Vald Performance Pty Ltd v Kangatech Pty Ltd
[2024] APO 15
•3 April 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Vald Performance Pty Ltd v Kangatech Pty Ltd [2024] APO 15
Patent Application: 2017204276
Title:A Testing and Training Apparatus
Patent Applicant: Kangatech Pty Ltd
Opponent:Vald Performance Pty Ltd
Delegate:Xavier Gisz
Decision Date: 3 April 2024
Hearing Date: 14 November 2023, in Video Conference
Catchwords: PATENTS - section 59 opposition to the grant of a patent - grounds of opposition: support, inventive step, secret use - opposition unsuccessful - costs awarded
Representation: Counsel for the applicant: Benjamin Fitzpatrick
Patent attorney for the applicant: Jeremy Robinson of Griffith Hack
Counsel for the opponent: Joseph Elks
Patent attorney for the opponent: Fraser Smith of Davis IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2017204276
Title:A Testing and Training Apparatus
Patent Applicant: Kangatech Pty Ltd
Date of Decision: 3 April 2024
DECISION
The opposition has been unsuccessful on all grounds. Subject to appeal, I direct that the patent application proceeds to grant.
I award costs according to Schedule 8 against the Applicant up to the day the parties were informed that the amendments had been allowed (10 May 2022). I award costs according to Schedule 8 against the Opponent from the day after the parties were informed the amendments had been allowed (11 May 2022).
REASONS FOR DECISION
Background
Patent application 2017204276 in the name of Kangatech Pty Ltd (the Applicant) was filed on 23 June 2017 (also having a priority date of 23 June 2017). Acceptance was advertised on 9 July 2020. Vald Performance Pty Ltd (the Opponent) filed a Notice of Opposition to the grant of the patent on 22 July 2020. A Statement of Grounds and Particulars (the SGP) was filed on 22 October 2020.
On 30 October 2020 the Applicant requested the Commissioner to dismiss the opposition. On 8 December 2020 the Delegate directed the Opponent to provide further and better particulars. On 8 January 2021 the Opponent proposed amendments to the Statement of Grounds and Particulars. On 28 January 2021 the amendments to the Statement of Grounds and Particulars were allowed.
Evidence in support was filed on 22 January 2021. Evidence in answer was filed on 19 April 2021. Evidence in reply was filed on 18 June 2021.
On 18 February 2021 amendments were filed. On 1 April 2021 the amendments were advertised for opposition. On 7 April 2021 these amendments were requested to be withdrawn.
On 7 April 2021 new amendments were filed. On 12 August 2021 the amendments were advertised for opposition. On 12 October 2021 the Opponent filed a Notice of Opposition to the amendments. Following an amendments opposition process, the matter was decided in Vald Performance Pty Ltd v Kangatech Pty Ltd [2022] APO 31 on 10 May 2022. The amendments were found to be allowable and allowed.
Request for a Notice to Produce
On 21 July 2022 the Opponent requested the Commissioner to issue a Notice to Produce on the Applicant.
On 3 August 2022 a Delegate informed the parties that he was not satisfied that a Notice to Produce should be issued.
Request for information to be considered under Reg 5.23
On 21 July 2022 the Opponent indicated that they would provide information for the Commissioner to consider under reg 5.23.
On 10 October 2022 the Opponent provided a declaration of Dr Raymond Lindsay Hope (Hope #2) dated 5 October 2022.
On 5 December 2022, following several rounds of correspondence, the Delegate informed the parties that he was not satisfied that the Hope #2 declaration should be relied upon under reg 5.23. I agree with the Delegate’s view and will not rely upon the Hope #2 declaration.
Grounds of Opposition
The SGP as amended on 8 January 2021 contained the following grounds of opposition: manner of manufacture, novelty, inventive step, utility, secret use, clarity, succinctness, and support.
The SGP was proposed to be amended on 1 November 2023. The amended SGP limited the grounds of opposition to the following: inventive step, support, and secret use.
Evidence
The evidence in support comprises:
·Declaration of Mr Laurie Malone dated 21 January 2021 (Malone) and accompanying exhibit LM-1;
·Declaration (labelled as an “Expert Report”) of Dr Simon Sostaric dated 21 January 2021 (Sostaric) and accompanying exhibits SS-1 to SS-5;
·Kangatech Information Memorandum dated July 2017; and
·Biarri News Archive dated 28 June 2016.
The evidence in answer comprises:
·Declaration of Mr Bruce William Field made on 15 April 2021 (Field) and accompanying exhibits BWF-1 to BWF-4;
·Declaration of Mr Troy Flanagan made on 15 April 2021 (Flanagan) and accompanying exhibit TF-1.
The evidence in reply comprises:
·Declaration of Dr Raymond Lindsay Hope made on 18 June 2021 (Hope) and accompanying exhibits RLH-1 to RHL-8.
Mr Malone is the CEO of the Opponent. Mr Malone explains the features of the Opponent’s GroinBar product which is relied upon as prior art in the Opposition.
Dr Sostaric is an accredited exercise physiologist and exercise scientist with over 25 years of experience in clinical practice, sports performance and human physiological research.
Dr Hope is a mechanical engineer, and is the Vice President Engineering of Gilmore Engineers Pty Ltd | e3k, which specialises in product design and development, computer simulations, finite element analysis, computational fluid dynamics, and engineering failure analysis.
