Medinol Ltd (plaintiff) v Abbott Ireland & Others

• Jurisdiction: Ireland
• Judge: Ms. Justice Finlay Geoghegan
• Judgment Date: 19 January 2010
• Neutral Citation: [2010] IEHC 6
• Court: High Court
• Date: 19 January 2010

[2010] IEHC 6

THE HIGH COURT

[No. 24 COM/2009]

[No. 10436 P/2008]

Medinol Ltd v Abbott Ireland & Ors

COMMERCIAL

BETWEEN

MEDINOL LIMITED

PLAINTIFF

AND ABBOTT IRELAND AND ABBOTT VASCULAR INTERNATIONAL B.V.B.A. AND BY ORDER 6 TH JULY 2009, ABBOTT CARDIOVASCULAR SYSTEMS INCORPORATED, ABBOTT VASCULAR DEVICES HOLLAND B.V. AND ABBOTT LABORATORIES INCORPORATED

DEFENDANTS

SCHNEIDER (EUROPE) GMBH v CONOR MEDSYSTEMS IRL LTD UNREP KELLY 2.2.2007 2007/55/11697 2007 IEHC 63

MEDTRONIC INC & ORS v GUIDANT CORP & ORS UNREP KELLY 23.2.2007 2007/39/8203 2007 IEHC 37

RSC O.31 r12

COMPAGNIE FINANCIERE ET COMMERCIALE DU PACIFIQUE v PERUVIAN GUANO CO 1882-83 11 QBD 55

RANBAXY LABORATORIES LTD & ORS v WARNER LAMBERT CO 2006 1 IR 193 2006 1 ILRM 377 2005/52/10944 2005 IESC 81

PRACTICE AND PROCEDURE

Discovery

Necessity - Relevance - Categories - Specific documents - Patent infringement suit - Schneider (Europe GmbH) v Conor Medsystems Ireland Ltd [2007] IEHC 63 (Unrep, Finlay Geoghegan, 2/2/2007); Medtronic Inc v Guidant Corp [2007] IEHC 37 (Unrep, Kelly J, 23/2/2007) applied - Ranbaxy Laboratories v Warner Lambert Company [2005] IESC 81 [2006] IR 193; Compagnie Financiere du Pacifique v. The Peruvian Guano Co. (1882) 11 Q.B.D. 55 considered - Discovery of some documents ordered against both parties (2008/10436P & 2009/24COM - Finlay Geoghegan J - 19/1/2010) [2010] IEHC 6

Medinol Ltd v Abbot Ireland

Facts: The plaintiff was the proprietor of a European patent for a flexible expandable stent. The defendants accepted that the first named defendants made the products and counterclaimed that the patent was invalid on grounds of novelty, lack of inventive step, insufficiency and added matter. The plaintiff claimed that the defendants' product infringed Claim 1 of the Patent. A dispute arose between the parties in discovery motions. A dispute arose, firstly, as to the plaintiffs' request for documents in Categories 1(a), detailing the design of the stent, 1(d), disclosing patent protection, 1(e) , which was no longer pursued and 4, communications with the distributors as to patent infringements. Also, a dispute arose as to discovery sought by the defendant: Categories 2.3 and 2.4- as to documents created affecting the patentalibility of any claim to the patent, 2.6 to 2.11- documents concerning advertising, 2.12- documents with its agents, officers, employees, attorneys in the litigation as to an infringement, 4.2- documents considering or analyzing benefits over and above the state of the art, of the claims of the patent and 4.3- concerning experimental use of the alleged invention.

Held by Finlay Geoghegan J. that there would be orders for discovery of the documents in Categories 1(a), 1(d), and 4 in the amended and revised terms in the judgment as they were relevant and necessary and the latter was not a "fishing expedition" as alleged. On the defendants' application, there would be orders for discovery of the documents in Categories 2.3, 2.8. 2.12, 4.2 and 4.3 in the amended or revised terms set out in the judgment, the first of which was relevant to a counterclaim for invalidity and to the grounds of lack of novelty and lack of inventive steps/ obviousness, the second was sought to compare products and to understand the Patent claims but would be allowed only in a narrow format, the third could be subject to privilege at a later stage, the fourth was relevant and necessary as was the final category.

Reporter: E.F.

1 1. This judgment is given on the disputed portions of motions by the plaintiff seeking discovery from the defendants and by the defendants seeking discovery from the plaintiff. Those applications have to be considered in the context of the claim and counterclaim in the proceedings.

