Contributory Infringement Clarified

The Court of Appeal recently considered two European patents which were filed and prosecuted by attorneys in Brookes Batchellor. One patent was a divisional of the other and they related to medical devices, a field which has been a specialist one of the Firm over a number of years.

In an interesting aspect of the decision, the Court of Appeal considered and clarified the scope of the provisions of Section 60(2) of the UK patents act concerning contributory (or “indirect”) infringement. This section provides that “a person… infringes a patent… if he supplies…any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom”.

The inventions concerned a system and equipment for improving the rate of healing of wounds, particularly the kind of deep lesions suffered by immobile and bedridden patients. This kind of treatment stemmed from the discovery that application of suction to the wound stimulated healing. This resulted in a pretty disgusting mixture of dead cells and liquids, liberally dosed with bacteria and the problem faced by the inventors was how to handle safely this potentially dangerous cocktail.

A full account of the inventions is described in the High Court judgement of Mr. Justice Arnold in KCI Licensing et al v Smith & Nephew (judgement delivered on 23 June 2010). A number of claims were held valid and infringed but the Defendants appealed and KCI cross-appealed against the judge’s finding that in respect of one claim Smith & Nephew had not committed contributory infringement by selling a product where it was obvious that the ultimate user (but not the initial purchaser) would be likely to add the missing integer.

In many medical devices it is the case that the major value to the manufacturer or supplier is not the whole piece of equipment but the ability to protect follow up sales of consumables. This applied to the product covered by the patents in as much as there would be likely to be one sale to a customer of the special vacuum pump but many subsequent sales of disposable exudate containers, associated wound dressings and linking tubing.

Figure 5 of European Patent No. 0853950 was as follows:

It was important to be able to dispose of the container 20 and its associated tubing 38 without risk of escape of wound exudates. Whilst the container 20 was under vacuum there was no risk of leakage but as soon as the pump was switched off there was indeed a significant risk. The defendants supplied a cap for closure of the tube at 40 whereas the claims required a clamp which could be closed before the coupling 39, 40 was disconnected and the pump deactivated. The defendants did not recommend the use of a clamp, but there was evidence that while the customer (e.g. a hospital) may not have made any change in the equipment supplied to them, there was a reasonable likelihood that the ultimate users (i.e. the medical staff) would have considered the addition of a clamp as a safeguard against any chance escape of liquid from the container.

Reversing the Judge below, the Court of Appeal held on 18 November 2010 that it was sufficient for a finding of contributory infringement that it was probable the ultimate users of the device would decide to put the invention into effect by, in this case, adding a clamp.

This is an important clarification and practical extension of the rights of Patent Holders as it allows the intentions of the final user to be considered rather than simply the first purchaser.