Gradient Technologies LLC v Jabez7 Pty Ltd - [2019] APO 11

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Gradient Technologies LLC v Jabez7 Pty Ltd. [2019] APO 11

Patent Application: 2010246907

Title:Magnetic field apparatus

Patent Applicant:                   Jabez7 Pty Ltd
Opponent:  Gradient Technologies LLC
Delegate:  Greg Powell
Decision Date:  25 March 2019
Hearing Date:  14 September 2018, in Canberra

Catchwords: PATENTS – section 59 – opposition to the grant of a patent – novelty – claims found to be novel – inventive step – problem known to the person skilled in the art – suitable person skilled in the art – documents ascertained, understood and regarded as relevant – lack of inventive step not established – lack of clarity and fair basis – lack of clarity and fair basis not established – opposition unsuccessful – costs awarded

Representation: Representative for the Applicant: James Hermans
Patent attorney for the opponent: Sylvan Browne and Beata Khaidurova, FB Rice Pty Ltd

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010246907

Title:Magnetic field apparatus

Patent Applicant: Jabez7 Pty Ltd
Date of Decision: 25 March 2019
DECISION
The opposition is unsuccessful. Subject to appeal, I direct the application proceed to grant.
REASONS FOR DECISION

Patent application 2010246907 (“the present application”) was filed on 12 May 2010, as international application PCT/AU2010/000551 in the name of Jabez7 Pty Ltd (“the applicant”). The application entered the national phase in Australia on 13 December 2011. The present application claims a priority date of 13 May 2009.
The present application was advertised as accepted on 14 July 2016. A notice of opposition was filed by Gradient Technologies LLC (“the opponent”) on 14 October 2016. A statement of grounds and particulars (the “SGP”) was filed on 16 January 2017. An amended SGP was filed on 26 September 2017. This amendment was allowed on 13 October 2017 and the opposition proceeds on the basis of the amended SGP.
Evidence in support was filed on 18 April 2017. This comprised:
·a declaration dated 16 January 2017 by Marcus Julian Caulfield bringing into evidence the documents mentioned in the SGP;
·a first declaration dated 17 April 2017 by Anthony C. Morcos with supporting exhibits TM-1 to TM-3 (“Morcos 1”); and
·a first declaration dated 13 April 2017 by John C. Townsend (“Townsend 1”).
Evidence in answer was filed on 20 July 2017. This comprised:
·a declaration dated 20 July 2017 by James Hermans with supporting exhibits Q1 to Q12.
Evidence in reply was filed on 26 September 2017. This comprised:
·a second declaration dated 25 September 2017 by Anthony C. Morcos with two unlabelled attachments (“Morcos 2”);
·a third declaration dated 25 September 2017 by Anthony C. Morcos (“Morcos 3”);
·a second declaration dated 13 September 2017 by John C. Townsend (“Townsend 2”); and
·a declaration by dated 26 September 2017 by Beata Khaidurova.
The invention as described
The present application states at page 1:
“The present invention relates to a method and apparatus for applying a magnetic field to a subject, and in particular a method and apparatus for applying a magnetic field for therapeutic purposes such as pain relief.”
The specification indicates (page 1) that charged particles experience a force when exposed to a changing magnetic field. It notes that, therefore, as a charged particle moves through a magnetic field gradient, the change in the magnitude of the field with distance results in a varying net force on the charged particle. The specification then observes that within a mammalian body there are numerous systems that involve the movement of charged particles, with one example being the active and passive transport of ions across the cell membrane. It states that transport of ions across the cell membrane is relevant to the transmission of nerve impulses, which in turn has an impact on pain responses within mammals. The specification notes that studies have suggested that quadrupole static magnets generating steep field gradients have an effect on nerves and that this is most likely due to the magnetic field gradient altering nerve excitability because of changes in membrane permeability to sodium and calcium ions.
The specification describes some prior art systems which have multiple permanent magnets in a housing, sometimes with flux rings to focus the magnetic flux. The specification notes that these prior art systems have disadvantages as the magnets are separate, circular discs which limits the physical area and, therefore, the strength of the magnetic flux. In addition, the separate bodies mean that they have to be encased in a housing which adds to the size, cost and complexity of the arrangement. Moreover, the flux rings allow leakage of the magnetic field through the central aperture of the ring, limiting shielding and allowing material to be attracted to the device when it is being worn. The specification also notes prior art systems which are flexible, being formed from flexible material impregnated with magnetic material. These systems have a limited field strength and gradient, which limits their effectiveness in treating pain. They are also relatively expensive and complex to make.
The specification describes the invention as being constituted by a body composed of magnetic material which is magnetised so as to form a plurality of magnetic regions of alternating polarity. The regions are circumferentially arranged circular sectors. The body has a shield on one side, opposite to the side that is placed against the subject. The magnet field gradients are generated along the radii which bounding the adjacent sectors.
Figure 2B provides a view of the invention:
In this figure, the device 100 has a body 110 divided in to 4 regions with alternating polarity (although more regions could be created). The regions can each be a separate piece, which are then assembled to form the body. There is a shield 120 on one side of the body. The other side is placed against the subject.
The Opposed Claims
The present application ends with 20 claims, of which claims 1 and 16 are directed to the apparatus and method respectively. Claims 1 and 16 are as follows, but the complete claim set is in the accompanying Annex A:
1.        Apparatus for applying a magnetic field to a subject, the apparatus including:
a)        a body having a plurality of magnetic regions, each magnetic region generating a magnetic field having a polarity opposed to that of magnetic fields generated by adjacent magnetic regions, thereby generating magnetic field gradients; and,
b)        a shield positioned on a first side of the body, wherein in use, a second side of the body is positioned adjacent to the subject such that at least one magnetic field gradient penetrates the subject wherein the magnetic regions are circumferentially arranged circular sectors, the field gradients being generated along radii bounding adjacent magnetic regions.
16.      A method for applying a magnetic field to a subject, using apparatus including:
a)        a body comprising a magnetic material having a plurality of magnetic regions, each magnetic region generating a magnetic field having a polarity opposed to that of magnetic fields generated by adjacent magnetic regions, thereby generating magnetic field gradients; and,
b)        a shield positioned on a first side of the body, wherein the method includes, positioning a second side of the body adjacent to the subject such that at least one magnetic field gradient penetrates the subject as per claim 1.
Claim Construction
At the outset, some terms in the claims require clarification. These are:
a)“subject”; and
b)“shield”.
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries 13 IPR 385, the correct application of these rules to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228 at [118] – [120]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.”
“subject”
The Macquarie dictionary has several definitions of ‘subject’. These are:
1.something that forms a matter of thought, discourse, investigation, etc.: a subject of conversation.
2.a branch of knowledge organised into a system so as to form a suitable course of study.
3.a ground, motive, or cause: a subject for complaint.
4.the theme of a sermon, book, story, etc.
5.a theme or melodic phrase on which a musical work or movement is based.
6.an object, scene, incident, or the like, chosen by an artist for representation, or as represented in art.
7.someone who is under the dominion or rule of a sovereign.
8.someone who owes allegiance to a government and lives under its protection: a Swedish subject.
9.Grammar (in English and many other languages) the word or words of a sentence which represent the person, item or concept performing the action expressed in the predicate, as, he in he raised his hat.
10.someone or something that undergoes, or may undergo, some action.
11.someone or something that is under the control or influence of another.
12.a person as an object of medical, surgical, or psychological treatment or experiment.
13.a dead body as used for dissection.