Mr Field is the Managing Director of BW Field Pty Ltd, an engineering consulting and manufacturing company.
Mr Flanagan is the Vice President, Performance with the Milwaukee Bucks in the NBA.
Mr Malone, Dr Sostaric, Dr Hope, Mr Field and Mr Flanagan each have experience relevant to the present invention. I will assess the evidence according to its relevance to particular aspects of the analysis.
Summary of the invention
The description provides the background of the invention at page 1 lines 10-14:
“Measuring the maximum voluntary contraction (MVC) of an isolated group of muscles provides valuable information regarding the ability of an user to perform and their propensity for injury. The MVC of an athlete can change frequently in response to training load, strength development and clinical and subclinical pathologies. Accordingly, regular measurement may be employed to identify injury risk.”
The invention can be summarised as a height and orientation adjustable instrumentation support which contains two force sensors. One force sensor measures force in a direction perpendicular to that of the other force sensor. Having force sensors in perpendicular directions allows the device to measure the maximum voluntary contraction (MVC) of a user in two directions without significant adjustment to the device.
The specification
Figure 1 that is reproduced below depicts a preferred embodiment of the apparatus of the present invention.
The accompanying description states at page 5 line 37 to page 6 line 16:
“Instrument unit 22 is of a generally inverted (in its basic configuration) “T” shape, but is rotatably mounted to sleeves 28a, 28b in turn supported by upright members 24a, 24b. Sleeves 28a, 28b are slidably adjustable in position along upright members 24a, 24b, and may be locked at a desired position with respective sprung height locking pins 30a, 30b that are received by locating holes 32 in the outer surfaces of upright members 24a, 24b. In use, therefore, instrument unit 22 is rotatable about a rotational axis A (which in this example is horizontal). This allows force applied to force sensors of instrument unit 22 to be applied at many angles while remaining perpendicular to at least some of the force sensors. Instrument unit 22 may be raised and lowered on upright frame 20. The sprung height locking pins 30a, 30b can be disengaged by the user by pulling them out, allowing instrument unit 22 to slide on sleeves 28a, 28b. When the desired height is reached, the user can engage locking pins 26 [sic] into locating holes 32 in upright members 24a, 24b; locating holes 32 allow locking pins 26 [sic] to fix instrument unit 22 in position. Instrument unit 22 may alternatively be fixed in position with a rack and pinion system to allow continuous adjustment (see, for example, FIG. 14). Alternatively, a motorised rack and pinion system may be used to allow automated adjustment of the height of instrument unit 22.”
A drawing of the instrument unit is shown in figure 3B:
The accompanying description states at page 7 lines 33 to page 8 line 5:
“Referring to FIG. 3B, instrument unit 22 includes a locking pin 52 that frictionally engages or locates within blind bores in horizontal bar 50 [not shown], and a handle 53 attached to a removable rear access panel 54 of instrument unit 22. Locking pin 52, when engaged, prevents instrument unit 22 from rotating around horizontal bar 50.
By squeezing locking pin 52 and handle 53 together, a user can disengage locking pin 52 from horizontal bar 50, and then manipulate handle 53 to rotate instrument unit 22 about horizontal bar 50 to a desired rotational orientation. The user then releases locking pin 52 to fix instrument unit 22 at the desired rotational orientation.”
The claims
The specification as amended ends with 15 claims including two independent claims (claims 1 and 14):
1. A testing and training apparatus, comprising:
an upright frame including two upright members;
an instrumentation support that is supported by and substantially between the two upright members of the upright frame so as to be adjustable in height, wherein the instrumentation support is rotatable, when supported by the two upright members, about a horizontal axis with respect to the upright frame and is selectively lockable against further rotation, the horizontal axis extending in a direction between the two upright members; and
instrumentation mountable on the instrumentation support;
wherein the instrumentation comprises a plurality of force sensors,
wherein the instrumentation support comprises at least one sensor mounted to receive a force in a direction substantially perpendicular to another sensor, and
wherein the apparatus outputs data signals indicative of force detected by the force sensors.
14. A testing or training method, comprising:
locating instrumentation with an instrumentation support on an upright frame including two upright members at a height and with a rotational orientation with respect to a horizontal axis selected according to a desired testing or training exercise, the instrumentation comprising a plurality of force sensors, wherein at least one sensor is mounted to receive a force in a direction substantially perpendicular to another sensor,
wherein the instrumentation support is supported by and substantially between the two upright members;
conducting the testing or training exercise; and
outputting data signals indicative of force detected by the force sensors;
wherein the instrumentation is rotatable relative to horizontal axis of the upright frame, when supported by the two upright members, and wherein the horizontal axis extends in a direction between the two upright members.
The relevant legislation
The present application has a filing date of 23 June 2017 so substantive amendments to the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, effective 15 April 2013, apply in the present case.
Claim Construction
While the rules of construction for an Australian patent specification are well summarized in Decor Corp v Dart Industries [1988] FCA 399, 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 at paragraphs 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.”
Substantially between the two upright members
Claim 1 contains the feature of:
“…an instrumentation support that is supported by and substantially between the two upright members of the upright frame…”
This feature defines two distinct relationships between the instrumentation support and the upright members: the instrumentation support must be supported by the upright members and must be between the upright members.
