Case update: Fisher & Paykel v Resmed

Sleep easier: equivalents are considered again by the UK Patents Court.

In a recent medical device case1, the UK Patents Court has again considered the application of the UK’s new doctrine of equivalents following its introduction by the Supreme Court. This is the second case to consider the new doctrine, following the first in Generics v Yeda case, on which we reported here.

This case concerns masks worn by patients with obstructive sleep apnoea, a disorder which causes patients to suffer frequent pauses in breathing during sleep and wake up multiple times during the night. Revocation of three patents had been sort, but by trial, the defendant had conceded two of them as invalid. The decision, by Richard Meade QC sitting as Deputy Judge, completed the hat trick and revoked the final patent remaining in dispute on grounds of novelty and obviousness. There was no factual dispute on infringement, and had the patents been valid they would have been infringed.

Given the timing of the case, the parties had prepared their submissions based on the traditional approach of purposive construction. Richard Meade QC made clear that the question must nonetheless be approached from the perspective of the law as set out in Actavis; and that it was not appropriate either to consider only Kirin-Amgen purposive constructive, or to consider Kirin-Amgen purposive construction and then ask what has changed under Actavis.

Demonstrating the consistency with which the same key questions are likely to arise regarding the operation of the new doctrine, this case addressed the same two questions that were before Arnold J in Generics, namely:

  1. Does “normal” interpretation (Part One of the new test) require an exercise of literal interpretation, or does it simply house the traditional purposive construction approach?
  2. Is a claim anticipated by an equivalent in the prior art which falls within the scope of protection according to the doctrine of equivalents but would not on a straightforward “normal interpretation” of the claim?

Richard Meade QC decided to follow the same approach as Arnold J in Generics and answered the questions:

  1. Part One requires purposive, not literal construction, and
  2. there cannot, as a matter of law, be anticipation by equivalence.

Taking the same view as Arnold J’s comments in Generics, the judge stated that that these questions will, ultimately, need to be addressed by the Supreme Court. In the recent Illumina v Premaitha case Carr J indicated that he also agreed with the position taken by Arnold J on the first of the two questions, suggesting a growing consensus among the judiciary of at least the High Court as to the outworking of the Actavis case.

The question of claim construction and equivalents arose mainly in connection with prior art called Geist. The judge found that the prior art would anticipate claims 1 and 12 on the basis of purposive interpretation, and so the claimant succeeded without needing to rely on equivalence in this case. Interestingly, the judge considered that the literal approach to construction would have meant the prior art fell short of anticipation, once again illustrating the importance of applying the correct rules of interpretation to Part One of the new test.

The defendant stated in their press release that they are considering an appeal, so either in this case or Generics these questions may receive attention from higher courts in due course. For now though, the UK High Court appears to be setting a consistent direction of travel, which most notably would suggest that the new doctrine will separate the traditionally unified approaches as between infringement and anticipation.

1 Fisher & Paykel Healthcare Ltd & Anor v ResMed Ltd & Anor [2017] EWHC 2748 (Ch)

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