Protomed Ltd v Medication Systems Ltd & Anor

For an interim injunction, the initial threshold is whether there is a serious question to be tried, equivalent in this context to a real prospect of success. If the evidence shows no real prospect of success, the claim fails before consideration of the balance of convenience. A patent judge may reach a clear interlocutory view on construction where the issue is straightforward and the available material is sufficient. Patent claims must be construed purposively, but the construction must remain anchored to the language of the claim. The scope of the monopoly cannot be enlarged merely because an alleged infringing product solves the same problem or obtains the same advantages.

Protomed Ltd appealed after Mann J refused an interim injunction restraining alleged infringement of UK patent 2453588. The patent concerned a monitored medication-dosing container. The alleged infringing product was a one-piece moulded tray containing pot-shaped depressions.

The appeal concerned whether the judge had applied too high a threshold by referring to a good arguable case, whether he had improperly determined claim construction summarily, and whether the product arguably satisfied the separate claim requirements for compartments and removable pots.

Appeal dismissed. Lewison LJ gave the leading judgment. Elias LJ and Moore-Bick LJ agreed.

1. Under the approach in American Cynamid Co v Ethicon Ltd [1975] AC 396, the first question is whether there is a serious issue to be tried. This is equivalent to asking whether the claimant has a real prospect of success. If there is no real prospect of success, the claim fails at the first hurdle, even if the balance of convenience favours the claimant. The judge’s use of the phrase good arguable case was less desirable, but his conclusion showed that he had applied the correct test.
2. The judge had not finally determined claim construction summarily. He had assessed what the evidence and material available at the interlocutory hearing demonstrated about the strength of the infringement case. Patent claims are not excluded from summary judgment in an appropriate case, as recognised in Virgin Atlantic Airways v Delta Airways [2011] RPC 18, but this was an interlocutory assessment and the construction issue was sufficiently straightforward. Further evidence could be relied upon at trial if it emerged.
3. Under section 125 of the Patents Act 1977, giving effect to Article 69 of the European Patent Convention and its Protocol, the monopoly is defined by the claim purposively construed in light of the specification and drawings. The language chosen by the patentee remains critical. The Protocol questions are guidance and cannot extend the monopoly beyond the claim. These principles were illustrated by Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 and explained in Kirin-Amgen Inc and others v Hoechst Marion Roussel Limited [2004] UKHL 46; [2005] RPC 9.
4. Claim 1 required the compartments and pots to be distinct. The alleged product’s depressions could not be both compartments and pots. The fact that the product might obtain the patent’s advantages or solve the same problem could not enlarge the claim. Removal of the pots destroyed the integrity of the one-piece product, which therefore worked in a materially different way from the claimed system. There was no arguable case of infringement, and the injunction was rightly refused.

Elias LJ added that a judge may form an unequivocal view that a case is unarguable while recognising that an appellate judge might reach a different conclusion. The formal order was: appeal dismissed.

1. Court of Appeal (Civil Division): On 25 July 2013, the court dismissed the appeal and upheld the refusal of an interim injunction: [2013] EWCA Civ 1205.
2. Chancery Division, Patents Court: Mann J refused the interim injunction on 10 December 2012, finding no arguable case of infringement.