In the context of the claim, the term ‘supported by’ is understood to mean: attached to and held above the ground/floor. The term ‘substantially between’ is understood to mean: substantially within the space defined between the upright members. Thus, a significant portion of the instrument support must be in this space. It is simple to envisage an instrument support that is supported by upright members but not in between upright members, for example the instrument support extending from a side of the upright members. The construction of the term ‘between’ is important in the consideration of inventive step (and, in particular, in relation to prior art document D9).
Lack of Support – s 40(3)
Legal principles
Subsection 40(3) requires that the claim(s) must be supported by matter disclosed in the specification. In Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477 (Merck), Burley J explored the requirement of support at [546]-[547]:
“In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 – 253, which has been often followed in the United Kingdom:
...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court’s task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.
That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breadth of the monopoly claimed”.
In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR) that was referred to with approval in Merck, the delegate Dr Barker formulated the following test in order to determine whether a claim is supported by the description.
•Construe the claims to determine the scope of the invention as claimed,
•Construe the description to determine the technical contribution to the art, and
•Decide whether the claims are supported by the technical contribution to the art.
Consideration
The Opponent states in their submissions at paragraph 100:
“In short, the claims of the Application are not supported (in contravention of section 40(3) of the Act), in that they are overly broad, speculative and travel well beyond the matter described in the specification and what is justified by their technical contribution to the art. There are four independent (but interrelated) elements to the Opponent’s support ground. Each relate to either the “instrumentation support” or the “instrumentation” of the claims in the Application.”
First contention
The Opponent states in their submissions at paragraphs 101-104 (emphasis in the original):
“The first contention is with respect to independent claim 1. Claim 1 requires an “instrumentation support” that is:
(a) supported by and substantially between two upright members;
(b) rotatable when supported by the two upright members; and
(c) selectively lockable against further rotation.
The specification only describes two mechanisms that permit the instrumentation support to be rotatable and lockable between the two upright members, and both require a horizontal bar, about which the instrumentation support can rotate, and a locking pin that engages with the horizontal bar (by either frictionally engaging with the horizontal bar or by being located within blind bores in the horizontal bar) to prevent rotation, yet none of these features are claimed in claim 1. The Application relevantly states (at 7:33-8:5)
“Referring to FIG. 3B, instrument unit 22 includes a locking pin 52 that frictionally engages or locates within blind bores in horizontal bar 50, and a handle 53 attached to a removable rear access panel 54 of instrument unit 22. Locking pin 52, when engaged, prevents instrument unit 22 from rotating around horizontal bar 50. By squeezing locking pin 52 and handle 53 together, a user can disengage locking pin 52 from horizontal bar 50, and then manipulate handle 53 to rotate instrument unit 22 about horizontal bar 50 to a desired rotational orientation. The user then releases locking pin 52 to fix instrument unit 22 at the desired rotational orientation.”
The claimed breadth of any and all methods and mechanisms of rotation when the instrumentation is supported by two upright members is therefore not supported by the specification. Put simply, there is no teaching to the PSA of how to implement an instrumentation support to be rotatable and lockable if not for the two specific mechanisms, which both fundamentally operate in the same manner (i.e. by having a locking pin engage with a horizontal bar), referred to above. Accordingly, at the least, claim 1 should be narrowed so that it does not travel beyond the description of the mechanisms in the specification. As said by Burley J in Polaris at [246]: “The breadth of the claim exceeds the technical contribution of the specification because the claim covers ways of achieving a result which owe nothing to the disclosure of the specification.” Burley J further stated (when faced with the submission that this approach would be reading down the scope of the invention by reference to a primary embodiment):
“However, in my view this submission downplays the absence of any disclosure in the specification of how a hinge with a non-orthogonal dampener axis might be made by persons skilled in the art. Whilst the person skilled in the art may understand what is asserted to be the contribution, they would not be assisted by the specification as to how to achieve implementation of it.”
Importantly, the Opponent apprehends that the Applicant will contend that the PSA will simply be able to work out for him or herself how to make the instrumentation support to be rotatable and lockable within the two upright members. If that is the case, then the Opponent submits that it should lead irrepressibly to the conclusion as contended in Section D above, that there can be no inventive step by reason of the very broad integer that the instrumentation support is rotatable and lockable while between the two upright members.”
Second Contention
The Opponent states in their submissions at paragraph 105 (emphasis in original):
“The second contention is with respect to independent claim 14. Claim 14 requires an “instrumentation” that is: (a) locatable on an upright frame at a height and rotational orientation according to a desired testing or training exercise; and (b) rotatable when supported by the two upright members. The specification only describes two mechanism whereby the instrumentation is locatable at a height and rotational orientation when supported by the upright members and be rotatable when supported by the two upright members, and both require the same horizontal bar and locking pin configured to engage with the horizontal bar (either frictionally or in blind bores) to prevent rotation (see 7:33-8:5 extract above), yet none of these features are claimed in claim 14. On this ground, the Opponent relies on the same reasoning as explained in paragraph 103 above.”
