Recent Australian Federal Court decision TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493 is particularly notable for its exploration of support in an external document – namely an earlier filed patent application. The decision provides a cautionary tale to patent applicants and legal practitioners alike, addressing essential considerations for both sufficiency and support requirements under Australian patent law, and interparty communications with an alleged infringer.

Background

Polaris IP Pty Ltd ("Polaris") is the owner of certified Australian Innovation Patents AU 2020100485 ("the '485 Patent") and AU 2020102918 ("the '918 Patent"), the claims of which are each broadly directed to soft closing hinges such as those for glass-panelled swimming pool access doors. On 1 July 2020 Polaris wrote to TCT Group Pty Ltd ("TCT") alleging its patents were infringed by the latter's "Orion" range of hinges, and threatening proceedings. Proceedings commenced on 9 September 2020, with TCT seeking revocation of the '485 and '918 patents, and Polaris cross-claiming for infringement. Each of the certified innovation patents claims divisional status from a shared parent application.

The parties agreed that the Orion hinge did fall within the scope of the '485 and '918 patents. Accordingly, the focus of the proceedings was predominantly directed to the validity of each patent.

Validity of the Patents

TCT put forth several grounds of invalidity, with Justice Burley paying particular attention to the grounds of (i) lack of novelty, (ii) lack of sufficiency, and (iii) lack of support.

i. Lack of external sufficiency and novelty

Determination of novelty of the patents depended upon the claims being entitled to a priority date earlier than the filing date of the patents, as loss of priority would permit that the patents lack novelty due to the earlier sale of the Orion hinges.

Section 43(2A) of the Act requires that a priority document must "...disclose the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art."

In considering external sufficiency (i.e. the sufficiency of a priority document to disclose the invention claimed in a later application), Justice Burley assessed the contents of the parent through the eyes of a person skilled in the art, examining whether this constituted an enabling disclosure for the claims of the '485 and '918 patents. The singular independent claim of each of the '485 and '918 patents included no limitation with regard to the orientation of a dampener or a means by which it effects dampening upon the closing of the hinge. However, his Honour took the view that it was an essential feature of parent application that the dampener be arranged orthogonal to the hinge axis, and that the skilled person would understand any changes to the orientation of the dampener may result in detrimental lateral force effects. As a consequence, it was found that the '918 or '485 patents lacked external sufficiency, and that the claims were not entitled to the priority date of the parent application and therefore lacked novelty.

ii. Lack of internal sufficiency

Section 40(2)(a) of the Act requires that a complete specification must "...disclosethe invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art".

In his decision, Justice Burley considered that this test for internal sufficiency (i.e. the sufficiency of the description to disclose the invention as claimed) aligned with the test for external sufficiency given that the disclosure of the '485 and '918 patents were materially the same as the shared parent. Accordingly, his Honour found that as the parent application did not sufficiently disclose the invention claimed in the '485 and '918 patents, the respective descriptions of the '485 and '918 patents must also fail to disclose the claimed invention, and, therefore, each patent also lacks internal sufficiency.

iii. Lack of support

Section 40(3) of the Act requires that the claims "...must be ... supported by matter disclosed in the specification".

In his determination of support, Justice Burley considered the claim support obligation introduced as a replacement for the former requirement of fair basis post commencement of the Raising the Bar Act 2012, and intended to align the Australian support requirement with corresponding support requirements in Europe and the United Kingdom.

TCT submitted that the claims of each of the patents are not supported by the disclosures of their specifications for the same reasons they lack external and internal sufficiency. Polaris, on the other hand, submitted that TCT misconstrued the requirements of support by incorporating concepts of enablement; Polaris asserting that TCT incorrectly asserted that support requires the disclosure of the patents be sufficient to enable the skilled person to make substantially all the types or embodiments of products within the scope of the claim.

Both TCT and Polaris agreed that passages fromMerck Sharpe & Dohme Corporation v Wyeth LLC (No 3) [2020],specifically at [547] "Where it is a product, it is that which must be supported in the sense that thetechnical contribution to the art disclosed by the specification must justify the breath of the monopoly claimed", summarise the requirements of section 40(3) of the Act for determination of support in this case.

Adopting reasoning from the determination of external sufficiency, Justice Burley considered that the claims of both the '485 and '918 patents recite a hinge mechanism whereby the axis of the dampener is merely coplanar with the first panel, while the technical contribution made by the disclosure is limited to the form where the longitudinal dampener is orientated orthogonal to the axis of the hinge. As the person skilled in the art would have to undertake considerable research and development to justify the scope of the monopoly claimed, "[t]he breadth of [such] claim[s] exceeds the technical contribution of the specification because the claim covers ways of achieving a result which owe nothing to the disclosure of the specification", and thus the claims of both patents lack support.

In view of his determination for grounds (i), (ii), and (iii), his Honour found that the patents should be revoked, and the cross-claim for patent infringement be dismissed. A further costs ruling in April of this year TCT Group Pty Ltd v Polaris IP Pty Ltd (No 2) [2023] FCA 284 ordered that Polaris to pay 90% of TCT's costs of the proceedings on a party and party basis up to 22 July 2021; and thereafter on an indemnity basis.

Unjustified Threats

As the claims of the patents were not valid for at least the reasons laid out above, Justice Burley also found that the letters sent by Polaris to TCT, demanding undertakings and reserving the right to commence proceedings, amounted to unjustified threats under s 128 of the Act.

Takeaways

This case provides some useful guidance as to how the requirements of sufficiency and support in Australia are to be assessed post the 2012 'Raising the Bar' law reforms. Patent applicants and legal practitioners must be cautious in Australia and ensure that specifications disclose inventions clearly, and completely, and that claims are supported by the matter of the specification, to a high level.

Additionally, this case provides a warning to patent owners and their advisors about the provisions within s 128 of the Patents Act concerning unjustified threats. Communication with an alleged infringer must be considered carefully, as even in a case such as this where certified innovation patents clearly claim the scope of a product, a determination of unjustified threats may be upheld against the patentee if the claims are subsequently found to be invalid.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.