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Patents Infringement Defences And Entitlement Notes

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INFRINGEMENT 3-stage inquiryConstruction of the claims o To determine if D's activities are within the scope of the monopoly Identification of infringing acts Consideration of exceptions NOTE: D would usually file a counterclaim for invalidity o This disincentivises C from construing the claims widely, since that would increase the likelihood of the patent being anticipated by prior art, etc. o C might not only lose the infringement action but have its patent revoked o Helmers and McDonagh (2013): The most common outcome for patent litigation is revocation (even if it began as an infringement action)
? Might this indicate that there are many invalid patents on the register?

CONSTRUCTION OF CLAIMS Chisum (2004): Claims are important in a patent system-

2 main purposes o Defines the invention (for examination of patentability) o Notifies the public of what the patent covers
? So that members of the public (including businesses) can avoid infringing it BUT claims cannot perform these roles if there isn't "reasonably predictable certainty" as to how they will be interpreted o German approach: Language of the claim is only a guide
? The true scope requires consideration of what is disclosed and the relationship with prior art (was that attribute necessary as an improvement?)
? "sign post" approach: protection might extend beyond the claims o UK approach: Language of the claim is the exclusive definition
? "fence post" approach: claims determine the boundaries
? Aimed at achieving greater certainty
? No infringement as long as some integers of the claim were omitted or replaced
? BUT development of the "pith and marrow approach" reduces the strictness
? Might still be infringing if the substance of the invention was taken
? EMI v Lissen (1939): "What is not claimed is disclaimed"
? Van der Lely v Bamfords (1963): Moving the back wheels forward is different from moving the front wheels backwards

EPC APPROACH ART 69Art 69: Extent is "determined by the terms of the claim" o BUT "the description and drawings shall be used to interpret the claim" Protocol to Article 69

Art 69 does not mean that the extent is defined by the "strict, literal meaning of the wording", NOR does it mean that the "claims serve only as a guideline" o Seeks to strike a balance "between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties" Both Art 69 and the Protocol were given effect in the UK via PA 1977 s125 EPC 2000 o Amended Art 69 to replace "terms of the claims" with "the claims" o Art 2 of the Protocol introduced to ensure equivalent elements are taken into account when determining protection of a European patent oCATNIC V HILL AND SMITH [1982] RPC 183C invented a steel beam called a lintel o Used in construction for keeping open spaces above doors and windows o Previous lintels were much heavier C's claim referred to a back piece that extended vertically o D created a variant which had an angled back piece (6deg) UKHL (Lord Diplock): D's variant did infringe C's patent o "A patent specification should be given a purposive construction rather than a purely literal one" o The key question is whether "persons with practical knowledge and experience of the kind of work ... would understand that strict compliance with a particular descriptive word ... was intended by the patentee to be an essential requirement ... even though it could have no material effect upon the way the invention worked"
? Not an issue if a variation WOULD have a material effect o Variation not an infringement if "apparent to any reader skilled in the art" that the words "cannot have been intended by a patentee ... to exclude minor variant which ... could have no material effect" o Would be obvious to a "builder familiar with ordinary building operations" that "the patentee did not intend to make exact verticality ... an essential feature"
? So "extending vertically" could include a range of similar angles o Suggested that there were no separate "textual infringement" and "pith and marrow" tests to be applied

[1990] FST 181C had European patent for its shaver that made use of a "helical spring" mechanism to pluck hairs out (instead of shaving) D's product made use of a rubber tube which had slits in it to pluck the hairs out instead Hoffmann J: No infringement of C's patent o Affirmed Catnic as the right approach even under the Protocol to Art 69 o 3 Improver questions
? Does the variant have a material effect on the way the invention works?
? Level of generality depends on the description in the claim
? If yes, then the variant is outside the claim
? If no, then ask the next question:

