For many years, the legal status of the doctrine of equivalents in Norway was uncertain and based on relatively old case law and legal theory. The most important decision, brannrør-dommen, dated from 1957. Article 69 of the European Patent Convention (EPC) and the Protocol on the Interpretation of Article 69 of the EPC limited the interpretation of protection by "defining a position between" two extremes. As such, an interpretation should encroach on neither of the following opposing positions:
- The extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims; or
- The claims serve only as a guideline and the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the rights holder has contemplated.
However, this left a lot of middle ground, particularly in view of the differences between the approach to equivalents in UK and German case law.
Progress was made in 2009 in donepezil-kjennelsen, in which the Supreme Court confirmed three criteria for the application of the doctrine of equivalents defined by the court of second instance:
- The accused object must solve the same problem as the patented invention;
- The modifications made must be obvious to one skilled in the art; and
- The accused object must not be part of the prior art.
These criteria provide a method for analysis, but there is still considerable room for discretion. Further, in this case the Supreme Court found that the doctrine of equivalents did not apply, so the decision does not explicitly confirm that the three criteria are necessary and sufficient in all cases.
Nevertheless, a first-instance case between Active Brands AS (the patentee) and Finor AS and Fischer Sports GmbH (the accused infringers) recently relied on these criteria. Unfortunately, instead of providing clarity, the decision illustrates that this concept is still developing in Norway.
Active Brands had an exclusive licence to Norwegian Patent 318,691, which related to a kick-enhancing system for skis, involving the attachment of a band or strip to the ski sole by means of an adhesive. The forward portion of the strip was attached to a retaining piece and an engagement block was mounted in the ski which had at least one engaging hole to engage with the retaining piece. The retaining piece was equipped with at least one fastening lug for engagement in the engaging hole, on insertion from the underside of the ski.
Fischer released the product Fischer Easy Skin in 2013, whereupon Active Brands claimed that the product fell under the scope of its patent either directly or under the doctrine of equivalents.
The court of first instance gave its verdict on March 3 2015.
The court listed the claim features as follows:
- "a device for affixing to a ski a band or strip equipped with a kick-enhancing covering";
- "an engagement block mountable in the ski";
- "which has at least one engaging hole";
- "wherein said engaging hole is designed, on the insertion of an engaging lug on a retaining piece into such a hole, to receive and form retaining engagement with the engaging lug"; and
- "the retaining piece being fastened to a forward portion of the band or strip".
The parties agreed that Fischer's product included the first and last of these features (ie, it was a device for affixing to a ski a band or strip equipped with a kick-enhancing covering, with the retaining piece being fastened to a forward portion of the band or strip).
The court agreed with Fischer that there was no literal infringement because the remaining features could not be found in Fischer's product.
Same problem test
With respect to the first of the donepezil criteria for equivalence, the court simply stated that Fischer Easy Skin solved the same problem as the patent. To its credit, it dismissed an argument from Fischer that its product solved problems that were not solved by the patent. However, its reason for dismissing this argument was that "the giving of evidence does not provide support for this allegation which can therefore not be relied upon". This may be the case – but whether Fischer's claim was true was in fact irrelevant. In this kind of case, the accused product may solve any number of additional problems; the contention is whether it also solves the same problem as that solved by the patent.
Further, the court based its arguments on statements made by the inventor in the description. When determining inventive step, the proper analysis is to disregard statements made by the inventor and consider the objective technical problem solved by a particular feature. The same should seemingly have applied here: while it was a necessary requirement for equivalence that the accused product as a whole solve the same general problem as the patented invention, it should also have been taken into consideration whether the problems solved by the missing features were solved by the substituted features. This was not discussed by the court.
Consequently, it seems that the court reached the right conclusion with respect to the first criterion, but for the wrong reasons.
Merely an alternative?
The court then discussed Fischer's argument that inventive step should be considered when determining equivalence. The court was reluctant to accept this argument (with good reason), but nevertheless stated that "the state of the art may be relevant to the determination of whether the three criteria are fulfilled". This is clearly true with respect to the second and third criteria, but is almost equally clearly not true with respect to the first criterion. Unfortunately, the court then started a discussion of whether the patent solved a problem in addition to merely being an alternative to existing solutions. This was where things started to go wrong.
The question of whether an invention is merely an alternative is one that is primarily used with respect to chemical products, for two reasons:
- Allowing equivalence to extend to any chemical product which solves the same problem would be a patent on the end result, not on the way that result is obtained; and
- Claims are often directed to whole classes of chemical products, where only some variants have a certain effect. A claim that, over its entire scope, solves only the problem of producing an explicitly defined class of previously unknown chemical products can hardly be allowed to extend beyond that. The result would be a claim that covered an unknown variety of previously unknown chemical products because it covered some previously unknown chemical products.
Applying this argument in relation to the mechanical arts created some strange reasoning. The prior art relied on solved the same problems to the extent that it provided examples of how:
- a fastening device could be part of the ski itself, and not only the band or strip;
- a fastening device on the strip or band could engage with a hole in the ski; and
- the engagement between strip/band and ski was provided further back on the ski, not on the tip.
However, there was no discussion of whether:
- the engagement ski and strip or band was more secure during use;
- the attachment or release was easier; or
- any of the fastening mechanisms might be preferable alternatives with respect to interference with the skiing experience – for example, by interfering with the snow surface in an undesirable manner when the strip was either attached or unattached.
Questions such as these may not interest the court; but if it is to conclude that a valid patent on an invention with the necessary inventive step to be patentable represents "merely an alternative" to the prior art, one might expect at least a discussion of why the features that provided the inventive step did nothing but provide an alternative with no discernable technical substance.
However, the court found it sufficient to conclude that because somewhat similar products had been described before, the patented invention was "merely an alternative" which "hardly was entitled to protection under the doctrine of equivalents".
Towards the end of the decision, the court returned to the accused product and compared its features with the claim. The court concluded that the retaining piece on the Fischer Easy Skin was pulled through the hole in the ski and brought into engagement with a fastening device "some distance from the hole". This, it claimed, was not something that a skilled person would try as an alternative to the patented solution with a reasonable expectation of success. In other words, the court did not believe that the second criterion was fulfilled.
The claims of this patent were, perhaps, defined so narrowly that it could not claim much ground for equivalence. However, it is almost certainly not the case that the patent was entitled to no equivalence at all for being "merely an alternative" to solutions that, in their mechanical details, differed substantially from the claims. It is also difficult to understand how a person with any skill at all would not expect to succeed if he or she decided to pull something through a hole and attach it to a fastening device. If anything, the skilled person would probably be more certain of success with Fischer's solution than with the patented solution. In particular, it would probably not take a skilled person 10 years to come up with the alternative represented by Fischer's product – an argument that the court used to strengthen the conclusion of non-obviousness. The lessons learned are that:
- Norwegian courts still struggle with the doctrine of equivalents;
- the three donepezil criteria may not provide sufficient guidance; and
- further clarification (in the form of better decisions) is needed.
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