Canady v Erbe Elektromedizin GmbH & Ors

Patent claims must be construed purposively and in the context of the specification, drawings, intended use and skilled addressee. Context determines the scope of an ordinary word without giving it a special technical meaning. A claimed handle must perform a function beyond merely providing a connection where the claim requires it to be adapted for manoeuvring. That capability is assessed by reference to the device as intended to be used, including the relevant endoscope. A connector which is used only, or occasionally, for withdrawal does not satisfy a requirement to manoeuvre the probe into position for treatment. A broad construction cannot disregard deliberate claim limitations.

The claimant, proprietor of European Patent (UK) No. 0595967 for a surgical coagulation device, sued four medical-equipment manufacturers and distributors for infringement. The alleged infringements were flexible argon plasma coagulation probes intended for use through surgical endoscopes.

The court ordered a separate trial of infringement. The defendants accepted that the probes possessed the pre-characterising features of claim 1 but disputed the requirement for a handle attached near the proximal end and adapted for manoeuvring the tube within the endoscope while outside it. The central issue was whether the probes’ connector pieces were such handles.

1. Claim dismissed. The Erbe and Olympus probes did not infringe claim 1. The relevant defendants were entitled to declarations of non-infringement in relation to the identified probes, including the Olympus bronchoscopic probes.
2. Patent claims are construed purposively, using the claims in the context of the description and drawings and through the eyes of the skilled addressee. The court adopted the principles drawn from Kirin-Angen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46, Rockwater Ltd v Technip France SA [2004] EWCA Civ 381 and Mayne v Pharmacia [2005] EWCA Civ 137. The court also applied the caution against meticulous verbal analysis stated in Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183.
3. The skilled addressee was a manufacturer of probes consulting experienced endoscopists. “Handle” had no special meaning in endoscopy or APC instruments. Its meaning therefore depended on the specification and the claimed function. The claimed handle had to do more than combine the gas and RF connections. It had to perform an additional function in fact, namely positioning or manoeuvring the tube for the APC procedure.
4. “Manoeuvring” meant positioning the probe so that the coagulation procedure could be performed. The assessment was not made in isolation from the endoscope. Since the probes were manufactured in standard lengths for use with a range of endoscopes, their relevant qualities, including whether a connector was a handle, had to be assessed in the intended combination. The isolated possibility of using a connector in an unusual probe-and-endoscope mismatch was insufficient.
5. In normal use the operator positioned the probe by gripping the tube near the instrument port and pushing or pulling it. The connector was never used for insertion and was not invariably used for withdrawal. Even where it could be gripped, it was not designed or used as a handle for the claimed positioning function. Withdrawal alone was not the manoeuvring contemplated by the specification.
6. The court rejected the patentee’s proposed construction, which would have permitted infringement whenever a connector could be used to move the probe in some combination of probe and endoscope. The deliberate handle and manoeuvring limitations retained meaning and were not to be treated as optional merely because otherwise the claim might be circumvented.