Factor Financial Analytics Pty Ltd v Xero Limited - [2021] APO 2

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Factor Financial Analytics Pty Ltd v Xero Limited [2021] APO 2
Patent Application: 2017305494

Title:Network-based automated prediction modeling

Patent Applicant: Xero Limited

Requestor:Factor Financial Analytics Pty Ltd

Delegate:Dr S.D. Barker - Deputy Commissioner of Patents

Decision Date: 13 January 2021

Hearing Date: 18 December 2020, in Canberra (by videoconference)

Catchwords: PATENTS – directions in relation to a matter under section 36 of the Patents Act – whether to give direction for the filing of details of the case of each party – direction given – whether to give direction treating late filed material as evidence – direction not given – whether to give direction that further evidence cannot be filed without leave – direction not given – award of costs on normal basis

Representation: Counsel for the applicant: A Lang SC
Solicitor for the applicant: Gilbert & Tobin
Patent attorney for the applicant: FB Rice
Counsel for the opponent: C Dimitriadis SC and W H Wu
Patent attorney for the opponent: Krouzer IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2017305494

Title:Network-based automated prediction modeling

Patent Applicant: Xero Limited
Date of Decision: 13 January 2021
DECISION
I make the following directions.
First, Factor Financial Analytics Pty Ltd are to file a statement summarising their case. Particularly they are to set out who they contend are the inventors, who they contend are the applicants, when the inventive concept was conceived and how the applicants obtain entitlement from the inventors. This statement is to be no longer than one (1) page, and is to be filed within two (2) weeks of the date of this decision.
Second, Xero Limited are to file a responding statement setting out their contentions on these points. This statement is to be no longer than one (1) page and is to be filed within one (1) week after the Commissioner advises Xero that Factor have filed their statement.

I award costs in relation to the directions hearing according to Schedule 8 against Factor Financial Analytics Pty Ltd.
The supplemental evidence is not evidence that can be relied on by the parties.
REASONS FOR DECISION

Patent application 2017305494 was filed by Xero Limited (Xero) under the provisions of the Patent Cooperation Treaty. The filing date of the application is 3 August 2017. The inventors are listed as Alistair Grigg and Martin Kemka. Factor Financial Analytics Pty Ltd (Factor) filed an application under section 36 of the Patents Act (the Act) and an application under section 113. Both applications have the same effect – that Factor be named as a co-applicant.
1 The entitlement dispute
Factor assert that the inventors are Kemka in conjunction with Aaron Wallace and Paul Reynolds. Factor also assert that the applicants should be Xero and Factor.
2 Who are the players
To aid understanding of this decision, I will explain the role of the people who are mentioned in this decision.
Grigg was a General Manager at Xero at the relevant times.
Kemka

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 Factor Financial Analytics Pty Ltd v Xero Limited

Details

AGLC: Factor Financial Analytics Pty Ltd v Xero Limited [2021] APO 2
Case: [2021] APO 2
Decision Date: 13 January 2021

CaseChat Overview and Summary

In the Federal Court of Australia, Factor Financial Analytics Pty Ltd brought proceedings against Xero Limited for alleged patent infringement. The dispute centred around the interpretation and validity of certain claims within a patent owned by Factor, and whether Xero's software infringed upon these claims. The court was tasked with resolving the preliminary procedural issues before the substantive matters could proceed to trial.

The primary legal issues before the court involved whether it should direct the parties to file details of their respective cases, considering that such filings were overdue. Additionally, the court had to determine whether the late-filed material should be treated as evidence and if further evidence could be submitted without leave of the court. The court also considered the implications of awarding costs on a normal basis.

The court held that it would direct the parties to file their case details, emphasising the importance of procedural compliance to ensure a fair trial. However, it decided not to treat the late-filed material as evidence to prevent any unfairness that might result from such an action. The court also declined to issue a direction that would prohibit further evidence from being filed without leave, as it believed such a stringent measure was unnecessary at that stage of the proceedings. Finally, the court opted to award costs on a normal basis, considering the circumstances of the case.

Orders