The opponent submitted that “subject” was not limited to a subject of treatment. Their argument appeared to be that any object could be covered by the term.
The applicant submitted that reading the specification as a whole would limit the term.
I have sympathy for the applicant’s view. On the reading of the specification, the application is clearly directed towards applying magnetic fields to a subject for treatment via the disclosed device in the sense of definition 12. To use the words of Bennett J, in the context in which it appears, “subject” is limited to an object of treatment. I am unable to conceive where a magnetic field is applied to a subject outside of some therapeutic application, and there was no evidence to suggest such alternative applications, nor did the Opponent suggest any. To that extent, to my mind, “subject” imports a concept of treatment into the claim.
“shield”
The opponent noted that claim 1 didn’t specify what type of shield was meant by this term. They noted that the specification described a number of different embodiments which could be considered shields. They submitted that the specification described coatings, which might be environmental coatings to protect the device from water or heat, as well as describing a metal shield which might be a magnetic shield. In the opponent’s submissions, taking the broadest interpretation, the term could mean any form of shield, including an environmental shield. They also pointed to claim 10 which defined the shield as being formed of metal which meant, in their submission, that claim 1 must be broader and could, for example, be a heat shield.
The applicant submitted the term should be interpreted to be a particular type of shield. They noted that the specification goes into some detail about the purpose of the shield and how it deflects the magnetic field. As such, they submitted that, from the context it appears in the “shield” in the claims was a “magnetic shield”.
Again, I have some sympathy for the applicant’s position. In and of itself, the term “shield” in claim 1 (at least) is ambiguous. In such a situation it is well established that it is permissible to have recourse to the specification. When doing that, whatever it was composed of, it is clear that the shield of the claims is meant to be a magnetic shield. In my opinion, such concepts as “heat shield” would not be understood as being relevant to the claims by the skilled addressee.
Onus of Proof
The request for examination of the patent application was filed on 12 April 2013. As a consequence, substantive amendments to the Patents Act (“the Act”) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”) that came into effect on 15 April 2013 do not apply to the present patent application. This includes the addition of subsection 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists. Further to this point I note that the law that applies to the present grounds of opposition is that prior to amendment by the Raising the Bar Act.
It is well established under the previous legislation that in proceedings such as these before the Commissioner, the onus rests with the opponent to clearly establish its case in reaching a conclusion on any issue. In F. Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283, Emmett J of the Federal Court found that in opposition proceedings, the Court (and by implication the Commissioner of Patents in their role as a tribunal) should be “clearly satisfied that the patent, if granted, would not be valid”. Where questions of fact such as obviousness and existence of invention are involved “the grant should not be refused unless it has been clearly shown that the grounds of opposition have been clearly made out” (Montecatini v Eastman Kodak (1971) 45 ALJR 593).
The Opposition
The Statement of Grounds and Particulars as amended nominated the following grounds of opposition:
·Section 18(1)(b)(i) – lack of novelty
·Section 18(1)(b)(ii) – lack of inventive step
·Section 18(1)(c) – lack of utility
·Section 40(2) – lack of sufficiency and best method;
·Section 40(3) – claims lack clarity and fair basis on the invention described.
·Section 59(a)(i) – the nominated person in respect of the application is not an eligible person in relation to the invention
Grounds pursued
At the hearing, and in the opponent’s written submissions, the grounds pursued were limited to:
·the invention as claimed is not novel;
·the invention as claimed does not comprise an inventive step;
·the invention lacks utility;
·the specification is insufficient; and
·the claims lack clarity and fair basis on the invention described.
Person skilled in the art
In KD Kanopy Australasia Pty Ltd v Insta Image Pty Ltd (2007) FCA 481; 71 IPR 615 Kiefel J identified ([16]) the skilled addressee as:
“...a person acquainted with the surrounding circumstances of the state of the art and manufacture at the relevant time ... They are likely to have a practical interest in the subject matter of the invention ... and may often work in the art with which the invention is connected.”
In Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; 9 IPR 225, Finkelstein J stated at [70]:
“He is the person to whom the patent is addressed and who must construe it. He is the person whose knowledge will determine whether a patent is novel. He is the person who will judge whether a patent is obvious.”
However, in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30 (at [23]), the High Court noted that:
“The notional person is not an avatar for expert witnesses whose testimony is accepted by the court. It is a pale shadow of a real person – a tool of analysis which guides the court in determining, by reference to expert and other evidence, whether an invention as claimed does not involve an inventive step.”
There was some dispute between the parties as to each declarant’s suitability to give evidence of the person skilled in the art (‘PSA’).
The Opponent submitted that, because the independent claims of the application did not relate to the treatment of pain or a therapeutic use of the claimed apparatus the PSA was a person involved in the manufacture of the magnetic devices. To that end, they submitted that their expert (Mr Morcos) should be preferred.
The applicant submitted that the PSA was a health practitioner involved in the treatment of pain with a basic understanding of magnets. That is, not an expert in the field of permanent magnet circuit design or magnetic field gradients. It followed that Mr Morcos was not suitable to determine what was the common general knowledge.
I note my interpretation of the word “subject” is that it imports a concept of treatment into the claim. As such, it is not correct to focus solely on the manufacture of magnetic devices when determining who the PSA might be.
It could be said that the principal person the specification is addressed to is a person who is experienced in magnetic therapies, and familiar with the existing design of such devices. In that context it might be said that the PSA would not be a manufacturer of magnetic devices, as they would not recognise the problems in applying magnetic fields to a subject, and thus the requirements of the design.
However, a PSA need not be a single individual, but can be a team of people. A question that arises then is whether, in attempting to solve the problem at hand, a person who is experienced in magnetic therapies would seek out assistance of a manufacturer of magnetic devices or medical devices to form the team.
In the present case, the problem addressed lies in prior magnetic therapy devices having disadvantages in their construction allowing flux leakage and having limited field strength and gradient. Given that problem, which does not lie in the field of improved therapy techniques as such, I cannot see why a magnetic therapist would not consult someone who is an expert in magnets and use of magnets to generate magnetic fields for therapy purposes. I am not convinced that a magnetic therapist would be fully aware of magnetic fields, how they interact and how to shield them, to the extent that it would be unlikely that they would not seek out the help of a person who is experienced in the manufacture of magnetic therapy devices. In my opinion, the PSA is a team of people composed of a magnetic therapist and a person skilled in the manufacture of magnetic therapy devices.
That being said, to my mind, none of the declarants is ideally placed in this matter.
Of particular concern with Mr Morcos is that he does not appear to have any connection with the magnetic therapy device industry in Australia. For example, there is nothing in his Curriculum Vitae to suggest that he met with Australian peers at conferences or did business with Australian clients. While Mr Morcos, in his Curriculum Vitae, refers to providing consultation for permanent magnet motors for a number of devices inclusive of medical devices, he makes no mention of being consulted with respect to magnetic based therapy. As such, he provides no explanation as to how he is able to infer the CGK in Australia at the priority date, despite never residing here or having contact with Australian colleagues. In general, I have some doubts about the weight I can attach to statements he might make about magnetic therapy devices and what the person skilled in the art would or would not do in the circumstances.
Similarly, whilst Mr & Mrs Hermans (or even Dr Holcomb for that matter) appear to have developed their devices without such assistance, they are inventors and not the hypothetical construct that is a PSA. As such, while some things in relation to magnetic devices may not have been known to them, that does not mean that they are within the common general knowledge of the PSA as I have specified above. I do not think that Mr Hermans, for example, is forbidden from making comments on common general knowledge on magnetic therapy devices, but it is a matter of weight. The context in which he makes statements in evidence will need to be taken into account when assessing his evidence.
