Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2)

The case of Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) involved a dispute over the validity of a patent under the Patents Act 1990 (Cth). The primary legal issue before the court was whether the patent was invalid due to a failure to describe the best method known to the applicant of performing the invention, as required by section 40(2)(a) of the Patents Act. Specifically, the court had to determine the criteria for establishing such failure and whether this ground of invalidity should be considered in isolation from other asserted grounds of invalidity in a summary dismissal application. The court also had to assess the relevance of the disclosure to the skilled reader, especially in light of conflicting evidence and the evidence that the choice of foaming agent was a matter of routine experimentation.

The court examined the evidence provided by both parties and concluded that the patent in question was a process that involved several parameters, including ingredients and machinery, to achieve a desired result. The patent did not specify any particular foaming agent, which was an essential element of the invention. The court noted that while the evidence suggested that the skilled reader found the invention obvious and that achieving the claimed result was a matter of routine experimentation, there was conflicting evidence about the necessity of disclosing the choice of foaming agent. The court held that the determination of whether a specific foaming agent needed to be disclosed was a complex issue that was not suitable for summary dismissal and required a more detailed examination. The court also considered that the evidence provided by Expo-Net showed that their position was at least reasonably arguable.

In light of the above, the court dismissed the application by Buono-Net for summary dismissal under section 31A of the Federal Court of Australia Act 1976 (Cth). The court ordered that both parties file and serve their submissions on costs by specified dates. This decision highlights the importance of carefully considering the complexities of patent validity issues, particularly in cases involving routine experimentation and conflicting evidence.