Actavis UK Ltd v Eli Lilly & Co
A variant that does not fall within the normal interpretation of a patent claim may still infringe if it achieves substantially the same result in substantially the same way as the invention, under a doctrine of equivalents.
Facts
Eli Lilly held a patent for the use of pemetrexed disodium, a cancer drug, together with vitamin B12, to reduce the toxic side effects of the drug. Actavis wanted to sell pemetrexed in other forms, such as pemetrexed diacid or pemetrexed ditromethamine, together with vitamin B12, which worked in the same way. Actavis sought a declaration that its products would not infringe the patent, because the claim referred only to pemetrexed disodium.
Legal principle
The Supreme Court held that Actavis's products would infringe the patent. Lord Neuberger said that the question of infringement involves two issues: first, does the variant infringe any of the claims as a matter of normal interpretation, and, second, if not, does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial. For the second issue, he reformulated the Improver questions: does the variant achieve substantially the same result in substantially the same way as the invention; would it be obvious to the skilled person, knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way; and would the skilled reader have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the claim was an essential requirement. Actavis's products were equivalents.
Related cases on patents: claim construction and infringement
- Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183
- Gillette Safety Razor Co v Anglo-American Trading Co Ltd (1913) 30 RPC 465
- Grimme Maschinenfabrik GmbH & Co KG v Scott [2010] EWCA Civ 1110, [2011] FSR 7
- Improver Corp v Remington Consumer Products Ltd [1990] FSR 181
- Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46, [2005] RPC 9
- Monsanto Technology LLC v Cefetra BV Case C-428/08, [2010] ECR I-6765
- Schütz (UK) Ltd v Werit (UK) Ltd [2013] UKSC 16, [2013] RPC 16
- Smith Kline & French Laboratories Ltd v Evans Medical Ltd [1989] FSR 513
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