Third contention
The Opponent states in their submissions at paragraph 106-108 (emphasis in original):
“The third part of the support ground pertains to claims 1 and 14. The specification describes and illustrates the instrumentation support being height adjustable by way of sleeves which are slideably adjustable in position along the upright members and which may be locked in the desired position with sprung height locking pins received in locating holes in the outer surface of the upright members. This description is on page 6 at line 2 onwards:
“Sleeves 28a, 28b are slidably adjustable in position along upright members 24a, 24b, and may be locked at a desired position with respective sprung height locking pins 30a, 30b that are received by locating holes 32 in the outer surfaces of upright members 24a, 24b. In use, therefore, instrument unit 22 is rotatable about a rotational axis A (which in this example is horizontal)…. The sprung height locking pins 30a, 30b can be disengaged by the user by pulling them out, allowing instrument unit 22 to slide on sleeves 28a, 28b. When the desired height is reached, the user can engage locking pins 26 into locating holes 32 in upright members 24a, 24b; locating holes 32 allow locking pins 26 to fix instrument unit 22 in position.”
An alternative means of height adjustment using a rack and pinion system is also briefly mentioned, although very little details are provided of how this would work in practice and the only reference of this embodiment being illustrated in the specification (figure 14) is also only illustrated as including the same sleeve mounting as other embodiments. There is no other disclosure of any structure for supporting the instrumentation support on the upright frame in a height adjustable manner other than having sleeves traverse the upright frame members.
Claims 1 and 14 are each missing the feature of the instrumentation support being mounted to sleeves which are slideably adjustable along the upright members in order to allow the instrumentation support to be height adjustable and rotatable when supported by the two upright members as claimed. These features are claimed in claim 13 only. Therefore, those claims as currently drafted, are lacking in support as there is no description of the instrumentation support being adjustable in height except for the use of sleeves.”
Fourth Contention
The Opponent states in their submissions at paragraph 109 (emphasis in original):
“The fourth contention on support again concerns claims 1 and 14. The specification describes and illustrates that the instrumentation support is rotatable by its rotatable mounting to a horizontal bar connected to the above mentioned sleeves (i.e. the “instrument unit support” illustrated in figure 2). There is no other disclosure of any mechanism or teaching for rotating the instrumentation about a horizontal axis with respect to an upright frame to which it is mounted, except with the use of sleeves and a horizontal bar. Claims 1 and 14 are each missing the feature of the instrumentation support being rotatably mounted to the aforementioned horizontal bar with sleeves component in order to allow the instrumentation support to be rotatable when supported by the two upright members as claimed. Some of these essential features are claimed in claim 13 only, namely by use of the sleeves. Therefore, those claims as currently drafted, are lacking in support as there is no description except for the use of a horizontal bar mounted to sleeves.”
Consideration of the four contentions
I consider that the claims do not need to be limited to the precise configuration of the embodiments of the invention. The claims can define features of the invention based on the physical characteristics and/or the function. It is expected that a person skilled in the art could readily understand there would be alternative means for achieving the claimed function.
The first and second contentions relate to the instrumentation support being rotatable and selectively lockable. The preferred embodiment of the invention is that the instrumentation support achieves its rotatable function by being mounted on a horizontal bar. However, a person skilled in the art could readily conceive of other means that would allow that function. The technical contribution is in the function (instrumentation support being rotatable) and not the specific embodiment (instrumentation support being rotatably mounted on a horizontal bar). For example, a rotating bearing could connect each end of the instrumentation support to each of the two upright members. This aspect of the claimed invention is supported by the specification.
The preferred embodiment of the invention of the instrumentation support being lockable against further rotation achieves its function with a locking pin against a horizontal bar. However, a person skilled in the art could readily conceive of other means that would allow that function. The technical contribution is in the function (instrumentation support being selectively lockable) and not the specific embodiment (instrumentation support being locked with a locking pin against a horizontal bar). For example, the locking mechanism could be achieved with a ratchet and pawl lock.
The third and fourth contentions relate to the instrument support being height adjustable. The preferred embodiment achieves this height adjustment by way of sleeves which are slideably adjustable in position along the upright members and which may be locked in the desired position with sprung height locking pins. The specification also discloses an embodiment using a rack and pinion gear. However, a person skilled in the art could readily conceive of other means that would allow that function. The technical contribution is in the function (instrumentation support being height adjustable) and not the specific embodiment (height adjustment mechanism using sprung height locking pins). For example, the height adjustment mechanism could be a ball screw and nut.
I consider that the claims are supported by the specification.
Inventive step
Legal principles
It is a requirement of subsection 18(1) of the Act that the invention, so far as claimed in any claim, involves an inventive step. Subsection 7(2) states that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art in the light of the common general knowledge, considered alone or together with the prior art:
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 (whether in or out of 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).
Subsection (3) prescribes the information that may be considered as:
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 that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.
Prior art information is information that is part of the prior art base, and the prior art base is information in a document that is publicly available and information made publicly available through doing an act. Once the common general knowledge and prior art information have been identified, the question is whether the claimed invention would have been obvious. Various verbal tests have been set out to explain this question. In Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 Aickin J stated:
"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."
When properly applied, the problem-solution approach has the clear benefit of providing a structured approach that largely avoids the possibility for undesirable ex post facto analysis of the claimed invention.