Novelty

The Federal Court of Australia has extensively reviewed the law regarding novelty in judgements. The judgements indicate that the basic test for anticipation is that set out in Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 at page 235; that is:
“The basic test for anticipation or want of novelty is the same as that for infringement and generally one can ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”.
It follows that if a citation discloses all the integers of the claim, the claim will lack novelty. If the citation does not disclose all the integers of the claim, the claim will still lack novelty provided the citation discloses all the essential integers of the claim, but if the essential integers are not disclosed in the citation, the claim is novel (see Nicaro Holdings v Martin Engineering 16 IPR 545 and Catnic Components Ltd v Hill and Smith (1982) RPC 183).
It is noted that General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited (1971) 1A IPR 121 stated that:
“If … the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee’s claim, but would be at least as likely to be carried out in a way which would not do so, the patentee’s claim will not have been anticipated, although it may fail on the ground of obviousness.”
Thus, in order to meet the test for anticipation, the prior art:
“must contain clear and unmistakeable directions to do what the patentee claims to have invented ... A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.”
In the present opposition, the opponent submitted that the claims 1-4, 8-10, 13, 14 and 20 lacked novelty in light of two documents:
US 4549532 (“D32”)
US 6383129 (“D13”)
The opponent also began to make submissions in relation to CN 201161063 (“D29”) with respect to claim 1, but, in the end, did not seek to rely upon it. I agree that it is not a relevant document for novelty purposes and I will not consider it further.
D32
D32 is directed to a magnetic device of therapeutic use. It discloses a flexible magnetic sheet made of a “rubbery-flexible synthetic material” in which permanent magnetic ferrite particles have been embedded. The surface of the sheet facing the body site to be treated has been magnetized with magnetic poles of alternating polarities. D32 notes that the poles are in the form of a geometrical shape such as concentrically arranged rings, sectors, quadrangles and the like. D32 also notes that the sheet may also be composed of a plurality of individual parts. Particular focus of the opponent was Figure 2, which is reproduced below:
The opponent submitted that this figure showed an array of radially diverging sectors 22 having triangular north poles 24 and south poles 26 which alternated circumferentially. While accepting that the shape of the sheet 20 was shown as square and did not have the circular sectors of claim 1, they noted that D32 stated at column 3 lines 22–25 that “the sheet and the shape of other embodiments may be circular or any other planar configuration desired.” The opponent relied on this as a disclosure of circular sectors. The opponent also noted that D32 disclosed a metallic coating on the side of the sheet opposite to the side facing the user. They submitted that this was equivalent to the shield of the claims.
The applicant submitted that D32 disclosed poles in concentrically arranged rings, sectors, or quadrangles, and not in circular sectors in either quadrants, sextants or octants. The applicant also submitted that the function of the metallic coating as described is to reflect body heat, referring to column 3 line 59–60 of D32, and not as a magnetic shield.
The depicted embodiment of D32 clearly discloses therapeutic apparatus comprising a body having a plurality of magnetic regions, each magnetic region generating a magnetic field having a polarity opposed to that of magnetic fields generated by adjacent magnetic regions, thereby generating magnetic field gradients. However, while I recognise that D32 states that the sheet carrying the magnetised areas may be circular, it does not follow that this means that D32 is disclosing the “circularising” (if I may put it that way) of figure 2. It is not saying that the square of figure 2 can be reshaped by placing a circular template (for example) on the sheet of figure 2 and trimming the outer edges away. In this regard, I note the words “other embodiments” in column 3. In D32 a circular sheet is shown, but it has the magnetised regions as being arranged concentrically. The teaching of D32 could just as easily be taken to be that, for circular shaped sheets, concentric magnets are to be used. I do not believe that D32 provides clear and unmistakeable directions to provide circular sectors.
In any event, even if I am wrong in my opinion, D32 also does not disclose a shield as defined in the claims. D32 provides for a metallic coating applied via lamination or vapour deposition (see column 2 lines 24–32 and column 3 lines 59–64). As noted by the applicant, the purpose of this coating is said in D32 to be to retain or reflect body heat, on the side opposite the user. As I have noted above, I do not consider a “heat shield” as being within the scope of “shield” in the claim. As such, I do not consider this part of the disclosure provides a clear and unmistakable direction to provide a magnetic shield on the device. I also do not have any evidence that the metallic coating of D32 would inherently act as a magnetic shield. Indeed, I note that Mr Morcos, at paragraph [14] of Morcos 3, states:
“If the ‘shield’ claimed were interpreted to specifically mean a magnetic shield, I believe that a skilled person in the art would have considered it obvious to add such a shield to the D32 device”
Clearly this statement is inconsistent with a belief that the coating of D32 is a magnetic shield.
I consider that Claims 1 and 16 are novel in view of D32. It follows that all appended claims are novel in light of D32 for the same reasons.
D13
D13 is directed to a therapy device which can be used for magnetotherapy and heat therapy. The device is initially described in regard to a disc-shaped device, the cross-section of which is shown in figure 4:
The device of D13 contains a strong magnet 70 within a plastic case. A stainless-steel top 60 is stated to limit or diminish the magnetic field generated by the strong magnet 70 past the top 54, but may serve to augment the magnetic field below it.
The opponent submitted that, while figure 4 did not show circular sectors of alternating magnetic polarity, they noted that figure 5 showed magnets in alternating polarity to form a checkerboard configuration:
Like D32, the opponent’s argument was that, as D13 discloses the preferential use of a disc, the arrangement of figure 5 would be circularised. However, this argument fails for the same reasons as it did for D32. While disc shape would appear to be a preferred embodiment, the only disc shaped devices are depicted in Fig 1–3 and 9, and none display the checkboard pattern. There is no disclosure in D13 to use the checkboard pattern with a circular device. The only figure showing the arrangement of poles in a disc-shaped device is Fig. 9:
There was no evidence provided by the Opponent to suggest that the skilled addressee would be directed to use the ‘checkerboard’ pattern on a disc shaped device. Therefore, I am not satisfied there is clear and unmistakeable direction that the magnetic regions are circumferentially arranged circular sectors.
I consider that Claims 1 and 16 are novel in view of D13. It follows that all appended claims are novel in light of D13 for the same reasons.
Conclusion on novelty
The opponent has not established this ground of opposition.
Inventive Step
The statutory basis for inventive step for this opposition is set out at s7(2) and s7(3) of the Act as it stood prior to the Raising the Bar Act, and is reproduced below:
(2)     For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).
(3)     The information for the purposes of subsection (2) is:
(a)   any single piece of prior art information; or
(b)   a combination of any 2 or more pieces of prior art information;
being information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant and, in the case of information mentioned in paragraph (b), combined as mentioned in that paragraph.”
The question of obviousness has been extensively considered by the courts. In particular Aickin J. stated in Wellcome Foundation Ltd. v VR Laboratories (Aust) Pty. Ltd. [1981] HCA 12 at [45]; (1981) 148 CLR 262 at 286 (“Wellcome Foundation”):
“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”
In Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 at [53] (“Aktiebolaget Hassle”), the High Court accepted the approach taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157 at [187] where Graham J posed the reformulated Cripps question:
“Would the notional research group at the relevant date, in all the circumstances, … directly be led as a matter of course to try [the claimed combination] in the expectation that it might well produce a [useful or better result]?” (emphasis in the original)
While the SGP, and the opponent’s written summary of submissions, noted that the claimed invention was not inventive in light of any combination of documents D1 to D32 that were mentioned in the SGP, or any combination of documents D1 to D32 with the CGK, their submissions at the hearing were focused on D32, D13, and the CGK on its own. I will limit myself accordingly.
