England and Wales High Court (Patents Court) Decisions

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Cite as: [2010] EWHC 1731 (Pat)

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		Neutral Citation Number: [2010] EWHC 1731 (Pat)
		Case No: HC09 CO1401

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

Royal Courts of Justice
Strand, London, WC2A 2LL

01/07/2010

B e f o r e :

MR. JUSTICE KITCHIN
____________________

Between:

	ABBOTT LABORATORIES LIMITED	Claimant
	- and -
	MEDINOL LIMITED	Defendant

____________________

Transcript of the Shorthand Notes of Marten Walsh Cherer Ltd.,
1st Floor, Quality House, 6-9 Quality Court, Chancery Lane, London, WC2A 1HP.
Telephone No: 020 7067 2900. Fax No: 020 7831 6864.

____________________

MS. CHARLOTTE MAY (instructed by Messrs. Taylor Wessing) appeared on
behalf of the Claimant.

MR. THOMAS HINCHLIFFE (instructed by Hogan Lovells International LLP) appeared on behalf of the Defendant.
____________________

HTML VERSION OF JUDGMENT
____________________

JUDGMENT ON SPECIFIC DISCLOSURE
AND DECLARATION OF NON-INFRINGEMENT

MR. JUSTICE KITCHIN :

This is an application for specific disclosure in a patent action in which Abbott seeks revocation of three patents owned by Medinol: EP1181902 ('902); EP1181901 ('901); and EP0846449 ('449), known collectively as "the Medinol patents". All the Medinol patents are in the same patent family and have the same priority documents. Abbott also seeks a declaration of non-infringement of the Medinol patents in respect of its Vision, Xience and Multi-Link 8 stents. Medinol counterclaims for infringement of '902. The trial of the action is listed for two weeks from 11 October 2010.

Abbott originally sought disclosure of documents within the following categories, that is to say, all evidence, whether in trials, depositions and arbitrations, and whether by statements, expert reports or transcripts, of Dr. Snyder and Dr. Richter in prior litigations, arbitrations, patent office proceedings, including oppositions and appeals, or other proceedings relating to the Medinol patents and all corresponding patents to the Medinol patents, whether in Europe or elsewhere, including the United States. The specific disclosure now sought is of all evidence given by Dr. Snyder and Dr. Richter in the following proceedings: (a) Medinol v. Guidant Corp and ACS, Inc. (Southern District of New York) - Case No. 03 Civ 2604 (SAS); (b) Scimed/Boston Scientific Corporation/Medinol v. J&J/Cordis (District of Delaware) - Case No. 99-904-SLR; (c) Scimed/Boston Scientific Corporation/Medinol v. J&J/Cordis (District of Delaware) - Case No. 00-404-SLR; and (d) multiple arbitrations between Medinol and Boston Scientific Corporation concerning the Express, Taxus and/or Promus stents.

Dr. Snyder is one of Medinol's experts in this action. Dr. Richter is Medinol's only witness of fact and it is agreed that his evidence is primarily directed to the issue of the commercial success of Medinol's stent called the NIR. Abbott says -- and I do not understand it to be disputed -- that all of the actions and other proceedings to which I have referred relate to patents from the same family as the Medinol patents, at least in part as a result of the fact that the patents (or at least some of them) in issue in each of those actions and proceedings all have the same priority documents as the Medinol patents and are divisionals from, or continuations of, one of those priority documents.

Abbott contends that the disclosure sought is relevant to this action primarily because a number of points of construction are in issue concerning various terms and phrases that appear in the claims of the Medinol patents. Specifically, they include the meaning of "meander pattern", which appears in the claims of '902 and '449, and "loops", which appears in the claims of all three Medinol patents. One or more of these terms also appear in at least one of the claims of the patents in issue in the foreign actions and proceedings, including the arbitrations which Ms. May, who appears on behalf of Abbott, told me upon instructions include the '902 patent.

In this action the experts for both Abbott and Medinol consider that the same terms have the same meanings in each of the Medinol patents. So, for example, it is not suggested that the term "meander pattern" has a different meaning in '902 to that in '449. It follows, Ms May submits, that the evidence given by the same experts as to the meaning of the same terms and phrases in the foreign actions and proceedings relating to patents based on the same priority documents as the Medinol patents, with virtually identical descriptions, is also relevant.

Ms. May specifically drew my attention in this regard to the decision of the United States District Court (Southern District New York) - Case No. 03 Civ 2604 (SAS), dated 10 February 2006, in which the court considered the meaning of the phrase "about a centre line" and identified the extent of the disagreement between Guidant and Medinol. Guidant asserted that "about a centre line" meant that there must be the same amount of stent elements on either side of the line whereas Medinol argued it meant that the meander was oriented in a straight line with repeating elements on either side of the straight line being the same distance from the line on each cycle. In this regard, it appears that Dr. Snyder gave evidence in a deposition as to what he understood the phrase "about a centre line" to mean, namely, that each repeating feature be at a fixed distance from the centre line on each cycle. It was suggested that this was not the same as the view expressed by Dr. Snyder in paragraph 7.11 of his report dated 16 April 2010 in this action.

