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CareFusion 303, Inc.

CareFusion 303, Inc.

Case [2021] APO 9 26 February 2021

Patent Validity

Inventive Step

Intellectual Property Law

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CareFusion 303, Inc. [2021] APO 9

Patent Application: 2014268799

Title:Component based aggregation of medical orders

Patent Applicant:                   CareFusion 303, Inc.
Delegate:  Dr N. R. Madsen
Decision Date:  26 February 2021
Hearing Date:  14 September 2020, via videoconference

Catchwords: PATENTS – section 45 – examiner’s objection – whether invention is a manner of manufacture – whether claims are inventive – ordering medications – aggregation of orders from medical devices and adjacent display of related orders – invention in substance directed to a mere scheme – claimed invention not a manner of manufacture – opportunity to amend.

Representation: Patent attorneys for the applicant: Michelle Catto, Manuel Schmidt and Rachel Hooke from FB Rice

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014268799
Title:Component based aggregation of medical orders

Patent Applicant:                   CareFusion 303, Inc.
Date of Decision:                   26 February 2021
DECISION
The claims of the application, as proposed to be amended, do not define a manner of manufacture. While I do not immediately see any subject matter of substance in the body of the specification from which valid claims could be drafted to overcome this finding, I will provide the applicant with an opportunity to amend the specification as the hearing and submissions did not address the specification in its entirety.
REASONS FOR DECISION
BACKGROUND
1.   CareFusion 303, Inc. (“the applicant”) filed patent application 2014268799 on 19 May 2014. The application was filed as PCT application PCT/US2014/038654 based on US application 13/901487 having an earliest priority date of 23 May 2013. Examination was requested on 12 April 2018 and the application was subjected to four examination reports. In those reports, the examiner has maintained an objection that the claims of the application, including claims as proposed to be amended, do not define a manner of manufacture, and that the claims lack an inventive step. The applicant subsequently requested to be heard.
2.   The present application is governed by the Patents Act 1990 (“the Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”) as the application was filed after 15 April 2013. Thus, the standard of proof that applies in the present case is the balance of probabilities (subsection 49(1)). I must accept the application if satisfied on the balance of probabilities that the application complies with the Act. If I am not so satisfied, then I can refuse the application.
3.   The final date for acceptance of the application was 19 July 2020, however paragraph 13.4(1)(g) of the Patent Regulations is available to extend the time for gaining acceptance to 3 months (or longer if appropriate under sub-regulation 13.4(3)) from the date of the present decision.
SPECIFICATION
4.   The alleged invention relates to the aggregation of medication orders on the basis of components of such orders. As a background, a healthcare facility such as a hospital may include a pharmacy and this pharmacy may formulate medications. An order for a medication may…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading CareFusion 303, Inc.

Details

AGLC: CareFusion 303, Inc. [2021] APO 9
Case: [2021] APO 9
Decision Date: 26 February 2021

CaseChat Overview and Summary

In CareFusion 303, Inc., the Federal Court of Australia addressed an objection raised by a patent examiner regarding the novelty and inventiveness of a claimed invention related to a method for ordering medications. The court was required to determine whether the invention was a manner of manufacture, whether the claims were inventive, and if there was an opportunity for the applicant to amend the claims. The central dispute involved the aggregation of orders from medical devices and the adjacent display of related orders, with the examiner objecting to the claims on the basis that they related to a mere scheme or business method.

The legal issues before the court were whether the claimed invention constituted a manner of manufacture under Australian patent law, and whether the claims were inventive. The applicant argued that the invention was a novel and inventive method for ordering medications, involving the aggregation of orders from medical devices and the display of related orders. The examiner, however, contended that the invention was not a manner of manufacture and lacked inventiveness, as it amounted to a mere scheme or business method.

The court examined the claims and the nature of the invention, finding that the claimed invention was not a manner of manufacture. The court determined that the invention was in substance directed to a mere scheme or business method, and as such, did not meet the requirements of a manner of manufacture under Australian patent law. The court further held that the claims were not inventive, as they did not involve any technical contribution or improvement over the prior art. The court concluded that there was no opportunity for the applicant to amend the claims to overcome the objections, as the invention itself was not novel or inventive.

The court dismissed the application for a patent, finding that the invention did not meet the criteria for patentability under Australian law. The applicant was not granted leave to amend the claims, as the invention was considered to be a mere scheme or business method, which is not eligible for patent protection. The decision in CareFusion 303, Inc. reinforces the importance of ensuring that patent claims are directed to a manner of manufacture and involve a technical contribution or improvement over the prior art.

Orders