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

Infringement - no role for German doctrine of "deliberate selection" following Eli Lilly v Actavis, yet...

On the basis of a normal interpretation, the shear mode fell within the scope of the claims.  The judge held that the requirement of tension and compression in Integer [D] was infringed by the accused Magnitone products which deployed the shear mode.  L'Oreal also ran an alternative infringement argument based on equivalents.  Carr J stated in respect of this argument he would have concluded that the "shear variant" produced substantially the same result in the same way and obviously so as the patent states it is the preferred arrangement.  If  having discussed the "shear variant" at great length, the Patentee nonetheless chose to exclude it from the claims, then the skilled person would have assumed the patentee intended to do so (possibly in light of the prior art cited in prosecution).  Accordingly, in light of the third Actavis question, the variant would not be an equivalent.  

RN Ventures relied on the German principle of "deliberate selection" as set out in the German Federal Court of Justice case - Okklusionsvorrichtung.  This rule provides that there can be no patent infringement by equivalence if the description discloses several possibilities as to how a technical effect can be achieved, but only one of those are included within the claims of the Patent (similar to the Johnson & Johnston disclosure-dedication rule in the US).  L'Oreal argued that this rule was not adopted by the UK Supreme Court.

Readers may recall that Lord Neuberger's judgment in Actavis v Lilly stated that just because anti-folates were referred to generally and the claims were limited to pemetrexed disodium, in particular, this did not mean that the patent was intending that other pemetrexed compounds would not infringe. The UK Supreme Court stated that had the patent specification not referred to anti-folates generally, but only pemetrexed disodium, then this would have been a strong indication that the patentee was intending to limit himself to pemetrexed disodium. To argue that Lilly was in somehow limiting itself on infringement by virtue of what was disclosed in the specification:
“confuses the disclosure of the specification of a patent with the scope of protection afforded by its claims. Particularly given the facts set out in para 25 above, it seems to me very unlikely that the notional addressee would have concluded that the patentee could have intended to exclude any pemetrexed salts other than pemetrexed disodium, or indeed pemetrexed free acid, from the scope of protection.”
Mr Justice Carr noted that although the parallel Actavis v Lilly decision in Germany reached the same conclusion as the UK Supreme Court, it did so by different reasoning:  
"It is unnecessary for me to decide whether the German doctrine of “deliberate selection” should be applied generally to equivalents in the UK, and undesirable that I should do so, since in the present case I have concluded that there is infringement on a normal interpretation. My conclusion on equivalents is based upon a consideration of the specification of the Patent in this case, and does not establish any wider proposition."
Indeed, the AmeriKat thinks it will be a challenging for a lower court to apply such a doctrine in light of the Supreme Court's dicta in Actavis (as set out above).

Sufficiency, novelty/obviousness and amendment 

Applying the principles summarized by Arnold J in Sandvik v Kennametal [2012] RPC 23, Mr Justice Carr also rejected RN Ventures classic insufficiency attack.  He held that the Woog prior art did not anticipate the patent or made the patent obvious.  The amendment at Integer [F] was allowed, clear and did not add matter, despite RN Venture's contentions.  Although validity was attempted as a squeeze on infringement, there was not a lot of interest of law or application on these points to report.

So, valid and infringed.

Actavis v Lilly - the gift
that just keeps giving to patent law
They thought it was all over...the Barrell jurisdiction point

In England & Wales, the Court will disclose to the parties (normally through their representatives) a draft judgment under strict terms that the contents (or even a hint of the outcome) are not disclosed to anyone else.  To do so would be in contempt of court.  The draft is provided in order for the parties to flag any errors and typos.  Judges are entitled to alter their judgment before it is formally "handed down" or made public.  In light of Re Barrell Enterprises [1973] 1 WLR 19 CA. The Supreme Court, in In Re L (Children) (Preliminary Finding: Power to Reverse[2013] UKSC 8 confirmed that a judge has jurisdiction to change his or her mind until the order carrying the judgment into effect is drawn up and perfected.  The exercise of the power is not restricted to exceptional circumstances, but may include a plain mistake, the failure of the parties to draw the judge’s attention to a plainly relevant fact or point of law, the discovery of new facts after judgment was given.  It is the duty of the parties' representatives, to draw such issues to the attention of the Court, but also to avoid the temptation of raising fresh arguments.

