Introduction

The legal landscape surrounding patent priority rights and infringement criteria has been significantly influenced by landmark cases that interpret and apply the provisions of the European Patent Convention (EPC). One such pivotal case is Icescape Ltd v. Ice-World International BV & Ors ([2018] EWCA Civ 2219), adjudicated by the England and Wales Court of Appeal (Civil Division) on October 10, 2018. This case delves into complex issues of patent priority, validity, and infringement, offering profound insights into the application of EPC Article 87(1) and the implications of the Supreme Court's decision in Actavis UK Ltd v Eli Lilly & Co.

The dispute centered on a patent held by Ice-World International BV ("Ice-World") for a system pertaining to cooling mobile ice rinks. Icescape Ltd ("Icescape") was accused of infringing this patent, leading to a series of legal battles that culminated in the appellate decision under review.

Summary of the Judgment

The initial trial, presided over by Mr. John Baldwin QC, resulted in a judgment favoring Icescape on three primary issues:

1. Priority Entitlement: The patent was deemed not entitled to its claimed priority date.
2. Patent Infringement: Icescape's mobile ice rink was found not to infringe the patent under the initial analysis.
3. Threats of Infringement Proceedings: Ice-World's letters threatening patent infringement proceedings were considered groundless.

Upon appeal, the Court of Appeal revisited these findings, particularly focusing on the intricacies of priority rights as outlined in Article 87(1) EPC and the scope of patent infringement following the Supreme Court's decision in Actavis.

Lord Justice Floyd concurred with Lord Kitchin's analysis, ultimately dismissing the appeal based on the invalidity of the patent due to its failure to meet the priority requirements and affirming the appropriateness of the deputy judge's findings regarding unjustified threats under section 70(2A) of the Patents Act 1977.

Analysis

Precedents Cited

The judgment extensively referenced pivotal decisions that have shaped the interpretation of patent laws within the EPC framework:

• G2/98 Same Invention: Addressed the interpretation of "the same invention" under Article 87(1) EPC, emphasizing a narrow interpretation to ensure legal certainty and equal treatment.
• Actavis UK Ltd v Eli Lilly & Co: Clarified the two-stage approach to infringement—first analyzing literal claim interpretation and then assessing equivalents through the "Actavis questions."
• Pharmacia Corp v Merck & Co Inc: Highlighted the necessity for the priority document to enable a skilled person to perform the invention directly and unambiguously.
• Unilin Beheer NV v Berry Floor NV: Emphasized that the priority document must disclose essentially the same information as the claim, enabling the skilled person to work the invention.
• Improver Technologies v Remington: Established the "Protocol questions" for assessing equivalents in patent claims.

Legal Reasoning

The court's legal reasoning was methodical, dissecting the patent's validity and the alleged infringement through established EPC provisions and recent judicial interpretations:

• Priority Entitlement: The court scrutinized whether the patent's claims were directly and unambiguously disclosed in the priority document, considering common general knowledge but rejecting any reading that infers undisclosed features.
• Infringement Criteria: Applying the "Actavis questions," the court assessed whether Icescape's system achieved the same result in the same way as the patented invention, ultimately determining that it did, despite differing in specific implementation details.
• Defence Under Section 70(2A): The court evaluated whether Ice-World could prove a lack of knowledge or suspicion regarding the patent's invalidity, ultimately finding insufficient evidence to support this defence.

Impact

This judgment reinforces the strict interpretation of priority rights under Article 87(1) EPC, emphasizing that patents must explicitly or implicitly disclose all essential features relevant to the claims. Furthermore, it clarifies the scope of patent infringement post-Actavis, delineating a clear methodology for assessing both literal infringement and equivalents. The case underscores the importance of precise patent drafting and the potential pitfalls of assuming implicit disclosure via common general knowledge.

Complex Concepts Simplified

Article 87(1) EPC

Article 87(1) of the European Patent Convention grants a right of priority to a patent applicant who has filed an application in one member state and then files in another within twelve months. This right allows the later application to be treated as having been filed on the same date as the first, provided that the invention is the same.

"The Same Invention"

Determining whether two patent applications disclose "the same invention" involves assessing if the skilled person can derive the subject matter of the claim directly and unambiguously from the priority document, using common general knowledge. This prevents applicants from extending the scope of their patent claims unjustly.

Purposive Construction

Purposive construction refers to interpreting patent claims based on the intended purpose or function of the invention, rather than solely on the literal wording. This approach ensures that the interpretation aligns with the inventor's intentions and the invention's practical application.

Actavis Questions

1. Does the variant achieve substantially the same result in substantially the same way as the patented invention?
2. Would it be obvious to a skilled person that the variant achieves the same result in the same way?
3. Would a skilled person conclude that the patentee intended strict compliance with the claim's literal meaning as an essential requirement?

These questions guide courts in determining whether a variant infringes a patent by being equivalent to the claimed invention, even if it doesn't fall within the literal claims.

Conclusion

The Icescape Ltd v. Ice-World International BV & Ors case serves as a critical reference point for understanding the stringent requirements for patent priority and the nuanced approach to infringement assessment post-Actavis. By meticulously applying EPC provisions and aligning with recent judicial interpretations, the Court of Appeal underscored the necessity for explicit disclosures in priority documents and provided clarity on evaluating patent equivalents.

For practitioners and parties involved in patent litigation, this judgment emphasizes the importance of thoroughness in patent drafting and the strategic considerations when challenging or defending patent claims based on priority and infringement grounds. It also highlights the evolving nature of patent law, particularly in adapting to significant appellate decisions that shape the interpretation and enforcement of intellectual property rights.