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Saturday, 17 February 2018

Mr Justice Carr's L'Oreal v RN Ventures decision bristles with warnings on Actavis v Lilly claim interpretation, equivalents and prosecution history (Part I)

You too can get that youthful kitten glow
with the use of a robust grooming regime...
What keeps the AmeriKat looking youthful and kitten-esque?  A robust skin care regime of exfoliating, cleansing, brushing and, especially during these cold and dry winter months, moisturizing.  When her paw brush just doesn't cut it, a key tool of her grooming repertoire is an oscillating circular electronic skin care brush. She uses a Clarisonic, but another big brand is a device called the Magnitone.  It was the Magnitone that preoccupied three days of Patents Court time before Mr Justice Carr this past December and which was subject to the recent decision of L'Oreal v RN Ventures [2018] EWHC 173.  Of interest to readers, the case was run in the Shorter Trial Scheme (see previous Kat post here) and applied recent case law on claim interpretation, validity, infringement and the use of prosecution history following the Supreme Court in Actavis v Lilly.

L'Oreal claimed that certain products in RN Venture's range of Magnitone devices infringed its patent  - EP(UK) 1 722 699  - and Community Registered Designs - RCD Nos 000407747-001 and 001175046-001.   The AmeriKat will be focusing on the patent issues in this case.  GuestKat Rosie will be exploring the RCDs in a separate post.

The Patent, Skilled Person and CGK

The '699 Patent, entitled "Apparatus for acoustic/mechanical treatment of early stage acne", is concerned with a mechanical device suitable for the treatment of acne through the removal of sebum plugs (yum!) from skin pores.  The person skilled in the art who would be interested in the development of such a device, have a mechanical engineering background and an interest in dermatology, with such interest including the understanding of the basis properties of the skin and well known-treatment of acne (or would know which textbooks to look in).   The CGK would not include a working understanding of electronic grooming devices in other areas - such as electronic toothbrushes and pedicure brushes - as the technical considerations and mode of actions were quite different in other fields.

The Patent's disclosure 

The goal of the invention is to keep the pore openings in an "opening state" to allow the continuing exudation (fluid emission) from the sebaceous gland.  This, in turn, is said to help the maintenance of an aerobic state within the pore and will prevent the development of more severe acne conditions.  In order to keep the pores open, the device supplies energy to the skin to loosen and remove the sebum plugs.  It does this by applying tension/compression in opposite directions (i.e. differential motion), sequentially, on the skin at different frequencies.  The differential motion needs to be at a high enough amplitude to create pore opening forces, but low enough to minimize stretching of collagen in the skin.  This results in the plugs being loosened and removed from their position in the skin pores.

One way of achieving this tension, is to have one skin-contacting element staying still, while another skin-contacting element nearby moves up and down - thus creating "shear". This was called the "shear aspect" in the patent (and is referred to later as the "shear mode").  Another arrangement was described  the "tension/compression element"  - whereby two skin-contacting elements stay still, while another skin-contacting element moves right or left away from and towards the fixed elements.  It is also possible to combine these two modes to crate an elliptical motion.  Another embodiment provides that a single set of skin-contacting elements move in the same direction, relying upon the skin's inertia/elasticity to produce shear force - although this is noted not to be as effective.  Other configurations that employ bristle tufts organized in rows, but using the same general motion as above, are described in the patent.   The patent summarizes the invention as:
“[0086] Thus, the present invention provides either mechanical energy in a shear mode or tension/compression mode or a combination (elliptical) in order to loosen the adhesion between the sebaceous plug and the walls of the pore. Said motion can be produced by contact elements moving either reciprocally linearly, reciprocally arcuately or a combination thereof.”
Claim 1

As split into integers Claim 1 is set out below.  All integers, save for [D], were admitted to be possessed in the accused Magnitone products. Integer [F] was the proposed amendment.
“[A] An apparatus for treatment of acne, comprising:
[B] at least two contacting elements having end faces, wherein at least one contacting element is a moving contacting element;
a mounting assembly for holding the contacting elements substantially adjacent to each other; and
an assembly for reciprocally moving said at least one moving contacting surface;
characterised in that
[C] all of the end faces are in the same plane and the end faces of the moving contacting element move in a single plane
[D] and said assembly reciprocally moves said at least one moving contacting element bi-directionally through a neutral position relative to at least one adjacent contacting element to produce alternating tension and compression of the skin 
[E] wherein when the apparatus is positioned so that the end faces of the contacting element contact the skin, an action on the skin in the plane of a skin area to be treated for acne is produced to remove sebum plugs from skin pores, permitting ready removal thereof from the skin

[F] wherein the frequency of movement of the moving contacting element is within the range of 80-200 Hz.”
Henry loved when he was in "shear mode"
Claim "Interpretation"  - it is all about what you say and disclaim

With the old "Construction" heading now replaced with "Interpretation", Mr Justice Carr stated he would be applying
"principles concerning normal interpretation and equivalents set out by the Supreme Court in Actavis v Eli Lilly [2017] UKSC 48, [2018] and by the Patents Court in Mylan v Yeda [2017] EWHC 2629 (Pat) at [134] - [139]; Fisher & Paykel v Resmed [2017] EWHC 2748 (Pat) at [82] – [86] and Illumina v Premaitha [2017] EWHC 2930 (Pat) at [200] – [202]."
But, probably for good reason, Carr J did not set about summarizing that case law in the judgment.