2 2. The plaintiff is the proprietor of a European patent EP1 181 902 ("the Patent") for a flexible expandable stent. In these proceedings, the plaintiff alleges that the defendants (or the companies in the former Guidant Group in respect of which they have assumed liability) have infringed the Patent. It is alleged that the defendants have done so by making a range of medical stents referred to in the proceedings as the Vision, Mini-Vision, Xience, Mini-Xience, Promus, Multi-Link 8 and Xience Prime products at the defendants' premises in Clonmel, and by offering putting on the market and using the said products which are alleged to infringe certain claims of the Patent.

3 3. The defendants, in their defence, accept that the first named defendant makes the products in question and counterclaims that the Patent is invalid as set forth in the Particulars of Objection on the grounds of lack of novelty, lack of inventive step, insufficiency and added matter. The defendants also deny that the products infringe the Patent, if valid.

4 4. The plaintiff, in the Particulars of Infringement, alleges that the defendants' products infringe, inter alia, Claim 1 of the Patent which is in the following terms (as amended in accordance with the First Auxiliary request - amended language underlined):

"1. A flexible, expandable stent formed of an elongated cylindrical unitary tube (30) having in a non-expanded form and in its expanded form a patterned shape, the patterned shape comprising first meander patterns (11) extending in a first direction and second meander patterns (12) extending in a second direction, different from the first direction, wherein the first and second meander patterns comprise loops and are intertwined such that loops (14, 16) of each of the first meander patterns (1) are disposed between each of the neighbouring second meander patterns (12) and that one single loop (18, 20) of each of the second meander patterns (12) is disposed between each of the neighbouring first meander patterns (11), and wherein the first and second meander patterns (11, 12) define a plurality of enclosed spaces (42a, 42b, 44a, 44b)."

Legal principles

5 5. The parties are in agreement that the legal principles applicable to the determination of the disputes between them on the two discovery motions herein are those set out in two judgments of the High Court of February 2007: Schneider (Europe GmbH) v. Conor Medsystems Ireland Limited [2007] IEHC 63, and Medtronic Inc. and Others v. Guidant Corporation and Others [2007] IEHC 37. The relevant principles and authorities are fully set out by Kelly J. and me in the above judgments, and I think it suffice to say that under O. 31, r. 12 of the Rules of the Superior Courts, each of the applicants for discovery has to demonstrate that the documents sought are both relevant and necessary for the fair disposal of the case or to save costs. Further, that the onus of establishing relevance and necessity for the purposes mentioned in the rule is on the moving party. Finally, the general principles are applicable to discovery in patent actions as in any other action. The dispute between the parties is as to the proper application of the principles to the present proceedings and the documents sought.

Plaintiff's application for discovery

6 6. At the time of the hearing, a dispute persisted in relation to the plaintiff's request for documents in Categories 1(a), 1(d), 1(e) and 4. I propose considering these sequentially.

Category 1(a)

7 7. During the hearing, counsel for the plaintiff indicated that the plaintiff was willing to limit the documents sought within this category. The defendants had contended that the categories of documents sought were too wide and should be limited to the design and not include research and development. The amended Category 1(a) now reads:

"1(a) Any document detailing the design of each size of the "Vision", "Mini-Vision", "Xience", "Mini-Xience", Promus", "Multi-Link 8" and "Xience Prime" stents (as referred to in the pleadings), in either expanded or unexpanded form, these documents are to include documents detailing the progression of the design of these stents in respect of the replacement of straight connectors with curved connectors in so far as they show these changes or touch upon the effect of such changes. These documents are to include (for the avoidance of any doubt):-

(i) design drawings and specifications so detailing;

(ii) engineering files so detailing;

(iii) CAD files so detailing; and

(iv) Schematic diagrams so detailing."

8 8. The defendants did not make any substantive objection to this reduced category. I am satisfied that as the defendants deny that the products infringe the Patent, if valid, that such documents are relevant and necessary and should be discovered.

Category 1(d)

9 9. 1(d) "All documents disclosing or evidencing any evaluation of whether the features, configuration or design of the said products were the subject of patent protection."

10 10. I have concluded that this category should be discovered. The documents appear relevant to the issue of infringement within the classic statement of the judgment of Brett L.J. in the Peruvian Guano case [1882] 11 Q.B.D. 55, where he stated:

"Every document relating to the matters in question in the action, which, not only would be evidence upon any issue, but also which, it is reasonable to suppose contains information...