This is a very long decision with many different points
considered, including procedural ones.
The points below focus on the take-home messages rather than going
through why the judge came to each conclusion.
The points also focus on the claims interpretation parts of the decision.
1. This concerns a
request by Actavis for a Declaration of Non-Infringement in respect of a patent
(EP 0432677) covering use of pemetrexed disodium in a cancer treatment and a
corresponding SPC. There have already
been previous decisions on the case confirming the UK Court could consider validity
of the French, German, Italian and Spanish designations. The Declaration for
Non-Infringement is in respect of Actavis using the diacid, ditromethamine and
dipotassium versions of pemetrexed. So the main claim interpretation issue
concerns whether the claims of the patent can be construed to cover use of
chemical compounds which are similar but not the same as the specifically
mentioned compound.
2. The two sides had
very different opinions on the skilled person or team. There was also the suggestion
that the skilled team could be different for different claims or different
grounds (sufficiency and infringement).
3. Though the
Protocol on the Interpretation of Article 69 EPC refers to equivalents the
Judge did not view these as leading to a US-style doctrine of equivalents.
4. Claim
interpretation, to ask which variants fell in the scope of the claims, was
carried out using the Improver questions and Kirin-Amgen (what the person
skilled in the art would have understood the patentee to be using the language
of the claim to mean).
5. The judge uses
prosecution amendments and even considers the problems of anticipating
technology evolution as part of analysing the claims, which seem similar to a
US style Festo analysis.
6. After considering many scientific and legal points as
part of the Improver questions the judge decides on non-infringement based on
the principles of fair protection for the patentee and reasonable certainty for
the third parties, saying that there is nothing in the specification or in the
common general knowledge that would make ‘pemetrexed disodium’ mean anything
other than what is conventionally means.
7. The judge used
legal experts provided by the parties to carry out claim construction and infringement
analysis for other designations and the decision describes the relevant tests
that were used.
The decision can be found here. The previous High Court decision on whether
the UK Court could consider the French, German, Italian and Spanish
designations can be found here,
and the appeal can be found here.
You may also wish to see related posts 10
Observations on Patent Litigation and 10
Points on UK Court Patent Decisions from 2013.
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