Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142

Smith & Nephew Pty Ltd v Wake Forest University Health Sciences [2009] FCAFC 142

Claim 49 is invalid as a combination patent because the aseptic package, included as an essential integer by the respondents’ construction, does not interact purposefully and functionally with the other integers to produce the desired result of negative wound pressure. As a result, the claim constitutes a mere collocation and does not support a prima facie case of infringement, so the interlocutory injunction should not have been granted.

Parties
Applicant: Smith & Nephew Pty Ltd; First Respondent: Wake Forest University Health Sciences; Second Respondent: KCI Medical Australia Pty Ltd
Jurisdiction
Australia
Judgment Date
09 October 2009
Procedural Posture
Interlocutory Appeal / Appeal From Single Judge, Expedited Application for Leave and Appeal Heard Together
Outcome
Appeal allowed
Legal Topics
Patent Validity, Combination Patent, Interlocutory Injunction, Mere Collocation, Evidence Admissibility
Intellectual Property Practice & Procedure Patent Validity Combination Patent Interlocutory Injunction Mere Collocation Evidence Admissibility

Case Brief

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Parties

Smith & Nephew Pty Ltd

Applicant

Wake Forest University Health Sciences

First Respondent

KCI Medical Australia Pty Ltd

Second Respondent

Procedural Posture

Interlocutory Appeal / Appeal From Single Judge, Expedited Application for Leave and Appeal Heard Together

Legal Issues

  1. 1 Whether claim 49 of the patent is invalid as a 'mere collocation' of integers rather than a combination
  2. 2 Whether the interlocutory injunction should have been granted given the validity of the patent claim
  3. 3 Admissibility of expert evidence given no objection at trial

Ratio Decidendi

Claim 49 is invalid as a combination patent because the aseptic package, included as an essential integer by the respondents’ construction, does not interact purposefully and functionally with the other integers to produce the desired result of negative wound pressure. As a result, the claim constitutes a mere collocation and does not support a prima facie case of infringement, so the interlocutory injunction should not have been granted.

Court Disposition

Appeal allowed

Orders

  • Leave to appeal be granted
  • The order of Ryan J made on 15 June 2009 set aside