EU & Competition news

Hearing Date: 21 April, 2008

Court: Chancery Division, Patents Court

The claimant company was the United Kingdom subsidiary of a well known multi-national healthcare company. It had been involved in the production and sale of medical devices for many years. In 2006, it acquired a vascular device business of a company, G. A subsidiary of G, ACS, manufactured stents: small medical devices placed inside a coronary artery to expand the vessel at the site of a blockage. They were often classified as either “balloon expandable” or “self-expanding”, which described the mechanism by which they were enlarged. Each type was delivered to the blocked artery on a catheter. Once expanded, the catheter was withdrawn and the stent remained in place providing a metal scaffold to hold the artery open and ensure proper blood flow. The defendant was a Canadian company based in British Columbia. It was the proprietor of three patents relating to stents: European Patent (UK) 0 888 093 (the 093 patent); European Patent (UK) 0 888 094 (the 094 patent); and European Patent (UK) 1 066 804 (the 804 patent). Each of the patents had virtually identical specifications, and each claimed priority from the same four applications, the earliest of which was filed on March 5, 1996. The defendant alleged, inter alia, that the claimant’s stents infringed its patents. Subsequently, the claimant issued proceedings seeking declarations that its stents did not infringe the three patents, and revocation of each of those patents. The claims relevant to the proceedings were claim 1 of the 093 patent, claims 1 and 6 of the 094 patent and claims 1 and 23 of the 804 patent. The defendant counterclaimed for infringement.

The claimant submitted that the patents were invalid, inter alia, on the ground of obviousness in the light of a previous application and the common general knowledge. A number of priority attacks were also made in relation to claim 1 of the 093 patent, claim 6 of the 094 patent and claim 23 of the 804 patent. It was accepted by the defendant that any claims which lost priority were invalid.

The court ruled:

On a proper construction of the material claims, the 093 and 804 patents were invalid on the grounds of obviousness in the light of the documentary prior art and the common general knowledge. Moreover, the claims relating to the flexure means claimed by the 093 and 804 patents were not entitled to priority from the earlier applications. In relation to the 094 patent, while on its proper construction it was valid, it had not been infringed by the claimant's products.

Kirin-Amgen Inc v Hoechst Marion Roussel Ltd; Hoechst Marion Roussel Ltd v Kirin-Amgen [2005] 1 All ER 667 applied; Unilin Beheer BV v Berry Floor NV [2004] All ER (D) 603 (Jul) applied.

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