6 min read

Aristocrat Technologies Australia Pty Limited v Commissioner of Patents [2020] FCA 778

Aristocrat Technologies Australia Pty Limited (ATA) appealed to the Federal Court from an Australian Patent Office decision that four of its innovation patents (the Patents) for electronic gaming machines (EGMs) should be revoked to failing to define patentable subject matter.  The Federal Court allowed the appeal, finding that the EGMs were patentable subject matter.

Background

EGMs, also called “slot machines”, are a combination of hardware and software components.  The hardware includes cabinets with video display screens, a “slot” or other vending device to receive money or other forms of credit, and various internal electronics, including an internal computer to operate software to operate the EGM.  The internal computer, commonly called a “game controller”, runs software to visually display reels with symbols on the screen and simulate movement of the reels, in order to play a game based on the displayed symbols.  Typically, a person makes a wager or monetary bet via the vending device to play the game on the EGM.  In this case, the novel and innovative features of the Patents lay in the aspects of the game played on the EGM, as controlled by the computer, and not in any aspect of the hardware (which was essentially generic for EGMs).

ATA had filed the Patents and requested examination of each one before the Australian Patent Office.  The Patents each defined in their respective independent claims an EGM comprising various hardware components and the steps performed by the game controller to execute the game.  During examination, the Patents were each objected to for failing to define patentable subject matter (known as “manner of manufacture” under the Australian Patents Act 1990 (Cth)).  The basis of the objection was that the substance of the invention was in the rules or procedure for playing the game, and so was a mere scheme that was unpatentable.  ATA requested a hearing before a Delegate of the Commissioner of Patents to decide the issue.  The Delegate agreed with the examiner and held that the Patents did not define patentable subject matter, finding that the hardware components of the claimed EGM did not add anything of substance to the “inventive concept”, being the game. ATA appealed the Delegate’s decision regarding each of the Patents to the Federal Court.

Decision

In the Federal Court appeal, Burley J reviewed the authorities on patentable subject matter and found that in determining whether a patent defined patentable subject matter, there was a two-step test.  The first step was to consider whether the invention related to a mere scheme or business method.  If so, the second step was to consider whether the invention is in the computerisation of the scheme or business method.

Expert evidence

In deciding the issue, Burley J followed the recent Full Federal Court decision in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86, where it was held that expert evidence on patentable subject matter was of limited use.  As such, the extensive expert evidence filed by both parties during trial before the Rokt decision issued was mostly ignored.  However, Burley J did rely on expert evidence as to the highly regulated nature of EGMs in Australia as an indication that EGMs must have a particular construction and are built for a specific (and limited) purpose.

Are inventions relating to EGMs a mere scheme?

In applying the two-step approach, Burley J found that the invention claimed by each of the Patents was not simply a mere scheme or business method.  Rather, Burley J construed each of the claimed inventions as a “mechanism of a particular construction, the operation of which involves a combination of physical parts and software to produce a particular outcome in the form of an EGM that functions in a particular way”.  As the initial question was answered in favour of patentability (ie, not a mere scheme), it was not necessary to answer the second question (ie, whether the invention lay in the computerisation).

In support of his finding, Burley J pointed out specific hardware components of an EGM, including the display for displaying the virtual reels, credit input mechanism (vending device), game play mechanism (buttons) and the game controller that are characteristic of EGMs.  Also, due to the highly regulated environment in Australia in which EGMs can be operated, these factors demonstrated that the invention is a machine specifically designed to provide a specific gaming function.  Accordingly, the combination of the physical hardware components and the virtual software components (being the virtual reels and displayed symbols) produced the “invention”.  Thus, the invention had a specific character and a single purpose – to enable a person to play a game.

The fact that the hardware components were agreed by both ATA and the Commissioner to be part of the common general knowledge in the art did not detract from this finding.

Mechanical equivalent

It was also noted by Burley J that the Commissioner of Patents had conceded that a traditional gaming machine comprised solely of hardware and mechanical components that implemented the same game without any software would have been patentable subject matter.  To Burley J, this concession was inconsistent with the Commissioner’s position that effectively separated the game rules or procedure from the hardware in an EGM only because of its electronic nature.

