A Formstein Defence in the UK: A Way to Fight Off Equivalents?

Back to articles February 2019


A Formstein Defence in the UK: A Way to Fight Off Equivalents?

The decision of the Supreme Court in Actavis UK Ltd v Eli Lilly and Company [2017] UKSC 48 has resulted in a sea change for the law of patent infringement in the United Kingdom. In that decision, the Supreme Court introduced an essentially new two-step test for assessing infringement; where the first step requires a normal interpretation of the claims and the second step takes due account of equivalents. Since this decision, UK patent practitioners have been keen to obtain some valuable insight into how the UK courts are going to approach patent infringement in the future.

Cases whereby the Actavis decision has played a key role have now began to trickle through the UK courts, and on 29 January 2019, a decision of the Intellectual Property Enterprise Court (“IPEC”) was published which appears to include another interesting development to patent infringement in the UK vis-à-vis equivalents.

The case recently heard by the IPEC was brought by the patentee, Technetix B. V. and two licensees (collectively ‘Technetix’) who claimed infringement of UK Patent No. 2 382 473 B (“the Patent”) by Teleste Limited (‘Teleste’). Infringement was alleged to occur by Teleste during the course of their marketing of equipment used to feed cable TV or internet signals to subscribers. Teleste counter-claimed for revocation of the Patent due to lack of novelty and inventive step.

The Patent relates to ‘plug and play’ cable taps which help to distribute signals from a cable TV or internet provider to subscribers or end consumers. The only independent claim considered by Hacon HHJ at trial recited the following (“claim 1 of the Patent”):

A cable tap unit comprising a base unit with an input for a signal from a cable network, at least one group of signal outputs, at least one receptor means positioned in the base unit in a signal path between the input and the group of outputs, and directional coupler means, wherein the directional coupler means is received by and detachable from the receptor means such that the signal transmission characteristics of the path are selectable as required by choice of directional coupler means, wherein the directional coupler means is separable from and insertable into the base unit independent of the group of signal outputs.

Several issues of construction were discussed during the trial, with a key argument put forward by Technetix being that the court should be slow to arrive at a construction that would render a patent anticipated or obvious over the common general knowledge (citing Adaptive Spectrum and Signal Alignment Inc v British Telecommunications plc [2014] EWCA Civ 1462). Hacon HHJ disagreed with Technetix in this regard and asserted that the passage relied upon by Technetix does not introduce a rule that must always be followed by the UK courts but instead suggested that each case must be decided on its own facts. After construing the claims, Hacon HHJ went on to find that the Patent lacked novelty and an inventive step over two US patents; US 5,058,198 (“Rocci”) and US 6,292,371 (“Toner”).

Turning to the issue of infringement, the product which allegedly infringed claim 1 of the Patent was named the “Tap Bank”. Hacon HHJ applied the two-step test developed in Actavis and found that the Tap Bank did not fall within a normal construction of claim 1 of the Patent but was nevertheless deemed to include equivalent features falling within the scope of claim 1 of the Patent. As such, had the Patent been valid, the Tap Bank would have infringed claim 1 of the Patent.

Perhaps the most interesting part of the decision related to an argument advanced by Teleste that they should be entitled to a defence to infringement, even if the patent were considered valid and infringed, if the Tap Bank lacked novelty or inventive step over the prior art. For many years this type of defence has been well-known and is referred to as a so-called Gillette defence. However, following the decision of the Supreme Court in Actavis, how a Gillette defence should work under certain circumstances, such as when taking into account equivalent features of a claim under consideration, has been left unclear. The argument put forward by Teleste was essentially that a similar type of defence should also be available when the alleged infringing article or process infringes a claim under consideration not on a ‘normal’ interpretation but pursuant to the doctrine of equivalents. Otherwise, the grant of a patent could have the potential to prevent a member of the public from practising a non-patentable variation of something publicly known before the priority date.

In considering whether such a defence could be introduced into English law, Hacon HHJ revisited the law as it applied before the judgment of Actavis. He referred to a passage of Merrell Dow Pharmaceutical Inc v H. N. Norton & Co Ltd [1996] RPC 76 where Lord Hoffman stated that it has been a “fundamental principle of United Kingdom patent law that the Crown could not grant a patent which would enable the patentee to stop another trader from doing what has been done before” (subject to the exception of a secret or uninformative use). Hacon HHJ suggested that one way of reconciling Merrell Dow with Actavis is that if an accused product or process is an equivalent that would have lacked novelty or inventive step at the priority date then it is deemed to fall outside the scope of the claim, thus providing a defence to infringement.

Hacon HHJ noted that German law provides such a defence (known as a so-called Formstein defence after the decision of the German Federal Supreme Court) with the defence being helpfully explained in Patent Litigation Proceedings in Germany, Thomas Kühnen, trans. Frank Peterreins, Carl Heymanns Verlag 2015, 7th ed. as follows:

“According to this defence, a contested embodiment does not fall within the scope of protection of a patent … if, with its (partly literally realized and partly equivalently realized) features, it is anticipated in the state of the art or is obvious from the state of the art.”

Hacon HHJ also noted that this type of defence is also available under Dutch and US law and appeared to find it entirely possible that the Supreme Court or the Court of Appeal in the UK may introduce a so-called Formstein defence into English law in the future. He therefore considered the matter of infringement as if such a defence existed.

The Tap Bank was found to be an obvious modification of other tap units which formed part of the common general knowledge of the skilled person at the priority date. As such, although Hacon HHJ found that the Tap Bank would infringe claim 1 of the Patent pursuant to the doctrine of equivalents, he noted (albeit obiter) that if such a Formstein defence exists in UK patent law, Teleste would have been entitled to rely upon it as a defence.

Hacon HHJ has thus left the door ajar for the introduction of a so-called Formstein defence into English patent law. UK patent practitioners will therefore be eager to see whether such an approach is universally adopted in the higher courts of the UK and if so, how or indeed if the Formstein defence is to be used in lieu of, in conjunction with or separately to the traditional Gillette defence.

The judgment can be found in full here.

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