THE DEVELOPMENT OF “The doctrine of Equivalents”

IN THE EUROPEAN UNION

INTRODUCTION

A patent contains several parts - a specification, usually one or more drawings,

and always one or more claims. No matter how much a questioned machine,
manufacture, composition of matter or process may look like the specification
and drawings of a patent, it is only the claims of the patent which can be
infringed. For that reason, if an issue of infringement arises, it becomes
necessary to examine the claims of the patent in question.1

One who seeks to pirate an invention, like one who seeks to pirate a
copyrighted book or play, may be expected to introduce minor variations to
conceal and shelter the piracy. Outright and forthright duplication is a very
rare form of infringement. Usually a potential infringer may copy as much of
the patent as thought possible without becoming liable for infringement. When
that happens, the issue raised is whether the accused structure or process is
the "equivalent" of what is claimed in the patent.

The rule of law for determining equivalency as laid down by the UK Supreme
Court in the Actavis v Eli Lilly case (to be discussed in detail later) is quite
simple: "If two devices do the same work in substantially the same way,
and accomplish substantially the same result, they are the same, even
though they differ in name, form, or shape."

Literal definition of doctrine

The doctrine of equivalents is a legal rule in many (but not all) of the world’s
patent systems that allows a Court to hold a party liable for patent
infringement even though the infringing device or process does not fall within

1
Jom, 42(5) (1990) P.59 “The doctrine of equivalents in patent infringement” by Walter J Blenko Jr.
the literal scope of a patent claim/s but nevertheless is equivalent to the
claimed invention.2

To expand the definition further; it is a means by which a patentee may raise a

claim of infringement even though each and every element of the patented
invention is not identically present in the allegedly infringing product. The
purpose of the doctrine is to prevent an infringer from stealing the benefit of
the patented invention by changing only minor or insubstantial details of the
claimed invention while retaining the same functionality. The essential inquiry
in determining equivalency is whether the accused product or process contains
elements identical or equivalent to each claimed element of the patented
invention.3 I will come back to that later.

Perhaps before I expand on the above doctrine, it is important to understand

briefly what patent infringement entails. It is the commission of a prohibited
act with respect to a patented invention without the permission from the patent
holder. Permission may typically be granted in the form of a license. In many
countries, a use is required to be commercial (or have a commercial purpose) to
constitute patent infringement.4

Another question arises; what are patent claims? To constitute patent

infringement, the scope of the extent of the protection is defined in the claim
(s) of the granted patent. In other words, the claim(s) explains what is not
allowed without permission of the patent holder. Patents are territorial and
infringement is only possible in a country where the patent is in force.5
Typically, a party (other than the patentee or licensee of the patentee) that
manufactures, imports, uses, sells, or offers for sale patented technology
without permission/license from the patentee, during the term of the patent
and within the country that issued the patent, is considered to infringe the
2
https://en.m.wikipedia.org
3
https://www.law.cornell.edu

4
http://en.m.wikipedia.org
5
http://www.wipo.int
patent. The test varies from country to country, but in general it requires that
the infringing party’s product or method or service falls within one or more of
the claims of the patent.

Article 69 of the EPC states as follows:

1. The extent of the protection conferred by a European patent or a

European patent application shall be determined by the claims.
Nevertheless, the description and drawings shall be used to interpret
the claims.
2. For the period up to grant of the European patent, the extent of the
protection conferred by the European patent application shall be
determined by the claims contained in the application as published.
However, the European patent as granted or as amended in
opposition, limitation or revocation proceedings shall determine
retroactively the protection conferred by the application, in so far
as such protection is not thereby extended.

As clearly stated above, the scope of the patented invention or the extent of the
protection is defined in the claims of the granted patent. In other words, the
terms of the claims inform the public of what is not allowed without the
permission of the patent holder. Simply put, when a potential patent holder
decides to apply to the patent office for protection of their invention, in the
application, they ensure that they describe what the patent is all about or what
it does. Apart from the description, they also include the claims, which
basically define the scope of legal protection. This is the heart of the patent
because they outline the boundaries of the patent owner’s exclusive rights. For
example the claims demarcate in words the boundary of invention, just like a
title deed will state the acreage or hectares entitled to the title holder. The
technology covered in the claims is what is protected. It is important that a
potential patentee drafts his claims properly to capture the technology in the
invention sought to be patented.

The claims may be broad or narrow in their scope or breadth. Normally, broad
claims include fewer elements or limitations than narrow claims do, and can be
very valuable because they can cover a range of valuable products or
situations, but can be more difficult to obtain and to enforce because there
may be a broader range of prior art that may block or invalidate them. Narrow
claims are generally very specific to one particular element or product. In
general, a narrow claim specifies more details than a broader claim.6

Origin of the doctrine

The US courts have long recognized that a product or process which does not
literally infringe a patent can nevertheless infringe under the ‘doctrine of
equivalents’ if it is equivalent to the claimed invention.7 In the case of Graver
Tank & Mfg. Co. V. Linde Air Products Inc,8 the US Supreme Court held that
a patentee may invoke this doctrine to proceed against the producer of a device
if it performs substantially the same function in substantially the same way to
obtain the same result. This is often referred to as the Graver Tank “triple
identity” test for equivalence.

