The UK Supreme Court introduced a doctrine of equivalents into UK patent law in the summer of 2017 (see http://eplaw.org/uk-actavis-v-eli-lilly-supreme-court/). In this short judgment arising from a Pre-Trial Review (PTR), Lord Justice Birss provided guidance on how, and at what stage of proceedings, a party should plead a case based on the doctrine of equivalents.
The patent in issue was EP (UK) 2 393 259 entitled “Telecommunication and Multimedia Management Method and Apparatus”, which Voxer alleged was infringed by the Facebook Live and Instagram Live functionality offered by Facebook.
The application arose because Voxer had served a draft amended Statement of Case on Infringement to introduce, in two respects, an infringement case based on the doctrine of equivalents, despite no mention of an equivalence case in either its Particulars of Infringement or previous Statement of Case on Infringement. Facebook argued at the PTR that Voxer should not be allowed to run one of those points.
Birss J recognised that ever since the UK Supreme Court restated the law on the doctrine of equivalents in Actavis v Lilly, it has remained an open question for practitioners as to how arguments under that doctrine should be pleaded.
Regarding the question of whether reliance on the doctrine of equivalents should be pleaded at all, Birss J’s answer was a firm “yes”. In his view, any party wishing to rely on the doctrine of equivalents as part of its equivalence case must say so in the Particulars of Infringement. Although the Civil Procedure Rules governing the contents of the Particulars of Infringement do not explicitly refer to the doctrine of equivalents, the Judge referred to CPR Part 16.4(1)(a) which provides that the Particulars of Claim must include “a concise statement of the facts on which the claimant relies”. Given a case based on the doctrine of equivalents will inevitably involve assertions of fact, including in particular the first and second Actavis questions, the application of the CPR 16.4 means that equivalence must be pleaded.
Regarding the form of the pleading, Birss J held that that at a minimum the patentee must state that equivalence is relied on and do so by reference to the particular feature of the claim. Whilst that may involve extra work, it would not be a serious burden for patentees.
Although the Judge did not have to decide on whether all the details necessarily had to be pleaded out from the outset, he did comment obiter that in normal multi-track patent cases (so excluding cases in the Shorter Trial Scheme or IPEC), an appropriate time to articulate the patentees case on the inventive concept and other aspects of the Actavis test might be when a claim chart or a Statement of Case on Infringement is produced. The situation would be different for IPEC cases, where all the facts and arguments must be pleaded at an early stage of the proceedings (pursuant to CPR 63.20(1)).
The full judgment can be seen here [insert link https://www.bailii.org/cgi-bin/format.cgi?doc=/ew/cases/EWHC/Patents/2021/657.html ].