Medtronic Inc. and Others v Guidant Corporation and Others

• Jurisdiction: Ireland
• Judge: Mr. Justice Kelly
• Judgment Date: 23 February 2007
• Neutral Citation: [2007] IEHC 37
• Court: High Court
• Date: 23 February 2007

MEDTRONIC INC & ORS v GUIDANT CORPORATION & ORS

COMMERCIAL

BETWEEN

MEDTRONIC INC., EVYSIO MEDICAL DEVICES ULC AND MEDTRONIC VASCULAR, (GALWAY) LIMITED

PLAINTIFFS

and

GUIDANT CORPORATION, GUIDANT EUROPE NV/SA., GUIDANT LUXEMBOURG SARL

AND BY ORDER

ABBOTT VASCULAR DEVICES HOLLAND BV ABBOTT SA/NV AND ABBOTT IRELAND

DEFENDANTS

[2007] IEHC 37

[2006 No. 1388 P/2006]

THE HIGH COURT

Abstract:

Practice and procedure - Discovery - Cross-application for discovery - Patent infringement suit - Issue as to whether inventions novel or obvious - Basis for determining obviousness of invention - Issue as to validity of patents, infringements and quantum of damages - Whether documents sought relevant and necessary for fair disposal of case or to save costs - Rules of the Superior Courts 1986, O 31, r 12

the plaintiff brought suit against the defendants alleging infringement of patents. In addition to denying any infringement of patent, the defendants counterclaimed for the revocation of the patents on the grounds of lack of novelty, lack of inventive step and lack of patentability by reason of insufficient disclosure. The parties had narrowed most of the discovery sought against each other down but there remained a number of categories of documents sought by the defendant Categories 1.4, 1.5, 2.1, 2.3, 2.4 and 2.5 were concerned with the question of the validity of the patents, categories 2.12, 3.1, 4.2 and 4.3 dealt with infringement and the remaining disputed categories dealt with quantum of damages.

Held by Mr Justice Kelly in:

1. Ordering discovery of the categories sought at paragraphs 2.3, 2.4, 2.5, 3.1, 4.2 and 4.3, 1, that the court, in exercising the discretion conferred upon it by O 31, r 12 of the Rules of the Superior Courts 1986, had to have regard to the issues in the action as they appeared from the pleadings and the reasons furnished by the applicant to show that the specified categories of documents were required.

2. That the general principles were applicable to discovery in patent actions as in any other action.

3. That relevance was tested by reference to the pleadings and not affidavit evidence. The purpose of a claim in a patent was to provide certainty as to extent of the monopoly granted. The understanding of the persons to whom the claim was addressed rather than the understanding of the patentee or inventor was the test. Thus what, was admissible was not the evidence of the patentee or inventor but of a person to whom the claim was addressed and such person's opinion as to the meaning of the claim.

Reporter: P.C.

1 JUDGMENT of Mr. Justice Kelly delivered on the 23rd day of February, 2007

Introduction

2 This judgment deals with disputed cross applications for discovery in this patent infringement suit. In order to understand the matters at issue it is necessary to sketch out the background to the proceedings.

Background

3 The action was commenced by the issue of a plenary summons on 28th March, 2006. An amended statement of claim was delivered on 26th October, 2006.

4 The plaintiffs maintain that the defendants have infringed two European patents. The first is numbered EP0888093B (the 093 patent), the second is numbered EP0888094B (the 094 patent).

5 The infringement of these patents is alleged to have occurred by the defendants manufacturing, putting on the market and offering for sale two coronary stent systems. They are known in short form as the VISION and XIENCE stents respectively. This activity is alleged to have been carried on in the defendants" premises in Clonmel, Co. Tipperary.

6 The defendants deny any wrongdoing but they admit that the third defendant and, after 21st April, 2006, the sixth defendant made the VISION stent.

7 In addition to denying any infringement the defendants have counterclaimed for the revocation of the patents on the grounds of lack of novelty, lack of inventive step, and lack of patentability by reason of insufficient disclosure.

