IP-2024-000024 - [2025] EWHC 492 (IPEC)

The device claimed has ‘one or more side arms’ (integer 2). So far I have discussed only what could be viewed as the principal side arm, that which is connected to the negative air pressure system via the collection container. This is integer 9:

The function of the optional accessory side arm is to provide additional irrigation, or the passage of a guide wire or any other device that may be needed during the removal of stone fragments or other foreign bodies, or as an additional channel for the removal of foreign bodies.

CJ Medical’s argument on added matter at the trial (others were not pursued) was that whereas in the parent PCT Application (WO 2016/018479 A1) the accessory side arm is only disclosed as emanating from a proximal sheath, claim 1 discloses that the accessory side arm emanates from the sheath, not necessarily the proximal sheath. Put another way, the additional matter said to be disclosed in the Patent is that the additional side arm may also emanate from the distal sheath.

CJ Medical did not submit that the Patent expressly states anywhere that the additional side arm may emanate from the distal sheath. Whenever any part of the sheath is specified in the description it is the proximal sheath, e.g. in paragraphs [0023] and [0027].

The figures of the Patent which include a depiction of the accessory side arm show it only emanating from the proximal sheath.

In their written closing submissions CJ Medical acknowledged that the skilled person reading the Patent would have understood that the additional side arm must emanate from the proximal sheath because of the functions it may perform:

This assertion was not made by reference to anything the experts said. The experts seem not to have directly addressed the point at all. However, for the reasons I have given I think that CJ Medical is right about how the skilled person would have addressed the matter.

I find that the skilled person reading the Patent would have understood that the additional side arm must emanate from the proximal sheath. The objection of added matter fails.