EPLAW Patent Blog

UK - Medtronic CoreValve v. Edwards Lifesciences

Medtronic CoreValve LLC (formerly CoreValve Inc) v. Edwards Lifesciences AG and Edwards Lifesciences PVT Inc, High Court of Justice, Court of Appeal (Civil Division), Lord Justice Jacob, London, UK, 30 June 2010, [2010] EWCA Civ 704

The Court of Appeal has upheld the decision of Peter Prescott QC (sitting as a Deputy Judge of the Chancery Division) that CoreValve’s heart valve device does not infringe Edwards’ EP(UK) No. 0 592 410 (the “Patent”).  The parties were informed at the hearing of the Court’s decision on infringement and on this basis it was not necessary to hear CoreValve’s cross-appeal on validity.

Edwards’ appeal concerned whether there was an infringement of their Patent for a heart valve on a stent. The Patent claims include a requirement that the stent be ‘cylindrical’ and it is this integer that was the subject of the dispute.

The Court rejected Edwards’ submission that confining ‘cylindrical’ to that which is approximately geometrically cylindrical is to give the claim a purposeless limitation.  Although the Court accepted that in some cases a Patentee may use a geometric term without requiring mathematical precision, the result of Edwards’ purposive construction was effectively to strike out the requirement for cylindricality altogether, and this, the Court held, was not acceptable (as per Lord Hoffmann in Step v Emson [1993] RPC 513 at 523).  Having considered the relevant passages in the specification, the Court held that the word ‘cylindrical’, as used in the claims, should be given its ordinary acontextual meaning.  Although it is circular in cross section, the CoreValve device varies significantly in diameter across its length.  The Court of Appeal agreed with the first instance decision that this device is not cylindrical.

Edwards’ alternative argument, that the CoreValve device can be treated as two parts; a cylindrical lower level and an upper widening-out part, was also rejected.  The skilled person would regard the CoreValve device as a unitary article.  Furthermore the claim requires the commissural points of the valve to be mounted on ‘the cylindrical surface’ of the stent, whereas in CoreValve’s device the commissural points are mounted on the heavily sloping upper level.  The ‘two part’ argument failed for this reason as well.

Lord Justice Jacob was ‘gratified’ that in dismissing Edwards’ appeal he was reaching the same conclusion as the Oberlandsgericht in Dϋsseldorf.  It too thought that Edwards’ construction of ‘cylindrical’ meant that it had no meaning and rejected also the ‘two part’ argument.

Read the decision (in English) here.

Head note: Scott Parker

UK - Cook Biotech v. Edwards Lifesciences / Appeal

Cook Biotech Incorporated v. Edwards Lifesciences AG, High Court of Justice, Court of Appeal, London, UK, 28 June 2010, [2010] EWCA Civ 718

The Court of Appeal has dismissed an appeal against the decision of Kitchin J at first instance, finding the European Patent (UK) 1 255 510 (“the Patent”) invalid.

 

The Court of Appeal held that the first instance judge had been correct to hold the Patent invalid for obviousness:

 

i) the argument that the Patent was directed to an interventional cardiologist, and so should be read with the limited knowledge, functions and expectations of such a person, was fundamentally flawed. The Patent and the Andersen prior art patent were notionally addressed at the relevant time not just to an interventional cardiologist but to a team which included or would have consulted a cardiac surgeon and someone familiar with the design of implantable surgical heart valves.  They would have pooled their joint knowledge and experience when interpreting the Patent and Andersen;

ii) it is artificial, and counter-intuitive, to seek to make a clear division between the stent and the valve within it on the basis of functionality;

iii) Andersen reinforces the concept of a single stent, without meaningful differentiation according to the different functions it was performing;

iv) the appellant was wrong on the evidence to argue that part of the device had a function for which the interventional cardiologist was not responsible;

v) the minimum 1mm requirement in claims 15 and 22 was arbitrary, and merely there as a reflection of the obvious general need to secure and strengthen the edges of the valve and to prevent tearing.