Patents Icescape Ltd v Ice-World International BV

Author: Peters Hans/Arnefo
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Source Wikipedia Ice Dance

Jane Lambert

Court of Appeal (Lord Kitchin, Lord Justices Floyd and Longmore)  Icescape Ltd v Ice-World International BV and Another : [2018] EWCA Civ 2219

The importance of this case is that it interprets, applies and possibly extends the Supreme Court's judgment in Eli Lilly v Actavis UK Ltd and Others  [2017] Bus LR 1731, [2017] RPC 21, [2017] UKSC 48 which I discussed 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.

Summary 
This case started as a threats action.  The defence was that the threats were justified because the patent in suit had been infringed. That prompted a claim for a declaration of non-infringement and revocation of that patent to which there was a counterclaim for infringement.  Those actions and the counterclaim came on for trial before Mr John Baldwin QC who sat as a deputy judge of the High Court in Icescape Ltd v Ice-World International BV and another [2017] EWHC 42 (Pat) 23 Jan 2017. Mr Baldwin found for the claimant, Icescape Ltd. ("Icescape"), on everything.  The patentee, Ice World International BV ("Ice-World"), appealed to the Court of Appeal.  That Court which consisted of Lord Kitchin and Lord Justices Floyd and Longmore dismissed Ice-World's appeal though their lordships reached a different conclusion from Mr Baldwin on whether the patent would have been infringed had it been valid.

The Parties
Ice-World makes mobile ice rinks and leases them to rink operators and other users. Icescape operates mobile ice rinks and also leases them to end users.

The Invention
The patent in suit was European patent no. EP1462755 for a cooling member for a mobile ice rink.  At paragraph [6] of his judgment, Lord Kitchin explained that "mobile ice rinks comprise a refrigeration unit, a coolant, manifolds, an array of pipes and a pump which drives the coolant from the refrigeration unit through a feed manifold and into the array of pipes which extend under the ice field and then through a discharge manifold to the refrigeration unit." He added that the installation and dismantling of such ice rinks required all of their various components to be assembled and then disassembled. That was laborious, relatively time consuming and expensive. Further, leakage could occur as a result of the need to assemble all of the different components and that could cause delay. The patented invention addressed those problems by providing a cooling member that could be installed and dismantled rapidly and allowed rinks to be assembled with varying surface areas.

The Dispute
For a while, Icescape operated an ice rink which  Ice-World had made and leased to it.  At the end of the lease. Icescape designed and made its own mobile ice rink. Ice-World believed that Icescape's rink infringed its patent.  Steven Bottema, Ice-World's managing director, wrote to Icescape and its customers threatening infringement proceedings.  Icescape launched a threats action under s.70 of the Patents Act 1977 and sought relief under s.70C (1).  It also sought a declaration of non-infringement under s.71 and revocation under s.72 (1) (a). Ice-World counterclaimed for the usual remedies for patent infringement.

The Issues
Lord Kitchin observed at paragraph [4] of his judgment that it had been common ground at trial that the patent was invalid if it was not entitled to its claimed priority date. It was also common ground that the letters constituted threats of patent infringement proceedings. The issues were whether:

• the patent was entitled to priority;
• Icescape's mobile ice rink fell within the scope of the patent; and
• Ice-World had a defence to the claim for unjustified threats.

Whether the Patent was entitled to Priority

Art 4 A (1) of the Paris Convention for the Protection of Industrial Property provides:

"Any person who has duly filed an application for a patent, or for the registration of a utility model, or of an industrial design, or of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority during the periods hereinafter fixed."

Paragraph B adds:

"Consequently, any subsequent filing in any of the other countries of the Union before the expiration of the periods referred to above shall not be invalidated by reason of any acts accomplished in the interval, in particular, another filing, the publication or exploitation of the invention, the putting on sale of copies of the design, or the use of the mark, and such acts cannot give rise to any third-party right or any right of personal possession."

Paragraph C (1) further provides that the periods of priority referred to above shall be 12 months for patents and utility models, and 6 months for industrial designs and trade marks. Paragraph C (2) adds that those periods shall start from the date of filing of the first application and that the day of filing shall not be included.

Those treaty provisions have been transposed into the European Patent Convention by art 87 (1) of that Convention:

"Any person who has duly filed, in or for
(a) any State party to the Paris Convention for the Protection of Industrial Property or
(b) any Member of the World Trade Organization,
an application for a patent, a utility model or a utility certificate, or his successor in title, shall enjoy, for the purpose of filing a European patent application in respect of the same invention, a right of priority during a period of twelve months from the date of filing of the first application."

They have also been incorporated into the laws of the United Kingdom by s.5 of the Patents Act 1977.

