The High Court has ordered Medinol Limited and Abbott companies to produce specified categories of documents in a patent infringement dispute over medical stents. The ruling addressed disputed parts of cross-motions for discovery; it did not decide whether the patent was valid or infringed.
Ms Justice Finlay Geoghegan delivered the judgment on 19 January 2010 in the Commercial list. Medinol alleges that products including Vision, Xience and Promus stents made at the defendants’ premises in Clonmel infringe its European patent, EP1 181 902. The defendants accept that Abbott Ireland makes the products but deny infringement. They counterclaim that the patent is invalid for lack of novelty, lack of inventive step, insufficiency and added matter.
On Medinol’s motion, the court ordered discovery of documents showing the design of each accused stent size, including relevant design changes from straight to curved connectors, and documents evaluating whether the products’ features, configuration or design were covered by patent protection. It also allowed a request for communications between the defendants and Boston Scientific or other distributors concerning possible infringement or patent validity. The court noted that Boston Scientific’s role as a distributor of Promus stents was not disputed.
Medinol did not pursue a separate category after its amended design-document request was allowed, so no order was made on that category.
On the defendants’ motion, the court ordered documents created between 1 July 1992 and 30 July 1997 that Medinol had considered or evaluated for their potential effect on the patentability of any patent claim. It also ordered a narrower set of documents showing the design, structure, function, description and operation of Medinol’s covered products, as well as communications by Medinol or people acting for it about whether the accused products infringed the patent. A further order covered documents analysing the claimed invention’s benefits over the state of the art, Medinol’s contentions about third-party infringement, and experimental use of the claimed invention and related patents or applications.
The court refused the defendants’ broader requests for categories covering marketing, regulatory approvals, research and development, extensive product images and physical samples. It said the requests were too broad or marginally relevant to be necessary for fair disposal of the case; samples could presumably be purchased. The court also said infringement would be assessed by comparing the accused products with the patent claims. It did not decide at this stage whether evidence comparing the accused products with Medinol’s covered products would be admissible.
The judge said she would hear counsel on the timing of discovery and who should provide the affidavits. The judgment made discovery orders only; it did not resolve the underlying infringement claim or invalidity counterclaim.