The High Court has ordered discovery of inventor notebooks and certain records about the design and manufacture of a coronary catheter involved in a patent dispute between Schneider (Europe) GmbH and Conor Medsystems Ireland Limited.
In a judgment delivered on 2 February 2007, Ms Justice Finlay Geoghegan ruled on discovery motions brought by both sides. The underlying infringement and patent invalidity claims remain to be determined; the judgment addressed what documents must be disclosed at this stage.
Schneider alleges that Conor’s CoStar product infringes European and Irish patent 0650740, which concerns an interventional catheter. Conor denies infringement and counterclaims that the patent is invalid for lack of novelty and inventive step. Those are the parties’ claims, not findings made in this judgment.
Conor sought three categories of documents. The court refused its request for records filed with the US Patent and Trademark Office concerning a potentially identical or nearly identical patent because Conor had not identified the relevant US patent. The judge considered the request, as framed, a fishing exercise and potentially oppressive. She said Conor could pursue a more precise application if it identified a relevant patent and showed that the documents might be within Schneider’s power or procurement.
The court allowed Conor’s request for documents about the inventor’s conception, development and reduction to practice of the patented subject matter, including notebooks and related research records. It also allowed a narrowed category covering consideration by or on behalf of Schneider of the prior art pleaded in Conor’s objections to validity, and assessments of that prior art’s potential effect on patentability. The judge found those records relevant and necessary to the fair disposal of the counterclaim, including because they could inform expert evidence and cross-examination.
Schneider sought documents concerning the inception, design, creation, development and manufacture of specified parts of the CoStar product. Conor had agreed to disclose records about composition, testing, certification and regulatory approval, including CE marking. The dispute concerned the remaining material.
The judge ordered discovery of documents and materials relating to the design and manufacture of the listed catheter components. She said those records could help determine disputed infringement particulars, including whether the product had claimed inner and outer layers and whether the balloon was “welded” to the catheter tube. Conor admitted attachment by heat and pressure but disputed whether the process met the patent’s meaning of “welded”.
The court excluded documents about the product’s inception, creation and development, finding them irrelevant or unnecessary because the infringement claim concerned the finished product. The order otherwise followed Schneider’s revised request, with those words deleted.