• Claim of patent infringement in relation to a system for cooling mobile ice rinks
  • Court of Appeal applies judgment of the Supreme Court in ACTAVIS v Lilly on patent variants for the first time
  • Clarification on the correct approach when interpreting patent claims

What's it about?

Ice-World (the claimant) owned a patent for a system for cooling mobile ice rinks and claimed that Icescape (the defendant) had infringed its patent with Icescape's own mobile ice rink system. The patent protected the invention of the use of flexible joint members which connected each section of the cooling pipes and allowed for quicker, easier and more compact packing, transportation and installation.  

At first instance, the High Court found in favour of the defendant on three issues: (i) Ice-World's patent was invalid for not being entitled to priority – several elements of the patented system had not been disclosed in the priority document (an earlier Netherlands patent application) on which the patent relied in order to maintain its novelty over the disclosure in the priority document; (ii) the mobile ice rink made by Icescape did not infringe because it did not fall within the scope of the patent; and (iii) (assuming the patent was valid) Ice-World had no defence to the claim that it had made unjustified threats against Icescape. 

Ice-World appealed to the Court of Appeal. The Court of Appeal dismissed Ice-World's appeal on the first and third issues (above) but allowed the appeal on the second issue of infringement.

Why does it matter?

This case is the first time that the Court of Appeal has considered and applied the guidance and ruling given by the Supreme Court in ACTAVIS v Lilly. The Actavis case considered the test for whether a variant product to that which was embodied in the invention within a patent, infringed that patent. The Supreme Court had reformulated the questions to ask, as:

  • Does the variant infringe any of the claims as a matter of literal interpretation? 
  • If not, does the variant nonetheless infringe, because it varies from the invention in a way or ways which is or are immaterial?

In addressing the second of these questions, because the defendant's ice-rink product did not infringe on a literal interpretation, the Court of Appeal considered the three "ACTAVIS questions", which emphasised the need to identify the "inventive core" of a patent. Although there were many differences between the systems used by the claimant and the defendant, they shared an inventive core. This was because (a) the defendant's variant achieved the same result as the invention in the patent, (b) that same result would have been entirely obvious to a person skilled in ice-rink technology, and (c) there was no reason why that skilled person would have thought that strict compliance with the wording in the patent was an essential requirement of the invention. Accordingly Icescape's system infringed Ice-World's patent (had it been valid). 

Now what? 

It's still early days, but the Court of Appeal has confirmed the general perception of a significant change in patent interpretation flowing from the ACTAVIS judgment. 

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