UK: Effect of Actavis is felt in ice rink appeal

February 04, 2019

A decision of the Court of Appeal ([2018] EWCA Civ 2219) has recently become the first in the UK to reaffirm the consideration of equivalents when reviewing the issue of patent infringement.

Ice-World Int is the proprietor of EP1462755 directed towards a portable ice rink cooling system including a flexible coupling element for connecting cooling pipes in series. Icescape, a former customer of Ice-World, subsequently developed and marketed a cooling system including a parallel arrangement of cooling pipes.

In response, Ice-World alleged infringement of EP1462755 causing Icescape to issue proceedings at the High Court where it was determined that EP1462755 was not infringed. Interestingly, the judge also determined that EP1462755 was not entitled to priority and therefore invalid due to an intervening disclosure.

Importantly, at the High Court, infringement was considered on the basis of purposive construction alone. Since the High Court's decision was handed down, the UK courts' approach to the issue of infringement has been altered to include a consideration of equivalents in the wake of the Actavis v Eli Lilly ([2017] UKSC 48).

During the appeal, the inventive core of EP1462755 was determined to be the provision of cooling pipes connected in series by a flexible connection. Therefore, it follows that the parallel arrangement of the Icescape cooling pipes falls outside the purposely construed meaning of EP1462755.

However, following application of the three Actavis questions, it was determined that: i) the Icescape product achieves substantially the same result in substantially the same way as the Ice-World product; ii) it would be obvious to a reader, knowing that the same result is achieved, that the result is achieved in the same way; and iii) the reader would not conclude that Ice-World intended for strict compliance with the literal meaning of the claims to be essential.

As such, in contrast to the decision of the High Court, the Court of Appeal decided that the Icescape product indeed infringed EP1462755.

However, this came as cold comfort to Ice-World, as the Court of Appeal upheld the High Court's decision regarding the invalidity of EP1462755 in view of an intervening disclosure. While the outcome for Ice-World remained relatively unchanged, this new judgment has become a further demonstration of the effects of the Actavis decision in the UK.