LATEST NEWS

Bilski cited in BPAI rejection December 01, 2008
Film companies test ISP liability in Australia December 01, 2008
FTC appeals Rambus decision to Supreme Court December 01, 2008
Pharma industry attacked over patent strategies December 01, 2008
Pharma industry attacked over patent strategies (full version) December 01, 2008
EPO rejects WARF stem cell patent November 28, 2008
IP lawyer rescued from Mumbai siege November 28, 2008
ECJ deals blow to famous marks in Intel case November 27, 2008

Ireland: Constructing patent claims

Back to country updates menu

A&L Goodbody, Dublin

In a recent case concerning the admissibility of evidence and the construction of patents, the Irish Supreme Court endorsed the purposive approach to patent claim construction under Article 69 of the European Patent Convention and its Protocol. In upholding a decision by the High Court, the Supreme Court refused to permit the introduction of documentation used in arguments before foreign patent offices and in foreign proceedings concerning the scope of the patent at issue.

The case involved the patent for Lipitor, the world-renowned anti-cholesterol drug, owned by the Warner-Lambert Company (Warner–Lambert). The plaintiffs, Ranbaxy Laboratories Ltd & Ors (Ranbaxy), sought a declaration that the manufacture of a certain product did not infringe Warner-Lambert's Irish patent for Lipitor. Warner-Lambert's Irish patent allegedly covered only certain mixtures of the relevant chemical compounds and a request was made for voluntary discovery.

Ranbaxy sought a number of documents, including communications passing to and from the European Patent Office, the Danish Patent Office and the USPTO relating to the scope of the patent. It also requested all documentation relevant to the scope of the US patent put in evidence in connected US proceedings, and all documentation relating to the construction of, or interpretation of the scope of the patent by the patent owner, including all internal memoranda and minutes.

The parties agreed that the only issue before the court was the interpretation of the patent and the scope of the claims. On this basis Warner-Lambert claimed the documentation requested by Ranbaxy was irrelevant. A dispute over this ensued and the discovery issue was referred to the court.

Ranbaxy did not contest the legal principle that evidence of the intention of the patent owner was inadmissible. It asserted that the documents sought showed what persons skilled in the art understood the patent to mean, and the fact that they had been prepared by the defendant's patent agents did not make them inadmissible. Ranbaxy argued that the documentation sought was highly relevant as it would help demonstrate a conflict between what the defendant contended in the Irish proceedings was the meaning of the Irish patent, and what was previously contended on its behalf in another forum in respect of the same or sufficiently similar claims and descriptions.

Warner-Lambert counter-argued that the documents were inadmissible and irrelevant to the interpretation of the patent and the scope of the claims because they were expressions of thoughts, or an interpretation by the patent owner or its representatives, as to the meaning of the patent. It also submitted that the scope of the documentation was so vast that the discovery in itself would require further investigations.

After considering several cases from the English and US courts, the High Court refused Ranbaxy's application for discovery. The judge refused to follow the US approach, which he said came from within a very different tradition and concluded that the construction of the patent was fundamentally a question of law for the Irish court. He held that evidence as to what a patent means, and in particular evidence as to what the inventor or patent owner (or his representatives) intended it to mean, is inadmissible. Evidence should be received from witnesses that are skilled in the art – people with practical knowledge and experience of the kind of work in which the invention was intended to be used.

The judge held that representations which came into existence and were made for the purpose of indicating the thoughts, intentions and opinions of the inventor or patent owner were inadmissible as an aid to construction of claims in a patent. He held that if the plaintiff succeeded, any documents coming from sources generated by the representatives of the patent owner were in principle admissible, despite them showing the thoughts and intentions of the patent owner and its representatives.

On appeal to the Supreme Court, Ranbaxy argued that although the authors of the documents in question were Warner-Lambert's patent agents, they were admissible as evidence of the opinions of persons skilled in the art of claim construction. The Supreme Court relied on the case Glaverbel SA v British Coal Corporation and Anor [1995] RPC 225, in which Staughton LJ stated the proposition that:

The interpretation of a patent, as with any other written document, is a question of law...it means that it is for the Judge rather than a jury to decide, and that evidence of what the patent means is not admissible. In particular, evidence of the patentee as to what he intended it to mean should not be admitted, nor indirect evidence which is said to point to his intention. Compare the rule that the parties to a deed or contract cannot give evidence of what they intended to mean. A patent is construed objectively, through the eyes of a skilled addressee.

The Supreme Court held that the documents were written as submissions and not from the point of view of an independent specialist. It found that the fatal flaw in Ranbaxy's case was that the letters in question were written by patent agents acting on behalf of the patent owner and as such they were intended to and did reflect the patent owner's views.