UK and Dutch Court differ on validity of stents patent

On January 16th the UK Court of Appeal in Angiotech Pharm., Inc. v. Conor MedSystems Inc., [2007] EWCA Civ 5 (Jacob, L.J.) affirmed an invalidity ruling of critical claim 12 of Angiotech’s patent [2006] EWHC 260 (Pat) (Pumfrey, J.), while the very next day - in counterpart litigation – the The Hague District Court in The Netherlands upheld the same claim in Conor MedSystems Inc. v. Angiotech Pharm., Inc., No. 258022/HA ZA 06-261 (judgment January 17, 2007).

The patent is about taxol as the factor to be used in a drug eluting stent. Angiotech Pharmaceuticals Inc. is the owner together with the University of British Columbia of European patent 0706376 (or “Hunter”). Boston Scientific Corporation is the licensee in the field of the cardiovascular medicine under EP 376.

Beyond providing a comparative study of obviousness on counterpart patents where both courts were obviously aware of the progress of both actions, the British decision from one of the leading common law patent jurists provides an interesting comparative framework for the soon to be decided U.S. Supreme Court KSR decision which may occur in the February session of the Court that commences February 20, 2007.

The British decision makes special note of the counterpart Dutch proceedings and an earlier Dutch decision involving different parties. See ¶ 65- ¶ 68 (pp. 24-25). Lord Justice Jacob made the following observation:

“One can, of course, postulate a different policy under which a [patent] monopoly might make sense. There are old or obvious ideas which take a lot of work, expense and time to develop and turn into something practical and successful. Without the incentive of a monopoly, people may not do that work or spend the time and money. The Fosamax case, Teva v Gentili [2003] EWHC 5 (Patent), [2003] EWCA Civ 1545, is an example of an obvious invention which cost lots to bring to market. But patent law provided no protection for all that investment because the basic invention was obvious. The courts’ job is not, however, to uphold any claim to a monopoly for an idea which requires investment and risk to bring to market, only those for ideas which are new, non-obvious and enabled.”

The British opinion also has an extensive discussion of the law of obviousness, particularly beginning at ¶ 39-¶ 60 (pp. 18-23), including extensive comparative law discussions with a quotation from Circuit Judge Rich:

“Slight reflection suggests, we think, that there is usually an element of
‘obviousness to try’ in any research endeavour that is not undertaken with
complete blindness but rather with some semblance of a chance of success, and
that patentability determinations based on that as the test would not only be
contrary to statute but result in a marked deterioration of the whole patent
system as an incentive to invest in those efforts and attempts which go by the
name of ‘research’.”

Prof. Hal Wegner, Washington D.C