Patents: Abbott Laboratories Ltd v Medinol Ltd

Abbott Laboratories Ltd v Medinol Ltd [2010] EWHC 2865 (Pat) (12 Nov 2010) was a claim for a declaration of non-infringement and revocation of three European patents for cardiac stents and a counterclaim for infringement. The patents were derived from a US patent. The corresponding European patent had been divided into a number of divisional patents. These had been the subject of opposition proceedings in the European Patent Office. The Opposition Division had revoked two of the grants though the decision was under appeal. There had also been proceedings in respect of the same patents in Germany and the Netherlands which resulted in findings of non-infringement. There are shortly to be similar proceedings in Dublin.

The claimant attacked the patents for want of novelty and inventiveness, added matter and insufficiency. The judge, Mr. Justice Arnold, found that one of the patents had been anticipated but that the others were valid (or, in the case of one patent) would be valid. He also found that none of the patents had been infringed.

The judge applied the usual tests.

• the Kirin Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46, [2005] RPC 9 test for determining whether there had been infringement;
• the Synthon BVv SmithKline Beecham pic [2005] UKHL 59, [2006] RPC 10 and General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd [1972] RPC 4 test for novelty;
• the Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59 and Pozzoli v BDMO SA [2007] EWCA Civ 588, [2007] FSR 37 test for obviousness; and
• Bonzel v Intervention Ltd (No 3) [1991] RPC 553 and Vector Corp v Glatt Air Techniques Ltd [2007] EWCA Civ 805, [2008] RPC 10 for added matter.

As with most patent cases the outcome hung on the construction of the specification.