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One year later, how has Actavis v Eli Lilly impacted on patent scope in the UK?


12th Jul 2018

Background

In Actavis v Eli Lilly, [2017] UKSC 48, the UK Supreme Court drastically changed the patent landscape in the UK. The judgement found that Eli Lilly’s patent claims directed to permetrexed disodium were directly infringed by Actavis’ variant comprising permetrexed dipotassium (reported by Reddie & Grose here). The court therefore found that a patent claim could be infringed by a variant that falls outside of the normal interpretation of the claim but is nevertheless “equivalent” to the claimed subject-matter, thus potentially widening the scope of protection of granted patents in the UK.

Below, we take a look at how some of the issues raised in the Actavis v Eli Lilly judgement have been addressed by the lower UK courts and what they could mean for UK patent owners and freedom to operate around patents.

The issues

1) What is “normal interpretation”?

Lord Neuberger, lead judge in Actavis v Eli Lilly, stated that a claim should be subject to “normal interpretation” and then referred to a variant falling outside “the literal meaning” of the claim during the equivalents analysis, apparently equating the two terms and thus creating some ambiguity.

Prior to Actavis v Eli Lilly a “purposive” approach was the normal way to interpret the scope of a claim in the UK. A purposive approach considers the meaning of a claim in the context of the teaching of the patent as a whole, and asks the question “what would a person skilled in the art have understood the patentee to be using the language of the claim to mean?”. This may differ from a strict literal interpretation of the claim wording.

Subsequent to Actavis v Eli Lilly, Mr Justice Arnold in Mylan v Yeda [2017] EWHC 2629 (reported by Reddie & Grose here) decided that the “normal interpretation” mentioned by Lord Neuberger still requires a purposive as opposed to literal approach. The judges in Fisher & Paykel v ResMed [2017] EWHC 2748, Illumina v Premaitha [2017] EWHC 2930, L’Oreal v Ventures [2018] EWHC 173 and Olaplex v L’Oreal [2018] EWHC 1394 have all agreed with Mr Arnold’s interpretation of Lord Neuberger’s ruling. This has provided welcome clarity.

2) Should prosecution history of a patent be considered when dealing with issues of infringement or claim interpretation?

Prior to Actavis v Eli Lilly, Lord Hoffman in Kirin-Amgen v Hoescht RPC 9 famously said “life is too short” to consult the prosecution history of a patent when dealing with issues of infringement or claim interpretation. However, Lord Neuberger in Actavis v Eli Lilly disagreed and gave a number of circumstances where consultation of the prosecution history of a patent is acceptable.

Since Actavis v Eli Lilly, the prosecution history of a patent has been brought up in Illumina v Premaitha and L’Oreal v Ventures. Mr Justice Carr, the judge in both cases, highlighted that reference to the prosecution history of a patent should be the exception and not the rule, and warned against the practice.

The prosecution history was deemed unhelpful in both cases. However, the contents of the history had to be consulted before this was determined. This sends a clear warning that patent applicants should take care in their correspondence with patent examiners, as their statements may later be used against them in court.

3) Can a claim be found to lack novelty due to the presence of an equivalent that was known before the priority date of the claim?

Prior to Actavis v Eli Lilly, a claim lacked novelty when a disclosure made before the effective filing date of the claim disclosed something which, if performed, would infringe the claim.

However, in Mylan v Yeda the defendants argued, and the judge accepted, that this does not apply for disclosures of equivalents that fall outside the “normal interpretation” of a claim but would nevertheless still infringe. The judge in Fisher & Paykel v ResMed agreed.

The principle of interpreting a claim in the same way to determine scope for assessing novelty and infringement may no longer apply in the UK.

4) To what extent should the wider scope of protection afforded by Actavis v Eli Lilly affect post-grant amendment of a claim?

A claim, once granted, may not be amended to increase the scope of protection it offers to the patentee. This was the case both prior to Actavis v Eli Lilly and now.

However, in Olaplex v L’Oreal, Mr Justice Birss hinted at the possibility that some post-grant claim amendments that may have been found to extend the scope of protection prior to Actavis v Eli Lilly may no longer be found impermissible or render a claim invalid, due to the wider scope of protection afforded by Actavis v Eli Lilly. This possibility has yet to be tested in the UK courts.

Conclusions

In general, it appears that judges in the lower courts have been reticent to apply the teachings of Actavis v Eli Lilly to their respective rulings, although some progress has been made. The full extent to which the scope of granted patents has been widened in the UK is still unclear. Further judgements from the Court of Appeal or the Supreme Court may be needed to clarify some of the issues raised, particularly with regards to post-grant claim amendments. The recent appointment of a former patent lawyer, Lord Kitchin, to the Supreme Court, may be a welcome development in this regard.

Reddie & Grose LLP has a reputation for providing our clients with strategic infringement and freedom to operate advice. If you would like any further information about the issues touched on in this article, please let us know.

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.

Author
Tom Bosworth
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