Cantel Medical (UK) Ltd v ARC Medical Design Ltd

Patent novelty is defeated by implied disclosure only where the skilled person would inevitably derive the relevant feature. A possibility or likely consequence is insufficient. Patent figures must be read with their written descriptions and are not normally precise technical drawings.

Secondary evidence may assist on inventive step even without a commercial-success plea. However, failure to solve a problem earlier matters only where the industry recognised the problem and regarded a solution as commercially worthwhile.

For Community designs, technically dictated features are excluded only where technical function was the sole relevant design consideration. Overall impression is assessed through the sector, informed user, designer freedom and design comparison, with appropriate weight given to significant design elements.

Cantel Medical (UK) Ltd v ARC Medical Design Ltd concerned proceedings brought to clear the way for marketing Cantel's AmplifEYE colonoscope cuff. Cantel sought revocation and declarations of non-infringement concerning two patents, two registered Community designs and UK unregistered design rights. ARC counterclaimed for infringement.

The principal issues were construction, novelty, inventive step, added matter, clarity and support in relation to amended patent claims; validity and infringement of the registered designs; and subsistence, ownership, copying, substantial reproduction and knowledge for the unregistered design rights.

1. Patents. The unconditional amendments to the European and UK patents were allowed. In applying the inevitable-disclosure test described in Smithkline Beecham Plc’s (Paroxetine Methanesulfonate) Patent [2005] UKHL 59 and Edwards Lifesciences LLC v Boston Scientific Scimed, Inc [2017] EWHC 405 (Pat), the court held that Hitoshi disclosed stretch flattening during intubation, not inevitably the eversion of individual folds during withdrawal. The difference between a deflated colon during intubation and an inflated colon during withdrawal was material. Similar-looking patent figures did not establish identical disclosure because figures were diagrammatic and had to be read with their descriptions.
2. The expression “adapted to” meant “suitable for” in the claims and involved no subjective inquiry into design intention. Eversion required movement of an individual fold so that its proximal surface entered the field of vision; it was distinct from stretch flattening.
3. Applying the secondary-evidence approach in Schlumberger Holdings Ltd v Electromagnetic Geoservices AS [2010] EWCA Civ 819, the court held that the claimed invention was not obvious over Hitoshi, Hiroki or Moriyama. The failure of the relevant manufacturers to develop the invention was persuasive evidence. Such evidence was relevant because improved visualisation had been recognised as commercially worthwhile before the priority date.
4. Applying the added-matter test in AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40, amended claim 1 disclosed no added subject matter. The conditional UK claim did: tapered bristles and eight elements in a single distal ring constituted an impermissible intermediate generalisation.
5. Registered designs. Under the Council Regulation No. 6/2002, aesthetic considerations meant that the features were not solely dictated by technical function. The court applied the four-stage overall-impression assessment from H&M Hennes & Mauritz BV & Co. KG v OHIM EU:T:2015:617. The informed user would attach particular weight to the position, length and shape of the projecting elements. The Endocuff RCD and Vision RCD were valid. AmplifEYE did not infringe the Endocuff RCD, but infringed the Vision RCD. AmplifEYEs 2 and 3 did not infringe the Vision RCD.
6. Unregistered design rights. Under the Copyright, Designs and Patents Act 1988, the must-fit exception required precision in the interrelationship between the relevant articles and did not apply to a cuff engaging the wall of an inflated colon. ARC owned the rights, and Cantel had copied both designs. AmplifEYE and the variants were substantially to those designs. However, the requisite knowledge or reason to believe was not proved before judgment. Cantel had undertaken to take a licence for the Endocuff design, so no injunction was granted for that right; an injunction was available for the Vision design. No damages or account of profits was ordered.