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26 Jun 2019

Marflow Engineering Limited (Claimant) brought an action against Casellie Limited (Defendant) for infringement of UK Patent 2 368 888 relating to a method of installing a fluid-using appliance such as a shower. The method sets out the use of a plate, typically a metal plate, with apertures that receive one or more pipes. This plate is then fixed to the wall to ensure that there is no movement of the pipes. Casellie counterclaimed for revocation of the patent on the basis of lack of inventive step over two items of prior art.

Hacon HHJ applied the UK law on inventive step as set out by the Court of Appeal in MedImmune Ltd v Novartis Pharmaceuticals UK Ltd [2012] EWCA Civ 1234; [2013] RPC 27, at [87]-[94] and in Hospira UK Ltd v Genentech Inc [2016] EWCA Civ 780; [2017] RPC 13, at [9]-[13], in both of which reference was made to Pozzoli SpA v BDMO SA [2007] EWHC 1372 (Ch); [2007] FSR 36. He found the patent inventive over both items of prior art.

When considering infringement, Hacon HHJ found Casellie’s product did not infringe claim 1 on a normal construction of the claims. When assessing infringement under the normal construction of a claim, Hacon HHJ suggested that while construction of a claim must in principle be done without the alleged infringement in mind, a comparison between the claimed and the accused product or process can direct attention to the parts of the claim that require interpretation.

When considering whether Casellie’s product fell within the scope of the claim (i.e. infringed by equivalence), he considered that Casellie’s product did infringe. He applied the law on equivalence as explained by the Supreme Court in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48; [2017] RPC 21 and the Court of Appeal in Icescape Limited v Ice-World International BV [2018] EWCA Civ 2219; [2019] FSR 5 and as discussed by Hacon HHJ in Regen Lab SA v Estar Medical Ltd [2019] EWHC 63 (Pat) at [199]-[224].

Upon application of the Actavis v Lilly test, Hacon HHJ found infringement in that the Casellie variant achieves substantially the same result in substantially the same way as the inventive concept of the patent. It was not necessary for Hacon HHJ to consider the second and third reformulated Improver questions as Casellie had not submitted that these questions assisted this case if the answer to the first question was yes.

A copy of the decision can be read here.

Headnote: Melissa Brown, Marks & Clerk Law LLP