K = Na. Is the genie out of the bottle? PART 1

On a dark November evening, this GuestKat travelled into the depths of UCL for what could, possibly, be the patent event of 2017 – the UCL IBIL panel discussion on the doctrine of equivalents following the UK Supreme Court decision in Actavis v Eli Lilly.  There were around 800 patent lawyers, patent attorneys and judges in attendance.  Questions were shared with the panel and audience in advance of the event and can be found here [Merpel: just because you get them in advance doesn't necessarily make them any easier to answer... Kudos to the judges for giving up their time and putting themselves in the firing line.] 

What follows in a series of two parts is a report of some of the key points discussed at the IBIL event.  Part 1 covers judicial approach, the evolution of the DoE in the UK and elsewhere, and the concept of "fairness". Part 2 covers claims with numerical limits, relevance of the file history, harmonisation, and a vote as to whether the decision in Actavis v Eli Lilly has improved the law.    

Sir Robin Jacob, in the chair, introduced a stellar panel to debate the doctrine of equivalence (DoE):

Lord Neuberger of Abbotsbury, President of the Supreme Court of the UK
Lord Sumption, Justice of the Supreme Court of the UK
Professor Dr. Peter Meier-Beck, Presiding Judge of the German Federal Court of Justice
Judge Rian Kalden, Head of the IP Division, Court of Appeal, The Hague
Judge Kate O’Malley, US Court of Appeals for the Federal Circuit

Sir Robin observed that the audience could expect some reticence from the panel at times - all members of the panel have given decisions in the past, and some will do so again in the future.  The point of the event is a debate and an expression of provisional views - there is a big difference between discussing legal principles, and reaching a decision on the facts of contested law.  In summary, "argued law is tough law".

Judicial approach and evolution of DoE

In Kirin-Amgen [2004] UKHL 46, Lord Hoffmann stated that "The determination of the extent of protection conferred by a European patent is an examination in which there is only one compulsory question, namely that set by article 69 and its Protocol: what would a person skilled in the art have understood the patentee to have used the language of the claim to mean? Everything else, including the Protocol questions, is only guidance to a judge trying to answer that question." Sir Robin queried whether that was now wrong?

Lord Neuberger was first to respond. While noting the embarrassment and difficulty in commenting on your own cases, he explained that the difficulty with Kirin Amgen is that it is difficult to reconcile with the approach in Improver Corp v Remington Consumer Products Ltd [1990] FSR 181 - if it really all comes down to a matter of claim interpretation, then you don't need to go into the three Improver questions.  The Supreme Court has taken the view in Actavis v Eli Lilly that there is a law of equivalents - that's what the EPC says, and that must be adopted in English law.  Lord Sumption agreed that if it is simply a matter of construction, then you have no regard to the DoE, but the DoE is what the legislation requires.

The event was moved to the UCL Institute of Education to
accommodate around 800 patent enthusiasts

Sir Robin queried whether the DoE has caused harm in the US.  Judge O' Malley doesn't think it has, but she noted that the US has many exceptions to the DoE, and she does not see many DoE infringement claims today that survive.  The Supreme Court in the UK has recognised that the Actavis decision represents a change in the law but has taken that step for policy reasons.

Judge Kalden noted that the Dutch Courts have a two step test, which is similar to the Actavis approach.  First, you construe the claims (purposive construction in context of specification), and then you adopt a DoE 'function-way-result' test which is borrowed from the US. 

Judge Meier-Beck noted that so much has changed over the past 30 years. Jurisprudence has evolved in the UK, Germany, Netherlands and other member states.  The key point of the Actavis case is article 69 of the EPC and the Protocol on interpretation.  What is the extent of protection determined by the claim? The DoE is not a free-standing doctrine - it is a claim based DoE and the protocol makes that clear.  In Judge Meier-Beck's view, the DoE in Germany is a bit narrower today than it was 30 years ago when the Improver case was decided. 

Sir Robin noted that there was hesitation from the Supreme Court in Actavis to state whether Improver would be decided the same way today.  Why was that?  Lord Neuberger explained that judges are reluctant to overrule/approve decisions that you have not heard argument on at the time, but he expects that would have been decided differently today.  Lord Sumption noted that under Q1 of the Actavis questions,  it would depend whether the rubber rod in Improver worked the same way as the coiled helical spring. Judge Kalden noted that the Dutch Court held that the rubber rod did work the same way, but that like Germany, the DoE has narrowed since then.  Sir Robin also noted that sometimes as a judge you change your mind - to quote a 19th century judge (whose name escaped the author): "it doesn't seem to me now as it seems to have seemed to me then".

Fairness

Sir Robin then asked whether the Actavis test is "fair", if the patentee could have claimed the equivalent but did not do so? Judge Kalden noted that any assessment necessarily involves the competing interests of the patentee and infringer, and the result will be a compromise.  Lord Sumption noted that the DoE is part of our law - it doesn't matter whether it is fair or not! Although Sir Robin pointed out that the concept of fairness is expressly mentioned in the Protocol on Art 69.  Lord Neuberger noted that fairness is a flexible concept, and it is very difficult to apply in practice.
Part 2 to follow.


Postscript: A film of the event can be found here.