Posted: March 9th, 2018
Cantel Medical (UK) Ltd and Cantel (UK) Limited v Arc Medical Design Limited  EWHC 345 (Pat), UK Patents Court, Hacon J
In order to clear the path to market for its AmplifEYE endoscopic device, Cantel sought revocation and declarations of non-infringement of Arc’s UK national and European patents relating to Arc’s Endocuff and Endocuff Vision products. Cantel also challenged Arc’s registered community designs and UK unregistered design rights in respect of each of the Endocuff and Endocuff Vision designs. Cantel also sought to clear the way for two alternative versions of its AmplifEYE device, called AmplifEYEs 2 and 3.
The Patents Court held Arc’s Endocuff and Endocuff Vision patents (as amended) to be valid and infringed by Cantel’s AmplifEYE and that they would be infringed by AmplifEYEs 2 and 3. Interestingly, even though there was no formal pleading of commercial success, Hacon J ruled that the courts will entertain arguments based on the questions set out by Laddie J in Haberman v Jackel International Ltd  FSR 683, at 699 to 701 and further extended by Jacob LJ in Schlumberger Holdings Ltd v Electromagnetic Geoservices AS  EWCA Civ 819;  RPC 33 to the extent that the questions did not focus solely on commercial success but were still relevant to the assessment of obviousness.
In turn, Hacon J considered questions (a) to (g), (j) and (k) to be relevant to the determination of inventive step:
“(a) What was the problem the patented development addressed?
(b) How long had that problem existed?
(c) How significant was the problem seen to be in the trade?
(d) How widely known was the problem and how many were likely to be seeking a solution?
(e) What prior art would have been likely to be known to all or most of those who would have been expected to be involved in finding a solution?
(f) What other solutions were put forward in the period leading up to the publication of the patentee’s development?
(g) To what extent were there factors which would have held back the exploitation of the solution even if it was technically obvious?
(j) What was the reaction of experts at the time of the invention, both before and after?
(k) Has another party thought the development sufficiently important to apply itself to patent the development?”
In respect of the design rights issues, Hacon J applied existing jurisprudence and held that unregistered design rights subsisted in the designs of Endocuff and Endocuff Vision and that they would be infringed by acts done in relation to the AmplifEYE, AmplifEYE 2 or AmplifEYE 3 from the date of the judgement.
The court further ruled that both the Endocuff registered Community design (RCD) and Endocuff Vision RCD were valid but only the Endocuff Vision RCD was infringed in respect of acts done in relation to the AmplifEYE (and would occur by acts done in relation to AmplifEYEs 2 or 3).
Of note, in determining the approach to compare the overall impression of designs, Hacon J adapted the four-stages prescribed by the General Court in H&M Hennes & Mauritz BV & Co. KG v OHIM (Case T-525/13) EU:T:2015:617;  E.C.D.R. 20 to also include: (1) features of the designs which are solely dictated by technical function are to be ignored in the comparison and (2) the informed user may discriminate between elements of the designs in question and attach different degrees of importance to similarities or differences when assessing the overall impression of designs.
A copy of the judgment (in English) can be found here.
Headnote: Melissa Brown, Marks & Clerk Solicitors LLP