11
THE SUPREME COURT
242/05
McCracken J
Macken J
Kearns J
Between:
Ranbaxy Laboratories Limited, Ranbaxy Europe Limited
and Ranbaxy Ireland Limited
Plaintiffs/ Appellants
AND Warner Lambert Company Defendant/ Respondent
Judgment of Mr Justice McCracken delivered the 2nd day of December 2005.
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The Proceedings
The Appellants are manufacturers and distributors of pharmaceutical products. The Respondent is the proprietor of Irish Patent Number 60014 for a pharmaceutical product for reduction of cholesterol in the blood stream sold world-wide under the trade mark “Lipitor” which has achieved enormous world-wide sales. The Appellants are seeking to produce and market a product known as Atorvastatin Calcium and in these proceedings are seeking:-
“A A declaration pursuant to section 54 of the Patents Act 1992, that none of the acts set out in sections 40-43 of the Patents Act 1992 if done in the Republic of Ireland in relation to Atorvastatin Calcium described in a letter sent by or on behalf of the plaintiffs dated the 30th day of July 2004, would constitute an infringement of any of the claims of Irish registered patent IE60014.
B An injunction restraining the defendant whether by itself or through its servants or agents, from issuing or maintaining proceedings against the plaintiffs, their servants or agents, asserting that the acts described in the letter of 30th July 2004 are unlawful whether by reason of breach of patent IE60014 or otherwise.
C Further or other relief.
D Costs.”
For the purpose of this judgment it is not necessary to set out in detail the arguments of the parties based on scientific considerations other than at a very basic level. The Respondent’s product Lipitor is chemically a racemate while the Appellants’ proposed product is a single enantiomer. It is the Appellants contention that the scope of the claim in the patent in suit is limited to racemates and does not extend to single enantiomers such as the Appellants’ proposed product. Ultimately, the outcome of the proceedings will largely turn on the proper interpretation of the scope of the Respondent’s claim in the patent.
The Respondent in its defence claims that its patent extends in scope to cover the Appellants’ proposed product, and is not limited to racemates.
In its reply to the defence, the Appellants refer at paragraph seven thereof to a number of alleged representations made by or on behalf of the Respondent in which the Respondent is claimed to have stated that other patents in its ownership corresponding to the Irish patent are confined to the racemate.
The Issue Before the Court
Following the close of pleadings, the Appellants sought an order for discovery against the Respondent, seeking inter alia discovery of the various documents set out at paragraph seven of the reply to the defence. The Respondent contended that these documents ought not to be discovered as their contents would not be admissible in these proceedings. On the hearing of the motion for discovery Finlay Geoghegan J. on 8th April 2005 made an order that the following issue should be tried, namely:-
“Are the matters set out in paragraph seven of the reply or other evidence of a similar type admissible in evidence in the proceedings?”
The issue was heard before O’Sullivan J. and in his judgment delivered on 8th June 2005 he held that the documents were not admissible, and it is from this decision that the Appellants appeal to this Court.
In the hearing before this Court the Appellants only sought to have two of the classes of documents set out in paragraph seven of the reply to the defence declared admissible. The first of these comprised three letters written on behalf of the Respondent to the European Patent Office dated respectively 20th June 1995, 10th June 1996 and 31st January 1990. The second class in fact only comprised one document, namely a letter of 18th May 1993 written on behalf of the Respondent to the Danish Patent Office. Purely for the purpose of this issue, I am prepared to accept that the construction put on these letters by the Appellants, namely that they stated that the patents referred to therein are confined to the racemate, is a correct construction, and also to accept that this correspondence refers to patents corresponding to the Irish patent. The three letters to the European Patent Office were written by Ivo Mansmann who is a European patent attorney attached to the legal division of the Respondent. The letter to the Danish Patent Office was written by the International Patent Agency of Taastiup in Denmark, acting as agent for the Respondent.
Legal Principles
Section 45 of the Patents Act 1992, so far as it is relevant, reads:-
“(1) The extent of the protection conferred by a patent or a patent application shall be determined by the terms of the claims; nevertheless, a description and drawings shall be used to interpret the claims.
… …
(3) In the interpretation of this section, the Court shall have regard to the directions contained in the protocol on the interpretation of Article 69 of the European Patent Convention and set out in the second schedule to this Act.”
The directions referred to in s.45(3) set out in the second schedule to the Act and read as follows:-
“Section 45 should not be interpreted in the sense that the extent of the protection conferred by a patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawing being employed only for the purpose of resolving an ambiguity found in the claims. Neither should it be interpreted in the sense that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patentee has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patentee with a reasonable degree of certainty for third parties.”
This provision, although perhaps not always easy to apply, has to a considerable degree clarified the approach to be taken in seeking to ascertain the scope of protection granted by a patent. The interpretation of the claim, and it must be emphasised that this only relates to the wording of the claim, is to be neither too literal nor too liberal. This statutory interpretation confirms the approach taken by Lord Diplock in Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 where he stated at page 243:-
“A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge. The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked.”