In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 it was observed at paragraph 52:
“Further, as recognised in Beecham Group Ltd's (Amoxycillin) Application, as a basic premise, obviousness and inventiveness are antitheses and the question is always ‘is the step taken over the prior art an “obvious step” or “an inventive step”’? An inventive step is often an issue ‘borne out by the evidence of the experts’. There is no distinction between obviousness and a lack of inventive step. A ‘scintilla of invention’ remains sufficient in Australian law to support the validity of a patent. In R D Werner Lockhart J stated that there must be ‘some difficulty overcome, some barrier crossed’. This is consonant with older authorities in the United Kingdom which recognised that some inventiveness was required to distinguish patentable advances over the prior art from advances which ‘any fool’ could devise. It also accords with the requirement in the United States that for an invention to be ‘non-obvious’ it must be ‘beyond the skill of the calling’.” (emphasis added)
Consideration
The Opponent splits the independent claim 1 into the following features:
Integer 1.1
A testing and training apparatus, comprising:
Integer 1.2
an upright frame including two upright members;
Integer 1.3
an instrumentation support that is supported by and substantially between the two upright members of the upright frame so as to be adjustable in height
Integer 1.4
wherein the instrumentation support is rotatable, when supported by the two upright members, about a horizontal axis with respect to the upright frame and is selectively lockable against further rotation
Integer 1.5
the horizontal axis extending in a direction between the two upright members
Integer 1.6
and instrumentation mountable on the instrumentation support
Integer 1.7
wherein the instrumentation comprises a plurality of force sensors
Integer 1.8
wherein the instrumentation support comprises at least one sensor mounted to receive a force in a direction substantially perpendicular to another sensor
Integer 1.9
wherein the apparatus outputs data signals indicative of force detected by the force sensors
The Opponent splits the independent claim 14 into the following features:
Integer 14.1
A testing or training method, comprising
Integer 14.2
locating instrumentation with an instrumentation support on an upright frame including two upright members at a height and with a rotational orientation with respect to a horizontal axis selected according to a desired testing or training exercise
Integer 14.3
the instrumentation comprising a plurality of force sensors
Integer 14.4
wherein at least one sensor is mounted to receive a force in a direction substantially perpendicular to another sensor
Integer 14.5
wherein the instrumentation support is supported by and substantially between the two upright members
Integer 14.6
conducting the testing or training exercise
Integer 14.7
and outputting data signals indicative of force detected by the force sensors
Integer 14.8
wherein the instrumentation is rotatable relative to horizontal axis of the upright frame, when supported by the two upright members
Integer 14.9
and wherein the horizontal axis extends in a direction between the two upright members
I will follow this numbering of features of the independent claims.
The Opponent has made inventive step arguments in relation to D2, D3, D9 and GroinBar (D10 and D11). These arguments are considered below.
The problem
The Opponent states:
“The invention claimed in the Application pertains to a testing and training apparatus for measuring “the maximum voluntary contraction (MVC) of an isolated group of muscles”: Application at 1:10-12. The purpose of this is said to provide valuable information regarding the ability of a user to perform and their propensity for injury. It is theorised then that regular measurement of the MVC can identify injury risk. The specification suggests that the “problem” (without using that word) to be solved by the claimed invention is a method/apparatus of measuring MVC of a range of muscle groups without requiring significant set up time: 1:15-17. Page 3 of the specification states:
“Thus, the present invention provides, in certain embodiments, an instrumented, portable and adjustable testing and training apparatus that supports, for example, measurement of maximum voluntary contraction and/or training. Various embodiments facilitate measurement and/or training in plural planes, through an adjustable frame with rotatable bar which can be quickly set up to isolate specific muscle groups.” (Emphasis added).”
I concur with the Opponent’s view that the problem to be solved is how to provide a method/apparatus for measuring maximum voluntary contraction (MVC) of a range of muscle groups without requiring significant set up time.
Deductive inventive step argument
The Opponent states in their submissions at paragraph 104 (emphasis in original):
“Importantly, the Opponent apprehends that the Applicant will contend that the PSA will simply be able to work out for him or herself how to make the instrumentation support to be rotatable and lockable within the two upright members. If that is the case, then the Opponent submits that it should lead irrepressibly to the conclusion as contended in Section D above, that there can be no inventive step by reason of the very broad integer that the instrumentation support is rotatable and lockable while between the two upright members.”
The claims define the function of the instrumentation support to be rotatable and lockable between the upright members. The specification provides an embodiment of how to make the instrumentation support to be rotatable and lockable between the two upright members. I have found this feature defined in the claims is supported by the specification. The Opponent’s argument appears to be that, if an aspect of the claims is found to be supported, then this aspect of the claims cannot involve an inventive step. However, the Opponent’s logic is clearly misguided and so this deductive inventive step argument is not persuasive.
GroinBar
The Opponent relies on the GroinBar for the ground of inventive step. The GroinBar was a commercial product of the Opponent. There are two pieces of evidence that the Opponent relies upon to show that the GroinBar was publicly known before the priority date: D10 (a Twitter post) and D11 (the GroinBar website). The Opponent also refers to D11A, however this is a video that was published a month after the priority date so is not considered prior art.
GroinBar - D10
The entirety of D10 is shown below:
D10 is a photo of a person using the GroinBar. The man is pressing his knees outwardly against pressure sensors.
