The EWHC decision in Smith & Nephew Plc v Convatec Technologies Inc  EWHC 3955 (Pat), summarized by the IPKat here, is interesting for holding that an injunction might properly be awarded against non-infringing goods, though on the facts Birss J declined to do so. Infringement turned on claim construction, and Birss J ultimately held that Smith & Nephew’s commercial product did not infringe Convatec’s patent , but four development experiments did infringe . The data from the infringing experiments was a necessary part of the application for regulatory approval for the commercial product . Even though the regulatory experiments were infringing, and the commercial product was not, the approval based on the infringing product was wide enough to authorize sale of the commercial product .
Convatex requested a “springboard”
injunction restraining Smith & Nephew from selling its
non-infringing commercial product until the date it would have obtained
authorization if it had not
infringed the patent. After reviewing the law, Birss J held that this
type of injunction was
permitted in a proper case . He relied primarily on the decision of
Judge Fysh in Dyson v
Hoover (No. 2)  RPC 27 and the CJEU in Generics v Smith Kline & French C-0316/95
(1997). In Dyson Judge Fysh QC reviewed the law relating to post-expiry injunctions. He noted
that the issue before him was novel in that injunctions had been previously been granted against
post-expiry sale of infringing goods which were in existence, and so infringed the patent, while
he was being asked to grant an injunction against goods which would only come into existence
after expiry , but he concluded that the court did indeed have the jurisdiction to grant such
orders . In Generics the CJEU, on reference from a Dutch court, held that an injunction could be granted to restrain post-expiry sales based on data
derived from infringing products. Both Generics and Dyson might be narrowly distinguished on
the basis that in both cases the commercial product sold post-expiry was within the scope of the
claim, whereas in this case the commercial product was non-infringing , but Birss J
concluded that “the essential point [is] that the court can intervene to deprive an infringer of an
unwarranted advantage gained from their act of infringement” . However, Birss J
acknowledged that this injunction "would prevent Smith & Nephew from doing something
which does not and never would have infringed a valid patent,” and while “[t]his is not a reason
to refuse springboard relief altogether but it is a factor to take into account in deciding if the
unwarranted advantage obtained would support it” .
He also noted that springboard damages are clearly permitted on the authority of Gerber v Lectra
 RPC 383 (Pat) aff’d  RPC 443 (CA), and “If damages are in principle recoverable
then I do not see why an injunction should not be able to be granted to prevent the harm
occurring in the first place” . Birss J also noted that the fact that springboard damages are
available does not mean that an injunction should not be granted because damages are difficult to
quantify , and so would not be an adequate remedy.
Ultimately Birss J concluded on the facts that Smith & Nephew would have been able to obtain
marketing authorization by the time of his decision even if they had never infringed, as sufficient time had passed to
allow them to obtain that authorization on the basis of the non-infringing process. He therefore
refused to grant the springboard injunction .
Update: See Professor Tom Cotter's discussion of the case here, indicating that such injunctions are not available in US law, though this turns on the wording of the relevant provision of the Patent Act, rather than on general principles of equity.