The relevance of this passage to the present case is the emphasis on the understanding of persons with practical knowledge and experience rather than being on the actual intention of the patentee. Frequently, as in the present case, claims in a patent are of a very technical nature and the nuances of such claims would not be understood by the ordinary man in the street. The test therefore is not what the claim would mean to the man in the street but rather what it would mean to an expert in the field to which it relates, or what has been expressed in a number of cases as a person skilled in the art. A patent is addressed to and intended to be read and understood by such persons. It may well be that the understanding of such persons may not be a meaning which was actually intended by the patentee or the inventor, but as the purpose of a claim in a patent is to provide certainty as to the extent of the monopoly granted, the relevant test is the understanding of the persons to whom it was addressed rather than the understanding of the patentee or inventor.
This has been explained very clearly by Staughton L.J. in Glaverbel SA v British Coal Corporation & Anor [1995] RPC 255 in which he stated at page 268 a proposition which he said was common ground and was well founded, namely:-
“The interpretation of a patent, as with any other written document, is a question of law. That does not mean that the answer to it will necessary be found in our law books. It means that it is for the Judge rather than a jury to decide, and that evidence of what the patent means is not admissible. In particular, evidence of the patentee as to what he intended it to mean should not be admitted, nor indirect evidence which is said to point to his intention. Compare the rule that the parties to a deed or contract cannot give evidence of what they intended to mean. A patent is construed objectively, through the eyes of a skilled addressee.”
More recently this was confirmed in the speech of Lord Hoffman in Kirin-Amgen Inc & Ors v Hoechst Marion Roussel Ltd & Ors [2005] 1 All ER 667 at page 680 where he said:-
“ Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee or the author of any other document. Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, “the meaning of the words the author used”, but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of and background to the particular utterance. It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience.”
It is for the reasons set out in these passages that the evidence of the patentee or the inventor himself is not admissible as an aid to construction of claims in a patent. What is admissible is the evidence of a person to whom the patent is addressed as to such person’s opinion of the meaning of the claim.
The status of correspondence with the patent office was considered by the Court of Appeal in England in Rohm & Haas Co v Colla Ltd [2002] FSR 28 page 455. In that case, in response to official observations made by the European Patent Office during the prosecution of the patent application, the claimant had carried out certain experiments. A letter written to the European Patent Office by the claimant in that case clearly contained material relevant to the construction of the claim, but notwithstanding this it was admitted in evidence on the basis set out in the judgment of Robert Walker L.J. at page 457 as follows:-
“The letter to the European Patent Office did not have the same status as published prior art identified in a specification, which is readily admissible. But it did contain objective information about and commentary on experiments which were conducted in response to official observations, and it could be of assistance in resolving some puzzling features of the specification. Although the prosecution process may sometimes superficially resemble a process of negotiation between the applicant and its advisors and the officials who scrutinise the file, it is not the sort of commercial negotiation which is still rigidly excluded in the construction of a written contract.”
It should be said that the Judge concluded at the end of the same paragraph by saying that:-
“Had it been for the Judge to take account of the letter in order to resolve the issue of construction, I consider that he would have been entitled to do so.”
It certainly would appear from the context that the latter comment quoted above was in fact obiter, but it is relied upon to a considerable degree by the Appellants.
The Appellants’ Argument
The Appellants do not contest the legal principle that evidence of the intention of the patentee is not admissible. What they do contend is that these letters are admissible as evidence relevant to the position of the skilled addressee. They seek to argue that the authors of this correspondence, who were patent agents, were persons skilled in the art and that the correspondence is admissible as evidence of the opinions of persons skilled in the art as to the construction of the claims. There is in fact no evidence before the Court as to the qualifications or experience of such persons, but leaving that question aside, this correspondence was not written from the point of view of an independent expert, but was written as part of submissions made on behalf of the patentee or inventor in relation to the invention itself. Unlike the letter in the Rohm & Haas case, this correspondence did not deal with experiments, was not made in the course of the application for this patent and the correspondence in fact took place after the priority date. In my view that decision does not assist the Appellants.
Conclusions
In my view the fatal flaw in the Appellants’ case is that these letters were written by persons acting on behalf of the Appellants and who were in fact their agents for the purpose of entering into this correspondence. They were not written by such agents acting on their own behalf, but acting on behalf of the Appellants. They were submissions on the Appellants behalf being made to the several patent offices and as such were intended to and did reflect the views of the Appellants. They expressed the construction which the Appellants wished to put upon the claims in the patent in suit. As such, they were in reality expressions of the opinion of the patentee as to the construction of the claims and accordingly they are clearly inadmissible.
I do not believe there is any validity in the argument that the authors of this correspondence were persons to whom the specification was addressed. I do not think under any circumstances that it could be said that an inventor or a patentee addresses the terms of his patent to his own patent agent, whether that patent agent be skilled in the art or not.
Accordingly I would dismiss this appeal.
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