There were three issues on the claim interpretation of Integer [D]:

1.  "Relative" movement - skin contacting elements

L'Oreal argued that "neutral position" refers to the neutral or relaxed position of the skin and pores between two contact elements and that the "relative movement was between the contact elements and the skin.  RN Ventures argued that "neutral position" meant the starting or rest position of the contact elements and that the relative movement was between the contact elements themselves. If the contact elements were stationary relative to each other, such an arrangement would fall outside of [D].  Carr J accepted RN Ventures interpretation on the basis that integer [D] required at least one contacting element to move relative to at least one adjacent contacting element and that the patent itself acknowledged that an arrangement where the contact elements moved in unison was not as effective.  Further "neutral position" was described in the patent as being when the movable contact element was in the rest position.  The judge noted that:
"Purposive interpretation does not allow the language of the claim to be disregarded. The Patentee’s purpose in choosing this language is, as indicated in the Patent, to exclude an arrangement which is generally not as effective as that which is claimed."
2.  "Relative" movement - bristles

RN Ventures argued that the relative movement of skin contacting elements with bristles meant that the relative movement had to be at the base of the contact elements, not at the skin-contacting end (i.e. top of the bristles).  RN Ventures argued that Integer [D] related to the mounting assembly and thus was concerned with the base of the contact elements.  Carr J rejected this on the basis that Integer [D] relates to the movement of the contact elements "so as to produce the alternating tension and compression of the skin" and no statement was made that the movement had to be at the base.  He stated:
"The tips of the contact elements, which touch the skin, are the “business end” of the claimed device. Where there is a difference in the behaviour of the base and the tip of the contacting elements, it would not be consistent with the Patentee’s purpose, nor fair to the Patentee, to disregard movement of adjacent contact elements which produces the claimed effect."
3.  "Tension and compression" 

RN Ventures argued that movement to produce "alternating tension and compression", as described by Integer [D] excludes the shear mode.  L'Oreal said that this confuses mechanical movement with the effect of a mechanical movement.  Integer [D], argued L'Oreal, plainly referred to the effect of the mechanical movement and thus did not exclude the shear mode.  The first question for the judge was what the technical meaning of "tension and compression" and "shear", as used in the patent, would have been understood by the skilled person having regard to the inventor's purpose.  The expert for RN Ventures sought to given expert evidence on this, but on cross-examination the definition he used turned out to be taken from Wikipedia (see the judge's comments at [15]-[20]).

L'Oreal's expert stated that "shear mode" would be understood to be subject to alternating tension and compression as the moving element would push the skin in front of it upwards (compression) and would pull the skin behind it (tension).  The pore in between the moving element and the stationary element would be deformed either in tension or compression.  RN Ventures' expert disagreed, but had exhibited an article to his report that stated shear forces on skin have the effect of "stretching and compressing the skin" [reminding everyone of the litigation adage - exhibit in haste, repent at leisure...].

The judge therefore accepted L'Oreal's meaning of "alternating tension and compression".  He further held that the shear mode was not excluded from the scope of claim.  In support he pointed to the fact that the patent described and preferred the shear mode embodiment to the tension and compression arrangement.  Further the effect of the shear mode arrangement described in the patent was to cause "tension and compression".  The judge also held that the inventive concept of the patent was not confined to this mode as expressed by the summary of the invention (see [86] above).  Importantly, on claim scope, the judge stated that:
"I accept that not everything in the specification necessarily falls within the claims, and I have applied this principle to the arrangement in [0060] – [0062], which the Patent states is “generally not as effective.” However, this does not mean that the Patentee’s preferred arrangement should be excluded from the claims, which would be the result of RN Ventures’ interpretation. The document must be read as a whole and exclusion of all of the preferred embodiments would not be a sensible reading. Nor would it accord with the inventor’s purpose. It would neither be fair to the Patentee, nor provide reasonable certainty to the public."
RN Ventures tried to argue that the shear mode was "an aspect" and thus, in EPO practice, this meant that the shear mode was outside of the claimed invention.  But without any authority or guideline, and without the prosecution history being admissible, the argument did not get very far.

How foggy is the patent and will the prosecution history
make it "unambiguously" clear? 
Prosecution history - the exception, not the rule 

RN Ventures tried to argue that during prosecution L'Oreal had limited Claim 1 to the tension/compression mode in order to support inventive step.  The Examiner noted the distinction between the tension/compression mode and the shear mode, requiring that subsidiary claims to the shear mode be deleted.  This, RN Ventures argued, indicated that the Examiner had gained the impression that L'Oreal was choosing to exclude the shear mode and if this was not case, L'Oreal should have explained this to the Examiner, rather than approving the text of the patent to be granted.  

Lord Neuberger in Actavis v Eli Lilly stated that the UK Court's approach to prosecution history is "skeptical but not absolutist" and that reference to the file history would only be appropriate in two instances.  First, where an issue is "truly unclear" on the reading of the patent and the file history "unambiguously resolves" the point. Secondly, where it would be contrary to the public interest for the prosecution history to be ignored (i.e. where, during prosecution, the patentee had argued the patent did not extend to a variant which the patentee then later says infringes).   

Mr Justice Carr did not consider that the first instance applied.   He did not think there was anything that was "truly unclear" and there was no statement in the file history that amounted to a clear disclaimer of the shear mode and the effect of the amendment was to the effect of the of the mode on the skin, rather than the mode itself.   Further, not all claims directed to shear mode were deleted.  The second  instance also did not apply.  The judge noted that interpretation is a matter for the national courts, not the Examiner and L'Oreal was not under a duty to correct any misunderstanding on the part of the Examiner on the scope of the claims.  The judge warned that:
"It should be emphasised that reference to the prosecution history is the exception, and not the rule. I understand why it was relied upon in the present case, although I have not accepted RN Ventures’ submissions about it. Parties should think carefully in future before incurring additional costs in arguing about the prosecution history."
Continued in Part II

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