UK Court of Appeal: invalidity by equivalence must wait for another day

The Court recorded at paragraph [18] that there was no dispute that Jacob LJ summarised the applicable principles in Virgin Atlantic v Premium Aircraft [2010] RPC 8 at paragraph [5]. The Court in Saab noted that sub-paragraph (ix) of Jacob LJ's summary ("It further follows that there is no general 'doctrine of equivalents' ") must now be "read in the light of the Supreme Court's judgment in Actavis … which explains that, at least when considering the scope of protection, there is now a second question, to be asked after the patent claim has been interpreted, which is designed to take account of equivalents" (see paragraph [19]). The claimant in this case, however, did not seek to rely upon equivalence to bolster its case for invalidity and thus the Court noted that the "issue will therefore have to await a case in which we are called upon to decide it". 

The judgment therefore suggests that the Court of Appeal agrees with the various Patents Court judgments to date that have applied the principles of purposive construction to the first part of the Actavis test for infringement (determining the 'normal interpretation' of the claim). However, the burning issue of whether the scope of a claim for validity is now narrower than for infringement remains to be addressed at the Court of Appeal level.