The problem
The usual approach to determining inventive step is the problem-solution approach. Once the problem has been formulated and the common general knowledge and the prior art base has been determined, the question of whether the claimed solution is obvious must be addressed.
As I have already discussed above the specification notes that prior art systems had disadvantages with strength of the magnetic flux, flux leakage, as well as the size, cost and complexity of their arrangements. While this may be indicative of a problem, there is a question of whether this should be the starting point for considering inventive step.
In determining the problem or ‘starting point’ for considering inventive step, I am mindful of the words of the majority of the Full Court in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [202]–[203] as follows:
“If the problem addressed by a patent specification is itself common general knowledge, or if knowledge of the problem is s 7(3) information, then such knowledge or information will be attributed to the hypothetical person skilled in the art for the purpose of assessing obviousness. But if the problem cannot be attributed to the hypothetical person skilled in the art in either of these ways then it is not permissible to attribute a knowledge of the problem on the basis of the inventor’s “starting point” such as might be gleaned from a reading of the complete specification as a whole.”
In other words, the Full Court has stated that when formulating the problem it is not permissible to incorporate information that is not available to the person skilled in the art as either common general knowledge or information available under section 7(3).
The opponent provided no discussion on this point. Moreover, Mr Morcos did not discuss it either in any of his evidence. As such, it is not clear to me that the problem was common general knowledge. Furthermore, it is not clear to me that knowledge of the problem is available from D13 and D32. D13 indicates that, while magnetotherapy is known and used to provide relief for aches and pains, it notes that there is a need to provide a device that combines magnetotherapy and stimulation by far-infrared stimulation. D32 is seeking to provide a magnetotherapy device which provides the optimal arrangement of having poles of alternating polarity lie along the direction of blood flow regardless of the device’s orientation. While both D13 and D32 are looking at providing differently constructed magnetotherapy devices, as is the present invention, both discuss very different problems to what the present specification says it is seeking to solve. As such, I simply cannot be sure that the problem to be solved by the applicant is one which would be a starting point for a PSA. For example, was flux leakage a known problem? The evidence does not say.
Nevertheless, for the purposes of this decision, I will proceed as if the problem to be solved is the one identified in the specification. That is, to provide a magnetotherapy device which overcomes the disadvantages with strength of the magnetic flux, flux leakage, as well as the size, cost and complexity of prior art arrangements.
Inventive step in light of CGK alone
In their submissions at [67], the opponent set out the following as what they believed had been established as CGK:
“a.Magnetic field gradients are determined by the rate of change of the strength of a magnetic field over a distance. At page 9 of the declaration of James Francis Hermans, dated 20 July 2017, the Applicant agrees that this is common general knowledge.
b.Charged particles, when exposed to a magnetic field gradient, results in a net force being applied to the charged particle due to the magnetic field gradient. At page 9 of the declaration of James Francis Hermans, dated 20 July 2017, the Applicant agrees that this is common general knowledge.
c.Charged particles (i.e., ions) are present in the human body and relevant to human physiology, in particular the sensation of pain or nociception, and include sodium, potassium and calcium. At page 9 of the declaration of James Francis Hermans, dated 20 July 2017, the Applicant agrees that this is common general knowledge.
d.One function of the sodium, potassium and calcium ions in the body is to generate an action potential which is a critical part of the functioning of the neural response, in particular the sensation of pain. At page 9 of the declaration of James Francis Hermans, dated 20 July 2017, the Applicant agrees that this is common general knowledge.
e.The application of a gradient magnetic field to the human body effects physiological action of sodium, potassium and calcium ions and has been reported to decrease the perception of pain. At page 9 of the declaration of James Francis Hermans, dated 20 July 2017, the Applicant agrees that this is common general knowledge.
f.The application of a gradient magnetic field to the human body was postulated to be the principal cause of action potential blockade in dorsal root ganglia (which are located in the posterior root of a spinal nerve). At page 9 of the declaration of James Francis Hermans, dated 20 July 2017, the Applicant agrees that this is common general knowledge.
g.Magnetic field gradients suitable for therapeutic use in humans may be generated using static (permanent) magnets. At page 9 of the declaration of James Francis Hermans, dated 20 July 2017, the Applicant agrees that this is common general knowledge.
h.The magnetic field gradient generated by such static magnets may be altered by altering the positioning of the magnets and/or the strength of the magnets used to generate the magnetic field gradient. At page 9 of the declaration of James Francis Hermans, dated 20 July 2017, the Applicant agrees that this is common general knowledge.
i.Magnetic devices were known having magnetic regions arranged in an alternating polarity configuration (including where the magnetic regions are arranged on a single magnetic substrate and where each magnetic region is an individual magnet). This feature is found in at least documents D1, D3, D5, D7, D8, D30, and D32, as set out in the second declaration of Anthony Morcos, dated 25 September 2017.
j.Studies have suggested that magnetic field gradients suitable for therapeutic use in humans are generated at the boundary region between adjacent magnetic poles. At page 9 of the declaration of James Francis Hermans, dated 20 July 2017, the Applicant agrees that this is common general knowledge. See also D21 (Figure 1, page 2 Magnetic Field Dosimetry, and page 4, right column, first full paragraph) and D22 (page S74, left column first full paragraph and Figure 1) as evidence of this information being part of the common knowledge.
k.Methods to generate distinct magnetic regions on a suitable magnetic substrate were known and common in the art. At page 9 of the declaration of James Francis Hermans, dated 20 July 2017, the Applicant agrees that this is common general knowledge.
l.Methods to generate distinct magnetic regions on a suitable magnetic substrate such that adjacent magnetic regions are of opposite polarity were known and common in the art. This feature is found in at least documents D1, D3, D5, D7, D8, D30, and D32, as set out in the second declaration of Anthony Morcos, dated 25 September 2017.
m.Methods to generate distinct magnetic regions by joining individually magnetized body portions together to form a single magnetic body so that there are essentially no gaps between the individually magnetized body portions, including arrangements where the individual magnetized body portion are arranged in an alternating polarity configuration, were known and common in the art. This feature is found in at least documents D1, D3, D5, D7 and D8, as set out in the second declaration of Anthony Morcos, dated 25 September 2017.
n.The bodies comprising multiple magnetic regions as described in the opposed patent application (including the descriptions on page 9, line 21 to page 14, line 3 and page 15, line 26 to page 17, line 25) were known and common in the art. This feature is found in at least documents D1, D3, D5, D7 and D8, as set out in the second declaration of Anthony Morcos, dated 25 September 2017.
o.Methods to generate the bodies comprising multiple magnetic regions as described in the opposed patent application (including the descriptions on page 9, line 21 to page 14, line 3 and page 15, line 26 to page 17, line 25) were known and common in the art. This feature is found in at least documents D1, D3, D5, D7 and D8, as set out in the second declaration of Anthony Morcos, dated 25 September 2017.
p.The use of a shield manufactured from material having a high magnetic permeability to protect the magnetic substrate(s) and redirect the magnetic field gradient was known and common in the art. This feature is found in at least documents D1, D3, D5, D7 and D8, as set out in the second declaration of Anthony Morcos, dated 25 September 2017.
q.The methods of using the apparatus described in the opposed patent application (including the descriptions on page 14, line 19 to page 15, line 25 and page 16, line 26 to page 18, line 19, with reference to PCT Application) were known and common in the art.
r.The rotation of a magnetic body, including a magnetic body comprising multiple magnetic regions arranged in an alternating polarity fashion, for the improvement or modification of the gradient magnetic field for more efficacious therapy was known and common in the art.
s.The use of a ratchet and pawl to induce the movement of a body as described in the opposed patent application was known and common in the art.
t.The placement of a body in such a manner that the center of gravity is not at the center of the body in order to aid in rotation of the body was known and common in the art.
u.The use of a housing to incorporate the elements of a magnetic therapy apparatus was known and common in the art.
v.The use of an axle to rotatably mount a magnetic element within a housing was known and common in the art. This feature is found in at least documents D1, D3, D5, D7 and D8, as set out in the second declaration of Anthony Morcos, dated 25 September 2017.”
