A mere collocation: Smith & Nephew Pty Ltd. v. Wake Forest University Health Sciences

A mere collocation: Smith & Nephew Pty Ltd. v. Wake Forest University Health Sciences

A mere collocation: Smith & Nephew Pty Ltd. v. Wake Forest University Health Sciences

In the recent decision of Smith & Nephew Pty Ltd. v. Wake Forest University Health Sciences [2009] FCAFC 142 (9 October 2009), the Full Federal Court has delivered what is likely to be a controversial judgement in relation to a “combination patent”.

Background

The case was an appeal by Smith & Nephew against a decision of a single judge to grant an injunction preventing them from entering the negative pressure wound therapy market. The case involved a claim directed to an apparatus for applying negative pressure to a wound beneath a fluid-impermeable seal, wherein the apparatus is present in an aseptic package.

The decision

It was agreed by the parties that with the exception of the aseptic package, all of the integers of the apparatus interacted to form a new product and result. However, because the apparatus and the aseptic bag were determined not to interact to bring about the new result (i.e. the application of negative wound pressure), the Court stated that “…they form a mere collocation of the apparatus on the one hand and the aseptic package on the other”. On this basis, claim 49 was deemed invalid because it fails to define a patentable combination.

In arriving at its decision, the Court stated that the primary judge erred in not considering the question of whether the claim was a mere collocation separately from the question of whether the claim was novel. The Court’s determination that the claim was a mere collocation was therefore reached without any apparent consideration of novelty. In the circumstances of the present case this approach appears questionable because if the apparatus itself was novel, then it follows that the apparatus and the aseptic package together cannot be a mere collocation, because the combination of the apparatus and the aseptic bag includes a novel feature. In this regard, it is well established law that where a claim comprises a number of integers, at least one of which is novel, the absence of a working interrelationship between the integers does not render the claim invalid.

Implications

This decision potentially has negative implications for patent claims which include one or more essential integers that do not interact with other integers of the claim to bring about a new product or result. We will eagerly await the approach taken by the single judge in assessing whether the claim is a “mere collocation” when the case goes to trial next year.