KCI Licensing Inc & Ors v Smith & Nephew Plc & Ors

For indirect infringement under section 60(2) of the Patents Act 1977, the material intention is that of the ultimate user at the end of the supply chain. It is sufficient that, when supplying the means, the supplier knows or ought to know that some ultimate users will later intend to put the invention into effect.

Patent claims must be construed in their contractual context. A claim requiring deactivation required the pump to be switched off, and a claim requiring a canister to be aligned in a recess was not met by a canister fitted over the housing. In an obviousness inquiry, information outside common general knowledge is relevant only where the skilled person would routinely obtain it.

KCI owned two related patents for apparatus used in negative-pressure wound therapy. Arnold J in the Patents Court held, among other matters, that Smith & Nephew's GO system infringed claim 5 of patent ‘504, that certain claims were valid, and that sales of GO canisters did not amount to indirect infringement of claims 7 and 8 of patent ‘950: [2010] EWHC 1487 (Pat).

Smith & Nephew appealed the GO infringement finding and the validity findings on reticulated foam and a gel-forming substance. KCI cross-appealed the rejection of indirect infringement by sales of GO canisters. The central issues were the proper construction of the relevant claim integers, the intention and knowledge requirements in section 60(2), and whether the asserted sub-claims were obvious.

1. The appeals were allowed in part. The GO system did not infringe claim 5 of patent ‘504. KCI's cross-appeal succeeded: sales of GO canisters indirectly infringed claim 8 of patent ‘950 under section 60(2) of the Patents Act 1977. The appeal against validity succeeded in respect of claim 7 of patent ‘950, but failed in respect of claim 5 of patent ‘504 and claim 8 of patent ‘950.

2. The GO system did not meet either disputed integer of claim 5. In the patent, “deactivated” meant that the pump motor was switched off. GO merely slowed its motor as the canister filled, sounded an alarm at a pre-set speed, and continued to maintain pressure. It had no detector that responded to a full canister by switching the pump off. Further, the claim required the canister to be aligned in a recess in the housing. GO fitted its canister over a rebate in the housing. Achieving the same connection by that different arrangement did not satisfy the claim.

3. Applying Grimme v Scott [2010] EWCA Civ 1110, the relevant intention for section 60(2) was that of the person ultimately able to put the invention into effect. The intention need not exist when that person first receives the supplied means. It was enough that some medical personnel would probably clamp the inlet tube when changing a canister, and that this was obvious to a reasonable supplier. The judge therefore erred by requiring the purchasing medical institutions to have already decided to use clamps at the time of supply.

4. The Court upheld the finding that reticulated foam was not obvious. Although a design engineer knew that reticulated foam existed, there was no proof that the clinician-led skilled team would routinely search for it or select it for wound care. The clinician would have treated its very open structure as clinically unsuitable. The appellate restraint described in Biogen v Medeva [1997] RPC 1 applied.

5. Conversely, the unchallenged expert evidence established that, given the prior teaching of gel-forming substances to prevent spillage, placing such a substance in the canister before use was an obvious option for the skilled team. Claim 7 of patent ‘950 was therefore invalid for obviousness over Karakelle.

• Court of Appeal (Civil Division): allowed the appeals in part. It reversed the finding that the GO system infringed claim 5 of patent ‘504, allowed KCI's cross-appeal on indirect infringement of claim 8 of patent ‘950, upheld validity as to reticulated foam, and held claim 7 of patent ‘950 invalid for obviousness.
• Patents Court: Arnold J held that the patents were entitled to priority, upheld the validity of the asserted claims, found infringement by the GO system and certain EZ products, and rejected the allegation of indirect infringement by GO-canister sales: [2010] EWHC 1487 (Pat).