The Supreme Court enunciated the “all elements” test for equivalence in the
case of Warner Jenkinson V. Hilton Davis Chemical Co.9 Under the “all
elements” rule, the doctrine of equivalents must be applied to each individual
element of a claim, not to the invention as a whole. It is necessary to show that
every element of the patented invention, or its substantial equivalent, is
present in the accused product or process. To determine whether a substitute
element is the substantial equivalent of an element in the patented invention, it
is necessary to analyze the role played by each element in the context of the
specific patent claim. To be a substantial equivalent, the substitute element
must match the function, way, and result of the claimed element. A missing
claim element is considered equivalently present if only insubstantial
differences distinguish that element from the corresponding aspects present in

6
http://www.wipo.int
7
https://www.lexology.com
8
Graver Tank & Mfg.Co V Linde Air Products Co., 339 U.S. 605 (1950)
9
Walner Jenkinson V Hilton Davis Chemical Co. 520 U.S 17 (1997)
the accused device or process.10 The proper time for evaluating whether an
accused element is equivalent to a claimed element is at the time of
infringement, not at the time the patent was issued. Subsequent changes in
the state of the art, such as technologies developed after the date of the
invention, will often challenge the definition of a previously essential element or
limitation present in the original invention.11

Growth of the doctrine in the EU

There are three famous decisions that have developed and defined the law on
patent infringement in the UK in the last couple of decades: Catnic
Components Ltd v Hill & Smith Ltd12, Improver Corpn v Remington
Consumer Products Ltd13 and Kirin-Amgen Inc v Hoechst Marion Roussel
Ltd.14

In the last couple of years, the most important decision has been that of the
case of Kirin-Amgen, in which Lord Hoffmann said that all issues of
infringement could be resolved by adopting a 'purposive' construction to the
language of the patent claim, so giving effect to "what the person skilled in
the art would have understood the patentee to be claiming".

Now, in the Actavis v Eli Lilly15 case, Lord Neuberger overturned Lord
Hoffmann's judgment in Kirin-Amgen.

Brief facts of the case

Eli Lilly and Company produced a medication under the brand name “Alimta”
for cancer treatment using pemetrexed disodium together with vitamin B12.
Actavis UK ltd proposed to produce products called the “Actavis products”
using pemetrexed diacid, pemetrexed ditromethamine, and pemetrexed
10
https://www.law.cornell.edu
11
Sage Products, Inc. V Devon Industries, Inc., 126 F.3d 1420 (Fed. Cir. 1997)
12
(1982) RPC 183
13
Improver Corpn V Remington Consumer Products Ltd (1990) FSR 181
14
Kirin-Amgen Inc V Hoechst Marion Roussel Ltd (2005) RPC9
15
Actavis UK Limited & Others V Eli Lilly and Company (2017) UKSC 4 (12 July 2017)
dipotassium in combination with vitamin B12. They claimed that because they
intended to use Actavis products which did not include pemetrexed disodium,
the claims of the patent for Eli Lilly would not be infringed.

The High Court held that none of the Actavis products would directly or
indirectly infringe the patent in the UK, France, Italy and Spain (countries in
which the patent was protected).

The Court of Appeal allowed Lilly’s appeal in respect of there being indirect
infringement (a concept which means for instance, when a device is claimed in
a patent and a third party supplies a product which can only be reasonably
used to make the claimed device) of the patent in each jurisdiction. Both
parties were given permission to appeal to the UKSC.

The relevant claims of Eli Lilly's European patent number 1,313,508, for the
purposes of this paper were claims 1 and 12, but the court's reasoning focused
on claim 1 which was in "Swiss form", in the following terms:

“"1. Use of pemetrexed disodium in the manufacture of a medicament for

use in combination therapy for inhibiting tumour growth in mammals
wherein said medicament is to be administered in combination with
vitamin B12 or a pharmaceutical derivative thereof [which it then
specifies]."

Actavis's proposed products involved pemetrexed compounds being used

together with vitamin B12 for cancer treatment. However, rather than
pemetrexed disodium, the active ingredient in those products ("the Actavis
products") was (a) pemetrexed diacid, (b) pemetrexed ditromethamine, or (c)
pemetrexed dipotassium.

Looking at the case from the outset, the UKSC concluded that as a matter of
ordinary language, it is clear that the only type of pemetrexed compound to
which the patent claims expressly extends is pemetrexed disodium.
Lord Neuberger considered Article 69 of the European Patent Convention
(EPC) and the Protocol on its interpretation. For ease of reference, I will restate
the provision.

Article 69(1) EPC states:

“"The extent of the protection conferred by a European patent or a

European patent application shall be determined by the claims.
Nevertheless, the description and drawings shall be used to interpret the
claims."