Comment

It seems that the particular construction of EGMs and their highly regulated nature influenced Burley J’s assessment of whether the claims of the Patents defined patentable subject matter.  Despite the agreement of both parties that the hardware components were conventional in the art of gaming machines, the specific function and purpose of those hardware components, compared to generic computer or processor parts typically found in other computer-implemented inventions, led to the finding that the invention was not simply a scheme or business method, and so was decisive.

While this reasoning seems logical to some extent, the test for when hardware forms part of the invention appears to remain somewhat arbitrary. It could be said that hardware components of EGMs are just as “generic” or “conventional” within the EGM field as general computer elements, like a processor or memory.

Justice Burley J relied upon previous Federal Court decisions in which EGMs were found to be patentable subject matter: Neurizon Pty Ltd v LTH Consulting and Marketing Services Pty Ltd (2002) 58 IPR 93 at [15] and [101] (Dowsett J) and Aristocrat Technologies Australia Pty Limited v Konami Australia Pty Limited (2015) 114 IPR 28 at [60] (Nicholas J). However, each of those previous decisions was decided prior to keyFull Federal Court decisions confirming the current principles for determining the patentability of computer-implemented inventions, particularly Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161 and Rokt.

While this decision is of benefit to EGM manufacturers, it should be noted that the claims are limited to those hardware components.  As such, the claims are of limited scope to physical EGMs and thus online gaming platforms, mobile devices and even desktop computers appear to be free to simulate the same game the subject of these claims without fear of infringing the claims if they do not also provide the hardware components defined by the claims of the Patents.

Significance

The decision provides some guidance on the patentabilty of computer-implemented inventions that employ specific and not generic hardware.  Where a computer-implemented invention employs hardware components are specific to the invention or purpose-built, then the invention will be patentable, even if those hardware components are well-known in the technical field.

However, due to this requirement for specific or purpose-built hardware, the decision has limited application to the patentability of computer-implemented inventions in general, such as those found to be unpatentable in previous Federal Court decisions.  In particular, many computer-implemented inventions are specifically, and advantageously, designed to be “hardware-neutral” so they can efficiently leverage a wide variety of computer technologies (such as personal computers, smartphones, physical and wireless internet networks, satellites, etc).  This recent decision does not provide any additional hope for companies seeking patent protection in Australia for such inventions.

Accordingly, in the appropriate circumstances, patent applicants should carefully draft their patent applications to emphasise the combination of hardware and software in achieving a computer-implemented invention, and especially whether the hardware components are specific to a particular technical field or serve a particular purpose, and are not simply generic computer components applicable to all fields of computer technology.

Authored by Andrew Lowe and Duncan Longstaff

5 min read

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.

Background

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

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

Priority Date

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.

Novelty

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.

Summary dismissal

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.

Appeal Decision

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.

Significance

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

Executive summary

– Evidence establishing the state of the prior art is important, as this evidence may influence the other statutory factors in assessing distinctiveness.

– Prior art evidence should be limited to before the priority date of a design to be fully persuasive.

– Side by side comparisons between a design and the prior art may assist in demonstrating a visual effect in favour of distinctiveness.

– An appropriate Statement of Newness and Distinctiveness indicating any specific new and distinctive features may increase the prospects of success.

Background

This is a decision of IP Australia as the Australian Designs Office on the validity of a registered design for a coffee maker by Pi-Design AG (Pi).  In Australia, designs are examined only for formalities before registration.  However, it is necessary to request substantive examination to enforce the registered design – this process is called “certification”.

In this case, Pi obtained registration for its design for a coffee maker – Design No. 201515424, Registration No. 365096 (the Design) – and requested examination of the Design.  An examination report issued, citing Pi’s earlier design for a coffee maker, Design No. 201514163, Registration No. 363750 (the Earlier Design), as rendering the Design invalid. After a response to the examination report was unsuccessful, Pi requested to be heard on the issue.

Submissions

Pi conceded that there were many similarities between the Design and the Earlier Design.  However, Pi submitted that there was a significant difference in that the Design incorporated double walls for the sides and bottom of the coffee maker, whereas the Earlier Design only had single walls.

The decision

The primary issue was whether the Design was distinctive over the Earlier Design, as it was quickly held that the Design and the Earlier Design were not identical due to the double walled appearance of the Design.  Hence, the Design was new.

The hearing officer agreed with Pi’s submission that the informed user was someone familiar with coffee makers but noted that the Design and Earlier Design relates to a specific type of coffee maker – a non-electric “pour-over” coffee maker (in contrast to an expresso machine, for example).  Accordingly, in the hearing officer’s view the informed user would “pick out” smaller differences between two coffee makers of this type than between a pour-over coffee maker and an expresso machine.

