October 31, 2018
The defendant, Ice-World International BV, made mobile ice rinks and leased them to third parties. Ice-World was the proprietor of a European Patent entitled “Cooling member for a mobile ice rink”, which claimed a priority date of 24 March 2003.
The claimant, Icescape Ltd, operated mobile ice rinks and also leased them rinks to third parties. At one point, Icescape operated a mobile ice rink made and leased to it by Ice-World. When that relationship came to an end, Icescape designed, made and began to operate its own mobile ice rink.
In May 2015, Ice-World wrote to Icescape asserting that Icescape’s mobile ice rink infringed Ice-World’s patent. In May 2016, Ice-World sent letters to Icescape and a large number of its customers asserting infringement. In June 2016, Icescape issued proceedings seeking relief for groundless threats of infringement by Ice-World, revocation of the patent and a declaration that none of its activities infringed the patent.
Icescape sought revocation on the ground that the patent was not entitled to its claimed priority date and that it was invalid as a result of Ice-World’s own prior uses. Ice-World disputed that the patent was invalid and alleged infringement. It accepted that it had written threatening letters, but maintained that those threats were justified. It also contended, in the alternative, that if the patent was invalid, it had a defence to the claim for groundless threats under s 70(2A) of the Patents Act 1977 on the basis that it did not know and had no reason to suspect that the patent was invalid in that respect.
By the time the matter came to trial, it was common ground that: i) the patent was invalid if it was not entitled to its claimed priority date; and ii) the letters constituted threats of patent infringement proceedings. The issues for Mr Baldwin QC sitting as a deputy judge of the Patents Court were whether:
- i) the patent was entitled to priority;
- ii) the mobile ice rink made by Icescape fell within the scope of the patent; and
- iii) on the assumption that the patent was invalid but, had it been valid, would have been infringed, Ice-World had a defence to the claim for unjustified threats under s 70(2A) of the 1977 Act.
The judge found in favour of Icescape on each of the three issues. Ice-World appealed all three findings.
Giving the lead judgment, Lord Justice Kitchin said that the issue of priority hung on the important difference between the disclosure of the priority document and that of the patent. The priority document did not contain express disclosure of multiple elements of the patent.
Kitchin LJ noted that in Unilin Beheer NV v Berry Floor NV  FSR 6, Lord Justice Jacob had said that the question was whether there was “enough in the priority document to give the skilled man essentially the same information as forms the subject of the claim and enables him to work the invention in accordance with that claim.” Further, Jacob LJ had said, the disclosure of the priority document as a whole should be considered.
This, together with the additional notion that the priority document should give the skilled person the information the subject of the claim “directly and unambiguously”, was approved by the Court of Appeal in Medimmune v Novartis  EWCA Civ 1234.
Kitchin LJ said that the priority document should be read through the eyes of the skilled person, equipped with the common general knowledge. However, this knowledge should be used for the purpose of interpreting the disclosure of the priority document and placing it in a context, and not for the purpose of supplementing that disclosure or adding to it what may seem to be a perfectly obvious further feature (HTC Corporation v Gemalto SA  EWCA Civ 1335).
Kitchin LJ accepted Ice-World’s argument as to the key novel and inventive feature of the claimed invention, and that the skilled person would readily appreciate how to read the priority document so as to work the invention. However, he said, that did not alter the fact that there was no express or implicit disclosure in the priority document of various elements of the patent, and it was not possible to derive those features directly and unambiguously, using common general knowledge, from the priority document as a whole. The claim to priority therefore had to fail, Kitchin LJ said, and the judge had been correct to find that the patent was invalid.
Here, Kitchin LJ noted that, since the decision in Catnic v Hill & Smith  RPC 183, the courts had adopted a purposive approach to the interpretation of patents, rather than a purely literal one derived from a meticulous verbal analysis.
The position remained settled until the Supreme Court decision in Actavis UK Ltd v Eli Lilly & Co  UKSC 48, which, Kitchin LJ said, took a “markedly different” approach. The Actavis decision had not been made by the time this case had reached trial in the High Court.