Notwithstanding this list, at the hearing the opponent specifically withdrew their assertion that feature “s and “t” of the above list had been established as CGK.

I note that the applicant agrees that a number of these features are CGK. As stated in the above list, these are those features which, at page 9 of the declaration of James Francis Hermans, dated 20 July 2017, are labelled as “uncontentious points”. These are points a–h, j and k, and I am prepared to proceed on the basis that these features are CGK
However, there are major problems with the remaining points.
For points i, l–p and v, the opponent points to the statement made in Morcos 2 as providing proof that these features are CGK. That statement, which is similar for all these points is:
“The feature of [relevant feature] is found in at least the following documents:
·     D1, pp. 184 – 185, pp. 198 - 199
·     D3, pp. 142 – 145, pp. 170 – 171, pp. 177-178
·     D5, p.122, pp. 314 – 315, p.327
·     D7, page 2-10 and page 2-11
·     D8, pp. 8 – 9, p.107, [pp. 154–155], p[p].164[–165], pp.198 – 199”
The square brackets (particularly for the pages listed) indicate differences between some of the statements
There are problems with these references because missing from the evidence were:
·pages 184 and 199 of D1;
·pages 142, 143, 145, 170 and 178 of D3;
·all referenced pages of D5; and
·pages 154 and 165 of D8.
Moreover, even if these pages had been in evidence, I note that these documents are all textbooks that are not about magnet therapy. Rather they are directed to motors utilising permanent magnets. I do not see how they are representative of the CGK to the PSA of the present application.
It is also the case that, for points i and l, relating to creation of alternating magnetic polarities in adjacent regions, Morcos 2 also includes the statement:
“See for example documents D30 and D32, in which the same techniques to magnetize a flexible magnet sheet (which is also available in NdFeB as seen here:
are also employed to magnetize high-energy sintered NdFeB.”
I noted that D30 and D32 are patent documents and that it was said that patent documents are not, in and of themselves, evidence of CGK. In response, the opponent noted that figures 7 and 8 were labelled in D30 as “prior art”. The conclusion that the opponent said I should draw from this is that the arrangement of magnetic regions shown in figures 7 and 8 (which is an arrangement of alternating polarities) are well-known. I disagree. It cannot be said that the opponent has shown to the requisite level of certainty that something labelled as prior art in D30 is part of the CGK. The best that could be said is that the opponent has shown that the applicant of D30 was, at the filing date of D30, aware of what was shown in figures 7 and 8. It can go no higher than that.
As far as D32 went, the opponent indicated that the section labelled “background” in D32 discussed treating body sites with magnetic fields of alternating polarity. Similarly to D30, I was invited to regard what was discussed in the background as CGK. For the same reasons as for D30, I will not make that conclusion.
Finally, with respect to the remaining points q, r and u, I note that Mr Morcos makes the following statements in Morcos 2:
regarding point q:
“52.In my opinion, the Gradient QuadraBloc device, as described and tested in my first declaration, is a very similar device to that described in the Opposed Application, and the methods for using it for health-care and pain relief have been established and are prior art.
53.Because the science of magnetic pain treatment involves the use of magnetic field gradients to alter or block the motion of electrical signals, all prior art involving similar applications, such as electron beam and ion beam focusing and bending are especially relevant and would form part of the common general knowledge of a person of ordinary skill in the art, being a manufacturer of magnetic devices, or a person who works in magnetics. Such applications commonly employ devices with magnetic regions that are circumferentially arranged circular sectors where the field gradients are generated along radii bounding adjacent magnetic regions.”
regarding point r
“55.Because the science of magnetic pain treatment involves the use of magnetic field gradients to alter or block the motion of electrical signals, all prior art involving similar applications, such as electron beam and ion beam focusing and bending are especially relevant. Such applications commonly employ the rotation of a magnetic body, including a magnetic body comprising multiple magnetic regions arranged in an alternating polarity fashion, for the improvement or modification of the gradient magnetic field. It is common practice in electron beam and ion beam focusing and bending applications to employ devices where the magnetic regions are circumferentially arranged circular sectors where the field gradients are generated along radii bounding adjacent magnetic regions.”
regarding point u
“57.It is my understanding that all magnet and magnet assembly vendors who would fabricate such magnets and magnet assemblies for health-care and pain relief applications are fully aware of the prior art of the use of a housing to incorporate the elements of a magnetic therapy apparatus.
58.The Gradient QuadraBloc device, as described and tested in my first declaration, also uses a housing.”
As an initial point, Mr Morcos is not a person who has had experience with magnet therapy devices. As such, I cannot see how he is able to make statements that effectively say that the Gradient QuadraBloc device, which is a magnetic therapy device, and methods for its use in health-care and pain relief, are CGK. I cannot attach any weight to such statements.
Moreover, Mr Morcos’s statements likening magnet therapy to electron beam and ion beam therapies only serve to further diminish what weight I can attribute Mr Morcos’ opinion in relation to the CGK. Firstly, such a linking is just not supported by the evidence and Mr Morcos’s CV does not support a finding that he is well versed in these therapies. Furthermore, in my limited experience, electron beams and ion beams are used therapeutically for cancer treatment (radiation oncology). My limited understanding is that these treatments work by the beams destroying the cancer cells. I do not understand how this can be relevant to magnet therapies, which do not destroy cells. As such, I am not persuaded by his statements that the missing features of the prior art are well known and would be obvious to include.
While I also note that the opponent has referred to disclosures of the present specification as supporting point q, I do note that the description includes the statement that:
“The reference in this specification to any prior publication (or information derived from it), or to any matter which is known, is not, and should not be taken as an acknowledgment or admission or any form of suggestion that the prior publication (or information derived from it) or known matter forms part of the common general knowledge in the field of endeavour to which this specification relates.”
In addition, it is clear from the language used in the passages noted by the opponent that they are referring to the typical use of the apparatus being described, and not magnetic therapy devices in general. For example, it is accepted that page 14 line 19 starts with:
“For example, when targeting back pain, it is typical to position on the apparatus 100 …”
In the normal course of events, the word “typical” could be taken as suggesting what follows is CGK. However, I note that the lines immediately preceding this sentence state:
“In contrast, the above described magnetic body 110 can be of any size and configuration, depending on the intended use, as will now be described with reference to Figures 5A and 5B.
Clearly then, what page 14 line 19 and following lines describe is how the invention of the present specification is going to be used and not how magnetic therapy devices are used in general.
Accepting, as I have above, that only points a–h, j and k are CGK, it is clear that this portion of the opponent’s case for inventive step must fail. The evidence does not establish that the individual features of the claims are CGK, or that their combination would be a matter of routine for the PSA.
Inventive step in light of either D32 or D13 combined with CGK
When relying on a lack of inventive step in light of a document, it is a requirement of subsection 7(3) of the Act that the document is one which the PSA could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood, regarded as relevant. In an opposition, whether the document in questions satisfies this condition is usually a question of evidence. In this opposition, as has been the case with their other evidence, the opponent’s evidence does not establish that this condition is satisfied.