8 During the course of the proceedings, the fourth to sixth defendants were joined by order of the court on 23rd October, 2006, because they had taken over the respective businesses of the first to third defendants. The pleadings in the case closed with the delivery of an amended reply and defence to counterclaim in November, 2006. Correspondence took place on the question of discovery and agreement was reached on all but the documents the subject of this judgment.

Main Issues for Trial

9 In replies to particulars dated 12th June, 2006, the plaintiffs set out in some detail the technical elements listed in the two patents claims. The main issue to be decided by the court in respect of the plaintiffs claim for infringement is whether and to what extent the VISION and XIENCE products of the defendants demonstrate the elements set forth in the patents claims which are reproduced in those replies to particulars.

10 The two main issues likely to require adjudication on the counterclaim seeking revocation of the patents are whether the inventions were novel having regard to the state of the art at their priority date and whether the inventions were obvious.

11 By way of footnote I should record that the defendants maintain that the state of the art can be gleaned from inter alia 36 publications which they list in the particulars of objection, the prior art cited in the patents themselves and common general knowledge.

Plaintiff's Application for Discovery

12 This application can be dealt with very speedily since by the time of the hearing there was very little between the parties.

13 Prior to bringing their motion seeking discovery, agreement was reached between the plaintiffs and the defendants on various categories of documents to be discovered. At the time the notice of motion issued on 10th November, 2006, they were in dispute about four remaining categories of documents. By the time that motion came to hearing the dispute had been resolved in respect of all but two subheadings of one such category of document. Even that dispute had almost petered out by then. Accordingly, insofar as the plaintiff's application is concerned, this judgment will deal with the request for discovery of the following documents which are described at category 1(b) and (d) of the notice of motion. The documents sought are:-

"All documents howsoever described —"

(b) disclosing or evidencing, in respect of the manufacture of the said products taking place in the State, the company or entity on whose behalf the products were manufactured, including (but not limited to) all documents disclosing or evidencing all or any arrangements between the defendants or any of them, their servants or agents, for the manufacture of the infringing products;

(d) disclosing or evidencing, in respect of the sales of the said products taking place in the State, the company or entity on whose behalf the products were sold, including (but not limited to) all documents disclosing or evidencing all or any arrangements between the defendants or any of them, their servants or agents, or with third parties, for the sale of the infringing products in the State."

14 The defendants" objections to discovery of these two categories were fairly muted. Insofar as the first of them was concerned, the defendants indicated on affidavit sworn by Ms. Ciara Cullen, solicitor, on 24th November, 2006, that they would be prepared to make discovery of:-

"All agreements which record arrangements between the defendants or any of them, their servants or agents, for the manufacture of the allegedly infringing products in the State."

15 Insofar as the second category is concerned she likewise indicated willingness to make discovery of:-

"All agreements which record arrangements between the defendants or any of them, their servants or agents, for the sale of the allegedly infringing products in the state."

16 The plaintiffs were dissatisfied with that approach because they alleged that documentation going to the legal responsibility of the first, second, fourth and fifth defendants in respect of the infringing acts of the third and sixth defendants might well go beyond documentation in the nature of formal agreements between them. Thus, they said, that the entire categories sought are relevant to the question of responsibility for the allegedly infringing acts. With some nudging from the court the parties agreed that the relevant written agreements would be discovered but that insofar as any of their terms might have been changed concerning the matters relevant to the two categories in question, the documents evidencing such change or changes would also be disclosed. In my view that is sufficient to meet the plaintiff's legitimate entitlements.

The Defendants" Request for Discovery

17 The defendants" motion for discovery seeks five categories of documents, some of which are broken down into different subheadings. The motion was preceded by requests for discovery of many other documents and those requests were the subject of agreement. The schedule to the motion therefore identifies only those categories which remained in dispute at the time that the motion was issued. However, as some of the agreed categories may have a bearing upon those in dispute, I will, where necessary, record in the course of this judgment the categories which are the subject of agreement.

Legal Principles

18 Before considering in detail the requests for discovery at the suit of the defendants I ought to make mention of the legal principles which are applicable on an application of this type.

19 In P.J. Carroll and Co. v. the Minister for Health and Children(Unreported, High Court, 9th December, 2005) I dealt with the applicable legal principles on an application for discovery. My decision was upheld on appeal and in the course...