Construction and novelty post Actavis v Eli Lilly


On 26 October 2017, Arnold J handed down judgment in Generics (UK) Ltd v Yeda [2017] EWHC 2629 (Pat), the first judgment from the Patents Court following the much discussed judgment of the Supreme Court in Actavis v Eli Lilly[2017] UKSC 48. The Supreme Court had introduced the concept of infringement by equivalents into UK law, and this was the first time the Court had been asked to consider how, if at all, this would have an impact on the assessment of validity.

On construction, Arnold J held that a purposive construction is still appropriate – that a patent is to be interpreted through the eyes of the person skilled in the art and that the exercise involves interpreting the words of the claim in context. Indeed, “the context must include the very purpose for which the document exists, namely to describe and claim an invention.”

Arnold J went on to hold the patent to be obvious, and therefore his commentary on novelty is obiter. However, his view is that the Supreme Court has not changed the assessment of novelty.  In other words, it is not sufficient for a finding of lack of novelty that the prior subject matter would infringe the claim applying the doctrine of equivalents.  Instead, a claim will only lack novelty if the prior art discloses subject matter which falls within the claim when construed purposively.

In coming to this conclusion, Arnold J noted first that when the House of Lords held in Synthon v SKB [2005] UKHL 59 that “the matter relied upon as prior art must disclose subject-matter which, if performed would necessarily result in an infringement of the patent” it was not possible to infringe by virtue of a doctrine of equivalents.  Second, that it is established jurisprudence of the Boards of Appeal of the EPO that a claim is not deprived of novelty by an obvious equivalent of a feature in a prior publication, and third that the decision of the Supreme Court was based on Article 2 of the Protocol on the Interpretation of Article 69 EPC which is concerned with infringement and not validity.

This confirms what some had feared, that infringement and novelty are no longer directly comparable.  It remains to be seen what this means for the Gillette defence.