Facebook Ireland Limited v Voxer IP LLC [2021] EWHC 657 (Pat)

Patentees who wish to rely on the doctrine of equivalents must say so in the Particulars of Infringement.

Case Summary

In a patent revocation and infringement case between Facebook and Voxer IP, Lord Justice Birss answered the question of whether reliance on the doctrine of equivalents ought to be pleaded. The question arose at a pre-trial review.

At paragraph 8 of the judgment the judge held that:

“a patentee (whether in the Patents Court, IPEC or the STS) who wishes to rely on the doctrine of equivalents as part of its case of infringement must say so in the Particulars of Infringement.”.

The explanation given was to ensure that the alleged infringer knows what case they have to meet. The judge noted that although the matter was not dealt with by CPR Practice Direction 63 paragraph 4.1 (which sets out matters which must be pleaded in the Particulars of Infringement), the general CPR Rule 16.4(1)(a) would require the pleading of the assertions of fact on which the claimant relies when alleging equivalence to a particular claim feature.

The Judgment can be accessed here.

Authored by Michael Dickin