Intellectual Property Enterprise Court

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

Fecha: 07-Mar-2025

Inventive step over Soble

Inventive step over Soble

Combining Soble and Russo

73.

Russo is referred to in columns 7 and 8 of Soble:

‘Whether the suction port is linked to a source of positive pressure, negative pressure or both, the suction port may be further connected to a switch or valve that turns the pressure on and off (e.g. a trumpet valve), and/or a pressure-regulator. Examples of such control devices are described in publications such as U.S. Pat. No. 5,882,348 to Winterton et al., U.S. Pat. No. 5,938,589 to Wako et al., and U.S. Pat. No. 5,730,727 to Russo, all incorporated herein by reference.’

74.

Russo is relied on by CJ Medical in support of a necessary part of the argument on inventive step that it was obvious to modify the device in Soble to include the feature in integer 7 of the Patent: ‘wherein side arm (50) further comprises a pressure regulating mechanism (110) in the form of a longitudinal slit in respect of the axis of the side arm’.

75.

The relevant passage in Soble cross-refers to two other US patents in addition to Rosso. They were not in evidence and were not shown to the experts. All that can be said about them is that apparently they disclose ‘a switch or valve that turns the pressure on and off (e.g. a trumpet valve), and/or a pressure-regulator’. It is possible that one or both disclose more than one alternative type of device. It is therefore not possible to say how many alternative pressure control devices there were from which the skilled person would have had to make a selection.

76.

It is also entirely possible that the skilled person would have thought that one or other of the devices disclosed in the two other US patents would be significantly more suitable for attachment to the Soble device than that disclosed in Russo. Were that the case, it may well not have been obvious to use the Russo device. I cannot know.

77.

CJ Medical submitted that this ship had sailed because the court approved an order at the CMC in which Soble incorporating Russo by reference was listed as a citation in respect of which lack of inventive step could be argued. I reject this submission. The judge who heard the CMC would have had no reason to consider the merits of any aspect of the proposed argument on inventive step and she certainly made no ruling on the matter.

78.

The evidential burden on CJ Medical has not been met with regard to combining the disclosure of Russo with Soble. For that reason alone I find that none of the claims of the Patent lack inventive step over Soble plus Russo. There were other arguments but given my finding that Russo cannot be taken into account I will consider only those directed to the content of Soble.