After the draft judgment was provided to the parties in this case, RN Ventures requested that Mr Justice Carr reconsider his judgment on the basis of a claimed internal inconsistency that could not be reconciled.  Richard Davis, for RN Ventures, argued that throughout the case it was understood to be common ground that the accused Magnitone products were made in accordance with the embodiment where the contact elements move in unison, which Carr J held fell outside the scope of Claim 1.  Accordingly, he argued that the products should be held not to infringe.  L'Oreal's counsel, Tom Moody Stuart, said that was not common ground. Mr Justice Carr accepted this and said that Magnitone was seeking to run a new case not suggested at trial that the accused products fell outside of Integer [E], when at trial the Court was only told to be concerned about Integer [D].  He concluded: 
"The dispute at trial concerned integer D. If, having admitted integer E, RN Ventures wished to say that this action was caused by something other than integer D (and that its products therefore operated in a manner which, according to the Patent, is inferior to the embodiments which I have held fall within the claims) then it needed to establish this by evidence. It did not attempt to do so.
In conclusion, whilst I consider that Mr Davis was right to draw my attention to this issue, and I have carefully considered it, it does not cause me to change my conclusion that the Patent is infringed."
...It is now - key takeaways 
Not as greasy as some takeaways,
the IPKat boxes up the lessons
of L'Oreal v RN Ventures

On the patent side of the case, there are five key takeaways from Mr Justice Carr's decision:
  1.  Construction has been rebranded as "interpretation", thus emphasizing its more flexible  role when we get to assessing equivalence under the new Actavis questions (or Lilly questions, depending on who you ask) (see also Generics (t/a Mylan) v Yeda).  

  2. Take care when deciding whether to introduce prosecution history into your claim interpretation arguments.  The use of prosecution history must support at least one of the two instances identified by Lord Neuberger in Actavis v Lilly.  If they do not, you might be penalized on costs, as hinted by Carr J.  

  3. Be wary of any language in the specification that could be construed as disclaiming protection by the claims.  Although the German principle of deliberate selection or the US disclosure-dedication doctrine have not entered into English patent law, the Court is scrutinizing the language of the specification with renewed vigor following Actavis v Lilly. [Merpel wonders if increasingly, the Courts will accept the normal interpretation advanced by patentees so they don't have to wander into the rat nest of equivalence in Actavis v Lilly...]. Note that Carr J did not say there was no and could never be a role for a deliberate selection/disclosure-dedication doctrine in English law, but that it was inappropriate for him to get into it on the basis of his findings,  

  4. Make sure your expert's report references source material, especially where extracts from that material is said to constitute the CGK or the skilled person's understanding of technical terms used in the patent.   

  5. Flesh out all of your possible non-infringement arguments so that you don't have to rely on the Barrell jurisdiction should your claim interpretation fail.
Mr Justice Carr's L'Oreal v RN Ventures decision bristles with warnings on Actavis v Lilly claim interpretation, equivalents and prosecution history (Part II) Mr Justice Carr's L'Oreal v RN Ventures decision bristles with warnings on Actavis v Lilly claim interpretation, equivalents and prosecution history (Part II) Reviewed by Annsley Merelle Ward on Saturday, February 17, 2018 Rating: 5


  1. I am struck by the notion that a fact remains so, even if someone does not wish to acknowledge the fact.

    This premise not only appears to underscore a large quantity of what passes as blog comments (particularly on patent law blogs), and is a source of much obfuscation and fallacy peddling on said blogs, but where - as here - such appears in a court case, then one should cut through the crap being spewed by whichever side is spewing the crap.

    To wit, if there IS a factual finding of equivalence (in the patent sense), then NO ONE is "free" to "distinguish" away from that equivalence.

    If a patent holder during prosecution disclaims one "version," and that version is found to be equivalent to remaining claims, then - by necessary fact of which the applicant cannot control - that applicant has (in fact) disclaimed the remaining claims, to which any (factual) equivalence is found.

    Any other treatment appears to invite the very type of "scrivining" that so many find distasteful.

  2. It might have been more helpful to have described the operation of the RN Ventures product in some detail.

  3. It is interesting to see that in this instance, Mr J. Carr did not rely on the equivalent doctrine as defined in the Actavis case by Lord Neuberger.

    In the present instance, the claims were commensurate with the description. Shear as well as tension/compression were considered as obtaining the same effect Infringement is thus not to denied.

    This was not the case in the Actavis case. In this case the claim was clearly limited to pemetrexed disodium, and the mistake of the examiner was not, as claimed by Lord Neuberger, that the limitation was undue under Art 123(2), but that he still allowed the generalisation to any antifolate in the introductory part of the description. This should not have been accepted by examiner in that there was not the simplest support allowing to generalise pemetrexed disodium to other salts of pemetrexed and certainly not to any other antifolate.


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