Encompass Corporation Pty Ltd v Infotrack Pty Ltd

In the Federal Court of Australia, Encompass Corporation Pty Ltd sought a declaration of invalidity of two patents held by Infotrack Pty Ltd. The patents in question pertained to methods and apparatus for displaying information. The dispute centred on the validity of the patents, the nature of a licence agreement, and the interpretation of certain statutory provisions. Specifically, the case addressed issues of novelty, anticipation, and the disclosure requirements under the Patents Act 1990 (Cth), particularly in light of amendments introduced by the Intellectual Property Laws (Raising the Bar) Act 2012 (Cth).

The central legal issues were whether the patents were novel and whether they met the requirements for an innovative step. Additionally, the court had to determine the nature of a licence agreement between the parties, specifically whether it was an exclusive licence or a sham. The court also needed to interpret section 40(2)(a) of the Patents Act, focusing on the requirement to clearly explain the nature of the invention to those with reasonable knowledge of the subject matter, post-amendment. The case hinged on the disclosure of a video, the Encompass Video, which was central to the argument regarding the anticipation and public availability of the patented inventions.

The court found that neither of the patents was anticipated by prior use. The Encompass Video, though a mock-up, sufficiently disclosed the claimed inventions to a person skilled in the art. The court rejected the argument that the methodology could not be conducted based on the video. It held that the video made the information publicly available, as required by the legislation. Furthermore, the court interpreted section 40(2)(a) of the Patents Act to require a clear disclosure of the invention's nature, but did not find that the patents failed to meet this requirement. Lastly, the court did not find the licence agreement to be a sham and considered it to be an exclusive licence.

The court ordered that the matter be stood over for a further hearing on the question of costs, with specific timelines set for the submission of written materials and minutes of order. The reasons of the Court were to be embargoed until a specified time, with access granted only to the parties' representatives.