Actavis v Eli Lilly– Are we clear now?

By Patrick Kelleher


Much has been written about the implications of the July 2017 Supreme Court decision in Actavis v Eli Lilly in which Lord Neuberger delivered the judgment of the Court. Commentators have noted Lord Neuberger's development/overturning of the long-standing law of purposive construction which was set out by Lord Hoffmann in the 2004 case of Kirin-Amgen v TKT in the House of Lords. The keystone of Lord Neuberger's ruling centres on the scope of patent claims and the role of the express claim wording. Lord Hoffmann famously decided that claim scope was purely a matter of construction in context - a claim should be construed, he said, by asking what a skilled person would have understood the patentee to be using the language of the claim to mean.

Lord Neuberger fundamentally disagreed and set aside Lord Hoffmann's ruling that claim scope was to be decided purely as a matter of construction. In a far-reaching decision, described by some commentators as his "parting gift" to patent law before his retirement from the bench, Lord Neuberger held that patent claim scope was not solely a construction issue but was rather a two-part test, only the first of which was claim construction. Lord Neuberger disagreed that the purposive construction approach was fully in accordance with the Article 69 EPC and the Protocol on Interpretation and found instead that Lord Hoffmann had given insufficient consideration to equivalents in deciding claim scope which means the UK has never been acting in accordance with EPC 73 or 2000.

Lord Neuberger assessed the so-called Protocol Questions which had been devised as an aid to deciding claim scope, by Mr Justice Hoffmann (as he then was) in the 1985 case of Improver v Remington.

Rather than focusing solely on the language of the claim, Lord Neuberger stated:

"The [first Protocol] question as framed by Hoffmann J, with its emphasis on how 'the invention' works, should correctly involve the court focusing on 'the problem underlying the invention', 'the inventive core', or 'the inventive concept' as it has been variously termed in other jurisdictions." (at ¶60)

The UK Patents Act s125(1) is clear that the "invention" shall be taken as that which is set out in the claims. Therefore Lord Neuberger's formulation of "inventive core" or "inventive concept" must necessarily be broader than what is merely set out in the claim. At first glance, Lord Neuberger's formulation might appear fair and sensible in a world where colourable imitators exist, who wish to take advantage of patentees' endeavours.

But what is the inventive core or inventive concept of a patent? How broad is such a claim scope? What would a patent infringement case look like when the scope of claim was assessed on the basis of the inventive core/concept set out in the patent specification? What problems could this approach produce?

For a key example of such a case, one needs do no more than look at the Kirin-Amgen case at first instance , coincidentally decided by Mr Justice Neuberger, as he then was. Indeed, it might be said that Actavis v Eli Lilly is less a case in which Lord Neuberger overturned Lord Hoffmann, and more one in which Lord Neuberger corrected a long-held but misconceived approach and re-instated his own earlier judgment. The parallels are instructive. The manner in which the scope of claim issue was addressed by Neuberger J in Kirin-Amgen and the manner in which he considered the parallel issue of breadth of claim insufficiency (something not at stake in the Actavis case) bears further examination.

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