In Actavis, Lord Neuberger said that, notwithstanding Catnic, two issues should be addressed when considering infringement, each seen through the eyes of the person skilled in the art: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way, or ways, which is, or are, immaterial? If the answer to either issue is “yes”, there is infringement, otherwise, there is not.
To answer question (ii), Lord Neuberger said that the following three questions had to be considered:
- notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?
- would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?
- Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?
Therefore, to establish infringement in a case where there was no infringement as a matter of normal interpretation, the answer to questions (a) and (b) would have to be “yes” and the answer to question (c) would have to be “no”.
Kitchin LJ found that the variant did not infringe any of the claims as a matter of normal interpretation which, following a debate in a number of post-Actavis cases, the court of appeal confirmed meant ‘purposive’ confirmation. Following Actavis, he then had to consider whether the variant differed from the claimed invention in ways that were immaterial, as Lord Neuberger had set out in questions (a) to (c) above.
First, focusing on the inventive core of the patent, Kitchin LJ was satisfied that the Icescape system achieved substantially the same result in substantially the same way as Ice-World’s invention. Essentially, the Icescape satisfied the aims of the patent, which were to provide a cooling member that could be installed rapidly and was reliable in operation, with which it was possible to proceed rapidly to the ice-forming stage, and with which a mobile ice rink could be made with a large number of different surface areas.
Secondly, Kitchin LJ considered whether it would be obvious to the person skilled in the art, reading the patent and knowing that the variant achieved substantially the same result as the invention, that it did so in substantially the same way as the invention. Again, the answer was “yes”. In fact, Kitchin LJ said, the Icescape system achieved substantially the same result as the invention in precisely the same way as the invention.
Thirdly, Kitchin LJ considered whether the skilled reader of the patent would have concluded that Ice-World nonetheless intended that strict compliance with the literal meaning of the contested claim was an essential requirement of the invention. Here, Kitchin LJ said that the fact that the language of the claim did not cover the variant was not enough to justify holding that Icescape did not satisfy the question. In Kitchin LJ’s view, the answer to the question was plainly “no”. There was no reason, he said, why the skilled reader would have thought that strict compliance was an essential requirement of the invention. The inventive core of the patent had nothing to do with all of the elements set out in the contested claim of the patent.
Kitchin LJ therefore held that the judge had been wrong to find no infringement. In Kitchin LJ’s view, the Icescape system did fall within the scope of protection of the patent (if valid).
At first instance, the judge had found that the letters written by Ice-World to Icescape customers constituted actionable threats of patent infringement.
On appeal, Ice-World said that the judge had erred in failing to find that it had a defence under s 70(2A) of the 1977 Act because, at the time of making the threats it did not know, and had no reason to suspect, that the patent was invalid. Section 70 has since been amended by the Intellectual Property (Unjustified Threats) Act 2017, but s 70(2A) continued to apply to the threats in these proceedings.
Kitchin LJ noted that as well as Ice-World’s patent not being entitled to priority, Ice-World had also made prior public use of the invention during the winter of 2003-2004 at various locations. It was difficult to see, therefore, how Ice-World could establish that it had no reason to suspect that the patent was invalid. However, the position was still worse, Kitchin LJ said, as the judge had not ben provided with any information about the knowledge or understanding of the directing minds of Ice-World. No witness evidence was adduced, and no explanation was given as to why there was no such evidence. Ice-World’s defence was based on its solicitor’s letter of advice giving an opinion as to the validity of the patent, but the judge had not been given any details of the instructions the solicitor was given, nor any explanation as to why the solicitor had not considered the issue of priority.
Despite coming to a different conclusion from that of the judge on the issue of infringement, Kitchin LJ said that Mr Baldwin QC had been right to find that the patent was not entitled to priority and was therefore invalid. He was also entitled and right to find that Ice-World had failed to make good a defence to the claim for groundless threats of patent infringement under s 70(2A) of the 1977 Act. The appeal was dismissed. (Icescape Ltd v Ice-World International BV  EWCA Civ 2219 (10 October 2018) — to read the judgment in full, click here).