On 10 October 2018 the Court of Appeal handed down judgment in this case which concerned two companies both engaged in the making, operating and leasing of mobile ice rinks.

Ice-World was the proprietor of EP (UK) 1, 462, 755 (EP’755), a patent which claims an ice rink cooling system. Icescape had initiated proceedings in June 2016 seeking an order for revocation of the patent, damages for groundless threats of patent infringement and a declaration of non-infringement. At first instance, Mr John Baldwin QC sitting as a deputy judge of the Patents Court held the patent not to be entitled to its priority date (and therefore invalid), and not infringed. He also held that Ice-World had failed to make good a defence to the claim for groundless threats.

Lord Kitchin, giving the leading judgment in the appeal (with which Lords Justice Floyd and Longmore agreed), upheld the first instance judgment on priority and threats, but held that under the new law of infringement by equivalence following Actavis v Eli Lilly, the patent would have been infringed if valid.

Priority

The inventive core of Ice-World’s patent was the use of flexible joints at the points at which the pipes carrying coolant meet. This allowed the pipes to be folded on top of one another, making the system easier to transport and assemble. Although the inventive concept of the claim was disclosed in the priority document, several other elements relating to the rest of the claimed system were not. Ice-World argued that the missing elements were all part of the common general knowledge (CGK) and that insofar as they were not explicitly present in the priority document, it did not matter, as the substance of the invention was disclosed.
The Court of Appeal, following the Enlarged Board of Appeal’s decision in G2/98 held that there must be an “express or implicit disclosure of those features in the priority document”. It was not enough to say that the missing elements did not relate to the inventive core of the patent or that they would have been known by the skilled person as part of his/her CGK.

The patent was therefore not entitled to priority and invalid due to a prior use by Ice-World during the priority year.

Infringement

At first instance (handed down prior to the judgment in Actavis v Eli Lilly) the Court had construed the claims of EP’755 purposively. The claim required the pipes in a particular part of the system to be connected in series, and as the pipes used in the Icescape product were connected in parallel, Icescape were held not to infringe.

The Court of Appeal agreed with that purposive interpretation but went on to consider infringement by equivalence. The Court of Appeal answered the first two of three Actavis questions – i.e. whether the Icescape rink “achieved substantially the same result in substantially the same way” as the Ice-World invention (Q1) and whether that would have been obvious to the person skilled in the art (Q2) – in the affirmative. They held that the inventive concept of having flexible joints was present in Icescape’s system, and the fact that the pipes were structured in parallel rather than in a series was irrelevant to that inventive core.
The Court then had to consider whether the skilled person would have thought that strict compliance with the literal meaning of the claim – structuring the pipes in a series – was an essential element of the invention (Q3). The Court of Appeal held that the skilled person would appreciate that the fact that the pipes were in series had nothing to do with the inventive concept. Icescape’s ice rink therefore infringed under the doctrine of equivalence.

In support of Lord Kitchin’s judgment, Lord Justice Floyd made some comments of his own on infringement. In particular, he emphasised that the claims remain the starting point for the subsequent analysis of variants and are not merely a somewhat vague guideline.

Threats

At first instance, the Court found that Ice-World’s initial communications to Icescape and its customers were threats under the Patents Act 1977 (the Act). The Court also held that Ice-World did not have a defence under the now repealed section 70(2A) of the Act (this section required that at the time of making the alleged threats the entity making the threats had no reason to suspect that the patent was invalid). The Court of Appeal agreed with the first instance judgment on the basis that that Ice-World had failed to adduce sufficient evidence to support its alleged defence.

A copy of the decision can be found here.