The opponent made the statement in their written submissions that D13 and D32 (inter alia) are ones which would be ascertained, understood, regarded as relevant. However, the written submissions refer to no evidence to support that conclusion and, in actuality, there is very little in the way of evidence on this point.
In exhibit TM–3 attached to Morcos 1, section D includes the following statement from Mr Morcos:
“I evaluated the opposed patent application, and I believe that all claims in the opposed patent application regarding magnetic circuit design and implementation are well covered by the prior art and/or common general knowledge in Australia as of the priority date of the opposed patent application. Below is a summary of textbook references showing the magnetic circuit techniques employed as claimed in the opposed patent application:
1.Parker, RJ, Advances in permanent Magnetism, ISBN 0-471-82293; pp. 184-185, 194-195 and 198-199.
2.Cullity, BD, Introduction to Magnetic Materials, ISBN 0-201-01218-9;
3.Campbell, P, Permanent Magnets and Their Application, ISBN 0-521-24996-1; pp. 143-145, 170-171 and 176-178
4.Slemon, GR and Straughen, A, Electric Machines, ISBN 0-2-1-07730-2;
5.Gieras, Wang and Kamper, Axial Flux Permanent Magnet Machines, ISBN 978-1- 4020-6993-2, pp. 8-9, 107, 154-155, 164-165, 198-199
6.Gieras, JF and Wing, M, Permanent Magnetic Motor Technology, ISBN 0-8247- 0739-7; pp. 122, 314-315, 327
7.Hendershot, JR and Miller, T, Design of Brushless Permanent-magnet Motors, ISBN 1-8818550-3-1; pp. 2-10 and 2-11
8.Gieras, JF, Wang, R-J, and Kamper, MJ, Axial Flux Permanent Magnet Machines, ISBN 978-1-4020-6993-2 (Published 2008)
9.US 6,245,006 (Published Jun. 12, 2001; Priority Date Aug. 17, 1999)
10.GB 2325624 (Published July 23, 2007; Priority Date April 5, 1997)
11.WO 1999/105233 (Published April 1, 1999; Priority Date Sep. 23, 1997)
12.US 5,667,469 (Published Sep. 16, 1997; Priority Date Oct. 8, 1993)
13.US 6,383,129 (Published May 7, 2002; Priority Date July 14, 1999)
14.US 6,461,288 (Published Oct. 8, 2002; Priority Date Sep. 10, 1996)
15.WO 1999/12605 (Published March 18, 1999; Priority Date Sep. 10, 1997)
16.US 5,312,321 (Published May 17, 1994; Priority Date Nov. 21, 1986)
17.WO 2007/121360 (Published Oct. 25, 2007; Priority Date April 13, 2006)
18.US 7,706,885 (Published Aug 28, 2008; Priority Date Feb 23, 2007)
19.US 6,776,753 (Published Aug 17, 2004; Priority Date June 28, 2000)
20.WO 2009/046345 (Published April 9, 2009; Priority Date Oct. 5, 2007
21.S Engstrom et al Effects of non-Uniform Static Magnetic Fields on the Rate of Myosin Phosphorylation, Bioelectromagnetics, 00:1-5, 2002
22.McLean et al Static Magnetic Fields for the Treatment of Pain, Epilepsy & Behavior, 2, S74-80, 2001
23.Cavopol, AV et al Measurement and Analysis of Static Magnetic Fields That Block Action Potential in Cultured Neurons, Bioelectromagnetics, 16(3), 197-206, 1995
24.McLean, MJ et a/ Blockade of Sensory Neuron Action Potentials by a Static Magnetic Field in the 10 mT Range, Bioelectromagnetics, 16(1), 20-23, 1995
25.US 8,597,316 (Published March 11, 2010; Priority Date of Sept. 5, 2008)
26.US 5,704,256 (Published January 6, 1998; Priority Date May 10, 1993)
27.US 6,124,710 (Published Sep. 26, 2000; Priority Date Nov. 13, 1998)
28.US 6,663,557 (Published Aug 15, 2002; Priority Date Feb. 13, 2001)
29.CN 201161063 (Published Dec. 10, 2008; Priority Date Sep. 11, 2007)
30.US 5,277,692 (Published Jan 11, 1994; Priority Date Dec 14, 1992)
31.US 7,803,104 (Published April 23, 2009; Priority Date April 23, 2009)
32.US 4,549,532 (Published Oct. 29, 1985; Priority Date July 14, 1983)
Each of these pieces of prior art mentioned above is information that the skilled person in the art in Australia would, before the priority date of the opposed patent application, be reasonably expected to have ascertained, understood, regarded as relevant and, where appropriate, combined.”
While such a statement as is made in the final paragraph could be said to establish some presumption, there are two problems that are apparent. Firstly, Mr Morcos does not say that he did do a search and located these documents. I do not know the source of such documents. That is, he does not establish that patent documents are one of the sources he regularly consults. In this regard I note his statement that the list contains a summary of textbook references. This would seem to weigh against patent documents being regularly consulted. Secondly, I do not believe that Mr Morcos understands the phrase “reasonably expected to have ascertained, understood, regarded as relevant”. I note in the part of section D that immediately follows the quoted section above, Mr Morcos states:
“As an expert in the field of permanent magnet circuit design, analysis and manufacturing, it is of my professional opinion that the common general knowledge as it existed in Australia before the priority date of the opposed patent application includes, without limitation, the following:
i.      Magnetic field gradients are determined by the rate of change of the strength of a magnetic field over a distance;
ii.     Charged particles, when exposed to a magnetic field gradient, results in a net force being applied to the charged particle due to the magnetic field gradient;
iii.     Charged particles (i.e., ions) are present in the human body and relevant to human physiology, in particular the sensation of pain or nociception, and include sodium, potassium and calcium;
iv.     One function of the sodium, potassium and calcium ions in the body is to generate an action potential which is a critical part of the functioning of the neural response, in particular the sensation of pain.
v.     The application of a gradient magnetic field to the human body effects physiological action of sodium, potassium and calcium ions and has been reported to decrease the perception of pain;
vi.     The application of a gradient magnetic field to the human body was postulated to be the principal cause of action potential blockade in dorsal root ganglia (which are located in the posterior root of a spinal nerve);
vii.    Magnetic field gradients suitable for therapeutic use in humans may be generated using static (permanent) magnets;
viii.   The magnetic field gradient generated by such static magnets may be altered by altering the positioning of the magnets and/or the strength of the magnets used to generate the magnetic field gradient;
ix.     Magnetic devices were known having magnetic regions arranged in an alternating polarity configuration (including where the magnetic regions are arranged on a single magnetic substrate and where each magnetic region is an individual magnet);
x.     Studies have suggested that magnetic field gradients suitable for therapeutic use in humans are generated at the boundary region between adjacent magnetic poles;
xi.     Methods to generate distinct magnetic regions on a suitable magnetic substrate were known and common in the art;
xii.    Methods to generate distinct magnetic regions on a suitable magnetic substrate such that adjacent magnetic regions are of opposite polarity were known and common in the art;
xiii.   Methods to generate distinct magnetic regions by joining individually magnetized body portions together to form a single magnetic body so that there are essentially no gaps between the individually magnetized body portions, including arrangements where the individual magnetized body portion are arranged in an alternating polarity configuration, were known and common in the art;
xiv.   The bodies comprising multiple magnetic regions as described in the opposed patent application (including the descriptions on page 9, line 21 to page 14, line 3 and page 15, line 26 to page 17, line 25 with reference to the PCT Application) were known and common in the art.
