Wake Forest University Health Sciences & Ors v (Smith & Nephew Plc & Anor

On an application for an interim patent injunction, the court must assess whether there is a serious issue to be tried and then consider the adequacy of damages and the balance of convenience. Where the likely interim period is short, preserving the status quo may be the prudent course, particularly where entry into the market could alter competitive conditions and be difficult to reverse. An expedited trial may support that approach. A standard cross-undertaking in damages should not be varied to provide for disgorgement of profits where the justice of transferring those profits is uncertain. The undertaking may, however, be framed to permit affected customers to claim its benefit retrospectively.

The claimants, proprietors of a European patent concerning negative-pressure wound-treatment apparatus, sought an interim injunction to restrain the defendants from launching competing foam dressing kits. A trial concerning the patent was already listed for July 2009, while the defendants proposed an earlier trial based on a separate prior-art citation and allegations of anticipation, obviousness and limited insufficiency.

The court considered whether there was a serious issue to be tried, whether damages would be adequate, how the balance of convenience should be assessed, and the proper scope of the claimants’ cross-undertaking in damages.

1. Interim injunction granted. The court found a serious issue to be tried on anticipation and obviousness. Although the prior-art citation appeared to have been publicly available, it was unclear without expert evidence whether it disclosed material suitable for preventing tissue overgrowth or made the claimed invention obvious.
2. Damages were not an adequate remedy for either side because the likely losses would be difficult to quantify and uncertain. The balance of convenience therefore had to be considered.
3. The proposed trial could be expedited because the case was relatively straightforward, provided that the defendants were confined to one prior-art citation and the specified invalidity allegations. The resulting short interim period favoured an injunction. Following the approach associated with the Cyanamid case, preservation of the status quo was a counsel of prudence. The defendants had not yet made significant sales, and market entry could alter the market in a way that would be difficult to reverse. Deferring entry for several months was less difficult to unwind than permitting entry and later granting an injunction.
4. The injunction was conditional on the usual cross-undertaking in damages. The judge expressed no concluded view on whether its conventional wording already permitted a claim for disgorgement of profits, noting that the Court of Appeal’s decision in the Apotex case appeared to point against that proposition. He declined to alter the standard form because it was uncertain whether transferring profits to the enjoined defendant would be just.
5. The undertaking was instead required to permit customers who had paid for products or services covered by the injunction to claim retrospectively for loss suffered from the grant of the injunction until its discharge.