The High Court has ordered discovery of documents in a patent dispute over two coronary stent systems, while refusing several broader requests. The ruling addressed only what material must be disclosed at this stage; it did not decide whether the patents were infringed or valid.
Medtronic Inc., Evysio Medical Devices ULC and Medtronic Vascular (Galway) Limited allege that companies including Guidant and Abbott infringed two European patents by manufacturing, marketing or offering VISION and XIENCE stents. The defendants deny infringement, although they admit that the third defendant and, after 21 April 2006, the sixth defendant made the VISION stent. They counterclaim for revocation, alleging lack of novelty, lack of inventive step and insufficient disclosure.
The plaintiffs’ case concerns whether the stents have the technical features set out in the patent claims. The validity dispute includes whether the inventions were novel at their priority date and whether they were obvious. The judge noted that the defendants relied on 36 publications, cited prior art and common general knowledge.
Justice Kelly’s 23 February 2007 judgment dealt with cross-applications for discovery. The plaintiffs sought documents about which entities arranged the manufacture and sale of the products in Ireland. The parties agreed that relevant written agreements would be disclosed, together with documents showing changes to relevant terms. The judge considered that sufficient to meet the plaintiffs’ entitlement.
For the defendants’ application, the court ordered discovery in categories 2.3 and 2.4, covering certain prior-art and patent-preparation or validity-analysis documents; category 2.5, concerning material provided to or received from retained experts or consultants, subject to any proper claim of privilege; category 3.1, concerning licensing and transfers of rights in the patent technology; and categories 4.2 and 4.3, concerning third-party conduct and experimental use. The judge reached that decision on relevance and necessity, with reservations about categories 2.3 and 2.4.
Discovery was refused for categories 1.4 and 1.5, which sought communications and presentations concerning inventorship and stents; category 2.1, seeking material beyond the agreed Irish and European patent files; category 2.12, seeking communications about the accused products; and categories 4.4 and 4.5, concerning patent values, royalties and related payments. Category 5.1, on record-retention policies, was not pursued, so the court made no decision on it. Category 4.1 was resolved by agreement: the plaintiffs would disclose analyses comparing the accused products with the patent claims or their covered products.
The judgment records orders for the specified discovery categories and refusals for others. It does not determine the underlying infringement or revocation claims.