Smith & Nephew seek to go to the Supreme Court and EPO proceedings continue - the war is not over

This Kat does not routinely comment on procedural judgments, but the IPKat has reported so extensively on the ongoing dispute between Smith & Nephew and Convatec, and this case is so fascinating, that on this occasion this Kat feels moved to post on the decision just out (not yet on BAILII but you can read it here).  He criticised the Court of Appeal judgment (here and here), also reported by Jeremy here, and preferred the analysis of the first instance judgment of Mr Justice Birss here.  These judgments related to infringement of Convatec's patent by Smith & Nephew; the validity of the patent had been considered, and the patent upheld in amended form, in earlier proceedings (see here for first instance and here for appeal).

This case concerning silverised wound dressings is not to be confused with a related case between the same parties, noted by the IPKat here. This latter case relates to a similar technology, but without the silver.  Readers interested in that case may wish to know that the decision was upheld on appeal (see here), and that there was a further decision, principally about costs (see here).

Returning to the silverised wound dressings case, infringement turned on the question of what is meant by "1" in the context of a claimed range of 1 to 25%. At first instance, Birss J construed it as meaning a lower limit of 0.95%, meaning that Smith & Nephew's modified process did not infringe, although some experiments conducted to obtain regulatory approval did.  But on appeal the Court of Appeal held that the lower end of the range extended to 0.5%, so that the modified process did infringe.  So what happens now?  That is what today's decision addresses.

Appeal to the Supreme Court
The Court of Appeal has refused leave for Smith & Nephew to appeal to the Supreme Court, because it considered that there is no significant point of general public importance at stake, since it has done no more than apply the established principles of claim construction from Kirin Amgen (Kirin Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46, [2005] RPC 9) to the case before it.  However, Smith & Nephew have stated that they will seek leave to appeal from the Supreme Court, and the Court of Appeal has recognised that the Supreme Court may take a different view.

Proceedings at the EPO
Merpel & nephew
There are ongoing opposition proceedings at the EPO relating to the same patent EP 1,343,510, which have taken a rather complex course.  The Patent was granted on 19 May 2010. On 18 February 2011 Smith & Nephew filed a notice of opposition. The opposition proceeded to an oral hearing and, in its written decision issued on 21 December 2012, the Opposition Division upheld the Patent with claims in an amended form corresponding to the amended claim held valid by Birss J in the Patents Court at [2012] EWHC 1602. Both Smith & Nephew and ConvaTec appealed against this decision. Oral proceedings took place before the Technical Board of Appeal (the “TBA”) in November 2013 and the written decision was issued on 29 January 2014. The TBA held the Patent invalid for lack of inventive step. However, it then remitted the case to the Opposition Division for consideration of the admissibility and allowability of various auxiliary requests. A further oral hearing took place before the Opposition Division in October 2014 and it issued its decision on 16 December 2014. It declined to admit further evidence upon which ConvaTec sought to rely and revoked the Patent. ConvaTec have now appealed against that decision.

Both sides claim that they will eventually prevail in the opposition.  They have also offered different views of the likely timescale for the proceedings to be finally concluded.

Stay of injunction and delivery up
Convatec has sought an injunction to restrain further infringement by Smith & Nephew and an order for delivery up of infringing product. Whilst accepting that Convatec is in principle entitled to this relief, concerning the timing, because of the possibility of appeal to the Supreme Court, and the possibility that the EPO Board of Appeal might uphold the revocation of the patent, the Court of Appeal has decided:
We have therefore come to the conclusion that the injunction should be stayed pending the decision of the Supreme Court in relation to the application for permission to appeal or, if later, the decision of the TBA. For like reasons we also grant a stay of the order for delivery up or destruction. We grant these stays on the basis that Smith & Nephew undertake to continue to press for expedition of the TBA hearing and to prosecute their application for permission to appeal to the Supreme Court with all due diligence. We would make it clear that, subject to any further stay which the Supreme Court may grant, we do not envisage this stay extending beyond April 2016. We therefore give the parties liberty to apply to a single judge of the Patents Court of the High Court should that appear likely.
There are fairly complex submissions on costs, because on the one hand Convatec has ultimately prevailed, and so is in principle entitled to its costs, but on the other hand Smith & Nephew argue that Convatec withdrew at a late stage a large part of some aspects of their case in respect of which Smith & Nephew had incurred substantial costs, which were wasted because of the withdrawal.  Holding that Convatec's behaviour was not unreasonable, but recognising that some wasted costs were incurred, the Court of Appeal ordered Smith & Nephew to pay 60% of Convatec's first instance costs and 86% of their appeal costs.

This Kat is no more able than the Court of Appeal to predict the outcome of the EPO proceedings, but it does seem that maintenance of the revocation of the patent is at least a possibility, in which case these protracted UK proceedings will have been entirely vitiated.  This makes him sad.  On the other hand, he would dearly love the infringement case to go the Supreme Court so that we can finally find out what "1" means.
Smith & Nephew seek to go to the Supreme Court and EPO proceedings continue - the war is not over Smith & Nephew seek to go to the Supreme Court and EPO proceedings continue - the war is not over Reviewed by Darren Smyth on Thursday, July 30, 2015 Rating: 5


  1. Am I being particularly dense here? If the claims with which Convatec obtained the decision of infringement have been held invalid by the BoA, the patent can only be maintained in a more limited form (unless the hypothetical recourse to the Enlarged Board is successful) so Convatec will need at some point in the future to persuade the courts that such more limited claims still infringe. How could there be a question of enforcing an injunction for a claim which has been washed away?

  2. If I were the opponent, I would be mentioning to the board that there is no test described in the patent as to how the term "photostable" is to be tested. What temperature? What time? Exposed to light or not?

  3. EP 1,343,510 Appeal dismissed at EPO.


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