The High Court has ruled that amendments to a patent held by Medinol Limited added matter by broadening its claims to cover stents with in-phase first meander patterns. It rejected the defendants’ separate objection to the addition of the words “unitary tube”.
Mr Justice Brian J. McGovern delivered the judgment on 27 May 2011 in Commercial Court proceedings between Medinol and Abbott entities. The issue was whether changes to the patent extended beyond the disclosure in the original application. The court had delivered an earlier judgment on infringement on 10 March 2011; the parties had left the added-matter issue for later decision.
The defendants argued that the original application described first meander patterns as necessarily 180 degrees out of phase, while the patent’s amended claims removed that restriction and therefore also covered in-phase patterns, including those found in Abbott stents. They said the change broadened the invention beyond what the application disclosed.
Medinol disputed that the original teaching was limited to out-of-phase patterns. It relied on language describing the arrangement as “one embodiment” and on a passage stating that the invention encompassed stents made with two meander patterns, “orthogonal or otherwise”. Medinol also argued that illustrated out-of-phase arrangements were preferred embodiments, which did not limit the claims to those examples.
The judge compared the application and patent from the perspective of a skilled addressee, without hindsight. Applying the approach to removal of a claim feature, he accepted the defendants’ submission. He concluded that the amendment introduced, for the first time, the teaching that the even and odd first meander patterns did not have to be 180 degrees out of phase. The changes therefore amounted to added matter because they broadened the patent claims.
The defendants also objected that “unitary” in Claim 1 had not appeared in the application. The judge said that point had not been argued with force and that Professor McHugh’s evidence was inconclusive, though the professor accepted that “unitary” meant one piece in the patent’s context. The judge found no substance in this objection and rejected it.
The judgment decides the two added-matter objections addressed in this ruling. It does not set out a remedy or further order concerning the consequences of the added-matter finding.