xv.    Methods to generate the bodies comprising multiple magnetic regions as described in the opposed patent application(including the descriptions on page 9, line 21 to page 14, line 3 and page 15, line 26 to page 17, line 25 with reference to the PCT Application) were known and common in the art.
xvi.   The use of a shield manufactured from material having a high magnetic permeability to protect the magnetic substrate(s) and redirect the magnetic field gradient was known and common in the art;
xvii. The methods of using the apparatus described in the opposed patent application (including the descriptions on page 14, line 19 to page 15, line 25 and page 16, line 26 to page 18, line 19, with reference to PCT Application ) were known and common in the art;
xviii. The rotation of a magnetic body, including a magnetic body comprising multiple magnetic regions arranged in an alternating polarity fashion, for the improvement or modification of the gradient magnetic field for more efficacious therapy was known and common in the art;
xix.   The use of a ratchet and pawl to induce the movement of a body as described in the opposed patent application was known and common in the art;
xx.    The placement of a body in such a manner that the center of gravity is not at the center of the body in order to aid in rotation of the body was known and common in the art;
xxi.   The use of a housing to incorporate the elements of a magnetic therapy apparatus was known and common in the art; and
xxii. The use of an axle to rotatably mount a magnetic element within a housing was known and common in the art.
Each of the items of common general knowledge mentioned in items D-i through D-xxii above is information that the skilled person in the art would, before the priority date of the opposed patent application, be reasonably expected to have ascertained, understood, regarded as relevant and, where appropriate, combined.”
As can be seen, Mr Morcos labels each of these features as CGK, but then goes on to state that the PSA would have ascertained, understood, regarded these features as relevant. Such a statement is irrelevant insofar as it relates to CGK and, in my opinion, exposes Mr Morcos’s lack of understanding. In my opinion, it appears that he is simply answering a question put to him without understanding what it means in Patent law.
Moreover, there is also the concerns I have noted above about the suitability of Mr Morcos making statements as to what the PSA would do in certain circumstances. As I have already noted, Mr Morcos does not appear to have any connection with the magnetic therapy device industry in Australia. Moreover, while Mr Morcos mentions providing consultation for permanent magnet motors for several devices inclusive of medical devices, he makes no mention of being consulted with respect to magnetic based therapy. As such, given Mr Morcos’s apparent lack of understanding and his lack of suitability as a proxy for the PSA, I cannot place weight on Mr Morcos’s statement as to what the PSA would reasonably be expected to do.

It follows that, on the evidence before me, I am not satisfied that the PSA would have ascertained D13 and D32. It follows that I cannot find that the claims lack an inventive step in light of these documents.
Conclusion on inventive step
I am not satisfied that the opponent has discharged its onus in relation to the ground of inventive step. I cannot find that the invention claimed in any one of claims 1–20 lacks an inventive step in light of D13, D32 or CGK alone.
Utility
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, must be useful. The issue of utility was considered by the Full Court of the Federal Court in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70; 81 IPR 228. At [81], Emmett J stated:
“A claim is bad if it covers means that will not produce the desired result, even if a skilled person would know which means to avoid. That is to say, everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility…”
In Apotex Pty Ltd v AstraZeneca AB (No 4) [2013] FCA 162; 100 IPR 285 , at [352] Jagot J pointed out that lack of utility requires evidence, not just speculation:
“Ultimately, an asserted lack of utility must be established by appropriate evidence, not by mere speculation that the invention will not work or meet the promise set out in the specification.”
In Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd. [2016] FCAFC 29; 117 IPR 210, at [121] Greenwood J (Rares J concurring) stated an assessment of the utility requirement involves an analysis of what the specification itself says is the promise of the invention, and whether by following the teaching of the specification the claimed invention does attain the result promised:
“Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee?...”
The Opponent submitted that, as a matter of argument (as opposed to evidence), the invention would not work across the whole scope of the claims, as the number of possible combinations of magnetic regions, magnetic fields strength and combinations thereof was extremely broad. For example, the opponent noted that, in relation to the shield and the body having the magnetic regions, the claim required the shield to be positioned “on a first side of the body”, but submitted that this could include the shield being positioned 5 meters away from the body, as long as it faced the first side. The opponent submitted that the claims did not require the shield to be connected to the body. It followed then that, as the shield’s job was to increase the magnetic fields going to the subject, then a shield placed well away from the body would not achieve that increase.
I do not believe that this argument can be sustained. The opponent recognised that this was not established by any evidence, but simply posed it as an open question. Be that as it may, I have nothing to say that the device of the invention wouldn’t work as promised even with the interpretation placed on the claims by the opponent. Moreover, I do not think the claims can be interpreted as the opponent wants. The claims require the shield to be “positioned on a first side of the body”. As a matter of claims construction, given the context in which it appears, I cannot see how I can interpret “on” as meaning “on the same side as, but spaced well away from”. It does not follow.
The Opponent also submitted that the alleged invention was inutile as the invention did not provide a better apparatus for application of a gradient magnetic field to a subject and did not demonstrate that it facilitated a solution for the problems recited.
The Opponent submitted that this conclusion was supported by the evidence of Mr Morcos, who in Section C of TM–3 indicated that the device of the claimed invention was no better than another commercial product – the Gradient QuadraBloc.
The Opponent’s evidence would suggest that the product embodied by the specification is as useful as an already-existing commercial product. I do not understand how this establishes that the claimed invention lacks utility. There is no requirement that the claimed invention be ‘more useful’ than the prior art.
As such the Opponent fails to provide any persuasive evidence to support this ground and has not discharged the onus of proof. Therefore, I not am satisfied that the claims do not comply with section 18(1)(c) of the Act.
Sufficiency and Best Method
The test for sufficiency of description under s40(2)(a) of the Patents Act is set out in the High Court decision in Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8 at [25]:
“... will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?”
Clearly, whether a specification is sufficiently descriptive may be determined with reference to evidence of the skilled addressee (Universal Oil Products Co v Monsanto Co (1972) 46 ALJR 658 at [661]).
“The specification is sufficient if the patentee makes the nature of his invention, and how to perform it, clear and intelligible to persons having reasonably competent knowledge of what was known before on the subject to which the patent relates, and having reasonably competent skill in the practical mode of doing what was then known.”
The specification, in addition to fully describing the invention, must include the best method of performing the invention known to the applicant. In American Cyanamid Company v Ethicon Limited [1979] RPC 215 at page [269], it was stated:
“The Act is intending to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention.”
Consequently, even if a manner of performing an invention is self-evident, applicants are nevertheless required to set out the best method of performing the invention known to them. The best method requirement is assessed on the basis of the applicant’s knowledge at the time of filing the complete specification (Rescare Ltd. v Anaesthetic Supplies Pty. Ltd., 25 IPR 119 at [76]). If the applicant identifies a better method at a time subsequent to filing, there is no obligation to amend the specification to include that method. In addition, if the specification does not include the best method, it can be amended to include the best method (as known to the applicant at the time of filing), at least until the time of grant (Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224 at [313]).
The opponent submitted that the invention did not comply with Section 40(2) because the specification failed to describe the invention fully, or disclose the best method known to the applicant of performing the invention. In this regard, the opponent relied on the applicant’s evidence in answer to support their grounds.
The opponent noted that the specification only provided an embodiment wherein the magnetic regions are arranged in quadrants and no embodiments where more than 4 or less than 4 magnetic regions were incorporated into the body portion. I fail to see how this establishes the opponent’s point. I have no evidence from a PSA stating that, based upon what was described, they could not make the invention.