The hearing officer then considered the statutory factors in assessing substantial similarity between the Design and the Earlier Design from the point of view of the informed user, being:

  • giving more weight to similarities than differences;
  • having regard to the state of development of the prior art base;
  • the features identified in any Statement of Newness and Distinctiveness (SND);
  • the amount, quality and importance of any similarities; and
  • having regard to the freedom of the design creator to innovate.

State of development of prior art base

Pi had submitted evidence of the state of the prior art for coffee makers. However, the hearing officer noted that this evidence was defective as it included results that were published after the earliest priority date of the Design.  Despite this defect, this evidence was of some assistance in assessing the freedom to innovate.  The hearing officer referred to the search conducted during examination and noted that the prior art base was crowded with many types of coffee maker designs, indicating that smaller differences may be more significant.

Freedom to innovate

In considering this factor, the hearing officer noted that many coffee makers of the pour-over type shared common features that were dictated by their function, such as the conical filter holding portion, its location above the decanter and the use of a handle or thermal collar to safely transfer the hot liquid.  Also, the hearing officer noted from Pi’s evidence that this type of coffee maker had a small footprint and there seemed a preference for a relatively simple design, indicating there was market demand for these features.

Amount, quality and importance of similarities

The hearing officer held that there was a large amount of similarity, as conceded by Pi, but did note that the greater portion of the Design incorporated the double walled appearance.  The quality and importance of the similarities were informed by the freedom for the designer to innovate.  Hence, those features in the Design and the Earlier Design that were dictated by function, such as the conical filter holding portion, as well as the features dictated by market demand, such as the slimness and simplicity of the design, were to be discounted.  Accordingly, the large amount of similarities between the Design and the Earlier Design were offset by the quality and importance of those similarities being relatively low.

Statement of Newness and Distinctiveness

The hearing officer found the SND of the Design was not helpful as it only generically referred to the shape and configuration of the coffee maker.  There was not any reference to a specific feature that was identified as being new and distinctive.

Assessment and decision

The large amount of similarities between the Design and the Earlier Design were to be given more weight, and so suggested a lack of distinctiveness.  However, this was offset by the state of the prior art suggesting small differences are significant, the quality and importance of the similarities being relatively low and the freedom to innovate. These factors were in favour of a finding of distinctiveness.

The hearing officer found that the factors were finely balanced but ultimately was persuaded to find that the Design was distinctive over the Earlier Design.  This was assisted by the informed user being found to readily note smaller differences and by Pi supplying a side by side comparison of the Design and the Earlier Design when in use, as shown in the accompanying picture where the single walled design is on the left and the double walled design is on the right.

This side by side comparison accentuated the double walled appearance of the Design and its associated visual effect due to the contrast provided by the coffee to the double walls.

Comment

This decision illustrates the importance of evidence to establish the state of the prior art, which in turn may influence the other statutory factors in assessing distinctiveness.  In the present case, Pi was able to show through its prior art evidence that the large amount of similarities between the Design and the Earlier Design were offset by the other factors of the quality and importance of similarities and the freedom to innovate.

However, Pi’s prior art evidence was not fully accepted as it included designs published after the earliest priority date of the Design and reliance had to be placed on the prior art search conducted by the Examiner.

Also, providing a comparison between the designs enabled Pi to emphasise the visual effect created by the double walls that persuaded the hearing officer to find that the Design was distinctive.

The case further demonstrates the importance of using an appropriate SND to indicate new and distinctive features.  If the SND of the Design had focussed on its double walled appearance, then it is likely that the hearing officer (and possibly the examiner) would have more readily found in favour of distinctiveness of the Design.

Authored by Andrew Lowe

Executive Summary

– A patent application withdrawn before its publication can still form part of the prior art base if it is subsequently claimed as a priority document for a later published patent application.

Claim construction and expert evidence remain important in establishing whether the claims are novel or inventive.

Applicants should ensure consistent use of terms in claim sets to avoid ambiguity and hence invalidity for lack of clarity.

Background

This is a decision of IP Australia (the Australian Patent Office) on an opposition filed by Cantarella Bros Pty Ltd (Cantarella) against Australian Patent Application No. 2009347084 (the Patent Application) in the name of Koninklijke Douwe Egberts B.V. (Douwe). The Patent Application was directed to a reinforced coffee pod and an associated dispensing system.

