Construction Flashcards
Eli Lilly v Actavis UK [2017]
[54]…a problem of infringement is best approached by addressing two issues, each of which is to be considered through the eyes of the notional addressee of the patent in suit, ie the person skilled in the relevant art. Those issues are:
(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 an infringement; otherwise, there is not.
….
In my view, issue (i) self-evidently raises a question of interpretation, whereas issue (ii) raises a question which would normally have to be answered by reference to the facts and expert evidence.
[58]…. issue (i), as already mentioned, involves solving a problem of interpretation, which is familiar to all lawyers concerned with construing documents. While the answer in a particular case is by no means always easy to work out, the applicable principles are tolerably clear, and were recently affirmed by Lord Hodge in Wood v Capita Insurance Services Ltd [2017] 2 WLR 1095, paras 8 to 15.
Wood v Capita Insurance Services [2017
The end of a series of cases which applied an approach to interpretation similar to that which had previously applied to patent cases alone under Kirin Amgen v HMR [2004] UKHL 46.
Kirin Amgen v HMR [2004]
It seems to me clear that the Protocol [to Article 69 EPC] with its reference to “resolving an ambiguity”, was intended to reject these artificial English rules for the construction of patent claims. As it happens, though, by the time the Protocol was signed, the English courts had already begun to abandon them, not only for patent claims, but for commercial documents generally. The speeches of Lord Wilberforce in Prenn v Simmonds and Reardon Smith Line Ltd v Yngvar Hansen-Tangen are milestones along this road. It came to be recognised that the author of a document such as a contract or patent specification is using language to make a communication for a practical purpose and that a rule of construction which gives his language a meaning different from the way it would have been understood by the people to whom it was actually addressed is liable to defeat his intentions. It is against that background that one must read the well known passage in the speech of Lord Diplock in Catnic Components Ltd v Hill & Smith Ltd when he said that the new approach should also be applied to the construction of patent claims:
“A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge.” This was all of a piece with Lord Diplock’s approach a few years later in The Antaios to the construction of a charterparty: “I take this opportunity of re-stating that if detailed semantic and syntactical analysis of words in a commercial contract is going to lead to a conclusion that flouts business commonsense, it must be made to yield to business commonsense.” Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee or the author of any other document. Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean.
Notice, however, that it is not, as is sometimes said, “the meaning of the words the author used”, but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of and background to the particular utterance. It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience. I have discussed these questions at some length in Mannai Investment Co Ltd v Eagle Star Life Assurance Co Ltd and Investors Compensation Scheme Ltd v West Bromwich Building Society.
In the case of a patent specification, the notional addressee is the person skilled in the art. He (or, I say once and for all, she) comes to a reading of the specification with common general knowledge of the art. And he reads the specification on the assumption that its purpose is both to describe and to demarcate an invention – a practical idea which the patentee has had for a new product or process – and not to be a textbook in mathematics or chemistry or a shopping list of chemicals or hardware. It is this insight which lies at the heart of “purposive construction”. If Lord Diplock did not invent the expression, he certainly gave it wide currency in the law. But there is, I think, a tendency to regard it as a vague description of some kind of divination which mysteriously penetrates beneath the language of the specification. Lord Diplock was in my opinion being much more specific and his intention was to point out that a person may be taken to mean something different when he uses words for one purpose from what he would be taken to mean if he was using them for another. The example in the Catnic case was the difference between what a person would reasonably be taken to mean by using the word “vertical” in a mathematical theorem and by using it in a claimed definition of a lintel for use in the building trade …There is no presumption about the width of the claims. A patent may, for one reason or another, claim less than it teaches or enables.
“Purposive construction” does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee’s own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from the conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.
One of the reasons why it will be unusual for the notional skilled man to conclude, after construing the claim purposively in the context of the specification and drawings, that the patentee must nevertheless have meant something different from what he appears to have meant, is that there are necessarily gaps in our knowledge of the background which led him to express himself in that particular way. The courts of the United Kingdom, the Netherlands and Germany certainly discourage, if they do not actually prohibit, use of the patent office file in aid of construction. There are good reasons: the meaning of the patent should not change according to whether or not the person skilled in the art has access to the file and in any case life is too short for the limited assistance which it can provide. It is however frequently impossible to know without access, not merely to the file but to the private thoughts of the patentee and his advisors as well, what the reason was for some apparently inexplicable limitation in the extent of the monopoly claimed. One possible explanation is that it does not represent what the patentee really meant to say. But another is that he did mean it, for reasons of his own; such as wanting to avoid arguments with the examiners over enablement or prior art and have his patent granted as soon as possible. This feature of the practical life of a patent agent reduces the scope for a conclusion that the patentee could not have meant what the words appear to be saying. It has been suggested that in the absence of any explanation for a restriction in the extent of protection claimed, it should be presumed that there was some good reason between the patentee and the patent office. I do not think that it is sensible to have presumptions about what people must be taken to have meant but a conclusion that they have departed from conventional usage obviously needs some rational basis.’
