Caffitaly System S.p.A v One Collective Group Pty Ltd

In the Federal Court of Australia, Caffitaly System S.p.A, the patent holder of several patents related to single-serve coffee capsules, brought an action against One Collective Group Pty Ltd, alleging that the latter had infringed the patents. One Collective Group Pty Ltd denied the allegations and sought revocation of the patents on several grounds, including lack of novelty, inventive step, insufficiency, inutility, and that the claims were not fairly based on the matter described in the specification. The court was required to determine whether the claims were valid and if they had been infringed.

The court first considered whether the claims were invalid for lack of novelty or inventive step. It found that the claims were not novel as they were anticipated by prior art publications and that the claims lacked an inventive step. The court also held that the patent publications did not constitute information that the skilled person could be reasonably expected to have ascertained, understood and regarded as relevant. Furthermore, the claims were not invalid for insufficiency or inutility, and they were fairly based on the matter described in the specification. The court then considered whether the claims, if valid, were infringed by the first respondent. It held that they were not, as the experimental evidence relied upon by the patentee did not establish infringement of the relevant claims.

The court revoked the claims of the patents as set out in the orders. The amended originating application was dismissed. The parties were required to file and serve written submissions on the question of costs. The Revocation Orders were to be stayed for a period of 21 days from the date of the decision, and if an appeal was lodged within that period, until the final determination of that appeal or further order. Caffitaly System S.p.A was also required to undertake to prosecute any appeal expeditiously, serve copies of these orders on the Commissioner of Patents, and not to commence any proceeding or make any threat to do so in respect of any alleged infringement of any one or more of the claims the subject of the Revocation Orders.