Improver Corp v Remington Consumer Product Ltd

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Improver Corporation v Remington Consumer Product Limited
Citation(s)[1990] F.S.R. 181

Improver Corporation v Remington Consumer Product Limited [1990] F.S.R. 181 is a leading United Kingdom case on patent infringement, particularly in relation to how to establish what specifically a patent covers.

Contents

The Catnic Decision

The earlier case of Catnic Components Ltd. v Hill & Smith Ltd. , Lord Diplock had established the principle that patents were to be read in a "purposive" manner. The question to be answered in establishing infringement, as formulated by Lord Diplock, was a complex, multi-part enquiry.

The Improver Questions

In the Improver case, Hoffmann J. (as he then was), on behalf of the Patents Court, reformulated the test as a series of three questions to establish whether a variant (alleged infringing article) infringes the claims of a patent. The variant will not infringe if any of the following are true:

Facts and findings of the case

In the Improver case, the patent covered a depilatory device having a curved "helical spring" driven by a motor. The spring when rotated gripped hairs between its coils and plucked them from the skin. The alleged infringement replaced the spring with a rubber rod having slits in its surface. The question was whether the slitted rubber rod was "a helical spring". The judge answered the three questions as follows: (i) the change to a rubber rod had no material effect on the way the invention worked; and (ii) it would have been obvious to an expert that the rubber rod would work in the same way; but (iii) the expert would have understood from the patent that the patentee meant to confine his claim to a "helical spring", in its primary meaning and not in a wide generic sense. For this last reason, the rubber rod did not infringe.

Continued relevance

These so-called "Improver questions" were relied on throughout the 1990s and early 2000s by the United Kingdom Courts, but in 2004 their continued relevance was called into question by the same judge who had formulated them, now Lord Hoffmann, in the case of Kirin-Amgen v Hoechst Marion Roussel :

These questions, which the Court of Appeal in Wheatly v Drillsafe Ltd [2001] RPC 133, 142 dubbed "the Protocol questions" have been used by English courts for the past fifteen years as a framework for deciding whether equivalents fall within the scope of the claims. On the whole, the judges appear to have been comfortable with the results, although some of the cases have exposed the limitations of the method. When speaking of the "Catnic principle" it is important to distinguish between, on the one hand, the principle of purposive construction which I have said gives effect to the requirements of the Protocol, and on the other hand, the guidelines for applying that principle to equivalents, which are encapsulated in the Protocol questions. The former is the bedrock of patent construction, universally applicable. The latter are only guidelines, more useful in some cases than in others. I am bound to say that the cases show a tendency for counsel to treat the Protocol questions as legal rules rather than guides which will in appropriate cases help to decide what the skilled man would have understood the patentee to mean. [1]

The current position, therefore, is that the House of Lords has held that the principle of purposive construction is entirely in accordance with the Protocol to Article 69, but that the Improver questions may not represent the best approach for dealing with every infringement issue. See Kirin-Amgen v Hoechst Marion Roussel .

Foreign relevance

The Improver decision was cited with approval by the Supreme Court of Canada in its landmark 2000 Free World Trust v Électro Santé Inc decision. [2] The Improver Questions continue to be relevant for the analysis of essentiality under Canadian law. [3]

Related Research Articles

<span class="mw-page-title-main">Patent infringement</span> Breach of the rights conferred by a patent

Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or selling the patented invention. In many countries, a use is required to be commercial to constitute patent infringement.

In a patent or patent application, the claims define in technical terms the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent. This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid infringement liability. The claims are of paramount importance in both prosecution and litigation.

The doctrine of equivalents is a legal rule in many of the world's patent systems that allows a court to hold a party liable for patent infringement if the infringing device or process does not fall within the literal scope of a patent claim but is nevertheless equivalent to the claimed invention. In the United States, Judge Learned Hand has described its purpose as being "to temper unsparing logic and prevent an infringer from stealing the benefit of the invention."

Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950), was an important United States Supreme Court decision in the area of patent law, establishing the propriety of the doctrine of equivalents, and explaining how and when it was to be used.

