Intellectual Property Enterprise Court

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

Fecha: 07-Mar-2025

Sizes 10-13 as equivalents

Sizes 10-13 as equivalents

136.

It was common ground that whether sizes 10-13 infringe as equivalents of the claimed invention turns only on the third question identified by Lord Neuberger in Actavis UK Ltd v Eli Lilly & Co. [2017] UKSC 48, at [66]. It was therefore agreed that (1) the variants – each of sizes 10-13 – all achieve the same result in substantially the same way as the inventive concept of the Patent and (2) it would have been obvious to the skilled person reading the patent at the priority date, a person who knows that all the variants achieve substantially the same result, that they do so in substantially same way as the inventive concept.

137.

This is Lord Neuberger’s third question:

‘Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?’

138.

CJ Medical relied on the passages from paragraphs [0015] and [0020] of the Patent which I have set out above.

139.

In paragraph [0015] ‘identical or nearly identical’ lumen sizes are stated to be ‘one important feature of the current invention’.

140.

Paragraph [0020] first discusses three possibilities: (i) the diameter of the side arm lumen is up to 20% smaller than that of the sheath and (ii) the diameters are the same and (iii) the diameter of the side arm lumen is up to 20% smaller than that of the sheath. These three options are said to be ‘embodiments’ but not embodiments of the invention. Paragraph [0020] goes on, however, to say that ‘according to the present invention’ the diameters are the same.

141.

CJ Medical submitted that this was an instance of the principle of ‘disclosed but not claimed’. In Akebia Therapeutics Inc v Fibrinogen, Inc [2020] EWHC 866 (Pat) Arnold LJ (sitting as a High Court Judge) discussed the principle in the context of the third Actavis question, pointing out that it has an established history in the case law of the German Federal Supreme Court (BGH):

‘[456] Again, this is an instance of a principle recognised by the BGH that, where the specification discloses several ways in which a particular technical effect can be achieved but only one way is claimed, the conclusion that use of the other (disclosed but not claimed) ways to achieve the technical effect cannot amount to infringement as an equivalent extends to further undisclosed ways in which the technical effect can be achieved where the further ways operate in a manner more similar to the disclaimed than the claimed methods: see Case X ZR 69/10 – Diglyzidverbindung (Diglycid compound) at [45]-[46].’

142.

I accept CJ Medical’s submission. In my view the skilled person would have recognised the distinction between (a) an embodiment in which the lumen sizes are the same and (b) embodiments in which there is 5-20% variation. The latter are disclosed but not claimed in claim 1. This is an instance where the principle of ‘disclosed but not claimed’ falls to be applied.

143.

Further, the latter embodiments include one in which the lumen of the side arm is 20% smaller in diameter than the lumen of the sheath, which does not seem to accord with the purpose behind the requirement of respective lumen sizes.

144.

CJ Medical also relied on a comparison between a sentence in paragraph [0020] of the Patent and its equivalent in the application for the Patent as filed. In Actavis Lord Neuberger said:

‘[88] While it would be arrogant to exclude the existence of any other circumstances, my current view is that reference to the file would only be appropriate where (i) the point at issue is truly unclear if one confines oneself to the specification and claims of the patent, and the contents of the file unambiguously resolve the point, or (ii) it would be contrary to the public interest for the contents of the file to be ignored. The first type of circumstance is, I hope, self-explanatory; the second would be exemplified by a case where the patentee had made it clear to the EPO that he was not seeking to contend that his patent, if granted, would extend its scope to the sort of variant which he now claims infringes.

145.

In my judgment Lord Neuberger’s condition (i) is not met. For the reasons I have given I do not believe that the point in issue is truly unclear taking into account the specification and claims. However, I would add that the comparison which CJ Medical makes is supportive of my finding in relation to (i).

146.

The relevant sentence in the Patent is one I have already referred to and quoted. Its equivalent in the PCT Application is:

‘In yet another embodiment, the diameter of the lumen 53 of the side arm 50 is the same or larger than the diameter of the lumen of the sheath 23, 33, 43 to facilitate the efficient evacuation of stones, stone fragments or other foreign bodies.’

147.

As appears from paragraph [0020] of the Patent, this sentence was amended during prosecution. Marked up, the amendments were as follows:

‘According to the present invention, In yet another embodiment, the diameter of the lumen 53 of the side arm 50 is the same asor larger than the diameter of the lumen of the sheath 23, 33, 43 to facilitate the efficient evacuation of stones, stone fragments or other foreign bodies.’

148.

This amendment is fully consistent with an intent to narrow the invention to one in which the two lumen sizes are the same or nearly identical.

149.

I find that the size 14 of the Seplou Sheath falls within claim 1 and 3 of the Patent. None of the other sizes fall within the claims.