An Improved Improver? - Part 3

Having been distracted from the world of IP by his daughter's recent wedding, there has been some delay in this GuestKat's posting of the third instalment of his commentary on Eli Lilly v Actavis UK, [2017] UKSC 48. This pause for reflection has provided the opportunity to catch up with the many comments that have been posted on this case. This Kat thanks those who have contributed to the debate on this blog.

To conclude this series, we should note that the court also considered the question of direct infringement under French, Italian and Spanish law, concluding that direct infringement was established in those jurisdictions as well. The court's analysis of these aspects was quite brief, notwithstanding that it disagreed with some of the findings of the earlier courts.

For example, in relation to French law, the Supreme Court "with some diffidence" [whatever that might imply in this context] reached a different conclusion from the court at first instance on the matter of whether the patent in the case claimed a moyens particuliers or a moyens généraux (a particular or a general means for achieving an effect). In his judgment Arnold J. had regarded the claim as one which was “narrowly worded to cover specific means” (moyens particuliers).

The significance of this lies in the fact that in French law the "doctrine of equivalents" is only normally applicable to claims in the category of moyens généraux, claims which “in general terms claim the means that provide for a particular function”. Having decided that the patent came into this category, the Supreme Court was able to apply the doctrine to determine that Actavis's product amounted to a "combination of means with a different structure but achieving the same global function" such that it was "a priori equivalent and thus infringing".

Under Italian law, Arnold J had concluded that "the patent clearly demonstrated a conscious intention of the patentee to limit the claims to pemetrexed disodium” (rather like an application of the third Improver question), and that this was "amply confirmed by the prosecution history". Both these conclusions were rejected by the Supreme Court which again found infringement by application of the "doctrine of equivalents".

As regards Spanish law, there were some complexities in the analysis because of Actavis's attempt to introduce a new argument after publication of the court's preliminary judgment, but in essence the Supreme Court was of the view that it was common ground that the Spanish courts have followed the United Kingdom approach and would follow the Supreme Court in modifying the Improver questions as it had done in this case. So direct infringement was found for all three countries as well as the UK.

Actavis's cross appeal on indirect infringement was moot at this point but the court dealt with it for completeness, upholding the Court of Appeal’s determination that Actavis were liable for indirect infringement if they knew, or it was obvious in the circumstances, that the ultimate use of the product would involve dilution in saline. This meant that the product as administered would exist in dissociated form in an aqueous solution which would contain both potassium and sodium cations and chloride and pemetrexed anions.

This decision leaves this GuestKat with mixed feelings. While there may be disagreement about what affect the judgment will have, there is little doubt that it will be the subject of much further discussion, and relied upon as opening up new arguments and approaches to the assessment of patent infringement in the UK and beyond. One article giving an interesting and balanced reflection on the possible impact of the case, particularly from the point of view of patent attorneys doing their best to draft effective patents in the future, can be accessed here. Those looking for further enlightenment or having a desire to debate the issue of equivalents with Lord Neuberger himself, Lords Hoffmann and Sumption, and Judges Dr. Peter Meier-Beck from Germany and Rian Kalden from the Netherlands, should make sure to attend the Institute of Brand and Innovation Law (IBIL)'s debate "Equivalents: K = Na. Is the genie out of the bottle?" to be chaired by Professor Sir Robin Jacob on Wednesday 1 November 2017 at the UCL Cruciform building in Gower Street. This GuestKat will be there and looks forward to an interesting evening.