Australian Federal Court Finds Claim is a Mere Collocation of Elements in Light of Claim Construction

Smith & Nephew Pty Ltd v. Wake Forest University Health Sciences (Oct. 9, 2009)

In this case, defendants appealed a grant of preliminary injunction.  The issue raised on appeal was whether the defendant made a sufficient showing that the patent claim at issue was invalid, thereby presenting a defense which would defeat the preliminary injunction motion.  Ultimately, the Australian Federal Court set aside the preliminary injunction, finding that the patent claim was a "mere collocation of integers [elements]" and, as such, was likely not valid, and remanded the case back to the primary judge for further proceedings.

The claim at issue recited an apparatus for applying negative pressure to wound including, among other elements, a limitation "wherein said apparatus is in an aseptic package."  The Court summarized the primary issue: "It is not in dispute that the integers of the claim, apart from the aseptic package, interact to form a combination.  It is not in dispute that the aseptic package play no part in the application of negative pressure to a wound.  The issue is whether [the claim] consists of a 'mere collocation' of the combination and the package or whether the package is simply a limitation on the scope of the claim that does not affect the ability to patent the invention under s 18(1) of the Patents Act 1990."

Australian patent law holds that "[a] mere collocation of parts, each performing its own separate function, is not patentable.  However, a claim may validly combine a number of elements which interact with each other to produce a new result or product.  Such a combination may be one constituted by integers each of which are old, or by integers some of which are new, the interaction being the essential element."  All parties agreed that the integers of the claim, other than the aseptic package, interacted with each other to produce a new product and result.  The question became how the aseptic package limitation should be treated: as a limitation of the scope of the claim or as a limitation of the apparatus itself.

The problem here for the patentee was that it argued in support of a claim construction where the aseptic package was an "essential integer" to the claim.  The Federal Court found that, in light of this argument, the aseptic package "must interact purposefully and functionally with the other integers to produce the negative wound pressure.  It may be said that [the aseptic package] has a purpose -- to ensure sterility in treating the wound -- but it lacks any desirable functional result."  Since the aseptic package needed to interact with the other integers to produce negative wound pressure, and it admittedly did not do so, the claim was likely invalid.  Interestingly, there was no discussion in the opinion of why the patentee made this argument and what the ramifications would have been had the patentee instead argued that the aseptic package was only a limitation of the scope of the claim.  Although one would assume that the patentee could have avoided this issue had it simply not argued that the aseptic package was "essential" to the claim.

The Federal Court therefore set aside the preliminary injunction and remanded back to the primary judge for further proceedings.

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