The Patent Application had 17 claims with independent system claim 1, capsule claim 15 and method claim 17.  Each of the independent claims defined the feature of “at least one rib extending from the circumferential wall [of the capsule] into the inner space to provide additional stiffness to the capsule” (the Rib Feature).  System claim 1 and method claim 17 (but not claim 15) further defined that a fluid dispensing means supplied fluid to the capsule at a pressure of 4 to 20 bar (the Pressure Feature).

Cantarella asserted that claims were invalid for lack of novelty and inventive step.  In addition, Cantarella asserted that dependent claims 10 and 11 reciting the feature of “an alternative capsule” lacked clarity.

Claim construction

An issue between Cantarella and Douwe was whether the Rib Feature would include ribs formed by or part of the wall, such as a corrugated wall section, where the corrugations extending inward were the “ribs”.  After considering expert evidence from both parties, the hearing officer concluded that, as the Rib Feature defined that the rib extended from the capsule wall, this meant that the wall must have in effect a projection extending from its surface.  Thus, the Rib Feature would exclude corrugations or ribs formed in walls as they each do not extend from a surface of the wall.

Eligible prior art

One prior art document was a PCT application that was withdrawn prior to its formal publication, but was later used as a priority document for a later filed PCT application.  This later filed PCT application was published after the earliest priority date of the Patent Application.  Hence, there was an issue as to whether the first PCT application was part of the prior art base for novelty.  The hearing officer reviewed section 88 of the Patent Act and found that the first PCT application would be part of the prior art base if it were published.  Cantarella argued that the first PCT application had been published as it became publicly available upon publication of the later filed PCT application.  The hearing officer agreed and so the first PCT application was considered part of the prior art base as a “whole of contents” novelty citation.

The decision

Despite the success of having the first PCT application included in the prior art base, Cantarella failed on novelty.

The hearing officer found that the claims were novel over the first PCT application as it did not disclose the Rib Feature because its ribs were part of the wall and did not extend from it.  Similarly, another prior art document described a corrugated wall and so did not anticipate the claims.

Two other prior art documents were found to disclose the Rib Feature but did not disclose the Pressure Feature.  Only one taught a pressure range of 1 to 2 bar, while the other was silent.  Cantarella sought to rely on expert evidence that coffee machines operated at up to 10 bar to argue that the Pressure Feature was inherent in these prior art documents.  The hearing officer stated that even on this evidence, it was equally likely that the prior art would use a pressure range inside or outside of the claimed range of the Pressure Feature. Thus, independent claims 1 and 17 were novel, as were dependent claims 2 to 14 and 16.

However, as claim 15 did not include the Pressure Feature, it lacked novelty over one of the prior art documents disclosing the Rib Feature.  The other prior art document disclosing the Rib Feature did not anticipate claim 15 as it disclosed that the capsule had its own outlet, whereas all the claims of the Patent Application required the beverage to flow out of the capsule to an outlet of an apparatus for holding the capsule.

Cantarella was also unsuccessful on the inventive step ground.  The hearing officer found that it was part of the common general knowledge to provide strengthening ribs, but it was undesirable to obstruct the inner space of a coffee capsule. Thus, it was found that the Rib Feature would not have been a routine modification or part of the common general knowledge.  Hence, the claims were inventive over the common general knowledge alone.

This finding on common general knowledge helped sway the hearing officer to find that the claims were inventive over the two prior art documents that did not disclose the Rib Feature since the addition of the Rib Feature would not have been routine.  Similarly, the hearing officer’s assessment above of the expert evidence in relation to the Pressure Feature led to the finding that it would not have been a routine modification to include the Pressure Feature in any of the cited prior art.  Consequently, the claims were inventive over the other prior art documents that did disclose the Rib Feature but not the Pressure Feature.  Thus, the claims (except claim 15) had an inventive step.

Cantarella was successful on the clarity issue in relation to claims 10 and 11.  The hearing officer found that the term “exchange capsule” (referring to the capsule defined in claim 1) was interchangeably used with “alternative capsule” in these claims.  Therefore, the reference to the “alternative capsule” was ambiguous as to whether it referred to the capsule defined in claim 1 or a different type of capsule.  Hence, these claims were invalid for lack of clarity.

