Will a recent decision in the UK significantly re-steer the law of patent infringement in Australia?
13 September 2018
Recent infringement proceeding before the United Kingdom Supreme Court has significantly re-steered the Patent Infringement Law in the UK - will this apply in Australia?
Will Actavis v Eli Lilly be applied in Australia?
In the recent decision of Davies v Lazer Safe Pty Ltd [2018] FCA 702 in the Federal Court of Australia, the applicant’s case for patent infringement failed because its proposed construction of the claims was “unrealistically broad”. Equally, on the construction of the claims adopted by the Court, the respondent’s cross-claim for invalidity also miserably failed. The case illustrates the principles of claim construction applied in Australia and the classic dilemma of a patentee that by asserting a wide construction of its claims so as to capture particular infringement, it would draw in more prior art and risk invalidity.
The decision is also notable in that Justice McKerracher quotes (at [240]) the classic United Kingdom decision of Lord Hoffman in Kirin-Amgen Inc v Hoechst Marion Rousell Ltd [2004] UKPC 6 as authority in Australia in connection with determining patent infringement. Until now this has not been unusual, but submissions in Davies v Lazer Safe Pty Ltd closed shortly before the United Kingdom Supreme Court (UKSC) handed down its judgment in Actavis UK Limited v Eli Lilly and Company [2017] UKSC 48 that has significantly re-steered the law of patent infringement in the UK.
Specifically, the UKSC has stated that the problem of infringement is best approached by addressing the following two issues:
- Does the variant infringe any of the claims as a matter of normal interpretation; and, if not,
- Does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial?
If the answer to either of those issues is “yes” then there is infringement, otherwise there is not. The decision states that issue 1 raises a question of interpretation, whereas question 2 raises a question which would normally have to be answered by reference to the facts and expert evidence. The UKSC is critical of the approach taken in Kirin-Amgen (and other previously leading cases) for effectively conflating the two questions and indicates that characterising the issue as a single question of interpretation is wrong in principle.
In Australia, the decision of Actavis v Eli Lilly is not binding and the European Patent Convention does not apply. But the same can be said in relation to the decision in Kirin-Amgen, nonetheless it has found favour in Australian courts. The decision in Davies v Lazer Safe Pty Ltd has been appealed to the Full Court of the Federal Court of Australia. It will be interesting to see if the patentee in Davies v Lazer Safe Pty Ltd, and in other actions for patent infringement before the Australian courts,will argue its claim for patent infringement by reference to the approach in the UKSC decision in Actavis v Eli Lilly.
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