Following a successful injunction procedure, Boston Scientific has now enforced its patent in a dispute with competitor Cook on the merits over compression clamps. Düsseldorf Regional Court found that the latter had infringed the patent, which covers a clamp to stop or prevent bleeding. However, an appeal by Cook is possible.
6 March 2023 by Konstanze Richter
The Regional Court Düsseldorf’s 4C chamber has ruled that Cook’s endoscopic hemostasis clips, marketed under the brand Instinct, infringe Boston Scientific’s EP 30 23 061 (case ID: 4c O 68/21). The US medical device manufacturer’s patent covers compression clamps used for preventing or stopping bleeding. Boston Scientific’s ‘Resolution Clip’ uses the technology, which is applied, for example, in the endoscopic treatment of gastrointestinal bleeding.
EP 061 is a divisional of parent patent EP 13 28 199. After a 13-year granting process for EP 199, Boston Scientific filed EP 061 in 2015. By the time the EPO granted it in 2017, Cook had legally sold its Instinct Clip on the European market for several years. Thus, potential damages claims could be correspondingly high.
Both parties are litigating in the UK, where the High Court recently held an oral hearing, although a verdict is still pending. Last year, Boston Scientific failed in its attempt in the Netherlands to obtain a cross-border injunction for France and Ireland.
In Germany, however, the US medical device manufacturer has had more success. The Düsseldorf courts had issued an injunction in both the first and second instance (case IDs: 4c O 62/21 and I 15 U 58/22). Now Boston Scientific also prevailed in the proceedings on the merits. Since the patent-in-suit expired in September 2022, the granted relief focuses on the obligation to render accounts and pay damages.
JUVE Patent is not aware if Cook will appeal the decision. However, it is likely, given the economic importance of the products, and especially since a German decision on validity is still pending. Furthermore, opposition proceedings for EP 061 remain pending at the EPO.
Boston Scientific and Cook are also fighting over another patent, EP 34 43 915, which protects an apparatus for deployment of a hemosthatic clip. Düsseldorf Regional Court has scheduled oral proceedings for April 2023, while an EPO opposition is running in parallel.
Boston Scientific relied on its go-to advisors at Vossius & Partner in the German proceedings. The mixed firm nurtures a long-standing relationship with the US medical device manufacturer. Its patent attorneys file patents for the company extensively at the EPO, with the litigation team regularly representing the client before the German courts.
For example, a team led by Munich litigator and partner Thure Schubert was also on the client’s side in the dispute with Nevro. In the case against Cook, Vossius is also leading EPO opposition proceedings, as well as coordinating the pan-European proceedings with Brinkhof in the Netherlands and Simmons & Simmons in UK. The team is also working with the Boston Scientific in-house team.
Previously, however, the medical device manufacturer has also retained other law firms in Germany.
Hoyng ROKH Monegier is acting for Cook for the first time in the dispute over compression clamps. The IP boutique is advising the company in all German injunction and main proceedings over both EP 061 and EP 915, as well as in the Dutch injunction proceedings.
The team, led by Düsseldorf partner Christine Kanz, is also working closely with Powell Gilbert, which handles the UK litigation for Cook. Hoyng ROKH Monegier regularly cooperates with the UK law firm in pan-European proceedings, most recently for Philip Morris against BAT.
Mathys & Squire is active in opposition proceedings for both patents on behalf of Cook. Patent attorney Sean Leach advised on technical issues in the civil proceedings.
For Boston Scientific
Vossius & Partner (Munich): Thure Schubert, Christian-Leopold Zapp (both partners); Moritz Bloser (counsel); Arnold Asmussen, Raphael Salzer (both partners and patent attorneys)
In-house (Bedford, UK): Denise Lane (senior director IP)
Hoyng ROKH Monegier (Düsseldorf): Christine Kanz (partner); associates: Valentin Wagner, Moritz Voiß
Mathys & Squire (London): Sean Leach (partner and patent attorney)
Regional Court Düsseldorf, 4c Civil Chamber
Sabine Klepsch (presiding judge)