Canopies Covered by a Single Valid Claim
In what may yet prove to be a hollow victory for the appellant, the decision in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139, handed down last Friday, saw the Full Federal Court overturn the trial judge’s findings on the public availability of a prior use, holding a number of the claims of the respondent’s patent to lack novelty.
However, in a move that will please many patent attorneys, the Full Court refused to find that the patentee had admitted certain matters to be common general knowledge by reference to prior publications in the patent specification.
At trial, Kiefel J held claims 1, 2 and 8 to 23 inclusive to have been infringed by each of two collapsible canopy products sold by Insta Image. Insta Image’s cross claim seeking revocation was dismissed. On appeal, Insta Image did not seek to disturb the findings on infringement but challenged the decision that the claims were novel and inventive.
The Full Court, after setting out five principles on the meaning of “publicly available” as used in section 7 (see [124]), overturned the findings of the trial judge and held that each of the claims other than claim 14 lack novelty in light of a publicly available prior use.
On the question of inventive step, the Full Court highlighted the importance of identifying the invention so far as claimed in any claim rather than what the inventor thought the invention consisted of (see [82] to [92]). The Full Court also made significant findings in relation to whether reference to prior art in the specification of the patent constituted an admission as to common general knowledge (see [97] to [104]). Relying on the decision of the High Court in Lockwood v Doric (No 2), and distinguishing the decision of Heerey J in Wrigley v Cadbury Schweppes, the Full Court held that:
The present Patent specification constitutes admissions by Mr Lynch as to his own familiarity with the inventions the subject of the earlier US patents mentioned and with the ongoing problem of instability of which he was aware, but does not constitute an admission by him as to the common general knowledge as it existed in the USA, let alone Australia, before the priority date.
Having regard to the evidence of the various expert witnesses, the Full Court upheld the trial judge’s decision that the claims were not obvious.
Accordingly, while Insta Image succeeded in showing all but one claim to be invalid and liable to be revoked, claim 14 will seemingly stand as a valid, and crucially an infringed claim.
However, in a move that will please many patent attorneys, the Full Court refused to find that the patentee had admitted certain matters to be common general knowledge by reference to prior publications in the patent specification.
At trial, Kiefel J held claims 1, 2 and 8 to 23 inclusive to have been infringed by each of two collapsible canopy products sold by Insta Image. Insta Image’s cross claim seeking revocation was dismissed. On appeal, Insta Image did not seek to disturb the findings on infringement but challenged the decision that the claims were novel and inventive.
The Full Court, after setting out five principles on the meaning of “publicly available” as used in section 7 (see [124]), overturned the findings of the trial judge and held that each of the claims other than claim 14 lack novelty in light of a publicly available prior use.
On the question of inventive step, the Full Court highlighted the importance of identifying the invention so far as claimed in any claim rather than what the inventor thought the invention consisted of (see [82] to [92]). The Full Court also made significant findings in relation to whether reference to prior art in the specification of the patent constituted an admission as to common general knowledge (see [97] to [104]). Relying on the decision of the High Court in Lockwood v Doric (No 2), and distinguishing the decision of Heerey J in Wrigley v Cadbury Schweppes, the Full Court held that:
The present Patent specification constitutes admissions by Mr Lynch as to his own familiarity with the inventions the subject of the earlier US patents mentioned and with the ongoing problem of instability of which he was aware, but does not constitute an admission by him as to the common general knowledge as it existed in the USA, let alone Australia, before the priority date.
Having regard to the evidence of the various expert witnesses, the Full Court upheld the trial judge’s decision that the claims were not obvious.
Accordingly, while Insta Image succeeded in showing all but one claim to be invalid and liable to be revoked, claim 14 will seemingly stand as a valid, and crucially an infringed claim.
Labels: australian patents
posted by Adrian Crooks at
2:30 PM
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