 –

• Decided that questions about the infringement of patents issued by the European Patent Office (EPO) were better dealt with by national courts.

• The close relationship between validity and infringement meant decisions at the EPO meant that the decisions made on the European level impacted the British law on infringement.

• Absence of a common tribunal dealing with infringement

Determining patent infringement

1. Determining types of activity that constitute an infringement.

2. Whether the activity falls within the scope of the patent monopoly

3. Whether the defendant is able to make use of any of the defenses available to them

Types of infringing activity – direct vs indirect

• S.60(1) PA 1977, directinfringement involves some immediate engagement with the patented product or process

• S.60(2) PA 1977, indirectinfringement applies where a person facilitates the act of infringement

  • Patent law’s version of aiding and abetting

• To infringe, the activity must be carried on without the consent of the patentee – (1) not covered by a license, (2) must occur in the UK and (3) must take place during the term of the patent.

May take 2-5 years to validify patent – the problem with this: the patent is published so people can use your patent. Cannot bring action until patent is granted, but it is possible to backdate the patent to before the granted date and then bring a challenge against others.

Direct infringement – PA 1977, s. 60(1), (2); CPC, Arts 25–8.

• On the balance of probabilities

• Onus is on the patentee.

• Defendant must have performed one of the activities falling within the patent owner’s control.

• S.60(1) covers a wide scope of activities – from making and using a product or process through to the sale or import of the product.

  • Most / if not all commercially valuable activities fall within the owner’s control

Rights differ depending on the subject of the patent (product, process, or a product obtained directly from a process).

*Exception – where an infringer uses a process or ‘offers a process for use’ under s.60(1)(b)

Direct infringement is established no matter whether D has had knowledge.

• Knowledge is irrelevant - no need to show that Ds knew that they were infringing.

Liability is absolute for patents for a product or where a product has been obtained directly from a patented process.

Scope of Protection

Once it is established that D has carried out one of the infringing activities in s.60 of the 1977 Act, it is necessary to consider whether in doing so they fall within the scope of the patent.

Starting point for scope of protection – s.125 Patents Act 1977 (Art. 69 of EPC 2000)

• The extent of the protection conferred by a patent conferred by a patent shall be ‘taken to be that specified in a claim of the specification of the application of the patent’

• Once this is determined, then comparing with D’s alleged infringing process or product

Infringing circumstances -

• Where C’s invention and the alleged infringing product / process are very different, there is no infringement. If the two are identical, D will clearly infringe.

• D will also infringe where they incorporate the patented invention into a larger process / product

  • Even if it improves upon the patented invention.

• D will infringe where they supply a patented product in parts or in kit form.

  • Rotocrop v. Genbourne[1982]FSR241.

• D will not infringe – if the consumer needs to exercise inventive skill in putting the kit together (Virgin Atlantic v. Delta[2010]EWHC3094 (Pat), [135])

Problems arise when there is only a slight difference between the patented invention and D’s alleged infringing product (problematic situations in determining infringement)

• Where if instead of adding to the patented invention, D altered/omitted part of the patented invention in their product/process and thus argued on this basis that their invention fell outside the scope of the monopoly.

• Where D changes one aspect of an invention or uses different means to reach the same end result as the patented invention.

In such situations, the decision largely turns on the way in which the scope of the protection is determined.

Determination of the Scope !

A few approaches :

Construe the patent strictly (literally) everyday normal meaning;

• This is the most straightforward option

• The patentee’s protection would be limited to what is clearly stated in the claims.

• Harmonizes with the idea that the patentee should only get protection for what they claimed

• However, it often undermines the scope of protection for the right holder – it is often difficult to describe the invention and patentees may be forced to use language that third parties can easily avoid.

• British courts do not use this approach (should not be limited to the strict reading of the claims)

  • To avoid ‘the unscrupulous copyist [from making] unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of the law’ (Kirin-Amgen v. Hoechst Marion Roussel[2004]UKHL46, [2005]RPC(9) 169, [37].)

  • Nevertheless it does create the possibility of right holders taking more protection than they deserve

C van Der Lely NV v Bamfords Ltd [1963] RPC 61 – C shaped vs. V shaped

Key case: 2017 Supreme Court decision ofActavis v. Eli Lilly

• Represents an important reformulation of the test on the scope

• Decision builds upon important decisions that precede it

Purposive approach

Bigger scope of protection

• Catnic v Hill and Smith – decided under the PA 1949

  • The fundamental principle underpinning the claim interpretation is that claims should be construed purposively.

  • Necessary to interpret claims from the perspective of the person skilled in the art.

• Kirin-Amgen v. Hoechst Marion Roussel[2004]UKHL46, [2005]RPC(9) 169–

  • Key question set out:

  • “[W]hat would a person skilled in the art have understood the patentee to have used the language of the claim to mean? … Everything else … was only guidance to a judge trying to answer that question” (the only compulsory question)

• Catnic – HoL called to determine whether in manufacturing the steel lintels, the defendants had infringed the claimant’s patent for galvanized steel lintels. The two inventions seemed similar, but the patent specified that the rear side of the lintel should be ‘vertical’; D’s lintel was at an angle of 84. Thus, HoL had to decide whether a claim this specific encompassed D’s lintel whose rear support was not ‘precisely’ vertical.

  • Would have failed on literal reading.

  • Lord Diplock took a purposive interpretation – demands claims to be read through the eyes of a person skilled in the art.

  • Decided that the person skilled in the art would have understood that the reason for the specificity of the ‘vertical’ aspect of the rear support member was because it added to the load-bearing capacity of the lintel.

  • This meant that D’s lintel effectively performed the same purpose or function as C’s lintel – the patent was infringed.

The purpose or function of the invention has to be borne in mind when the patent is interpreted (Kastner v. Rizla[1995]RPC585.)

Question of construction of the claims is a matter for the court (not the person skilled in the art)

• Courts may draw on external assistance – expert evidence on the meaning of technical terms (Glaverbel SA v. British Coal Corporation[1995]RPC269.)

• It is not an open-ended and unconstrained process. There are various factors which shape the way in which the purposive interpretation is applied.

• The person skilled in the art is presumed to proceed on the basis that the purpose of the specification: “is both to describe and demarcate the invention—a practical idea which the patentee has had for a new product or process—and not to be a textbook in mathematics or chemistry or a shopping list of chemicals or hardware” [33]–[34] of Glaverbel SA

  • Also be presumed that the patentee is attempting to describe something new with all its attendant problems.

  • Also be presumed that the skilled person will read the patent specification as a whole and draw upon the description and drawings to interpret the claim (PA 1977, s. 125; EPC 2000, Art. 69)

Varying skill and expertise is attributed to the person skilled in the art depending on the invention in question

• Presumed to read the specification ‘with common general knowledge of the art available at the time of its publication’ (Hoechst Celanese Corporation v. BP Chemicals[1999]FSR319 (Aldous LJ))

• The notional skilled reader would be aware, take account of, the drafting conventions by which the patent and its claims were framed (Virgin Atlantic Airways v. Premium Aircraft Interior[2009]EWCA Civ1062, [2010]RPC(8) 192, [15])

• Presumed to be aware of the language conventions that have developed...