Pleading the Doctrine of Equivalents - Facebook Ireland v Voxer IP
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| Jane Lambert |
In Eli Lilly v Actavis UK Ltd and others [2017] Bus LR 1731, [2017] UKSC 48, [2017] RPC 21, the Supreme Court changed the way the courts decide whether a patent claim has been infringed. I discussed that judgment in detail in The Supreme Court's Judgment in Eli Lilly v Actavis UK Ltd and Others: how to understand it and why it is important 13 July 2017. Up to that judgment a patent could be infringed only if a variant fell within the language of a claim. Lord Neuberger referred to that as a "normal construction". After that judgment a patent could be infringed if the variant operated in a manner that was equivalent to the claim. This was referred to in that case and subsequently as the "doctrine of equivalents".
The issue before Lord Justice Birss in Facebook Ireland Ltd v Voxer IP LLC [2021] EWHC 657 was whether the doctrine of equivalents should be pleaded specifically when alleging infringement in the particulars of claim. In Kwikbolt Ltd v Airbus Operations Ltd [2019] EWHC 2450 (IPEC) (31 July 2019) Judge Hacon indicated that the doctrine should be pleaded at para [14] of his judgment though that case proceeded in the Intellectual Property Enterprise Court where CPR 63.20 requires a statement of case to set out concisely all the facts and arguments upon which the party serving it relies.
Lord Justice Birss held that the requirement to plead the doctrine of equivalents applies to all patent litigation and not just to claims in IPEC. He said at para [8]:
"In my judgment a patentee (whether in the Patents Court, IPEC or the STS) who wishes to rely on the doctrine of equivalents as part of its case of infringement must say so in the Particulars of Infringement. CPR Part 63 r63.6 provides that a Statement of Case in a patent case must set out the matters in Practice Direction 63. PD63 paragraph 4.1 sets out matters which must be pleaded in the Particulars of Infringement. It might be thought, although Voxer did not take this point, that because equivalents are not mentioned in paragraph 4.1, it follows that equivalents need not be mentioned at all, but that would be an error. These provisions all function in an overall context governed by CPR Part 16 about Statements of Case in general. Rule 16.4(1)(a) provides that Particulars of Claim must include "a concise statement of the facts on which the claimant relies". A case based on the doctrine of equivalents inevitably involves an assertion or assertions of fact which are distinct from the general questions of fact arising in relation to infringement on a normal construction. The first and the second Actavis questions necessarily include such distinct issues of fact. Therefore by the application of the general rule 16.4, equivalence to a particular claim feature must be pleaded."
Lord Justice Birss held that the requirement to plead the doctrine of equivalents applies to all patent litigation and not just to claims in IPEC. He said at para [8]:
"In my judgment a patentee (whether in the Patents Court, IPEC or the STS) who wishes to rely on the doctrine of equivalents as part of its case of infringement must say so in the Particulars of Infringement. CPR Part 63 r63.6 provides that a Statement of Case in a patent case must set out the matters in Practice Direction 63. PD63 paragraph 4.1 sets out matters which must be pleaded in the Particulars of Infringement. It might be thought, although Voxer did not take this point, that because equivalents are not mentioned in paragraph 4.1, it follows that equivalents need not be mentioned at all, but that would be an error. These provisions all function in an overall context governed by CPR Part 16 about Statements of Case in general. Rule 16.4(1)(a) provides that Particulars of Claim must include "a concise statement of the facts on which the claimant relies". A case based on the doctrine of equivalents inevitably involves an assertion or assertions of fact which are distinct from the general questions of fact arising in relation to infringement on a normal construction. The first and the second Actavis questions necessarily include such distinct issues of fact. Therefore by the application of the general rule 16.4, equivalence to a particular claim feature must be pleaded."
He added at para [11]:
"The minimum required to satisfy CPR rule 16.4 is for the Particulars of Infringement to contain a statement, by reference to each relevant claim feature (and claim), that equivalence is relied on."
"The minimum required to satisfy CPR rule 16.4 is for the Particulars of Infringement to contain a statement, by reference to each relevant claim feature (and claim), that equivalence is relied on."
The issue arose in a pre-trial review that was due to be heard on 13 April. The action was a claim by Facebook Ireland Ltd for the revocation of Voxer IP's patent number EP (UK) 2 393 259 for a "Telecommunication and Multimedia Management Method and Apparatus". Voxer IP counterclaimed fro infringement of its patent in Facebook and Instagram applications. It was in respect of that counterclaim that the point arose.
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