Schneider (Europe) GmbH v Conor Medsystems Ireland Ltd

• Jurisdiction: Ireland
• Judge: Ms. Justice Finlay Geoghegan
• Judgment Date: 02 February 2007
• Neutral Citation: [2007] IEHC 63
• Court: High Court
• Docket Number: [No. 1930 P/2006]
• Date: 02 February 2007

Schneider (Europe) GmbH v Conor Medsystems Ireland Ltd

BETWEEN

SCHNEIDER (EUROPE) GmbH

PLAINTIFF

AND

CONOR MEDSYSTEMS IRELAND LIMITED

DEFENDANT

[2007] IEHC 63

[No. 1930 P/2006]

[No. 57 BOM/2006]

THE HIGH COURT

COMMERCIAL

INTELLECTUAL PROPERTY

Patent

Discovery -Relevance - Necessity - Fishing exercise - Infringement of patent - Inventive step - Primary evidence expert evidence - PJ Carroll & Co Ltd v Minister for Health and Children [2005] IEHC 267, [2005] 3 IR 257 followed - Order for discovery granted in terms of amended notice of motion (2006/1930P & 2006/57BOM - Kelly J - 2/2/2007) [2007] IEHC 63Schneider (Europe) GmbH v Conor Medsystems Ireland

The plaintiff alleged that the defendant infringed its patent. The defendant denied infringement and counter-claimed for invalidity of the patent on the basis of obviousness and lack of novelty. This judgment concerned applications of discovery.

Held by Finlay Geoghegan J. in making orders for discovery that the onus was on the party seeking discovery to establish relevance and necessity.

Reporter: R.W.

P J CARROLL & CO & ORS v MIN FOR HEALTH & ORS UNREP KELLY 9.12.2005 2005/50/10582 2005 IEHC 432

P J CARROLL & CO LTD & ORS v MIN FOR HEALTH & ORS UNREP SUPREME 1.6.2006 IESC 36

RSC O.31 r12

COMPAGNIE FINANCIERE DU PACIFIQUE v PERUVIAN GUANO CO 1882 11 QBD 55

AQUATECHNOLOGIE LTD v NATIONAL STANDARDS AUTHORITY OF IRELAND (NSAI) & ORS UNREP SUPREME 10.7.2000 2000/1/209

FRAMUS LTD & ORS v CRH PLC & ORS 2004 2 IR 20 2004 2 ILRM 439 2004/18/4116

HANNON v CMRS OF PUBLIC WORKS & ORS UNREP MCCRACKEN 4.4.2001 2001/11/3168

RYANAIR PLC v AER RIANTA CPT 2003 4 IR 264 2004 1 ILRM 241 2003/46/11374

COOPER-FLYNN v RAIDIO TELEFIS EIREANN (RTE) & BIRD & HOWARD 2000 3 IR 344 2001 1 ILRM 208 2000/4/1394

TAYLOR v ANDERTON (POLICE COMPLAINTS AUTHORITY INTERVENING) 1995 2 AER 420 1995 1 WLR 447

TAYLOR v CLONMEL HEALTHCARE LTD 2004 1 IR 169 2004 2 ILRM 133 2004/48/11095

VICKERS PLC v HORSELL GRAPHIC UNDUSTRIES LTD 1988 RPC 421

SKM SA v WAGNER SPRAYTECH (UK) LTD 1982 RPC 497

WELCOME FOUNDATION LTD v VR LABORATORIES (AUSTRALIA) PTY LTD 1982 RPC 343

ELI LILLY & CO v APOTEX INC 2006 4 FCR 104

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

RANCAXY LABORATORIES LTD & ORS v WARNER LAMBERT COMPANY UNREP O'SULLIVAN 8.6.2005 2005/52/10915 2005 IEHC 178

HOECHST CELANESE CORP v BP CHEMICALS LTD & ANOTHER 1997 FSR 547

PATENTS ACT 1992 S11

WINDSURFING INTERNATIONAL INC v TABUR MARINE (GREAT BRITAIN) LTD 1985 RPC 59

MOLNYCKE AB v PROCTOR & GAMBLE LTD 1994 RPC 49

PATENTS ACT 1992 S9

PATENTS ACT 1992 S13

PATENTS ACT 1977 (UK)

TEMMLER v KNOLL LABORATORIES (AUST) PTY LTD 1969 43 ALJR 363

Ms. Justice Finlay Geoghegan

1 The plaintiff is the proprietor of a European and Irish patent no. 0650740 ("The 740 patent"). The subject of the patent is an interventional catheter.

2 The defendant manufactures, markets and sells in Ireland a product known as the "CoStar product" which includes and comprises an interventional catheter. The plaintiff alleges that the defendant in so doing infringes the 740 patent. The defendant denies infringement and has counterclaimed for invalidity of the 740 patent on the basis of obviousness and lack of novelty.

