Icescape Ltd v Ice-World International BV & Ors

Factual and Procedural Background

This appeal concerns a patent relating to a system for cooling mobile ice rinks. The appellants ("Ice-World") manufacture mobile ice rinks and hold a patent entitled "Cooling member for a mobile ice rink" with a priority date of 24 March 2003. The respondent ("Icescape") operates mobile ice rinks and leases them to third parties. After ending a prior business relationship with Ice-World, Icescape designed and operated its own mobile ice rink, prompting Ice-World to assert patent infringement in 2015 and 2016.

In response to Ice-World's infringement allegations and threatening letters sent to Icescape's customers, Icescape initiated proceedings in June 2016 seeking relief from groundless threats, revocation of the patent, and a declaration of non-infringement. Revocation was sought on grounds that the patent was not entitled to its claimed priority date and was invalid due to Ice-World's own prior uses. Ice-World disputed invalidity and maintained the threats were justified, also asserting a defence under section 70(2A) of the Patents Act 1977 if the patent was invalid but they had no reason to suspect this.

The trial took place over three days in December 2016 before a deputy judge. It was common ground that if the patent was not entitled to priority, it was invalid, and that the letters constituted threats of infringement proceedings. The judge's issues were to determine priority entitlement, infringement, and the applicability of the section 70(2A) defence. The judge ruled in favour of Icescape on all issues. Ice-World appeals against these findings.

Legal Issues Presented

1. Whether the patent was entitled to its claimed priority date.
2. Whether Icescape's mobile ice rink infringed the patent claims.
3. Whether Ice-World had a defence to the groundless threats claim under section 70(2A) of the Patents Act 1977, assuming the patent was invalid but infringement would have occurred if valid.

Arguments of the Parties

Appellant's Arguments

• The key inventive feature is the use of joint members allowing longitudinal pipes to fold for transportation (integer C), which is disclosed in the priority document.
• The priority document implicitly discloses the invention as usable in conventional multi-element configurations by a skilled person using common general knowledge.
• On infringement, the appellant argued that Icescape's system included coupling members forming fluid-tight connections between elements, satisfying claim features D and E, albeit arranged in parallel rather than series.
• The appellant sought to rely on a broader interpretation of the patent claims, including equivalents, based on the Supreme Court's Actavis decision.
• Regarding the defence under section 70(2A), the appellant submitted that Ice-World had no reason to suspect invalidity prior to being alerted by Icescape’s solicitors, supported by a patent attorney’s opinion.

Respondent's Arguments

• The respondent maintained that the priority document did not expressly or implicitly disclose multiple elements connected as claimed, and that incorporating common general knowledge to fill this gap was impermissible.
• On infringement, the respondent argued that Icescape’s elements were connected in parallel, not series as claimed, and that the coupling members relied upon were either absent or formed a single manifold after welding, thus not satisfying the claim.
• The respondent emphasized advantages of their parallel system and rejected the appellant’s attempt to rely on welded pipes as coupling members.
• Regarding the section 70(2A) defence, the respondent argued that the patent’s invalidity was due to both lack of priority entitlement and prior public use, making it unlikely Ice-World had no reason to suspect invalidity.
• The respondent also submitted that the appellant failed to provide evidence about the knowledge or state of mind of those responsible for the threatening letters, justifying the judge’s reluctance to infer innocence.

Table of Precedents Cited

Court's Reasoning and Analysis

The court began by examining the priority entitlement of the patent. It identified that the patent claimed multiple elements connected in series with fluid-tight coupling members (features A, D, and E), which were not expressly or implicitly disclosed in the priority document. The court applied the strict standard from the Enlarged Board of Appeal decision G2/98 requiring direct and unambiguous disclosure in the priority document, not allowing supplementation by common general knowledge. The court found that the priority document disclosed the key inventive feature of foldable joint members (integer C) but did not disclose the multiple elements connected as claimed. Consequently, the patent was not entitled to priority and was invalid.

On infringement, the court applied the purposive construction principles established in Catnic and refined by the Supreme Court in Actavis. The court found that the patent claims required a series connection between elements, but Icescape’s system used a parallel connection. Despite this, the court applied the Actavis framework of three questions to assess infringement by equivalents. It concluded that the Icescape system achieved substantially the same result in substantially the same way as the invention’s inventive core (the foldable joint members), it would have been obvious to the skilled person that this was so, and the patentee did not intend strict compliance with the literal claim language regarding series connection as essential. Therefore, the court found infringement on an equivalents basis.

Regarding the defence under section 70(2A) of the Patents Act 1977 against claims for groundless threats, the court considered the evidence of Ice-World’s knowledge of invalidity. The court found the legal opinion relied upon was of little value as it did not address priority and was based on incomplete instructions. Furthermore, Ice-World failed to provide evidence about the knowledge or state of mind of those responsible for the threatening letters. The court held that it was not appropriate to infer a favourable state of mind in the absence of evidence. Accordingly, the defence failed.

Holding and Implications

The court DISMISSED the appeal. The patent was held not to be entitled to priority and therefore invalid. While the court found that Icescape’s system infringed the patent on an equivalents basis, this was moot given the patent’s invalidity. The court also upheld the finding that Ice-World failed to establish a defence under section 70(2A) of the Patents Act 1977 against claims for groundless threats of infringement. The direct effect is that the patent cannot be enforced against Icescape and related claims for unjustified threats succeed. The decision does not establish new precedent beyond applying existing principles on priority entitlement, purposive construction, infringement by equivalents, and unjustified threats defences.