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

The patented device uses the obturator to push the sheath through the ureter towards the kidney (in a kidney stone application). Soble does not mention any obturator.

CJ Medical argued that Soble is not concerned with how the sheath gets into the ureter. The starting point for the description in Soble has the sheath already in the ureter. It was acknowledged CGK that an obturator could be used to push the sheath into and along the ureter.

Mr Saeb-Parsy gave unchallenged evidence that obturators are supplied with pre-packaged access sheaths. He said that it was highly unlikely, if not impossible, that as of the priority date an obturator could be found to fit a sheath that was designed and shaped for an endoscope as in Soble. None of the obturators available for the commonly used access sheaths at the priority date would have fitted the Soble sheath. The skilled person would also have thought that if an attempt was made to use an obturator there would be difficulties with (i) releasably securing the obturator to the sheath, (ii) avoiding wrinkling of the sheath, (iii) fitting a sheath adapted for an obturator on to an endoscope and (iv) maintaining the sheath in position when the obturator is removed if the sheath is made from a flexible, soft material, one of the options in Soble.

It was common ground that the sleeve/sheath discussed in Soble could be manoeuvred through a ureter to reach a kidney using the endoscope without having to go to the trouble of prior insertion with an obturator. Because of this and Mr Saeb-Parsy’s evidence, I find that it would not have been obvious to use an obturator.