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Thursday, 6 August 2009

Judge gives word its ordinary meaning

In some areas of intellectual property, particularly patent law, it sometimes seems as though you can go for a long time without coming across any instances of a judge giving a word its ordinary meaning, but that's exactly what happened in Occlutech GmbH v AGA Medical Corp; Dot Medical Ltd [2009] EWHC 2013 (Ch), a decision of Mr Justice Mann in the Patents Court, England and Wales last Thursday.

AGA, who made intravascular devices for treating certain medical conditions, had a patent for

"a collapsible medical device comprises a metal fabric formed of braided metal strands, the device having a collapsed configuration for delivery through a channel in a patient's body and a generally dumbbell-shaped expanded configuration with two expanded diameter portions separated by a reduced diameter portion formed between the opposed ends of the device, and clamps for clamping the strands of the opposed ends of the device".
Occlutech who made patent foramen ovale (PFO) occluders for use in patients with heart defects where there were gaps in the atrial wall. The PFO occluder, introduced by a catheter or similar device, consisted of two discs -- one in each atrium -- and a thin middle section which occupied the gap in the atrial wall. This device was held in place by the natural inward 'pinching' forces exerted by the discs along its axis. During manufacture, one end of the device was closed but the other was left open, the loose ends of the device protruding through the open end but being welded to form a clot during the final part of the manufacturing process.

Occlutech sought (i) a declaration of non-infringement in respect of its PFO occluders and (ii) revocation of AGA's patent for obviousness over the prior art, this being a Boston Scientific patent for 'stents for body lumens exhibiting peristaltic' which claimed
"a method for providing reinforcements to the lumen of a peristaltic organ. The stent is formed by knitting a filament into interknit loops...".
AGA counterclaimed for infringement and joined Dot, the importer of Occlutech's PFO occluders, to the proceedings. It was basically accepted that, for the purposes of the proceedings, the skilled addressee was a team consisting of a medical devices engineer and a clinician.

Mann J held the patent valid but uninfringed.
* AGA's patent was not invalid for lack of inventive step. The prior art used a knitted, rather than a braided, fabric; it would not have been obvious to move from the former to the latter, which lay at the heart of AGA's invention. What's more, (i) the prior art did not disclose a dumbell-shaped device, and (ii) the method used to fix the ends of the device disclosed by the prior art was a long way from any form of clamping.

* When construing patent claims, (i) the language of the patent was the starting point, but was not finally determinative; (ii) any conclusion that a conventionally used term bore an unconventional meaning required a rational basis; (iii) even if a given limitation in a claim looked odd, since you couldn't see why the patentee included it, there might nevertheless be an undisclosed reason for that oddity so you can't assume that this oddity was unintended and thus either vested an unconventional meaning in conventional words or meant that the limitation should be disregarded.

* In this case the word 'clamp' had its common meaning -- an object which exerted a physical fixing and binding force on the strands of the fabric so they did not unravel.

* While other methods of fixing were envisaged by the description, and it was not apparent why AGA would have wanted to exclude such methods, the drafting was so clear that the actual wording could not be ignored, the relevant words could not be extended beyond their natural meaning.

* The choice of the word 'clamps' could have been a mistake, but the words said what they said. There was no apparent rational basis for forming another conclusion in the light of the guidance given by the specification. Since Occlutech's devices did not use clamps, they did not infringe.
The IPKat says, what a shame the court did not have to consider the meaning of 'dumbbell' which, if Wikipedia's disambiguation is anything to go by, is quite a versatile word. Merpel's puzzled: the defendant in this case only joined one Dot -- but don't you have to have at least two Dots before you can join them?


Simon Bradshaw said...

Mann J is refreshingly fond of doing this; see for instance his comments in Lucasfilm v Ainsworth on the meaning of 'Work of Artistic Craftsmanship'. Having reviewed at length the case authority (including the varied speeches in Hensher v Restawile) he concluded that a WAC was, in effect, what it said it was.

Anonymous said...

Can anybody provide the patent number?

The discussion of the parallel proceedings in Germany is interesting. Germany used to have "central" rather than "peripheral" claiming. I had thought that all history by now, but the effects apparently linger on. Just about every trainee patent attorney in Germany gets to pass the qualifying exam: the EPO test is perceived as harder. Are the German courts therefore, to this day, necessarily more tolerant of poor drafting than England?

And what about that two-part form of claim? What a horror. Was "clamps" all they could get, that wasn't already old, in this very crowded technical field? Did the prosecuting patent attorney understand the consequences of presenting such a claim? That's why I want the patent number, to read with appalled fascination the prosecution history at the EPO.

Anonymous said...

I believe the patent in question is EP0808138

4Mark said...

Thanks. Explains a lot. I see Applicant argued for a one part form of claim 1, the ED changed it into a mean little 2-parter in the Druckexemplar, yet Applicant then went and approved the text for grant.

The courts aren't bound by the file history at the EPO but I suspect they might have a little look at it on epoline, all the same. Why not, when everybody else does.

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