On Friday the Full Federal Court overturned the decision by Ryan J in Wake Forest University Health Sciences v Smith and Nephew Pty Ltd to grant an injunction restraining Smith & Nephew from commercialising its negative pressure wound therapy product.
The joint judgment of Finn, Bennett and Middleton JJ is interesting for two reasons.
First, the claim said to be infringed was found to be invalid on the grounds that it was a ‘mere collocation’ – that is, the range of ‘essential’ integers did not all interact with each other to produce a new result or product.
The claim was for an apparatus for applying negative pressure to a wound comprising various features, including that the apparatus be in an asceptic package.
The patentee contended, for manner of manufacture and novelty reasons, that the asceptic packaging was an essential integer of the claim. As a combination claim, however, all essential integers are required to interact to produce a new (patentable) product. The court was unable to find that the asceptic packaging, whilst beneficial for a therapetuic device, was essential to the application of negative pressure to a wound.
The second point of interest arises from comments by the court rejecting Smith & Nephew’s assertions that Justice Ryan effectively imposed a legal obligation on Smith & Nephew to ‘clear the way’ prior to launching its product. The court noted that where a party seeks to launch an alleged infringing product in circumstances where the validity of the patent is in issue there is no obligation to ‘clear the way’ by bringing revocation proceedings.
Unfortunately, the court failed to provide clearer guidance on the weight to be given to ‘eyes wide open’ considerations – it remains, unhelpfully, simply another factor relevant to the grant of an injunction.