Facebook Ireland Ltd v Voxer IP LLC

A patentee relying on the doctrine of equivalents must plead that reliance in the Particulars of Infringement. The requirement applies in the Patents Court, IPEC and the Shorter Trials Scheme. It follows from the general requirement that a statement of case contain a concise statement of the facts relied on. Equivalence raises factual issues distinct from infringement on a normal construction, including the first and second questions under Actavis v Eli Lilly [2017] UKSC 48. The pleading must identify the relevant claim and claim feature. In ordinary Patents Court proceedings, the inventive concept and other details of the test need not necessarily be pleaded initially and may appropriately be developed in claim charts or a statement of case on infringement.

Facebook brought proceedings seeking revocation of Voxer’s patent concerning telecommunications and multimedia management. Voxer counterclaimed that Facebook Live and Instagram Live infringed. Shortly before trial, Voxer sought to amend its statement of case to introduce a doctrine-of-equivalents case concerning one claim feature. Facebook opposed that amendment, arguing that reliance on equivalents should have been pleaded earlier and that the inventive concept should have been identified. The court permitted the new argument on case-management grounds but gave fuller reasons on the separate point of principle: what must a patentee plead when relying on the doctrine of equivalents?

1. Doctrine of equivalents must be pleaded. A patentee wishing to rely on the doctrine of equivalents must say so in the Particulars of Infringement. This applies whether the case proceeds in the Patents Court, IPEC or under the Shorter Trials Scheme.
2. Statutory and procedural basis. CPR Part 63 and Practice Direction 63 operate within the general framework of CPR Part 16. CPR rule 16.4(1)(a) requires a concise statement of the facts relied on. A doctrine-of-equivalents case necessarily involves factual assertions distinct from the facts relevant to infringement on a normal construction. The first and second questions in the Actavis v Eli Lilly [2017] UKSC 48 framework therefore require pleading.
3. Required content. The pleading must state expressly that equivalence is relied on and identify the particular claim feature, and the claim, to which the assertion relates. This enables the alleged infringer to know the case to be met and imposes no disproportionate burden.
4. Further detail. The court did not decide that every detail must be pleaded at the outset, or that the inventive concept must necessarily be characterised in the Particulars of Infringement. In ordinary multitrack Patents Court proceedings, claim charts or a statement of case on infringement may be an appropriate stage for articulating the inventive concept and other aspects of the Actavis test. The more demanding IPEC approach described in Kwikbolt v Airbus [2019] EWHC 2450 (IPEC) reflected the different IPEC pleading regime.
5. Disposition. Although the point of principle was decided against Voxer, the court permitted the new argument to be run on case-management grounds. An assertion of equivalence which cannot later be explained in a claim chart or statement of case may be struck out.