Fresh today on BAILII is Dendron GmbH and others v Regents of the University of California and Boston Scientific [2004] EWHC 589 (Pat), a Patents Court decision of Mr Justice Laddie.


This case concerned UC's patent for special apparatus that could be used to deploy Guglielmi Detachable Coils accurately (GDCs are used to treat aneurysms). Dendron sought revocation of the patent. UC and Boston Scientific counterclaimed for infringement. Opposition proceedings were in progress before the European Patent Office (EPO) and there were other actions in the Netherlands and Germany. As if this WASN'T enough, Dendron applied to the District Court of the Northern District of California to obtain information which, it said, would assist in the English, Dutch, German and EPO proceedings. The District Court ordered the production of documents which had been disclosed by a company in infringement proceedings (the USC order).

The English proceedings

Dendron sought (i) confirmation that it could use material given pursuant to a request under Council Regulation 1206/2001 (which directed the examination and production of documents by an individual at the University of Freiberg in Germany) wherever it liked, including the EPO, Dutch and German proceedings; (ii) an equivalent application relating to testimony to be given in courts in Alabama; and (iii) permission for its Dutch and German lawyers to see the documents produced under the USC order.

UC and Boston argued disclosure under the USC order was subject to the express limitation that it was only to be used for the English proceedings and that there was no basis for allowing the German and Dutch lawyers to see the material.

The decision

Laddie J held that, on balance and taking all the circumstances into account, it would be just to allow the Freiberg material to be used in the German and Dutch proceedings. However, in respect of the USC order, he was not persuaded that there was sufficient justification to lift the restriction on collateral use. Nor was he persuaded that use of the Freiberg material would occasion injustice to the German and Dutch proceedings. However, permission to make such collateral use would be limited to the German and Dutch proceedings, since there were no special circumstances requiring the court to lift the restrictions on collateral use of documents in respect of the USC order.

The IPKat hopes that one day he'll grow up to understand how jurisdictions without disclosure rules ever manage to resolve their patent disputes.

Aneurisms here, here and here; other isms here, here and here

Reviewed by Jeremy on Tuesday, March 23, 2004 Rating: 5

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