UK court makes concrete decision on infringement under doctrine of equivalents

In a recent case, Cloud Cycle Ltd v Verifi LLC, the Intellectual Property Enterprise Court held that Cloud Cycle’s concrete mixing system did not infringe Verifi’s patent, which relates to a method for calculating and reporting a property of concrete called “slump” in a concrete delivery truck.

This case is slightly unusual for two reasons: 

• Firstly, there were no issues of validity. 
  
• Secondly, the assessment of infringement was solely on the basis of the doctrine of equivalents, as introduced in the UK by the Supreme Court in its landmark judgment in Actavis v Eli Lilly [2017] UKSC 48. 

Background

The action was commenced by Cloud Cycle, who sought a declaration of non-infringement of patent EP (UK) 1 720 689 (the “Patent”) in respect of its concrete mixing system. The Patent is owned by Verifi, the first defendant, and exclusively licensed by GCP Applied Technologies, the second defendant. 

The Patent relates to systems for the calculation and reporting of “slump” (a measure of the consistency or workability of concrete before it sets) using sensors associated with a concrete mixing truck. These sensors measure the hydraulic pressure required to turn the mixing drum and the rotational speed of the mixing drum. 

Infringement 

As there was no allegation of infringement on the normal interpretation of claim 1, infringement was assessed entirely under the doctrine of equivalents. 

The judge, Recorder Douglas Campbell KC (sitting as a High Court Judge), began by addressing the inventive concept of the claim. While the parties put forward submissions as to the inventive concept, the judge did not fully adopt either side’s formulation. He considered that the inventive concept of claim 1 was a system to calculate slump performed according to the following steps: 

“a) compare the current pressure and speed measurements to previously stored values thereof; 
b) determine if the speed and pressure are stable 
c) do not use the stored values if the speed and pressure are not stable, 
d) store the current pressure and speed measurements 
e) repeat steps (a) to (d) until the system has been stable for long enough that a calculation can be performed 
f) and then calculate a current slump value using the stored pressure and speed measurements.”

The judge then considered the first of the Actavis questions: does the Cloud Cycle System achieve substantially the same result in substantially the same way as the inventive concept of claim 1? 

The answer to this question was no, hence there was no infringement under the doctrine of equivalents. The judge concluded that the Cloud Cycle System did not operate according to any of the steps (b), (c), or (e) of the inventive concept above. These steps relate to the stability of the speed and pressure measurements. In the Cloud Cycle System “all measurements of speed and pressure are used at all times regardless of stability and/or for how long the system has been stable”. Consequently, the system does not achieve substantially the same result in substantially the same way as the inventive concept of claim 1.

The judge therefore granted Cloud Cycle the declaration of non-infringement. 

Although not strictly necessary, the judge went on to consider the second and third Actavis questions. 

Would it be obvious to the skilled person, reading the Patent at the priority date, knowing that the Cloud Cycle System achieves substantially the same result as the inventive concept of claim 1, that it does so in substantially the same way? The judge concluded that if the answer to the first Actavis question had been “yes”, then so would the answer to the second Actavis question. Cloud Cycle did put forward an argument that it would be possible for the answer to this question to be “no” if the way in which the alleged infringement actually works is a mystery. However, the judge was not persuaded that the difficulties in understanding how Cloud Cycle’s system worked were as great as Cloud Cycle submitted. 

Would the skilled person reading the Patent at the priority date have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of claim 1, was an essential requirement of the invention? In relation to the third Actavis question, the judge could see no reason why strict compliance with the literal meaning of claim 1 would have been intended.  

Comment

While this is an unusual case in that neither validity nor infringement on normal interpretation was an issue, it is a good example of an assessment of infringement under the doctrine of equivalents, particularly the first of the Actavis questions. 

It highlights the importance of correctly framing the “inventive concept” of the claimed invention – the outcome of this case was effectively determined by that issue alone, with the judge noting in his judgment that most of the argument at trial was spent on this issue.