Ice-World claimed priority from a Dutch patent application for a "mobile heat exchanger and system for providing a skating rink with such heat exchanger".  There was, however, an important difference between the disclosure of the Dutch patent application and that of the patent in suit.  Ice-World argued that although there was no express disclosure in the priority document of multiple elements in the patent in suit, these features had nevertheless been disclosed because the priority document had to be interpreted through the eyes of the notional person skilled in the art and such a person, familiar with the common general knowledge, would understand these features to be present in any ice rink made using the heat exchangers of the priority document.  The learned deputy judge had not bought that argument and neither did the Court of Appeal.  At paragraph [43] of his judgment, Lord Kitchin said: "The claim to priority depends upon the express or implicit disclosure of those features in the priority document and, since there is no such disclosure, the claim to priority must fail."

Whether Icescape's Mobile Ice Rink fell within the Scope of the Patent

Ice-World alleged that Icescape's ice rink infringed claim 1 of its patent.   Mr Baldwin set out that claim as follows adding the letters A to E for convenience:

"Cooling member (21, 40) for a mobile ice rink provided with:

• a feed manifold (43, 45) extending in a transverse direction and a discharge manifold (44, 46), and
• a number of longitudinal pipes (50, 51) which extend transversely to the manifolds and can be connected at a first end (53, 54) to a manifold (43, 44, 45, 46), two longitudinal pipes (50, 51) in each case being in fluid communication with one another at a second end (60, 61) via a connector (27, 63), so that a fluid path is formed from the feed manifold (43, 45) to the discharge manifold (44, 46) via the two connected longitudinal pipes (50, 51),

characterised in that

A. the cooling member comprises at least two elements (41, 42), each with a feed manifold (43, 45) and discharge manifold (44, 46) and a number of longitudinal pipes (50, 51) connected thereto,
B. wherein each longitudinal pipe comprises at least two rigid pipe sections (3, 12, 16, 24, 68, 69) that are connected to one another via a joint member (4, 13, 17, 25, 70, 132, 133) such that they are fluid-tight, and
C. wherein by moving the joint members (4, 13, 17, 25, 70, 132, 133) a first series of parallel pipe sections (68, 68', 68") can be placed in a transport position with respect to a second series of parallel pipe sections (69, 69', 69") connected thereto, in which transport position the two series of pipe sections (68, 68', 68"; 69, 69', 69") are at an angle with respect to one another or are positioned on top of one another, and can be placed in an operational position in which the two series of pipe sections (68, 68', 68"; 69, 69', 69") extend in the extension of one another,
D. wherein the first and the second element (41, 42) can be placed in the operational position alongside one another such that the feed and discharge manifolds (43, 44, 45, 46) of the elements extend in the extension of one another in the transverse direction,
E. wherein the feed and discharge manifolds of the two elements are provided with a coupling member (47, 48) to make a fluid-tight connection between the respective feed and discharge manifolds of the first and the second element."

Icescape accepted at trial that its mobile ice rink incorporated all of the features of claim 1 except for features D and E and, in particular, the need for a "coupling member to make a fluid-tight connection between the respective feed and discharge manifolds of the first and the second element".  Mr Baldwin rejected the infringement claim on the basis that it ignored the language of the claim and involved replacing feature E with either nothing at all or with language such as "wherein the feed and discharge manifolds of the two elements are connected into the system in some leak-free manner".

Mr Baldwin had tried that action before the Supreme Court's judgment in Eli Lilly v Actavis.  Lord Kitchin observed, at paragraph [55] that the courts in this country have adopted what has been called a purposive approach to the interpretation of patents since the decision of the House of Lords in Catnic v Hill & Smith [1982] RPC 183. After reviewing Mr Justice Hoffmann's decision in  Improver v Remington [1990] FSR 181 and the House of Lords' decision in Kirin-Amgen v Hoechst Marion Roussel [2005] RPC 9, his lordship noted at paragraph [58]:

"The position remained settled until the decision of the Supreme Court in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48, [2017] RPC 21. Lord Neuberger, with whom the other members of the court agreed, explained (at [54]) that, notwithstanding what Lord Diplock had said in Catnic, a problem of infringement is best addressed by addressing two issues, each of which must be considered through the eyes of the person skilled in the art. They are (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is "yes", there is an infringement; otherwise, there is not. Lord Neuberger continued that this approach complies with art.2 of the Protocol because issue (ii) squarely raises the principle of equivalents, but limits its ambit to those variants which contain immaterial variations from the invention. It complies with art.1 of the Protocol because it involves balancing the competing interests of the patentee and of clarity, and it seeks to balance the encouragement of inventions and their disclosure with the need for a competitive market. Lord Neuberger added that issue (i) self-evidently raises a question of interpretation, whereas issue (ii) raises a question which would normally have to be answered by reference to the facts and expert evidence."

Lord Kitchin added at paragraphs [66] and [67]:

"[66]  The whole approach to interpretation and scope of protection therefore involves the following steps, considered through the eyes of the notional addressee:
i) Does the variant infringe any of the claims as a matter of normal interpretation?
ii) If not, does the variant nevertheless infringe because it varies from the invention in a way or ways which is or are immaterial? This is to be determined by asking these three questions:
a) Notwithstanding that it is not within the literal (that is to say, I interpolate, normal) 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?
b) 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?
c) 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?
[67] Of course, in order to establish infringement in a case where there is no infringement as a matter of normal interpretation, a patentee would have to establish that the answer to questions (a) and (b) above is 'yes' and that the answer to question (c) is 'no'".

