Thoratec Europe Ltd v AIS GmbH Aachen Innovative Solutions

For patent construction, general words in a claim are not confined to the particular embodiment unless the claim language requires that result. “Proximal” and “distal” magnet units identify their relative topological positions, not necessarily a face-to-face orientation. “Sliding bearing” and “mesh” likewise retain their ordinary general meaning.

For inventive step, separate technical features remain separate inventions where each performs its proper function independently. A claimed combination is one invention only where the features interact to produce a combined or synergistic technical effect. A prior disclosure anticipates only if it clearly and unmistakably discloses every relevant feature.

Thoratec sought revocation of two patents owned by AIS concerning catheter-based ventricular assist devices, together with declarations of non-infringement concerning its HeartMate PHP product. AIS asserted that the product would infringe specified claims if valid.

Thoratec relied on lack of novelty and obviousness over the RCP, including a prior use, published material concerning the RCP, Sieß, Johnson & Johnson and McBride. The court determined the construction of the claims, the confidentiality of the RCP prior use, novelty, obviousness, insufficiency, a proposed amendment to one patent, and infringement.

1. Construction. “Proximal” and “distal” magnet units denoted their relative topological positions in the catheter device. The claim was not limited to face-to-face magnets. “Sliding bearing” was a general expression and was not confined to the arrangement in the specific embodiment. “Mesh” was likewise not restricted to polygonal apertures (paras [121]-[141]).
2. Relationship between claim features. Applying the approach in Sabaf SpA v MFI Furniture Centres Ltd [2004] UKHL 45, [2005] RPC 10, the magnetic-clutch features and the expandable distal pump features performed their proper functions independently. They were separate inventions for inventive-step purposes. The alleged combination did not produce a synergistic effect (paras [142]-[150]).
3. Prior use and novelty. The evidential burden concerning confidentiality could shift to the party asserting it, consistently with Dunlop Holdings Ltd’s Application [1979] RPC 523. The evidence firmly rebutted any presumption of confidentiality. The RCP prior use therefore deprived claims 1 and 5 of novelty. By contrast, Dekker did not clearly and unmistakably disclose a magnetic clutch, so it did not anticipate those claims (paras [151]-[194]).
4. Obviousness. The court assessed the prior art from the perspective of the skilled person without hindsight. It was realistic to consider a skilled person interested in developing a catheter-based, externally driven VAD. A magnetic coupling with an extracorporeal motor was an obvious option in light of the cited material and common general knowledge. Claims 1, 5, 7 and 8 were obvious over Dekker, the prior use, Sieß and Johnson & Johnson; claims 1, 5, 7, 8, 21 and 22 were obvious over McBride (paras [195]-[225]).
5. Disposition. The claims were not insufficiently disclosed. The proposed amendments to 658 would not save validity, and the amendment application was unnecessary to decide. The HeartMate PHP would infringe the relevant claims if valid. The court therefore made the conclusions set out in paragraph [237].