Would it have been "obvious at the date of publication of the patent to a reader skilled in the art" that the variant had no material effect?
? If no, then the variant is outside the claim
? If yes, then ask the next question:
? Would "the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement"?
? This is a question of construction
? If yes, then the variant is outside the claim
? If no, then the claim might also cover minor variations (so D might be infringing) o Here, although the variant didn't have a material effect on the working of the invention and that was obvious, it wasn't an infringement
? "The rubber rod is not an approximation to a helical spring", even though they can work the same way in "limited circumstances" ISSUES (Bentley) o The 1st Improver question does not explain how to characterise the products
? Need to characterise what each is before you can determine the variations
? Easier for mechanical inventions but not for biotechnology or chemicals o Unclear what level of knowledge should be imputed to the skilled person
? The more he knows, the more likely he is to conclude that it was obvious there would be no material effect
? Should the skilled person know the legal rules? (would affect what he thinks the patentee intended)-

***KIRIN-AMGEN V HOECHST MARION [2005] RPC 9-Amgen came up with a method to produce erythropoietin (EPO), a hormone made in the kidney which stimulates production of red blood cells o Used exogenous DNA to code for EPO in host cells TKT came up with a different method of "gene activation" o Introduced a DNA switch into human cells to activate the naturally present dormant DNA sequence coding for EPO UKHL (Lord Hoffmann): No infringement by D's technology, C's patent only covered the method that it used o The Protocol rejects "old English literalism" o Affirmed that Catnic is "precisely in accordance with the Protocol"
? Gives the patentee the full extent, but not more, of the "monopoly which a reasonable person skilled in the art, reading the claims in context, would think he was intending to claim" o There is NO American 'doctrine of equivalents' in Europe
? Instead, the problem of literalism is dealt with by abandoning it (through using the Catnic principle of construction) o BUT equivalence is an "important part of the background of facts known to the skilled man which would affect what he understood the claims to mean" o Differentiated the Catnic principle and the Protocol questions
? Catnic principle: principle of purposive construction, giving effect to the Protocol requirements

Protocol questions (Improver questions): mere "guidelines, more useful in some cases than in others" o One compulsory question: "what would a person skilled in the art have understood the patentee to have used the language of the claim to mean"
? The Protocol questions are just guidance in trying to answer this question o No need to always apply the Protocol questions if the result is clear from just construing the claims contextually NOTE: Since Kirin-Amgen, courts have been less willing to apply the Protocol questions o Instead, they use the general principles of purposive and contextual construction (Mayne Pharma [2005])-

ISSUE (LADDIE): THE APPROACH IN KIRIN-AMGEN "DOES NOT ACCORD WITH THE LEGISLATIVE INTENT BEHIND ART 69 AND THE PROTOCOL"-This decision is a "futile attempt at achieving certainty" and is actually conservative o Some flexibility is necessary in catching defendants who have "sailed too close to the wind" The Kirin-Amgen approach is "contextual literalism" that remains restrictive of the patentee's claims o Doesn't prevent immaterial variants where the use of restrictive language might have been to avoid prior art arguments or speed up the patent process, rather than limiting the scope of the monopoly o Aimed at ensuring that "maximum certainty is secured for the benefit of third parties", without balancing conflicting interests The benefits of a central granting authority (the EPO) will be undermined if national courts apply different standards for validity and infringement Patentees are not without need for protection, since it is "unrealistic to expect perfect verbal precision" The UKHL is wrong to suggest that the present English approach (after Catnic) is the same as the EPC and German approaches

ISSUE (FISHER): THE PURPOSIVE CONSTRUCTION APPROACH HAS AN "UNARTICULATED PREDILECTION TOWARDS LITERALISM"E.g. When applying the principles of purposive construction in Occlutech (2010), the CA placed great emphasis on ordinary dictionary meanings of words


In the UK, documents relating to the examination process of the patent are generally not admissible when construing the patent claim o SOME exceptions (e.g. Rohm & Haas v Collag [2002]) Fox (2004): In the USA, the prosecution file is considered "intrinsic evidence" o This allows the "court to interpret a claim in a manner matching the construction which caused a claim to be granted" o The patentee is in control of what arguments it makes to the patent office, so this evidence "can reasonably be taken to reflect the patentee's view" o Ensures consistency and fairness
? Patentee is allowed to rely on the same construction of the claim in registration and infringement processes


