No Summary Judgment on Question of ‘Best Method’

Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710 (23 June 2011)

Validity – best method – criteria for assessing whether patent specification describes ‘the best method known to the applicant of performing the invention’

Procedure – summary judgment – whether patentee has ‘no reasonable prospects of success’ in defending an allegation of failure to describe best method

In this decision of the Federal Court, Justice Bennett was required to consider the criteria for assessing whether a patent specification describes the best method known to the applicant for performing the claimed invention, and whether it would be appropriate to grant summary judgment revoking a patent on the ground that the best method is not described.

Her Honour found that, in this case at least, determining whether the best method was described is a complex question that requires careful consideration of a range of relevant facts and conflicting evidence of the parties.  As such, it could not be said that the patentee had no reasonable prospect of success in defending the allegation that the best method known was not described, and summary judgment was not appropriate.

We find this decision interesting firstly for its discussion of the criteria for assessing whether the best method has been disclosed in a patent specification, and also for its demonstration of the difficulties inherent in obtaining summary judgment in patent cases, which almost invariably involve complex questions of fact and law.

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Tags: Australia, Best method/mode, Federal Court practice, Summary judgment, Validity

The Fate of Australian Industries for 2011-12

The Australian white ibis in its
natural habitat: the Sydney CBD. 

To mark the start of the new financial year in Australia, market research company IBISWorld has released its annual report listing the Australian industries predicted to be the best and worst performers for 2011-12.

The list of the ten industries expected to show the greatest growth hardly paints a picture of Australia as an advanced and innovative information economy!  Dominated by primary production, the only service industries are financial asset investment, automotive fuel retailing, domestic airlines and online shopping.

The brightest light in the top ten may be the renewable energy sector, which at least is likely to be driven by investment in new clean energy technologies, and bolstered by regulatory changes (and the increasingly-likely carbon tax) driving reductions in carbon emissions.

On the other hand, the two industries expected to perform worst are both information technology-based: gaming and vending machines manufacturing and wired telecommunications carriers.  IBISWorld predicts that the vending machines market will face increasing competition from imports, while gaming will be affected by regional restrictions on gaming machine numbers (intended to combat problem gambling), and competition from sports betting, which is increasingly conducted online and via mobile devices.

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Tags: Australia, Economics, Innovation policy

Trans-Tasman Patents Implementation Plan Announced

We have reported previously on the ongoing Trans Tasman Single Economic Market (SEM) program between the governments of Australia and New Zealand (see Australia and New Zealand – Two Laws, One Patent Examination?)

The program includes a project to reduce the duplication of work in the Australian and New Zealand patent offices in the case of patent applications filed in both countries.  Under the so-called ‘Integrated Patent Examination’ process, applications filed in both countries would be reviewed by a single examiner from either IP Australia or the New Zealand Intellectual Property Office (IPONZ).

In an announcement today by Australia’s Innovation Minister, Senator Kim Carr, and the New Zealand Commerce Minister, Simon Power, it has been revealed that the implementation plan will deliver a single application process for both countries by early 2013, and a single patent examination by June 2014.

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Tags: Australia, Examination, New Zealand, News

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