Fishy Business — Bass Baked by ‘Stunning’ Appeal

Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2011] FCAFC 83 (30 June 2011)
Appeal from: Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2010] FCA 723
See also: Innovation Patents Flop Like Stunned Mullet

Infringement – claim construction – functional claim – whether ‘includes a pivotally moveable floor’ encompasses a mechanism in which this element is insufficient to perform a claimed function – meaning of ‘to allow’

Validity – fair basis – whether a single description of an apparatus comprising several integers can provide basis for claims to multiple inventions comprising different subsets of integers – whether claims including only a subset of integers required for a working embodiment ‘define the invention’

A full bench of the Federal Court of Australia, comprising (in the sense of ‘consists of’ – more on this definition later) Justice Dowsett, Justice Bennett and Justice Greenwood, has unanimously reversed the first-instance decision of Justice Spender (retired).

The Full Court has found:

1. claims 1 and 5 of Australian Innovation Patent No 2006100980, in the name of Seafood Innovations Pty Ltd (‘SI’) (the ‘first innovation patent’) to be infringed by Richard Bass Pty Ltd (‘Bass’); and
2. all claims of Australian Innovation Patent No 2008100126 to be valid (and also infringed by Bass).

As we reported last July, the innovation patents (which have the same descriptions, but different claims) relate to to a fish stunning apparatus including a fish stunning device, a fish guide and/or a fish delivery table.  Justice Spender found that:

1. claims 1 and 5 of the first innovation patent were not infringed by Bass, because the lowering of a chin plate or floor of the accused apparatus does not, in itself, allow or permit a fish to pass from the front to the exit of the device, as defined in the claims, but rather that, because additional components are involved, the mechanism in the Bass devices for achieving a unidirectional flow of fish is a substantially new or different mechanism to that of the first innovation patent (at [87]); and
2. the claims of the second innovation patent are invalid, and do not ‘define the invention’, because they omit elements that are necessary to make the invention work, i.e. how a striker operates to stop, hold, stun and release a fish, which His Honour stated ‘is the critical point which the [second innovation patent] must address, but is silent on this point’ (at [116]).

We commented in our original report that the finding on infringement appeared to be based on a particularly narrow construction of the claims in question, and that the finding of invalidity seemed more akin to inutility, or lack of fair basis, and that it would be interesting to see what would happen on appeal.  As indeed it is!

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Tags: Appeal, Australia, Infringement, Innovation patent, Validity

Update on the Australian Senate Gene Patent Inquiry

As we have previously reported, the Australian Senate Legal and Constitutional Committee, which is currently conducting the inquiry on the Patent Amendment (Human Genes and Biological Materials) Bill 2010, was due to report by 16 June 2011.

As a reminder, the Bill (as originally introduced) seeks to outlaw the patenting of human genes, and other biological materials that are ‘substantially identical to such materials as they exist in nature’.

Anybody who has been waiting with bated breath for the results of the inquiry (and how the Committee manages to address the concerns expressed in over 100 submissions) will just have to be patient and wait a little longer.  On 15 June 2011, the Senate granted the Committee an extension of time for reporting, until 25 August 2011.

Nonetheless, this provides us with an opportunity to review what has been happening with the inquiry since we last reported (see ‘Late’ Submissions to Senate Inquiry on ‘Gene Patent’ Ban, and our more recent ‘opinion’ piece Why IP Professionals Must Take ‘Gene Patent’ Opponents Seriously).

In summary:

1. four further late submissions have been received;
2. public hearings were held on 28-29 April 2011; and
3. Senator Heffernan introduced a further amended version of the Bill during the hearing sessions on 28 April 2011.

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Tags: Australia, Genetic technology, Law reform, Patentable subject matter

Now It’s FOXTEL versus TiVo Down Under!

Over the past six months or so, FOXTEL Management Pty Ltd (‘FOXTEL’) has opposed the grant of no fewer than nine patent applications in the name of TiVo, Inc.

We suspect that this may turn out to be the beginning of a protracted dispute between the two companies.  At stake is the very viability of TiVo’s technology in the Australian marketplace, while FOXTEL’s freedom to continue providing advanced digital home entertainment services is also on the line.

The fact is that TiVo has failed to make a big impact in the Australian market.  At the same time, FOXTEL is providing digital cable television services that include ‘intelligent’ features almost identical with those of TiVo’s ‘smart digital video recorders’. 

Even without looking at the details of TiVo’s patent applications, it seems inevitable that FOXTEL would infringe at least some of the patent claims should the applications proceed to grant.

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Tags: Australia, FOXTEL v TiVo, Opposition

Choose Your Story Well (or, How to Lose an Extension of Time)

Carol Almond-Martin v Novo Nordisk Health Care AG [2011] APO 42 (21 June 2011)

Extensions of time – request for extension of time to pay acceptance fee after application opposed – whether relevant ‘error or omission’ involved in prior decision to abandon application – whether service of Notice of Opposition after payment deadline ‘causative’

We regularly have cause to write about the process of obtaining extensions of time under the Australian IP laws and regulations (often enough for this to be one of the special topics under the ‘Law and Practice’ category in our ‘Topics’ menu, above).

The circumstances in which extensions of time are granted – or refused – are necessarily based upon the facts of the particular case.  Almost every published decision is therefore a useful lesson in how, or how not, to present evidence and arguments in support of the grant of an extension of time.  Whether the circumstances leading to a missed deadline arose in the applicant’s office, or that of their agent or attorney, the basic rules to trigger application of the extension provisions are quite simple:

1. the must first be an identifiable error, omission, or circumstance beyond the control of the relevant person; and
2. this must have been causative of the failure to meet the deadline in question, which generally means that it must have occurred, or first arisen, prior to the deadline.

This decision in relation to an extension request by Novo Nordisk Health Care AG, by Hearing Officer Dr Steven Barker, is an example of an approach that failed to show that these basic requirements were satisfied.  With the benefit of hindsight, it is not hard to see what went wrong and what might, in retrospect, have been done differently.

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Tags: Australia, Extensions of time

Senate Patent Reform Bill – A Closer Look

As reported yesterday, the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 has been introduced in the Australian Senate (see Newsflash - Australian Patent Reform Bill Introduced in Senate).

Back in March and April, we posted a series of nine articles on the Exposure Draft of the Bill that was released for public comment by IP Australia.  These articles covered eight selected aspects of the Draft Bill, plus one final summary article (see Australian Patent Reform – Wrap-Up).

In this post, we revisit those eight original topics, and look at how the Senate Bill differs (if at all) from the exposure draft, to see how IP Australia’s consultation has affected the proposed legislation.  (Note that the headings below link to our original articles on each topic.)

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Tags: Australia, Law reform, Patent law