In Smith & Nephew Plc v ConvaTec Technologies Inc the Court of Appeal granted a stay of a final injunction pending an application to the Supreme Court for permission to appeal.
ConvaTec owns a patent concerned with a process for the silverisation of gel-forming fibres used in wound dressings. The patent has a long and convoluted history, and has been subjected to amendments before both the European Patent Office (“EPO”) and the English court. It remains subject to invalidity proceedings at the EPO. Notwithstanding this, ConvaTec succeeded, in the Court of Appeal, in obtaining a declaration of validity and a ruling of infringement of its patent by Smith & Nephew. ConvaTec, therefore, sought a standard injunction preventing the infringement of the patent by Smith & Nephew. Smith & Nephew, on the other hand, intended to seek permission to appeal the ruling of the Court of Appeal, and maintained its course to seek revocation of the patent at the EPO.
The scenario, therefore, meant that the Court of Appeal needed to determine whether the grant of an injunction was just and, if so, whether a cross-undertaking as to damages would be required from ConvaTec. A standard cross undertaking would compensate Smith & Nephew if the Supreme Court ultimately overturned the Court of Appeal. Whether or not a cross-undertaking would apply if the EPO held the patent to be invalid was disputed: ConvaTec submitted that it should not, as the EPO cannot find the Court of Appeal to be incorrect as a matter of English law.
As it happened, this matter was not to be determined. The Court of Appeal held that it was just to stay the injunction pending the ruling on Smith & Nephew’s application to the Supreme Court for permission to appeal or, if later, the ruling of the EPO. In reaching its decision, the Court of Appeal considered:
- the relatively short period before such rulings are obtained;
- the fact that Smith & Nephew had pro-actively sought expedited proceedings at the EPO; and
- that the potential damage to Smith & Nephew should the injunction have been incorrectly granted would be severe and irremediable.
Smith & Nephew Plc v ConvaTec Technologies Inc  EWCA Civ 803