Further, Ms. May drew my attention to the Markman hearing in the same case, from which it appears that Dr. Richter gave certain evidence which, she submits, may be relevant to the issue of common general knowledge in this action. She continued that although Dr. Richter only gives evidence in relation to commercial success in this action, that can only be of relevance if the NIR stent is itself an embodiment of one or more of the claims of the Medinol patents. Hence, by inference at least, he is giving evidence about the meaning of the terms of the Medinol patents including, I assume, those specific terms to which I have referred.

Medinol resists Abbott's application and relies upon the third witness statement of its solicitor, Mr. Stephen Bennett. He points out that the specific terms of the Medinol patent claims to which Abbott has drawn attention in support of its application, namely "meander pattern" and "loops" have been accepted by both parties' experts not to be terms of art. Further, he says that Dr. Richter only gives fact evidence in these proceedings, that fact evidence being directed, as I say, to the issue of commercial success. More substantively, he gives evidence about the extent of the disclosure exercise that would be the consequence of the order sought and explains that he has been told by Keith Hummel, Medinol's US counsel, that the expert reports, depositions and trial transcript documents sought would amount to a very substantial number of documents which are likely to run to 15-20 full lever arch files. However, in addition to these documents and in order to understand them properly, it would be necessary to consider them in the context of further documents such as the opposing side's evidence and exhibits, the relevant pleadings, written submissions and records of all argument and submissions. It would also be necessary to consider the application of the law under which the various cases and arbitrations were decided. Mr. Hummel has also told him that the overall volume of the documents that might also need to be reviewed and potentially disclosed would be in the region of many tens of thousands of pages and run to several hundred full lever arch files. The volume of these documents and the time it would take to gather them together would make complying with the order sought an extremely costly process. Moreover, those costs would not stop with disclosure because the documents would have to be read by both Abbott's and Medinol's UK teams, which would result in a significant further increase in costs. For that reason, Mr Bennett expresses his belief that the disclosure sought is neither reasonable nor proportionate.

I have reached the conclusion that it is not appropriate to order the disclosure sought for the following reasons. First, the issue of the proper interpretation of the claims of the Medinol patents is ultimately a matter for the court and a question of law although, of course, the court will admit evidence as to the meaning of technical terms and must have regard to all of the relevant circumstances as they existed at the date of the Medinol patents. In this case, the particular terms relied upon by Abbott in support of its application, namely, "meander pattern" and "loops", are not said to be terms of art although I recognise that other terms and phrases in the bodies of the specifications may well be, including the phrase "about a centre line", to which my attention has been drawn by Ms. May.

Secondly, the proceedings before the US courts must necessarily have involved different stents and been decided according to different substantive and procedural laws.

Thirdly, Abbott is, in my judgment, clearly concerned to consider the evidence which Dr. Snyder and Dr. Richter gave in these other actions and proceedings with a view to seeking to identify some inconsistency between that evidence and the evidence they give in this action. However, no such inconsistency has come to light hitherto and my attention has not been drawn to anything this morning save for the specific decision of the United States District Court to which I have referred. In that regard, I am not satisfied that there is any inconsistency between the evidence which Dr. Snyder gave in his deposition and that which is contained in his report. Moreover, I am extremely doubtful that the evidence on this particular point which Dr. Snyder gives in his report is admissible in this jurisdiction in any event.

As for Dr. Richter, I have considered his statement with the benefit of the assistance of Ms. May and Mr. Hinchliffe, who appears on behalf of Medinol, during the course of this hearing. I do not believe that he gives evidence on the question of the proper interpretation of the Medinol claims at all. The question whether or not his evidence on commercial success ultimately proves of relevance because the NIR stent does, or does not, fall within the scope of the claims is not, in my judgment, going to be answered by a consideration of the evidence which he has given in other proceedings. Furthermore, so far as he gave evidence in the Markman hearing to which I have referred, it has not been suggested that that evidence was in any way contentious; nor is the common general knowledge a subject on which he will be giving evidence here.

Accordingly, I do not accept that the documents sought satisfy the requirement of relevance. I am confirmed in this view by the fact that Abbott has been party to parallel proceedings in Holland and Germany involving the Medinol patents in which Dr. Snyder has also given evidence. It has never been suggested that the evidence he gave in those jurisdictions is in any way inconsistent with the evidence contained in his report in these proceedings.

Finally, I have also reached the conclusion in the light of the evidence of Mr. Bennett that the disclosure sought would be wholly disproportionate to any conceivable benefit that the documents sought might bring to these proceedings. The exercise would necessarily be substantial and costly and would, in my judgment, be likely to have the result of introducing considerable complexity and satellite arguments which will not ultimately assist the court. Accordingly, for all these reasons, I have decided that the application must be refused.