Echoes of Actavis sound less loud as time goes on

By Christopher de Mauny


L'Oréal v RN Ventures [2018] EWHC 173 (Pat), available here, continues the short run of cases that have considered the issue of infringement by equivalence but in which equivalence has not determined the outcome.  This contrasts with last summer's Supreme Court decision in Actavis v Eli Lilly where a full doctrine of equivalence was recognised in UK law, significantly altering the outcome of that case.

Here, Henry Carr J dealt with equivalence in a claim for infringement of a patent held by L'Oréal concerning electronic facial skin care devices. L'Oréal also claimed infringement of its Community Registered Designs.  The defendant, RN Ventures, relied among other things on a Gillete defence.  This had the potential to shed further light on how equivalence may interact with validity: the old understanding that the scope of a patent's claim was identical for infringement and validity has been doubted post-Actavis, in particular by the decision of Arnold J in Mylan (see here). 

The parties raised various points on the interpretation of the patent's claims. Henry Carr J did not, in [43] of his judgment, discuss the principles of interpretation in detail but he referred to "the principles concerning normal interpretation and equivalents set out by the Supreme Court in Actavis … and by the Patents Court in Mylan … Fisher & Paykel … and Illumina …".  In those latter cases the Patents Court appears to have reached a consensus, at first instance at least, that the issue of 'normal interpretation' is to be approached as an issue of purposive construction.

In the event, Henry Carr J held at [104] that the products in issue infringed as a matter of normal interpretation.  He went on in [105] to discuss equivalence in case he was wrong. He noted that he would have concluded that the feature in issue produced substantially the same result in the same way as the patent, and obviously so.  He went on, "[h]owever … having discussed the … variant at great length in the specification, the Patentee nonetheless chose to exclude it from the claims. The skilled addressee would have assumed that he intended to do so, possibly in the light of prior art cited during the course of prosecution. Therefore, I would have concluded that the variant was not an equivalent, in light of the third Actavis question".

He recorded also, at [106], that the defendant had sought to rely on case law from the German courts to support an argument along the same lines as his conclusion, recorded by the judge as "there is no patent infringement by equivalence if the description discloses several possibilities as to how the technical effect can be achieved, but only one of those possibilities is included within the claims…". The patentee of course countered this by reference to the decision in Actavis and the judge declined to decide whether the principles derived from the German case law should be applied as part of the UK doctrine of equivalence: he had reached his conclusion based on the specification of this patent and was not establishing any principle. See [108].

Whilst the judge appears to be at pains to make clear that the case is one that turns on its own facts, it may illustrate a future path that the Patents Court – and Court of Appeal? – may tread in order to minimise, in practice, the effect of the Actavis decision other than in occasional circumstances.  If it is established firmly that 'normal interpretation' is purposive construction, then if in the majority of cases the courts will readily conclude that the patent permits the third Actavis question to be answered to the effect that the patentee had intended that strict compliance with the literal meaning of the relevant claim(s) was intended, the effects of Actavis will be significantly lessened.

Since a conclusion on the infringement case was reached without resort to equivalence the interesting issue of claim scope for infringement versus validity was not addressed – indeed, the patent was found valid.

Henry Carr J did, however, have to determine another issue flowing from Actavis: reference to the prosecution history for construction of the patent. Recall that in Actavis the Supreme Court had held that this would be permissible where (i) the point of construction was "truly unclear" but the contents of the prosecution file "unambiguously resolve the point", or (ii) it would be "contrary to the public interest for the contents of the file to be ignored".

In this case, the judge rejected the first route as inapplicable: the issue was not truly unclear and neither did the prosecution file provide unambiguous resolution.  See [74].  The defendant contended that the second route applied, submitting that "the Examiner had gained the impression that L'Oréal was choosing to exclude the [relevant feature] from the claims, and L'Oréal should have explained to him that this was not the case, rather than electing to approve the text" – see [75].  The judge rejected this, noting among things that "I do not consider that L'Oréal was under a duty to correct any misunderstanding about the scope of the claims on the part of the Examiner".  He repeated the gist of Lord Neuberger's judgment in Actavis, saying that "[i]t should be emphasised that reference to the prosecution history is the exception, and not the rule…".

In this respect, patentees and prosecuting patent attorneys will be relieved to see that the Patents Court has little appetite to widen Actavis' narrow doctrine of when the prosecution file may be relied on for construction of the patent post-grant.