Intellectual Property Enterprise Court

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

Fecha: 07-Mar-2025

Inventive step of claim 3 over Wan

Inventive step of claim 3 over Wan

110.

The issue in relation to claim 3 is whether it was obvious to secure a flexible, deflectable tip to the distal end of the sheath.

111.

To avoid mischaracterisation of CJ Medical’s position, I will quote the relevant part of its written closing argument, which returned to its three constructions of claim 3:

‘As discussed in our opening, the answer to Pozzoli 4 depends on the correct construction of Claim 3. If either Construction One or Two is correct, the Defendant contends that both were CGK, and thus obvious over Wan. But neither party contends that these constructions are correct.

If, as the Defendant asserts, Construction Three is correct (i.e. Claim 3 requires the active or passive means taught at [0025]), then the Defendant’s position is that this would not have been obvious to the Skilled Person over Wan as at the Priority Date.’

112.

This is not clear. As I have said, Construction Three was presented as requiring active deflection only. I have rejected that construction, although with regard to ‘flexible’, I have not accepted Well Lead’s interpretation of that word.

113.

As appears from CJ Medical’s closing argument, there was a concession that claim 3 is not obvious over Wan of Construction Three is correct, but it also refers to active or passive means taught in paragraph [0025]. That may be a reference to the point made by counsel in oral submissions that passive deflection is concerned with whether the mode in which the tip has a memory, an argument I have rejected. I have gone back to the transcript taken at the trial, but nothing said in oral closing submissions makes matters clearer.

114.

Well Lead’s point was that since Wan does not disclose a flexible tip, CJ Medical had to rely on CGK to fill in that gap. CJ Medical produced just one item of prior art, known as the UroPass, which had a sheath with a flexible tip. Professor Somani said that it was part of the CGK. Mr Saeb-Parsy said that it was not, that he had not previously been aware of it and that it had not been used in either of the high profile hospitals in which he was a consultant before the priority date.

115.

I take the view that to make good a case on CGK where it is disputed between the experts, the party relying on it will generally have to do better than to produce one example that was on the market with no figures to indicate how widespread sales were before the priority date or other evidence to establish that it was part of the CGK.

116.

I leave aside CJ Medical’s concession on the obviousness of claim 3, which may not stand when taken with my findings on construction. I find that CJ Medical did not establish on the evidence that it was obvious at the priority date to secure a flexible, deflectable tip to the distal end of the sheath. Claim 3 does not lack inventive step over Wan.