TCT Group Pty Ltd v Polaris IP Pty Ltd

The case of TCT Group Pty Ltd v Polaris IP Pty Ltd involved a dispute over the validity and infringement of patents relating to hinges. The respondent, Polaris IP Pty Ltd, held two patents: a standard patent (the 485 Patent) and an innovation patent (the 918 Patent). The applicant, TCT Group Pty Ltd, sought to have the patents revoked on the basis that they were invalid due to lack of novelty, lack of an innovative step, and lack of clarity and completeness in their specifications. TCT also sought damages for unjustified threats of patent infringement. The primary legal issues before the court were the validity of the 485 and 918 patents and whether Polaris had made unjustified threats of patent infringement. The court first addressed the issue of priority dates for the patents. It found that the claims of neither the 485 nor the 918 patents were entitled to the priority dates of the parent or provisional application, deferring the priority date to the filing date of each patent. As a result, the use and sale of the Orion hinges before these priority dates rendered the claims of both patents lacking in novelty. The court also found that the specifications of both patents did not disclose the invention in a sufficiently clear and complete manner for a skilled person to perform the invention over the whole area claimed without undue burden, and that the claims were not supported by the matter disclosed in the specification. The court further determined that claims 1 and 4 of the 485 patent lacked novelty in light of prior art, and that all claims of the 485 patent lacked an innovative step over the prior art. The court held that TCT succeeded in its claim for unjustified threats based on correspondence sent by Polaris’ solicitors to TCT and Glass Pro, but failed in its claim under the Australian Consumer Law for misleading and deceptive conduct. The court found the claim for revocation of the patents must be allowed and that the cross-claim for patent infringement be dismissed. The matter will be relisted for the purpose of making final orders after allowing the parties time to confer and reach agreement as to the form of those orders, including as to costs.