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Thoratec Europe Ltd v AIS GMBH Aachen Innovative Solutions (2016)

Case Summary  |  Judgment  |  26 October 2016


Daniel Alexander QC appeared for the Claimant, Thoratec, and James Mellor QC for the Defendant, AIS, in this action concerning AIS’s patents for a catheter device involving a magnetic ‘clutch’. Thoratec initially sought to invalidate both patents in their entirety and later sought a declaration of non-infringement by reference to a Product Description.

Thoratec claimed that the patent was invalid for lack of novelty and/or obviousness on the basis of five pieces of documentary prior art and a prior use. The prior use related to use of a device by a research team for the purpose of performing an animal study, which was subsequently reported in a research paper (“Dekker”). AIS contended that the Decker paper had not disclosed a catheter with a magnetic clutch, and that the study itself had not made the invention available to the public since those performing it were subject to an implied duty of confidentiality.

The judge held that the Dekker paper did not disclose use of a magnetic clutch and so did not render the patent invalid for lack of novelty. However, the evidence demonstrated that there had been no implied obligation of confidentiality on those performing the research study: they were therefore free to disclose information relating to the invention – in particular use of the magnetic clutch – such that the invention had been made available to the public.

Certain main claims of the Patent were therefore invalid for lack of novelty. The judge went on to find that, if wrong on the confidentiality point, the main claims and certain of the subsidiary claims were obvious over the Dekker paper, the prior use, and the other pleaded prior art.

Certain later claims were found invalid on the basis that they claimed two different alleged inventions and there was no synergy between them, the consequence being that Thoratec was able to assert these later claims were obvious over combinations of prior art. Certain subsidiary claims, which the proposed Thoratec device were not alleged to infringe, remained valid.

The issues of infringement turned on questions of construction which the Judge decided in favour of AIS, with the result that, had relevant claims of the patent been valid, Thoratec would have infringed them.