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

There are two differences between claim 1 of the Patent and Wan: Wan discloses a ‘piercing stylus’ rather than an obturator and has no collection container. At the trial Well Lead conceded that there would have been nothing inventive about adding a collection container.

Whether claim 1 embodies an inventive step over Wan in the end turned on the short issue of whether the skilled person would take the piercing stylus to be an obturator or not.

Professor Somani accepted in cross-examination that the use of the Wan device as explained in Wan was more consistent with a percutaneous procedure than ureteroscopy via the urethra.

Mr Saeb-Parsy maintained his modified view that the obturator would be taken to be a trocar but provided no further reason to explain the paradox apparently presented by Wan. Professor Somani was not challenged in his criticisms of Mr Saeb-Parsy’s modified view. I find those criticisms convincing.

It seems to me that although use of the word ‘piercing’ to describe the stylus is odd, it is no odder than describing the sheath as piercing. Neither expert suggested that the sheath would be used to pierce the patient’s skin. On the other hand, piercing in the sense of entering the patient would make sense of the word in both contexts.

In my view, at the priority date the skilled person would have understood the part of the Wan device described as a piercing stylus to be a kind of obturator. Accordingly claim 1 lacks inventive step over Wan.