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Eli Lilly v Actavis UK  UKSC 48
A stellar panel of judges gathered in late 2017 to debate the recent Supreme’s Court ground-breaking decision, Eli Lilly v Actavis UK  UKSC 48.
This decision not only heralds the end of the ongoing saga over whether drugs manufactured by Actavis infringe a European patent in the name of Lilly, but also has far reaching consequences for UK patent law.
The decision concerns infringement and the approach to equivalents in the UK.
What are equivalents?
Known widely as the doctrine of equivalents, this legal concept means that a third party can be held liable for infringement of a patent claim, even when the product or process in question does not fall within the literal scope of the patent claim.
Over the last three decades, there have been converging decisions in the UK regarding the approach to equivalents in infringement proceedings. A brief summary of the evolution of the approach is as follows:
- Catnic v Hill & Smith  RPC 183 highlighted the importance of purposive construction, rather than a purely literal one, specifically questioning:
“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”.
- Improver v Remington  FSR 181 held a doctrine of equivalents approach, and introduced the Improver questions, which were formulated as:
- Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim.
- 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?
- 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?
- In Kirin-Amgen v Hoechst Marion Roussel  RPC 9, Lord Hoffman confirmed that the claims should be understood as what a skilled person (at the date of filing of the application) would have understood the author to be using the words to mean. Specifically, Lord Hoffman confirmed that the Improver questions were more like guidelines, thereby returning the UK to a purposive construction approach.
In the Lilly v Actavis decision, Lord Neuberger said that the claims must still be construed using purposive construction. He then addressed each of the Improver questions, and reformulated them as follows:
- 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, i.e. the inventive concept revealed by the patent?
- 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?
- 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”.
This decision therefore takes the UK back to a doctrine of equivalentsand away from the Kirin-Amgen approach of using only purposive construction to determine the scope of protection. Specifically, Lord Neuberger described the Kirin-Amgen approach as “wrong in principle” in the present Lilly v Actavis decision.
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If you have any questions on this topic, please contact Andy Cloughley at firstname.lastname@example.org.