Mr Vitaly Pilkin appealed from a Federal Court decision summarily dismissing his patent infringement proceedings against Sony Australia and refusing leave to serve Sony entities out of jurisdiction in the US and the UK (see our discussion of that earlier decision in our Best Patent Cases 2019 publication). The Full Federal Court refused Mr Pilkin’s application for leave to appeal the decision, upholding the primary judge’s findings that due to a deferral in the patent priority date to the date of key amendments, the claimed invention could not be novel in light of prior art products. The Full Court observed that Mr Pilkin had a substantial and contestable case in response to prior US patent publication considered by the primary judge to deprive the claimed invention of novelty, but noted that was to no avail because the appeal failed, and his infringement case should be summarily dismissed, on other grounds.
Mr Pilkin (Pilkin) sued Sony Australia for infringing his innovation patent AU 2010101517 (the Patent), by its sale of the PS Vita, PS3 and PS4 consoles (the Consoles) in Australia since 22 February 2012. Mr Pilkin also sought to serve proceedings on US and UK based Sony entities. In response, Sony Australia and the Sony entities (the Sony parties) conceded that their consoles fell within the scope of the claim of the Patent but sought summary dismissal because the Patent had a later priority date than its claimed priority date, meaning that the sales of the Consoles anticipated the Patent, and that the Patent also lacked novelty over a US patent publication (the Case patent).
The Patent was an innovation patent, converted from a national phase patent application of a PCT application, having a priority date of 5 October 2009. The PCT application described the invention as an electronic device, with various options for the location of a touch pad and/or a joystick on the device. The claims corresponded to this description, listing the possible locations of the touch pad and the joystick as alternatives. The Patent was amended on 11 July 2014 to state only one claim, an electronic device having, inter alia, a front touch screen visual display, a rear touch pad and a joystick. The possible locations of the joystick on the electronic device were omitted from the claim.
First Instance Decision
Justice Rares found that on a reading of the PCT application, he agreed with the Sony parties that the amendment was beyond the original disclosure in the PCT application. It was clear that the location of the joystick on the device other than on the front surface was essential to the invention. Hence, the omission of any particular location of the joystick in the claim of the Patent meant that the amendment was a broadening amendment, deferring the priority date of the Patent to 11 July 2014.
The effect of the deferred priority date for the Patent meant that the sales of the Consoles anticipated the claim of the Patent as the sales occurred earlier, since at least 2012. It was also held that the Case patent anticipated the claim of the Patent, as it described that a folded over laptop could include a joystick to control a cursor on the front screen display.
As there were no reasonable prospects of success in Mr Pilkin’s causes of action, in light of the novelty issues created by the deferred priority date of the patent, the patent infringement proceedings were dismissed.
Service out of jurisdiction
Justice Rares held that the facts pleaded by Mr Pilkin did not establish a prima facie case for relief to warrant service on the Sony entities in the US and the UK. The US Sony entity was only incorporated in April 2016, and so did not exist at the time of first sales of the Consoles in 2012. Also, the press release relied upon by Mr Pilkin did not establish that the US Sony entity had taken over manufacturing of the Consoles. The failure of Mr Pilkin’s infringement claims also meant that there was no prima facie case against the UK based Sony entities.
Mr Pilkin sought leave to appeal on all grounds, repeating his submissions made in the first instance decision – that the amendment to the Patent only removed various alternatives listed in the PCT claims, and that the location of the joystick was not an essential integer to the invention. Mr Pilkin further argued that the Case patent did not provide clear and unmistakable directions to all the features of the claim.
In a unanimous decision, the Full Federal Court refused Mr Pilkin leave to appeal, agreeing with Rares J’s reasons and findings on the deferred priority date for the Patent, its invalidity due to the sales of the Consoles and the lack of a prima facie case to warrant service out of jurisdiction.
However, the Full Federal Court considered that Mr Pilkin’s submissions on the Case patent were sufficiently reasonable to make that issue contestable. The Full Court also noted that the central reason for the primary judge’s finding of lack of novelty was that a skilled person would have been able to produce the claimed device through trial and error experiments. This central reason was not supported by evidence and related more to inventive step issues. However, Mr Pilkin’s failure on his other grounds meant the issues relating to the Case patent were immaterial, because his application for leave to appeal was to be dismissed, and his infringement case was to be summarily dismissed, on the other grounds described above.
The decision illustrates the dangers in amending patent claims to remove integers asserted to be optional. While the removal of optional integers may appear to narrow the scope of a claim, there could be an argument that this in effect broadens the scope of the claim beyond its original disclosure. Patent applicants and patentees should exercise caution in amending the claims or drafting claims with too many alternative integers to avoid a potential loss of priority date and thus lose validity by reason of a later amendment.
The decision also highlights the need to clearly separate the criteria for novelty from the criteria for inventive step. The basis for the finding on lack of novelty for the Case patent relied on matters relating to inventive step and unsupported by evidence.
Finally, the case emphasises the importance of accurately pleading consistent facts. The contradiction between the dates of the alleged infringing conduct and the existence of the US Sony entity led to refusal of the application to serve out of jurisdiction.
Authored by Andrew Lowe and Mark Vincent