Comment

This case establishes that a patent application withdrawn before its publication can still form part of the prior art base if it is subsequently claimed as a priority document for a later published patent application.

The case also demonstrates the importance of claim construction and expert evidence.  Two potentially relevant prior art documents were found not to be relevant based on the construction of the Rib Feature.  Expert evidence persuaded the hearing officer to find that the Rib Feature and the Pressure Feature were not routine modifications to the prior art and so the claims were inventive.

Finally, the lack of clarity finding demonstrates that Applicants should be careful in drafting claims so that terms are consistently used to avoid ambiguity.

Authored by Andrew Lowe

Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138

Summary

  • Applicants should include the best method(s) of performing the invention known at the time of filing a patent application, withholding better or superior embodiments or features can result in invalidity of the granted patent.
  • Novelty destroying prior use does not always need to be corroborated by contemporaneous documentary evidence.
  • Experts need to be carefully selected as an unsuitable expert will be less persuasive on inventive step issues.
  • Claims are invalid for inutility where they include embodiments that are not useful.

Background

This is a decision of the Full Federal Court of Australia (FFC) on an appeal from a judgement at first instance on the validity of Australian Patent Number 744870 (the Patent) in the name of Sandvik Intellectual Property AB (Sandvik) and its alleged infringement by Quarry Mining & Construction Equipment Pty Ltd (Quarry).  The Patent and claims were directed to an extension drilling system for drilling holes to insert cable bolts in underground mines.

At first instance, it was held that claims 1 to 4, 6 and 7 of the Patent were not infringed and were invalid on the grounds of failing to describe a best method of performing the invention, lack of novelty, lack of inventive step and inutility.  Sandvik appealed on all grounds.

The appeal decision

In respect of best method, the claims of the Patent did not define a water seal.  However, evidence indicated that a water seal was a “real issue that needed to be overcome” for the invention to work.  The Patent had only described a horizontal type seal member, whereas at the time of filing of the Patent, Sandvik had developed a superior seal member having upper and lower sections.

Sandvik submitted that the best method requirement should be assessed against the claimed invention or having regard to the “promise” of the invention relative to the problem to be solved.  The FFC disagreed with both submissions, holding that the best method relates to the invention as described in the Patent.  On this basis, the embodiments of the invention as described (not as claimed) omitted the superior seal member.  Thus, the Patent was invalid for not meeting the best method requirement.

On novelty, three witnesses for Quarry provided evidence of invalidating prior use based on their personal recollection of a system 25 years before the priority date.  No supporting evidence was provided, such as drawings, photographs, samples or documents.  The FFC held that the absence of supporting evidence did not render the prior use evidence unreliable and referred to the trial judge’s opinion that the witnesses were credible under examination and cross-examination.  Thus, the claims of the Patent in suit were also invalid for lack of novelty.

Sandvik was successful on the inventive step ground.  The FFC held that the trial judge gave too much weight to one of Quarry’s experts, where that expert was shown not to be aware of information the parties had agreed was common general knowledge in the art and had mischaracterised other information as being common general knowledge when it in fact was not.

Dependent claim 4 recited that an extension rod could have a hexagonal or round cross-section that is driven by a chuck or an adaptor.  However, evidence showed that if the extension rod had a round cross-section, it could not be driven either way to make the invention work.  Accordingly, the trial judge held it lacked utility.  On appeal, Sandvik sought to rely on a person skilled in the art would construe the claim using the principle of purposive construction in order to exclude this non-working embodiment.  The FFC held that the proposed purposive construction could not overcome the plain and unambiguous meaning of the words in the claim.  Thus, claim 4 was invalid for inutility.

Conclusion

This case provides a warning to applicants to ensure that the description of embodiments in a patent specification is updated prior to filing, especially when the application is claiming priority to an earlier patent application.  Sandvik’s failure to include the superior sealing member rendered the Patent invalid even the sealing member was not claimed.

The case also demonstrates the importance of witnesses and experts.  A credible witness can enable prior use evidence to invalidate a patent even where it is not corroborated by other contemporaneous documentary evidence. Similarly, an expert shown not to be a suitable person skilled in the art will undermine any inventive step arguments relying on that expert’s evidence.

The finding of inutility of claim 4 demonstrates that Applicants should be careful in drafting claims that include within their scope embodiments that do not work; otherwise the entire claim will be rendered invalid.

Authored by Andrew Lowe