3 Particulars have been sought and delivered; interrogatories raised, answered and the defendant has made certain admissions. Certain of these are relevant to the applications the subject of this judgment.

4 The plaintiff and defendant have each brought motions for discovery. The plaintiff also has brought a motion for further interrogatories. This was not pursued by reason of admissions made by the defendant on the morning of the hearing of these applications. Further by reason of those admissions the defendant's motion for discovery was heard first and it is proposed to deal with the motions in the same order in this judgment.

5 At the hearing, the defendant pursued its application for discovery of three categories of documents. The first category as stated in the notice of motion was revised and limited. The categories as pursued at the hearing are:

6 Such documents relating to patent applications filed with the US Patents and Trademarks Office in respect of the product which is the subject-matter of EP 0650740 as disclose the state of the art (including but not limited to the two prior art documents pleaded) prior to the priority date of the European Patent.

7 All documents howsoever described concerning the conception, development and reduction to practice of the subject matter disclosed or claimed in the 740 Patent including (but not limited to) all laboratory notebooks of the named inventor, Gerhard Kastenhofer, and his laboratory technicians, correspondence, files, memoranda, notes, calendars, models, research and prototypes of the named inventor and any co-worker who assisted him with regard to the subject matter of the 740 Patent in respect of each feature of the Patent.

8 All documents which disclose or evidence the consideration (if any) given by the inventor of the 740 Patent, European Patent No. 0650740 and any other equivalent patent and by or on behalf of the Plaintiff to the prior art referred to or related to that listed in the Particulars of Objections delivered on behalf of the Defendant on 24 July 2006 or to any other documents considered but deemed by the inventor and/or by or on behalf of the Plaintiff not to be prior art including any documents disclosing or evidencing any consideration or evaluation by or on behalf of the Plaintiff as to the potential effect of any such alleged prior art on the patentability of the subject matter disclosed in the 740 Patent, in European Patent No. 0650740 or any other equivalent patent."

9 The parties are in agreement that the general principles according to which these applications for discovery should be determined are those set out by Kelly J. inP.J. Carroll and Co. v. The Minister for Health and Children (Unreported, High Court, 9th December, 2005). In the judgment of Geoghegan J. in the same case (Unreported, Supreme Court, 1st June, 2006) it is recorded at p. 6 that the parties in that case conceded that the learned High Court judge in his judgment had set out the correct principles to be applied.

10 Those principles are set out by Kelly J. at pp. 34 - 40 of his judgment in the following terms:

11 Order 31, r. 12 of the Rules of the Superior Courts as amended requires an applicant for discovery to demonstrate that the documents sought are both relevant and necessary for the fair disposal of the case or to save costs.

12 Thelocus classicus on relevance is to be found in the judgment of Brett L.J. in the Peruvian Guano Case [1882] 11 Q.B.D. 55. That judge described as relevant-

"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 which may - not which must - either directly or indirectly enable the party requiring the affidavit either to advance his own case or to damage the case of his adversary."

13 That statement was considered by Murray J. (as he then was) inAqua Technolgie v. NSAI (Supreme Court, 10th July, 2000) where he said:-

"… There is nothing in that statement which is intended to qualify the principle, that the document sought on discovery must be relevant, directly or indirectly to the matters in issue between the parties in the proceedings. Furthermore, an applicant for discovery must show it is reasonable for the court to suppose that the documents contain information which may enable the applicant to advance his own case or to damage the case of his adversary. An applicant is not entitled to discovery based on mere speculation or on the basis of what has been traditionally characterised as a fishing expedition."

14 InFramus v. CRH Plc [2004] 2 I.L.R.M. 439, the Supreme Court approved of the approach of McCracken J. in this court in Hannon v. Commissioner of Public Works (Unreported, 4th April, 2001) where he set forth the appropriate approach to relevance as follows:-

15 i "(i) The court must decide as a matter of probability as to whether any particular document is relevant to the issues to be tried. It is not for the court to order discovery simply because there is a possibility that documents may be relevant.

16 (ii) Relevance must be determined in relation to the pleadings in the specific case. Relevance is not to be determined by reasons of submissions as to alleged facts put forward in affidavits in relation to the application for further and better discovery unless such submissions relate back to the pleadings or to already discovered documents. It should be noted that Order 31, r. 12 of the Superior Court Rules specifically relates to discovery of documents 'relating to any matter in question therein'.

17 (iii) It follows from the first two principles that a party may not seek discovery of a document in order to find out whether the document may be relevant. A general trawl through the other parties' documentation is not permitted under the rules.

18 (iv) The court is entitled to take into account the extent to which discovery of documents might become oppressive, and should be astute to ensure that the procedure of discovery is not used as a tactic in the war between the parties."

19 There is much recent authority on the second part of the test which an applicant for discovery must satisfy. Such an applicant must show that the discovery sought is necessary for disposing fairly of the cause or matter or for saving costs. The burden of proving that the discovery falls within this rubric rests with the applicant for discovery. This is not "a mere formalistic...