MORE ON CONOR

More on Conor

The IPKat's friend Brian Whitehead (Addleshaw Goddard) adds to the debate on the Conor Medsystems case. He writes:

I refer to your blog on Conor Medsystems on 6 March (also commented on here) and the comments from Luke Dylan Ueda-Sarson about Pumfrey J's judgment (which can be read here in full on BAILII).

Luke wonders whether Pumfrey used the wrong test for obviousness. I think that he may have misunderstood what Pumfrey was saying. As I understand it, Pumfrey said that when considering the question of obviousness, one must first ascertain the scope of the invention claimed. Pumfrey, earlier in the judgment, looks at the specification of the patent in some detail. In para 12, he says that the patent is "lengthy", but "very little of it is about restenosis and stents". At the end of para 24, he concludes that there is no example given in the patent of the use of taxol-coated stents for the inhibition of restenosis at angioplasty sites. This leads him to conclude, at para 62, that the disclosure of the specification is merely that taxol may be incorporated into a stent, and not that such a stent would actually work. The patent therefore does not claim, as such, a stent containing taxol for use in controlling restenosis. At best, it claims the idea of trying taxol in a stent. Therefore, if it would have been obvious to the skilled man to try taxol, the patent is invalid for lack of inventive step. The likely prospect of success is irrelevant, as the patent does not claim that such a device would in fact be successful.

Accordingly, I do not think that Pumfrey did use the wrong test. I also do not think that the judgment adds anything to the ongoing "obvious to try" saga in Schering-Plough and Saint Gobain etc, as the prospects of success are not, on the particular facts of the case, relevant.

Of course, it may be me who has misunderstood the judgment, but that is my two pence worth!

The IPKat is feeling decidedly puzzled at this point: each argument he has read seems perfectly plausible to him and they can't both be right. If any of the judges who read this blog would like to make a ruling, the Kat would be most grateful. Merpel says, on balance, Brian Whitehead must be right. If we assume that Pumfrey J (i) knew the existing law and (ii) would not have sought to change it or apply it in an innovative manner without first flagging his intention to do so, we should examine the judgment on the basis that - if there is any discernible shift in the law's application - least departs from normal accepted practice.

Abstract of recent article on patent claim interpretation by Brian Whitehead and Richard Kempner here.