UK – KCI v. S&N

Posted: June 23rd, 2010

KCI Licensing Inc, KCI Medical Resources and KCI Medical Limited v. Smith & Nephew Plc, Smith & Nephew Inc, Smith & Nephew Medical Limited and Smith & Nephew Healthcare Limited, Patents Court, Chancery Division, High Court of Justice, London, UK, 23 June 2010, [2010] EWHC 1487 (Pat)

The Patents Court has upheld European Patents (UK) Nos. 0 777 504 B1 (“‘504”) and 0 853 950 B1 (“‘950”) and found both to have been infringed by S&N. 

KCI’s Patents concern apparatus for use in negative pressure wound therapy (‘950 is a divisional of ‘540).  This therapy, involving the use of vacuums, has been found to reduce bacterial infection and to promote tissue growth, and thus to help heal wounds which were difficult to treat by previous methods.

S&N sought to invalidate the Patents on the basis that they were not entitled to priority (it was accepted that if the claim to priority failed the Patents were invalid as products made according to the Patents had been sold during the priority year).  The argument was twofold: (i) the applicant (the parent company of each of the claimants) lacked the right to claim priority and/or (ii) the applicant’s claim to priority had been adversely affected by the status as co-applicant of another of its subsidiaries (which did not have the right to claim priority). 


On the facts Mr Justice Arnold held that in relation to the first argument, the applicant had the right to claim priority by virtue of (a) a confidentiality agreement with the inventor and (b) an assignment of rights (even though KCI could not produce such a document or any contemporaneous record thereof).  In relation to the second argument, Mr Justice Arnold held that: (a) the other subsidiary was not an applicant and (b) even if it had been, this would not have adversely affected the applicant’s right to claim priority.

The case is a salutary reminder of the rules on priority (that one can only claim priority from an earlier application which you yourself, or a predecessor in title, filed) and the hazards of switching applicants among group companies between the priority filing and subsequent application.

S&N also argued that the Patents were obvious.  The prior art included earlier apparatus for the application of negative pressure wound therapy, one of which was unusually only pleaded as prior art during the course of trial and in respect of which there was no expert evidence.  Mr Justice Arnold accepted that the law recognised situations in which a skilled person may be motivated to go beyond the common general knowledge and acquire further information via routine testing or a review of the relevant literature.  However, he held that the present case was not such a situation.  After a detailed examination of the knowledge and motivation of the skilled person Mr Justice Arnold rejected S&N’s obviousness attacks.

The parties also disputed claim construction in the context (only) of validity.  Mr Justice Arnold stated that the touchstone of construction was the technical purpose of the feature in question.  On the facts, he held that the disputed claim should not be limited to the scope of a specific embodiment in the specification, and was wide enough to cover S&N’s product.

The parties disputed whether S&N infringed the Patents by supplying an essential element of the invention where there was intention to put the invention into effect (S.60(2) Patents Act 1977).  The apparatus supplied was suitable for putting the invention into effect.  The argument revolved around whether those supplied had the necessary intention to put the invention into effect by using it in conjunction with particular wound dressings.  Mr Justice Arnold held that some sales would infringe on this basis, while others may not (quantum of damages being left to a later inquiry or account).  However, where purchasers took subsequent actions on their own initiative (modifications that brought the apparatus within the scope of the claims) it was held that they lacked the requisite intention at the time of purchase, and hence such sales by S&N did not infringe. 

Head note: Scott Parker

Read the judgment (in English) here.

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