A recent Court of Appeal decision in the case of Icescape Limited v Ice-World International BV & ors demonstrates the complexities potential infringing parties face as a result of the "Actavis Questions".

The "Actavis Questions" came out of the 2017 Actavis v Eli Lilly Supreme Court decision and are aimed at deciding whether variants nonetheless infringe a patent claim because the variant varies from the claimed invention in a way which is immaterial.

The Questions are provided below.

1) Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, i.e. the inventive concept revealed by the patent?

2) Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?

3) Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?

In the present case, when applying the "Actavis Questions", the Court of Appeal reached a different conclusion from the (first instance) Patents Court on the issue of infringement (the Patents Court decision being made prior to the Actavis v Eli Lily Supreme Court decision).

Indeed, whereas the Patents Court found that Ice-World did not infringe the claims of Icescape's patent, when applying the "Actavis Questions" the Court of Appeal found that Ice-World's ice rink product would have infringed the claims of Icescape's patent (if the patent had been found to be valid).

This decision is a further demonstration of the increased risk facing potential infringing parties who, prior to the Actavis v Eli Lily Supreme Court decision, may have been confident that they were not infringing a given patent but might now have to re-evaluate their position.

As a result of this the most sensible steps for such potential infringing parties to take would be to obtain a new infringement opinion taking into account the "Actavis Questions".

As a slight aside, this decision also provided an example of when the prosecution history of a case can be taken into account in court cases in the UK.  This goes against the historic trend in the UK of there being no file-wrapper estoppel.