The opponent stated that the application covered the use of magnetic regions covering an infinite range of magnetic field strengths and did not describe what magnetic field strength is required to produce the claimed effects and to carry out the claimed methods to produce the claimed effects. The opponent also noted that, in his declaration, Mr Hermans refers to the type of magnetic material used in magnetic therapy devices, but the specification does not. Again, the lack of evidence from a PSA does not assist the opponent here. Did the applicant know of a better magnetic material? In this regard I note the Applicant states that, insofar as magnetic material went, the best material was not known at the time of filing as no testing of materials had occurred.
As a further submission, the opponent indicated that the opposed application failed to disclose that an enhanced gradient should abut the entire radii, or how to create such an enhanced gradient. However, this does not seem to be the case. The applicant points to Fig. 4B and page 13, lines 24–27, as showing how an eight-region configuration can produce a relatively large circular region about the centre of the body that has a low field strength and, hence, low field gradient, and points to page 13 line 28 to page 14 line 3 as showing how using individual body portions maximises the field strength at the boundary between adjacent magnetic regions. Moreover, I have no evidence that this information is not enough.
The opponent submitted that, if Mr Hermans was correct in stating that the person skilled in the art is a health practitioner, then the specification must not describe the invention fully as it is not detailed enough to allow a health practitioner to create the claimed device, without having to do extensive research and experimentation into magnet design. However, as I have determined that the PSA here is a team which includes a person skilled in creating magnetic therapy devices, this argument is not sustainable.
As such, the Opponent has failed to provide sufficient evidence to support this ground and has not discharged the onus of proof. I am not satisfied that the claims do not comply with section 40(2).
Clarity and Fair Basis
Clarity
The opponent asserted that the term “circular sector” as recited in the claims was unclear.
Section 40(3) of the Act requires that the claims must be clear. A claim will lack clarity if a third party cannot ascertain whether a proposed action would fall within the ambit of a claim (Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59). A claim does not lack clarity because it uses inexact expressions or is difficult to construe as long as it provides a workable standard suitable to the intended use (Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 at [40]). The key consideration is what constitutes a workable standard in the present case.
The opponent notes that the specification of the opposed application uses the term “circular sector” interchangeably with the term “circular segment”. The submitted that while, in geometry, a circular sector is understood to be a portion of a disk enclosed by two radii and an arc, a circular segment is defined as the portion enclosed by the chord and an arc. They noted that the term “sector” could be read more generally to mean “an area or portion that is distinct from others” which was more in line with the definition of a “circular segment”. However, the opponent submitted that it was not clear which definition for “sector’ should be applied.
In my opinion, the opponent has solved its own problem by noting that the terms “circular sector” and “circular segment” are used interchangeably. Clearly, they are meant to be the same thing. That being the case, and in the context of the specification, given what is shown in the figures, it is clear that circular sector is to take the geometrical meaning – a portion of a disk enclosed by two radii and an arc. I would also note that no expert had any difficulty in deciding what the term meant.
I am satisfied that the claims are clear.
Fair basis
The opponent’s case on fair basis was predicated on finding that the term “circular sector” is to be read generally to mean “an area or portion that is distinct from others”. The argument being that, as the specification only shows and describes circular sectors as being “a portion of a disk enclosed by two radii and an arc”, the claims would extend beyond that matter disclosed in the specification. As I have not found that “circular sector” takes a broader meaning, it follows that the opponent’s argument cannot be sustained.
The claims are fairly based
Conclusion
The opposition fails on all grounds raised in this opposition. Subject to appeal, I direct the application proceed to grant.
Costs
The parties essentially submitted that costs should follow the event. I see no reason to depart from this approach. The opponent has been unsuccessful. I award costs against Gradient Technologies LLC.
Greg Powell
Delegate of the Commissioner of Patents
Annex A
1         Apparatus for applying a magnetic field to a subject, the apparatus including:
a)        a body having a plurality of magnetic regions, each magnetic region generating a magnetic field having a polarity opposed to that of magnetic fields generated by adjacent magnetic regions, thereby generating magnetic field gradients; and,
b)        a shield positioned on a first side of the body, wherein in use, a second side of the body is positioned adjacent to the subject such that at least one magnetic field gradient penetrates the subject wherein the magnetic regions are circumferentially arranged circular sectors, the field gradients being generated along radii bounding adjacent magnetic regions.
2         Apparatus according to claim 1, wherein the body includes a magnetic material magnetised to thereby define the magnetic regions.
3         Apparatus according to claim 1, wherein each magnetic region is a respective body portion made of a respective magnetic material magnetised to thereby define the magnetic regions.
4         Apparatus according to any one of the claims 1 to 3, wherein the magnetic regions are at least one of quadrants, sextants and octants.
5         Apparatus according to any one of the claims 1 to 4, wherein the apparatus includes a housing, and wherein the body is movably mounted within the housing, thereby allowing the body to move relative to a user in use.
6         Apparatus according to claim 5, wherein the apparatus include an axle for rotatably mounting the body in the housing and wherein the apparatus include a ratchet and pawl for allowing rotation of the body in a single direction.
7         Apparatus according to any one of the claims 1 to 6, wherein the body includes a coating provided on the magnetic material.
8         Apparatus according to claim 7, wherein the coating is at least one of:
a)        substantially inert;
b)        gold;
c)        nickel;
d)        silver;
e)        platinum;
f)        epoxy; and,
g)        plastic.
9         Apparatus according to any one of the claims 1 to 8, wherein the shield is for at least one
of:
at least partially reducing a magnitude of magnetic fields extending away from the subject in use;
at least partially increasing a magnitude of magnetic fields permeating the subject in use; and,
at least partially increasing the magnetic field gradients.
10       Apparatus according to any one of the claims 1 to 9, wherein the shield is formed from a metal.
11       Apparatus according to any one of the claims 1 to 10, wherein the apparatus includes at least one marking defining an orientation, and wherein in use, the body is applied to the subject in accordance with the at least one marking.
12       Apparatus according to claim 11, wherein the at least one marking is provided on the shield.
13       Apparatus according to any one of the claims 1 to 12, wherein the apparatus is for therapeutic use.
14       Apparatus according to any one of the claims 1 to 13, wherein the apparatus is for use in at least one of administering pain relief, reducing inflammation and negating the effects of muscle memory.
15       Apparatus according to any one of the claims 1 to 14, wherein the apparatus is for altering a charge distribution across membranes within a subject.
16       A method for applying a magnetic field to a subject, using apparatus including:
a)        a body comprising a magnetic material having a plurality of magnetic regions, each magnetic region generating a magnetic field having a polarity opposed to that of magnetic fields generated by adjacent magnetic regions, thereby generating magnetic field gradients; and,
b)        a shield positioned on a first side of the body, wherein the method includes, positioning a second side of the body adjacent to the subject such that at least one magnetic field gradient penetrates the subject as per claim 1.
17       A method according to claim 16, wherein the method includes positioning the apparatus so that at least one magnetic field gradient interferes with a nerve.
18       A method according to claim 16 or 17, wherein the method includes positioning the apparatus for a predetermined time period.
19       A method according to any one of the claims 16 to 18, wherein the method includes, positioning the apparatus to thereby alter a charge distribution across membranes within a subject.
20       A method according to any one of the claims 16 to 19, wherein the method includes, positioning the apparatus to thereby at least one of administer pain relief, reduce inflammation and negate the effects of muscle memory.