Possible issue: there is a key difference between using prosecution history to narrow or widen the claim o Widening the claim: unfair since the public would not usually access that material o Narrowing the claim: merely holding the patentee to what he argued for earlier

INFRINGING ACTS EPC doesn't list the infringing activitiesDetermining what the infringing activities are is left up to national legislators In any case, infringement occurs where the act is carried out within the UK without the consent of the patentee o No infringement if the patentee has licensed that particular use

DIRECT INFRINGEMENT (PA 1977 S60(1))Where D carries out one of the exclusive acts in the UK without the patentee's consent

PRODUCT INVENTIONS (S60(1)(A))Right to make the product o ISSUE: Is repairing a patented product considered making it?

UNITED WIRE LTD V SCREEN REPAIR SERVICES [2001] RPC 24C produced sifting screens which had to be replaced often D sold reconditioned screens made from C's old frames that were brought in by customers UKHL (Lord Hoffmann): This was an infringement of "making" o There is no implied license to make, but repairing is not a prohibited exclusive act o The product no longer existed when the frame was stripped down: that was just a chassis "from which a new screen could be made"

SCHULTZ V WERIT [203] UKSC 16C had patent for intermediate bulk containers (cuboid bottle in a metal cage) D produced replacement bottles which X used to produce "rebottled" IBCs (replacing the bottles in C's cages) UKSC (Lord Neuberger): Rebottling did NOT involve making o Deciding whether an act involves "making" is a "matter of fact and degree" (multifactorial analysis) o No infringement here because:
? Bottle was a freestanding replaceable component
? Bottle wasn't connected with the inventive concept
? Bottle had shorter life expectancy that the other inventive component (cage)
? Bottle wasn't the main component

X didn't do anything beyond replacing and "routine repairs" of the product Right to dispose of (or offer to dispose of) the product o United Wire (2001): On sale by the patentee, there is an implied license for the user to use or dispose of the product in any way he wishes o Kalman v PCL Packaging (1982): The sale (carried out or offered) must have been in the UK Right to keep the product fo disposal or otherwise o SKF v Harbottle (1980): Passively storing the product in a warehouse is NOT "keeping" the product under s60(1) so no infringement Right to import the product o Sabaf SpA v MFI Furniture Centres (2004): Transporting goods purchased outside the UK is not importation NOTE: No stated requirement for a particular mental state (unlike for processes)--PROCESS INVENTIONS (S60(1)(B))Infringement to use the process or offer it for use in the UK Mental requirement: D must know (or it must be obvious to a reasonable person in the circumstances) that the use there without consent would be infringement

PRODUCT OF PROCESS (S60(1)(C))Only covers products obtained directly by means of the process Infringement to dispose of, offer to dispose of, use, import or keep the product Pioneer Electronics Capital v Warner Music [1997] RPC 757 o CA (Nourse LJ): The product must be "the product with which the process ends" as long as it does not subsequently lose its identity
? Identity is not lost even if the product is "subjected to further processing" as long as it "retains its essential characteristics"

INDIRECT INFRINGEMENT (PA 1977 S60(2))-Supplying or offering to supply to a 3 rd party in the UK any essential means for putting the invention into effect without the consent of the patentee o E.g. providing kits to make the infringing product Required mental state: o D knows (or it is obvious to a reasonable person in the circumstances) that the means are "suitable for putting, and are intended to put, the invention into effect" o i.e. actual or constructive knowledge NOTE: Both the supplying/offer and the putting into effect of invention must be in the UK S60(3): Supply of a "staple commercial product" is not indirect infringement unless "made for the purpose of inducing" a direct infringement



D sold a potato separator machine that was similar to C's
? Sold 2 versions: with rubber rollers or with steel clod rollers
? The steel version could be refitted with rubber rollers CA (Jacob and Etherton LJJ): Machine with rubber rollers was within the patent scope, so direct infringement. Machine with steel rollers was indirect infringement

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