As amended in 2000, the Protocol provides as follows:

“"Article 1

General principles

“Article 69 should not be interpreted as meaning that the extent of the

protection conferred by a European patent is to be understood as that
defined by the strict, literal meaning of the wording used in the claims,
the description and drawings being employed only for the purpose of
resolving an ambiguity found in the claims. Nor should it be taken to
mean that the claims serve only as a guideline and that the actual
protection conferred may extend to what, from a consideration of the
description and drawings by a person skilled in the art, the patent
proprietor has contemplated. On the contrary, it is to be interpreted as
defining a position between these extremes which combines a fair
protection for the patent proprietor with a reasonable degree of legal
certainty for third parties.

“Article 2

Equivalents

“For the purpose of determining the extent of protection conferred by a

European patent, due account shall be taken of any element which is
equivalent to an element specified in the claims."

The question is what this Article requires and permits. That is, what might
taking ‘due account’ of equivalents when interpreting patent claims entail?
According to the predominant view of the national courts in Europe, the
existence of an equivalent is merely one aspect of the context in which a patent
claim falls to be interpreted; something of which the notional skilled addressee
is deemed to be aware when interpreting the claim.16 In German
Jurisprudence, this is reflected in the principle that a skilled addressee reading
patent claims with a view to determining their technical meaning would
understand them to go beyond the subject matter revealed by a literal or
semantic reading of their language to include any obvious variants of that
subject matter, excluding variants known or obvious as against the prior art.17

According to Lord Neuberger, the question that the UKSC then had to consider
was how far one can go outside the wording of a claim. The Court then stated
that the problem of infringement is best approached by answering the following
questions:

1. Notwithstanding that it is not within the literal 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, ie the
inventive concept revealed by the patent?

2. 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?

3. Would such a reader of the patent have concluded that the patentee
nonetheless intended strict compliance with the literal meaning of the
relevant claim(s) of the patent was an essential requirement of the
invention?

To establish infringement where there is no literal infringement, a patentee

would have to establish that the answer to the first two questions was “yes”
and answer to the third was “no”.

The Actavis products did not infringe on the basis of a normal interpretation of
claim 1. Lord Neuberger concluded that they all involved a medicament
containing the pemetrexed anion and vitamin B12, and achieved substantially

16
Justin Pila &Paul Torremans “European Intellectual Property Law” Oxford University Press (2016) P. 201
17
Formstein (1986) Grur 803, (1987) IIC795 (BGH); Ionenanalyse (1988) Grur 896, (1991) IIC 249 (BGH)
the same result in substantially the same way as the invention. Once he or she
knew that the Actavis products achieved substantially the same result as the
invention, the notional addressee of the patent would have thought it obvious
that this was so, particularly as he or she would have regarded investigating
whether pemetrexed free acid, pemetrexed ditromethamine or pemetrexed
dipotassium worked as a routine exercise. On the third question, the Court of
Appeal had placed too much weight on the words of the claim. It was very
unlikely that the notional addressee would have concluded that the patentee
could have intended to exclude any pemetrexed salts other than pemetrexed
disodium from the scope of protection.

On this basis, Lord Neuberger reached the provisional conclusion that the
Actavis products directly infringed claim 1.

Effect of applying the doctrine

The whole point of the doctrine is that it entitles a patentee to contend that the
scope of protection afforded by the patent extends beyond the ambit of its
claims as construed according to normal principles of interpretation.

The doctrine of equivalents can be expected to assist patent proprietors in

defending their monopoly against immaterial variants, to reduce the incidence
of inconsistent conclusions on infringement as between the courts of the UK
and those of other major EPC jurisdictions.

Also importantly for patentees, the existence of a doctrine of equivalents

potentially provides greater room for maneuvering, when seeking an effective
and meaningful scope of protection which is also justified by the level and
scope of the invention disclosed.

Conclusion

The rule of law for determining equivalency as laid down by the UK Supreme
Court in the Actavis v Eli Lilly case is quite simple: "If two devices do the same
work in substantially the same way, and accomplish substantially the same
result, they are the same, even though they differ in name, form, or shape."

Equivalency can only be resolved by a careful analysis of the file history of the
patent application. Such analysis should always be made when an accused
structure or process resembles in any way a claim of a patent. Possible
infringement of a patent claim must never be taken lightly. Issues of direct
infringement, equivalency, file wrapper estoppel, and limitation of the claims to
an invention as disclosed all must be considered before concluding that
infringement does or does not exist.

Usually in cases where the doctrine of equivalents has to be applied, it is when

the infringer has been careful to hide the fact that his products are not original
invention but are actually stolen from another’s invention. The accused will
ensure that his invention is not exactly the same as the one he has stolen but
really produces the same results. The aim is to steal the result of the invention
and ensuring that they are not caught in the process. In the UK, before the
case of Eli Lilly, the courts used to compare the accused invention to that of
the patented invention and if the claims of the patented device do not appear to
have been infringed literally, then they would hold that there was no
infringement. However, with the coming of the land mark case on the scene,
the Courts delve behind the scenes so to say and do not simply look at the
surface of the case. If a careful examination of the case reveals that though the
material may be different in a minor way, but the result is the same, then they
apply the doctrine of equivalency and find the accused guilty of infringing a
patented device or product.

Written By: Natasha Nanyangwe Chirwa-Lungu

Date: 4th October, 2018