Abbott Laboratories Ltd v Medinol Ltd

Specific disclosure in patent proceedings requires documents to be materially relevant to an issue for decision. Claim construction remains a matter for the court, although expert evidence may address technical terms and the relevant circumstances at the priority date. Evidence given in foreign proceedings is not automatically relevant merely because it concerns patents in the same family or similar terminology. Differences in the patents, stents, substantive law and procedure may reduce its value. Disclosure will also be refused where the likely evidential benefit is outweighed by the substantial cost, complexity and risk of satellite arguments.

Abbott sought specific disclosure of evidence given by Medinol’s expert and factual witness in United States proceedings and arbitrations concerning patents in the same family as three Medinol patents. The evidence was said to be relevant to claim construction, common general knowledge, commercial success and possible inconsistencies in the witnesses’ evidence. Medinol opposed the application on grounds of relevance and proportionality, relying on the volume and cost of the documents. The central issues were whether the material satisfied the requirement of relevance and whether disclosure would be proportionate.

1. Application refused. The documents sought did not satisfy the requirement of relevance and disclosure would in any event be wholly disproportionate.
2. Construction of the claims was ultimately a matter for the court and a question of law. The court could admit evidence concerning technical terms and must consider the relevant circumstances existing at the priority date. The terms relied upon, including “meander pattern” and “loops”, were not said to be terms of art.
3. The foreign proceedings concerned different stents and were decided under different substantive and procedural laws. Their evidence therefore could not be treated as automatically relevant to construction of the Medinol patents.
4. The principal purpose of the request appeared to be to identify inconsistencies between the witnesses’ earlier evidence and their evidence in the present action. No convincing inconsistency had been shown. The court was not satisfied that Dr Snyder’s evidence in a United States deposition differed from his report, and was doubtful that the relevant report evidence would be admissible in any event.
5. Dr Richter’s evidence in the present action concerned commercial success. The court did not accept that his evidence in other proceedings would assist in deciding whether the NIR stent fell within the claims. His evidence at the Markman hearing was not shown to be contentious, and common general knowledge was not an issue on which he would give evidence in the present action.
6. The proposed exercise would involve a very substantial volume of material, considerable expense and additional complexity. It was likely to generate satellite arguments that would not assist the court. The application was accordingly refused.

Not stated in the judgment.