GroinBar - D11
The first page of the website of D11 is shown below:
The basic operation of the GroinBar can be inferred from images and text in D11. A user presses a limb against pressure sensors to measure the muscle strength of that limb.
Although not explicitly stated, the height adjustable aspect of the GroinBar can be inferred from the apertures in the vertical frame and the knobs (in the cross bar) that would be connected to pins (not visible) that are pulled in and out of the apertures to lock and unlock the cross bar into place.
Document D11 is a website for the GroinBar. Because websites can be edited and change over time, an archived version of a website will typically be used to show what the website disclosed at a particular date.
D11 is a PDF capture of the GroinBar website from the Wayback machine (Internet archive) which provides archived versions of websites. D11 appears to be missing some pictures. This is particularly important because one of the pictures relied upon by the Opponent that is missing from D11 but present in the Opponent’s submissions shows the feature of multiple perpendicular force sensors.
The Opponent states in their submissions at paragraph 36(b):
“D11 is the WayBack machine website page in respect of the GroinBar accessed 21 June 2017. When preparing these submissions, it was noted that the PDF version of D11 filed with the EIS was not printed accurately with respect to the webpage, in that key diagrams were not displayed correctly. Accordingly, Annexure A to these submissions is a better capture of the (same) WayBack machine website page of D11.”
I do not accept that the defect in D11 can be remedied by substituting with Annexure A in the submissions. If the inventive step turned on this point, then I may have relied upon Reg 5.23 to ascertain what was actually disclosed on the GroinBar website before the priority date. However, as will be seen further in this decision, the inventive step does not turn on this point and so I have decided to not rely on the information under Reg 5.23. The best way to show that the inventive step ground of opposition does not turn on this point is to continue with the decision as if D11 did contain the missing pictures, and show that the inventive step argument still fails.
The critical picture alleged to be missing from D11 and shown in the Annexure A of the Opponent submissions shows the multiple perpendicular force sensors:
The Opponent concedes that the feature of the instrumentation support being rotatable when supported by the upright members, and selectively lockable (feature 1.4 of claim 1 and features 14.2 and 14.8 of claim 14) is not disclosed by the GroinBar.
GroinBar & CGK
In relation to the inventive step of claim 1 the Opponents states in their submissions at paragraphs 52-55 (italics in original):
“The Opponent contends that when GroinBar is considered in light of the relevant CGK as at the priority date, integer 1.4 is disclosed.
As explained by Dr Hope at [57]:
“In my opinion, based on my 23 years of experience working as a consulting engineer for clients who have come to us wanting design assistance for their product or idea, the functional outcome of the feature of the GroinBar product where the instrumentation support can be removed from the upright frame to perform a rotation, and repositioned on the upright frame in the orientation most suitable for the desired testing or training exercise, is the same as having the instrumentation support of the GroinBar product rotatable, when supported by the two upright members.”
Dr Hope contends that the GroinBar designers clearly intended the product to have the rotating feature (so that the user could have the orientation most suitable for the desired testing or training exercise). However, his opinion is that it is merely a design choice as to the method to achieve such feature.
When combining CGK with GroinBar, Dr Hope concludes that (at [59]):
“the most obvious design solution would be to use a round shaft and allow the instrumentation support to rotate on the round shaft, with a plain bearing or rolling element bearing, and then use a clamping method to secure the instrumentation support in the orientation most suitable for the desired testing or training exercise.” ”
At paragraph 60 of their submissions, the Opponent states:
“For the above reasons, the Opponent contends that that [sic] claim 1 of the Patent Application lacks an inventive step in light of the GroinBar and the CGK. Indeed, all that is required is to introduce any simple rotational mechanism between the height adjustment aperture and the instrumentation support. At the priority date, the PSA, as explained by Dr Hope, would quickly recognise that there are a number of suitable rotational mechanisms could be employed in the CGK, particularly when provided with the task or problem of engineering an apparatus to measure the MVC of different muscle groups without significant set up time, or the ability to efficiently change between muscle group exercises. The PSA would be motivated to do so in order to allow rotation without removal of the instrumentation support from the frame, thus reducing set up time and increasing the efficiency of the exercise program.”
In relation to claim 14 the Opponent states in their submissions at paragraph 67:
“For the same reasons as expressed in respect to claim 1, Dr Hope considers that claim 14 lacks an inventive step in light of the GroinBar and the CGK. The PSA, as explained by Dr Hope, would again, speedily understand that he or she would need to introduce a simple rotational mechanism in the GroinBar unit to ensure that the instrumentation is rotatable relative to horizontal axis of the upright frame, when supported by the two upright members (thus, providing the missing integer 14.8). The PSA would implement any one of the number of suitable rotational mechanisms could be employed in the CGK, particularly when provided with the task or problem of engineering an apparatus to measure the MVC of different muscle groups without significant set up time. The PSA would be motivated to do so in order to allow rotation without removal of the instrumentation from the frame, thus reducing set up time and increasing the efficiency of the exercise program.”
The Applicant states in their submissions at paragraphs 127 and 128 (emphasis in original):
“Dr Hope was also provided with, and read, the Opposed Application and considered the claims before and after amendment. At [54] of his declaration, Dr Hope states: “Shelston IP asked me to consider and comment if any feature of claims 1 and 13 before amendment, and claims 1, 13, and 14 after amendment are not present in the GroinBar product, whether the inclusion of this feature into the GroinBar (either by addition or modification of an existing feature) would have been obvious based on my knowledge of the common general knowledge as it existed worldwide before 23 June 2017.
