Smith & Nephew Pty Ltd v Wake Forest University Health Sciences

Smith & Nephew Pty Ltd (Applicant) appealed against an order made by Ryan J in the Federal Court of Australia, which granted an interlocutory injunction to Wake Forest University Health Sciences (Respondent) against the Applicant's launch of an alleged infringing product. The dispute centred on the validity of a patent held by the Respondent and whether the Applicant should be restrained from launching the alleged infringing product. The primary legal issue was whether the primary judge erred in granting the interlocutory injunction without considering the construction of the patent claim put forward by the Respondent, and whether the Respondent demonstrated a serious question to be tried. The Court held that the primary judge should have considered the construction of claim 49 put forward by the Respondent, and that the Respondent failed to demonstrate a serious question to be tried.

The Full Court found that the primary judge erred in not considering, as a separate matter, whether claim 49 comprised a "mere collocation of separate parts" and was therefore invalid. The Court emphasised that a mere collocation of parts, each performing its own separate function, is not patentable, but a claim may validly combine a number of elements which interact with each other to produce a new result or product. The Court concluded that the primary judge should have found, based on the evidence and the construction of claim 49 put forward by the Respondent, that claim 49 was invalid. Consequently, the interlocutory injunction should not have been granted. It was appropriate to grant leave to appeal and allow the appeal. The Court ordered that the application for interlocutory injunction be dismissed and that the Respondent pay the Applicant's costs of the application for leave to appeal and of the appeal. The parties were directed to provide written submissions as to the costs of the application before the primary judge within 7 days.