The Full Court considered that the primary judge (Ryan J) failed to consider, as a separate matter from novelty, whether claim 49 comprised a “mere collocation of separate parts” and was, therefore, invalid. This is relevant to the “manner of manufacture” requirement under the Patents Act 1990 (Cth).
Insofar as combination inventions are concerned, the claimed invention must reside in a combination of integers which in combination are not a mere collocation of separate parts but instead "interact to make up a new thing"2. In Firebelt v Brambles Australia, the High Court confirmed that:
"… a combination patent in the proper sense of that term … combines a number of elements which interact with each other to produce a new result or product. Such a combination may be one constituted by integers each of which is old, or by integers some of which are new, the interaction being the essential requirement."
In the application before Ryan J, the patentee had argued that, as a matter of construction, the aseptic package is an “essential integer of the combination the subject of the claim”. The Full Court said, “[p]ut another way, the invention claimed by the respondents … included the package as an essential integer”3. The way in which the patentee put its case at first instance was of crucial importance to the Full Court’s decision on appeal.
The Full Court found that the aseptic packaging in which the wound dressing kits were sold did not interact with the other integers in the combination to produce the new result: being the application of negative wound pressure. The Full Court said:
“It is the mere bag in which the device that ‘does the work’ is stored before use. It is discarded before any negative wound pressure is applied. No doubt it is beneficial to have sterile packaging for a therapeutic device, however, the aseptic bag itself does nothing to cause, limit or affect the functional result of negative wound pressure as desired.”
In the Full Court’s view, this was determinative of invalidity. Once the aseptic package was said by the respondents to be an essential integer of the invention claimed, “it must interact purposefully and functionally with the other integers to produce the negative wound pressure”4. Its failure to do so meant that claim 49 did not disclose a combination invention in the proper sense of that term. As such, no serious question to be tried arose and the Full Court set aside the interlocutory injunction.
Footnotes
- Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 at [21].
- Smith & Nephew v Wake Forest University Health Sciences at [19].
- Smith & Nephew v Wake Forest University Health Sciences at [33].