It is clear from this evidence that Dr Hope was impermissibly led on obviousness. He was provided with the Opposed Application and the details of the Opponent’s GroinBar apparatus. The problem put to him was, in effect, what modifications he would make to the GroinBar product in order that it would be transformed into the claimed invention. For the reasons noted above, that approach is entirely inconsistent with authority and should be rejected.”
I consider that providing the expert with the opposed patent application before asking what obvious modification he would make to the prior art is not the correct approach to collecting evidence about inventive step. This is the ex post facto approach that the courts have repeatedly warned against. Consequently, this aspect of Mr Hope’s evidence on inventive step has little, if any, probative value.
I consider there is insufficient evidence to show that modifying GroinBar to include a rotatable and lockable instrument support would be a matter of routine to a person skilled in the art. Claims 1 and 14 are considered inventive in light of the common general knowledge together with GroinBar.
D9 - US 2011/0224583 (Lequeux)
The Opponent states in their submissions at paragraphs 85-87 (italics in original):
“The instrumentation of D9 (being position sensor 120 and plurality force sensors 130) are mounted on a moveable platform (30, see [0022], [0033], [0034], [0035], claim 1), which is then mountable on the instrumentation support (base 20). The sensors enable the controller (110) to “perform a biomechanical three-dimensional analysis, and to model and objectify the existing force momentum and the quality of the muscular exercise executed in order to provide movement rules and instructions to the person so that he/she can correctly execute a physical rehabilitation and/or training programme.”
D9 thus discloses an instrumentation support (base 20, Figure 1) that is rotatable about a horizontal axis (as shown below in the annotated Figure 1). The base 20 and platform 30 are rotatable about hinge 40. Paragraph 25 relevantly states:
“Fig. 4a is a top view of the rotary rehabilitation apparatus 10. The platform 30 includes a plurality of grooves section dovetail 160. We can fix one or more accessories in selected positions on the surface of the platform 30. We can adapt the device to the desired range of motion and size of the patient. FIG. 4b is a bottom view of the same device. The base 50 is hinged to base 20 by hinges 40. A telescopic rod or rods 170 can adjust the angle of inclination of the base 20 relative to the base 50. We can vary the type of movement to achieve and obtain the trajectories in three dimensions of space.” (Emphasis added).
The instrumentation support is selectively lockable against further rotation (with the base 20 being maintained by fastening means), with paragraph 22 relevantly stating: “The base 20 may be positioned at various angles articulated by a hinge 40 to a base 50.” As shown below in the annotated Figure 1 of D9 (which shows an example of a footrest 60 where the user’s foot is held by a strap), with the horizontal axis identified by the dashed line, and the instrumentation support can rotate about this horizontal axis (defined by the hinge 40) while supported by the upright members:
Lequeux, Figure 1”
The Opponent submits that it would have been obvious to the PSA to modify the GroinBar’s instrumentation support to adopt the rotating mechanisms disclosed by D9 and similarly have a hinge to enable rotating between the upright members to enable the GroinBar to rotate more quickly in situ without the need of first removing the instrumentation support from the upright members to reposition. The Opponent submits that the PSA would have been reasonably expected to combine the two references (being the GroinBar and D9), particularly if the PSA was trying to solve a problem of implementing an instrumentation or instrumentation support that could be rotated while connected to the upright frame, including so that the GroinBar could be used for different muscle groups more efficiently. In these circumstances, he or she would consider (at least) publicly available patents (such as D9) that show similar exercise machines with rotatable elements such as the hinge mechanism in D9.”
The instrument support of D9 is not disclosed to be substantially between two upright members. Instead, as shown in Figure 1, the base (50) appears to be fixed on an exterior surface of the two upright members. The platform (20, 30) (equivalent to the instrument support) extends outwardly from the base (50).
Even if a person skilled in the art were to consider combining the inventions of D9 with the GroinBar in a way suggested by the Opponent (for which there is no evidence), the resulting device would not be the same as the claimed invention as the rotatable instrument support would not be between two upright members.
D2 – US 3,285,070 (McDonough)
The Opponent states at paragraphs 70-73 (italics in original):
“As shown in Figure 1 (below), there is a body-supporting platform (11), rigid frame (19), supported by four upright leg members (21). The horizontal axis is formed by the end of the platform 11 which extends between the upright members (21). The “sensing means” (15) is the instrumentation of the Application’s claims. The instrumentation support (13) is supported by the upright frame (by arms 29). The instrumentation support (13) is slideably mounted on the arms by assembly 37, which allows the height of the instrumentation support (13) to be adjusted (see 2:45-46, and 3:63-67).
The two arm members (29) are shown in a sideways position in Figure 1, but can be rotated so that they are in as vertical position. As stated in D2 at 4:13-15: “Accordingly, it will be seen that the arm members pivot with the disk 47 and spur gear 49 about the axis defined by the stud on which the spur gear is mounted and are, therefore adjustable to various angular positions…”.