The invention should be taken at the same level of generality as that defined in the claims
Summary of the principles (pre-Eli Lilly)
Court of Appeal in Virgin Atlantic Airways v Premier Aircraft [2009]
‘(i) The first overarching principle is that contained in Article 69 of the European Patent Convention;
(ii) Article 69 says that the extent of protection is determined by the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short the claims are to be construed in context.
(iii) It follows that the claims are to be construed purposively—the inventor’s purpose being ascertained from the description and drawings.
(iv) It further follows that the claims must not be construed as if they stood alone—the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims.
(v) When ascertaining the inventor’s purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.
(vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol—a mere guideline—is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee’s territory.
(vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements.
(viii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context.
[(ix) It further follows that there is no general “doctrine of equivalents” - superseded by Eli Lilly
(x) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context - superseded by Eli Lilly]
(xi) Finally purposive construction leads one to eschew the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.’
Glaverbel v British Coal Corp [1995]
The construction of a patent is a question of law.
Evidence is not admissible as to the meaning of the patent (although evidence on meaning of technical terms is admissible)
Behaviour of patent proprietor is irrelevant
The intention of the drafter is irrelevant to construction as the document must be construed objectively.
The factual matrix (the surrounding circumstances) is relevant to the construction of the patent.
Key terms: general principles
Biogen v Medeva [1997]
The patent is construed at potentially different dates. Sufficiency would be judged at the date of filing, but it may be the priority date is more appropriate.
Key terms: general principles
Ultraframe v Eurocell Building [2005]
A patent should not be construed with an eye to the prior art (unless, maybe, where it has been cited)
Key terms: prior art
Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2014]
A number of BT’s arguments on this appeal involve reading limitations into the claim which are not there as a matter of language, on the grounds that to do so would follow more closely that which is disclosed by way of example in the body of the specification. It must be remembered, however, that the specification and claims of the patent serve different purposes. The specification describes and illustrates the invention, the claims set out the limits of the monopoly which the patentee claims. As with the interpretation of any document, it is conceivable that a certain, limited, meaning may be implicit in the language of a claim, if that is the meaning that it would convey to a skilled person, even if that meaning is not spelled out expressly in the language. However it is not appropriate to read limitations into the claim solely on the ground that examples in the body of the specification have this or that feature. The reason is that the patentee may have deliberately chosen to claim more broadly than the specific examples, as he is fully entitled to do.
Key terms: examples are not limiting
Société Technique de Pulverisation Step v Emson Europe Ltd [1993]
‘does not mean that an integer can be treated as struck out if it does not appear to make any difference to the inventive concept. It may have some other purpose buried in the prior art and even if this is not discernible, the patentee may have had some reason of his own for introducing it.’
Key terms: the whole claim must be considered as written
Brugger v Medic-Aid [1996]
The claim cannot be re-written to make it easier to construe.
Key terms: the whole claim must be considered as written
Catnic v Hill
‘The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.
The question, of course, does not arise where the variant would in fact have a material effect upon the way the invention worked. Nor does it arise unless at the date of publication of the specification it would be obvious to the informed reader that this was so. Where it is not obvious, in the light of then-existing knowledge, the reader is entitled to assume that the patentee thought at the time of the specification that he had good reason for limiting his monopoly so strictly and had intended to do so, even though subsequent work by him or others in the field of the invention might show the limitation to have been unnecessary. It is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way in which the invention worked’.
Key terms: ELI LILLY/improver questions, strict compliance
Improver v Remington [1990]
‘If the issue was whether a feature embodied in an alleged infringement which fell outside the primary literary or acontextual meaning of a descriptive word or phrase in the claim (“a variant”) was nevertheless within its language as properly interpreted, the court should ask itself the following three questions:
(1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no? (2) Would this (i e that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes? (3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim. On the other hand, a negative answer to the last question would lead to the conclusion that the patentee was intending the word or phrase to have not a literal but a figurative meaning (the figure being a form of synecdoche or metonymy)denoting a class of things which included the variant and the literal meaning, that latter being perhaps the most perfect, best known or striking example of the class.’
Key terms: ELI LILLY/improver questions, strict compliance
Eli Lilly v Actavis [2017]
Reformulated questions
[66]…. While the language of some or all of the questions may sometimes have to be adapted to apply more aptly to the specific facts of a particular case, the three reformulated questions are as follows:
i)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, ie the inventive concept revealed by the patent?
ii)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?
iii)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?
In order to establish infringement in a case where there is no literal infringement, a patentee would have to establish that the answer to the first two questions was “yes” and that the answer to the third question was “no”.
Key terms: ELI LILLEY reformulated questions
Insituform Technical Services v Inliner [1992]
Just because a variant has advantages over the patent invention does not preclude it from infringing.
Eli Lilley
First question
“…In effect, the question is whether the variant achieves the same result in substantially the same way as the invention. If the answer to that question is no, then it would plainly be inappropriate to conclude that it could infringe. If, by contrast, the answer is yes, then it provides a sound initial basis for concluding that the variant may infringe, but the answer should not be the end of the matter.”