In a concurring judgment, Lord Justice Floyd said at paragraph [94] of his judgment that the Protocol on the Interpretation of art 69 EPC rejected two extremes:

"The first was one where the strict literal wording of the claims had to be adopted, subject only to an exception where the claims were ambiguous and resort could be had to the description and drawings to resolve it. The second was one where the claims were a mere guideline, with the protection extending to anything which the description and drawings tells one the patentee has contemplated. The approach mandated by the Protocol was one "between these extremes" which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties."

In the next three paragraphs, he explained the significance of the Actavis decision:

[95] Until the decision in Actavis the approach adopted by the courts in this country was to regard "purposive construction" as representing the approach mandated by the Protocol. It was an interpretative approach of the kind suggested by Article 69. It took account of equivalents, as Lord Hoffmann explained in Kirin Amgen (cited by Lord Kitchin at paragraph 57 above) at paragraph 49, because equivalence can be an important part of the background known to the skilled person which affects what he understands the claim to mean.
[96] It is now clear from the Supreme Court's decision in Actavis that purposive construction forms but the first stage in the determination of the scope of protection conferred by the claims. In a sense, the first extreme referred to in Article 1 of the Protocol has been replaced by purposive construction, because it now represents the minimum protection afforded by the patent. There is a second, non-interpretative exercise which allows the patentee a degree of protection outside the normal, purposive meaning of the claims where the variant from the claim achieves substantially the same effect in substantially the same way.
[97] It should not be thought, however, that the claims do not continue to have an important function. It is variants from the claim which have to achieve substantially the same effect in substantially the same way as the invention. The claims remain the starting point for the subsequent analysis of variants. Although we may have edged closer to it, the new approach does not transgress the second of the outlawed approaches in the Protocol, which treats the claim merely as a somewhat vague guideline."

Lord Kitchin applied the principles that he and Lord Justice Floyd had discerned to this case.  Applying a purposive construction to the claim he arrived at the same conclusion as Mr Baldwin.  Asking the Actavis questions he concluded at paragraph [74] that Icescape's rink would have infringed the patent had it been valid because it varied from claim 1 in ways that were immaterial.

Whether Ice-World had a Defence to the Claim for Unjustified Threats
The trial took place before s.70 of the Patents Act 1977 had been amended by s.1 (2) of the Intellectual Property (Unjustified Threats) Act 2017.  At that time the section contained the following subsection:

"(2A) If the defendant or defender proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent—
(a) the claimant or pursuer shall be entitled to the relief claimed only if he shows that the patent alleged to be infringed is invalid in a relevant respect;
(b) even if the claimant or pursuer does show that the patent is invalid in a relevant respect, he shall not be entitled to the relief claimed if the defendant or defender proves that at the time of making the threats he did not know, and had no reason to suspect, that the patent was invalid in that respect."

Mr Baldwin had found that the patent would not have been infringed and that Ice-World and its managing director should have known or had reason to suspect that the patent was invalid.  As the Court of Appeal had found that the patent would have been infringed, the question of whether Mr Baldwin was right to reject the s.70 (2A) (b) defence became crucially important.

Ice-World relied on a letter from its patent agent, Jan Walaski, that the patent was valid adding that the application for the patent had been examined by the European Patent Office and had not been challenged for 12 years.   Lord Kitchin was not persuaded.   He said at paragraph [88]:

"I am not persuaded by these submissions. As Mr Campbell has emphasised, the invalidity of the patent is due to a combination of two matters: first, Ice-World filed a patent application which was not entitled to priority; and secondly, Ice-World made prior public use of the invention during the winter of 2003-2004 at various locations in Belgium, France, Netherlands, Germany and Portugal. In these circumstances it might be thought Ice-World would have great difficulty establishing it had no reason to suspect the patent was invalid. However, the position is, in my judgment, still worse. As the deputy judge explained, he was provided with no information about the knowledge or understanding of the directing minds of Ice-World. Neither Mr Bottema nor anyone else gave evidence on its behalf, and no explanation was provided for Ice-World's failure to call any such evidence. The basis of the defence rests, in substance, upon the letter of advice given by Mr Walaski. It is true that Mr Walaski said at the start of his letter that he had been instructed to provide an opinion as to the validity of the patent but the deputy judge was given no details of the instructions Mr Walaski was given, and he was provided with no explanation from Mr Walaski or anyone else as to why Mr Walaski did not consider the issue of priority."

Comment
HH Judge Hacon interpreted and applied Lord Kitchin's judgment in Regen Lab SA v Estar Medical Ltd and others [2019] EWHC 63 (Pat) (18 Jan 2019) which I discussed in Patents: Regen Lab SA v Estar Medical Ltd. 24 Jan 2019. I shall discuss both cases at C5's 11th Annual Forum on Pharma Biotech Patent Litigation in Amsterdam, 26th-27th Feb 2019,

Further Information
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