Patents

Case Note Boston Scientific Limited and Another v Julio C Palmaz and Others

John Lambert

20 March 2000
Last updated 15 Nov 2005

This article formerly appeared on the Old Colony House website

The Court of Appeal dismissed an appeal by Dr. Julio Palmaz and his firm, Expandable Grafts Partnership, from Pumfrey J's judgment on the 26 June 1998 that his European patents, known respectively as "Palmaz I" and "Palmaz II", were invalid and not infringed. Aldous LJ delivered the lead judgment much of which focused on the construction of the patent claims and the trial judge's findings of fact. The judgment, however, contains two useful points of law:

	If in separate proceedings in the EPO a patentee is allowed to amend his patent even though a trial judge had refused such amendment in proceedings before the English courts, the Court of Appeal has to accept the EPO amendment with effect from the date of the grant.
	The Court of Appeal endorsed Oliver LJ's structured approach in Windsurfing International Inc. v Tabor Marine (Great Britain) Ltd. [1985] RPC 59 to determining whether an invention as claimed was obvious having regard to the matter that formed part of the state of the art.

Background

In addition to seeking declarations of non-infringement and revocation of two of the defendants' patents (Palmaz 1 and 2) in England, the claimants, Boston Scientific Limited and Boston Scientific International BV, had brought opposition proceedings in the EPO. After finding that both patents were invalid for anticipation and obviousness, Pumfrey J ordered their revocation with a stay pending appeal. He also refused to allow the specification and claims to be amended.

Respective Jurisdictions of National Courts and the EPO

The defendants had already applied to amend their patents in Munich, which the Opposition Division had allowed, but that decision was appealed. After judgment in the English proceedings, but before the appeal could be heard, the Technical Board of Appeal dismissed the claimants' appeal from the Opposition Division and allowed the amendments.

The claimants argued before the Court of Appeal that the Munich amendments should be ignored and that the issues of amendment, validity and infringement had to be determined as of the date of Pumfrey J’s judgment. The Court rejected that submission. S. 77 (4) of the Patents Act 1977 required amendments allowed by the EPO to be treated as if they had been made under that Act. By virtue of s. 27 (3) and 75 (3) they were deemed to take effect from the grant. It followed that the only form that could be considered was the amended form.

Obviousness

Although the Court of Appeal regarded the exercise as artificial in view of its conclusion that the inventions had been disclosed by the patentee himself, it considered the question of obviousness on the assumption that there had been no enabling disclosure. The inventions were stents or supports designed to treat blockage ("stenosis") and prevent re-blockage ("restenosis") of the arteries of human beings. The patentees submitted that there were a number of alternative ways of dealing with stenosis and restenosis at the priority date including laser therapy, hot tip probes and cutting devices and that the skilled addressee would not realize that the stents were worth pursuing or look for ways of improving deficiencies in known stents. 

Endorsement of Windsurfing

The Court of Appeal rejected that approach and adopted Oliver LJ's 4-step approach in Windsurfing at page 73:

(1) identifying the inventive concept embodied in the patent in suit;
(2) imputing to the skilled addressee what was common general knowledge of the art in question;
(3) identifying what, if any, differences between the matter cited as being "known or used" and the alleged invention; and
(4) asking whether those differences, viewed without any knowledge of the alleged invention, would have been obvious to the skilled man or whether they require any degree of invention.
Aldous LJ's judgment is an example of the application of that approach. The inventive concept was essentially a slotted tube stent. The idea of stents woven from wire were known. So too were machines capable of cutting slots in tubes to make slotted tube stents. In view of the obvious drawbacks of woven wire stents, his lordship concluded that a skilled man would have realized a need to develop procedures and devices to prevent restenosis of which stents made from slotted tubes would be one.

 

Important