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The United States is considered to have the most favorable legal regime for inventors and patent owners in the world. Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others, for a limited time from profiting from a patented technology without the consent of the patent holder. Specifically, it is the right to exclude others from: making, using, selling, offering for sale, importing, inducing others to infringe, applying for an FDA approval, and/or offering a product specially adapted for practice of the patent.

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Catnic Components Ltd. v. Hill & Smith Ltd. [1982] R.P.C. 183 is a leading House of Lords decision on the nature of a patent and in particular the methods of claim construction.

<i>Free World Trust v Électro Santé Inc</i> Supreme Court of Canada case

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Kirin-Amgen, Inc. v Hoechst Marion Roussel Ltd. is a decision by the House of Lords of England and Wales. The judgment was issued on 21 October 2004 and relates to the scope to be accorded to patent claims, including the doctrine of equivalents. The case and subsequent judgment affirmed principles from a prior case, Catnic Components Ltd. v. Hill & Smith Ltd.

Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), is a United States Supreme Court decision in which the Court held that a facially trivial implementation of a natural principle or phenomenon of nature is not eligible for a patent.

<span class="mw-page-title-main">Defences and remedies in Canadian patent law</span>

A patent holder in Canada has the exclusive right, privilege and liberty to making, constructing, using and selling the invention for the term of the patent, from the time the patent is granted. Any person who does any of these acts in relation to an invention without permission of the patent owner is liable for patent infringement.

<span class="mw-page-title-main">Patent infringement in Canadian law</span>

Once an invention is patented in Canada, exclusive rights are granted to the patent holder as defined by s.42 of the Patent Act. Any interference with the patent holder's "full enjoyment of the monopoly granted by the patent" is considered a patent infringement. Making, constructing, using, or selling a patented invention without the patent holder's permission can constitute infringement. Possession of a patented object, use of a patented object in a process, and inducement or procurement of an infringement may also, in some cases, count as infringement.

Morton Salt Co. v. G.S. Suppiger Co., 314 U.S. 488 (1942), is a patent misuse decision of the United States Supreme Court. It was the first case in which the Court expressly labeled as "misuse" the Motion Picture Patent/Carbice tie-in defense to a charge of patent infringement and created the present blanket remedy in infringement cases of unenforceability of the misused patent. The decision re-emphasized that misuse can be found without finding an antitrust violation.

Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917), is United States Supreme Court decision that is notable as an early example of the patent misuse doctrine. It held that, because a patent grant is limited to the invention described in the claims of the patent, the patent law does not empower the patent owner, by notices attached to the patented article, to extend the scope of the patent monopoly by restricting the use of the patented article to materials necessary for their operation but forming no part of the patented invention, or to place downstream restrictions on the articles making them subject to conditions as to use. The decision overruled The Button-Fastener Case, and Henry v. A.B. Dick Co., which had held such restrictive notices effective and enforceable.

Henry v. A.B. Dick Co., 224 U.S. 1 (1912), was a 1912 decision of the United States Supreme Court that upheld patent licensing restrictions such as tie-ins on the basis of the so-called inherency doctrine—the theory that it was the inherent right of a patent owner, because he could lawfully refuse to license his patent at all, to exercise the "lesser" right to license it on any terms and conditions he chose. In 1917, the Supreme Court overruled the A.B. Dick case in Motion Picture Patents Co. v. Universal Film Mfg. Co.,

The reverse doctrine of equivalents is a legal doctrine of United States patent law, according to which a device that appears to literally infringe a patent claim, by including elements or limitations that correspond to each element or limitation of the patent claim, nonetheless does not infringe the patent, because the accused device operates on a different principle. That is, "it performs the same or a similar function in a substantially different way." It has been said that "the purpose of the 'reverse' doctrine is to prevent unwarranted extension of the claims beyond a fair scope of the patentee's invention."

References

  1. ↑ Kirin-Amgen, Inc. v Hoechst Marion Roussel Ltd. [2004] UKHL 46 (21 October 2004)
  2. ↑ Free World Trust v. Électro Santé Inc.  (2000),      (SCC)
  3. ↑ Hollick Solar Systems Limited and Conserval Engineering Inc. v. Matrix Energy Inc. (2012),      (FCA)
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