The instrumentation support (13) is rotatable around a horizontal axis between circular disks 47 by rotation of the arms 29 (4:13-17; 4:64-57; 5:25-37) mounted thereto. The instrumentation support is selectively lockable against further rotation by means of a rack 57, cam 59, and pinion gear 53 (4:40-58). D2 relevantly states: “Locking of the arm members 29 in a desired angular position is accomplished in the illustrated embodiment by means of a rack 57 (FIG. 2) pivoted at one end within the mounting 31 and movable by means of a cam 59 so as to bring the teeth of the rack into engagement with the teeth of the pinion gear 53.” ”
In the above context, the Opponent submits that D2 includes examples of rotation mechanisms that could be implemented by the PSA into the GroinBar, to rotate, reorientate, and selectively lock in place the instrumentation support. These are the mechanisms to rotate and selectively lock in place the two arms 29, and the mechanism to rotate and selectively lock in place the instrumentation support.
The Opponent contends that it would have been obvious for the PSA to implement this teaching of D2 into the GroinBar to similarly rotate the instrumentation between the two upright members, rather than needing to remove and reorientate, in order to reduce the set-up time during use of the GroinBar. The Opponent submits that the PSA would have been reasonably expected to combine the two references (being the GroinBar and D2), particularly if seeking to find a suitable in-situ rotation mechanism to reduce the set-up time or increase the efficiency of use of the GroinBar in operation, further he or she would consider (at least) publicly available patents (such as D2) that show similar exercise machines with rotatable elements.”
I will discuss the Opponent’s submissions with respect to the combination of D2 and GroinBar later in the decision.
D3 - US 3,752,144 (Weigle)
The Opponent states at paragraphs 76-79:
“D3 discloses an adjustable muscular evaluation apparatus comprising an upright frame (61, Figure 1), including two upright members (62), an instrumentation support (variable angle mount 160, see 8:26-54, Figure 12) that is supported by the upright frame to be adjustable in height (via bar 64 sliding vertically on track members 62, 5:49-59). Instrumentation (force sensors 13, 8:26-44) is mountable on the instrumentation support. The apparatus outputs data signals that identify the force detected by the force sensors (force sensor 13 is coupled by an electrical cable 14 to an electrical display and recording instrument 15, see 4:50-54).
The horizontal axis extends in the direction between the upright members (horizontal bar 64, see Figures 1 and 3), as shown below on an annotated Figure 1.
D3 Weigle, Figure 1
The instrumentation support is rotatable about a horizontal axis. D3 teaches four different types of force sensor supports, being 110 in figures 6 and 7, 160 in Figure 12, 180 in Figure 13, and 200 in Figure 14. Each of these supports includes a C-shaped bracket which allow the supports to be mounted at any position along mounting bar 64. The C-shaped bracket also allows the supports to be rotated around the horizontal axis of mounting bar 64 and are selectively lockable in four orientations against further rotation.
In Figure 12, the “variable angle mounting device” 160 (Fig. 12) can rotate around horizontal bar (64) with respect to the upright frame and is selectively lockable against further rotation (via locking bolt 162, see 8:31-32).”
The Opponent states in their submissions at paragraphs 92-95:
“As outlined in the table above, D3 falls short from claim 1 in that it only discloses a single sensor mounted to the variable angle mounting device 160. With the advent of improved and more compact load cell sensor technology since D3 was filed, a PSA could readily, without undue burden, mount multiple force sensors, with at least one perpendicular to another, to the variable angle mounting device 160.
An alternative approach, is to consider the mounting bar 64 of D3 as being an instrumentation support in which case D3 then falls short by rotating the instrumentation itself rather than the instrumentation support. In this alternative there is no physical limitation to having two sensors 13 of the size taught by D3 mounted to the horizontal mounting bar 64 as the force sensor 13 is removably secured (5:57-58).
The second force sensor could readily, with no modification or effort required, be arranged perpendicularly to the first sensor 13 by mounting its clamp to the bar at 90° or through use of the variable angle mounting device 160. Figures 18 and 19 illustrate the force sensor 13 in both horizontal and vertical orientations to measure the ankle or wrist, respectively, of a patient. D3 therefore explicitly teaches perpendicular orientation.
A PSA at the priority date of the Application, armed with significantly enhanced sensor, data, and computational technology than was available in 1971 when D3 was filed, would readily try adding a second rotatable sensor to be able to take simultaneous measurements of various muscles and muscle groups as intended by D3 (see e.g. 2:25-29, 11:10-12), with the expectation of a useful result.”
Figure 12 of D3 showing the “variable angle mounting device 160” is shown below:
Figures 18 and 19 of D3 are shown below:
A side-view of the apparatus is shown in Figure 2:
Although it appears that two or more force sensors could fit on the mounting bar such that they were in perpendicular arrangement with respect to each other (for example, one pointing toward the user (inward facing), and the other pointing toward the ground (downward facing)), there is no evidence that a person skilled in the art would have done so.
I note that there may be reasons why a person skilled in the art would not mount two force sensors perpendicularly onto the mounting bar of D3. For example, if there were two perpendicular force sensors arranged with one inward facing and one downward facing, then the inward facing force sensor would uncomfortably contact the user’s torso/chest while a downward force sensor was measuring arm strength shown in figure 19. However, the Opponent’s submissions (paragraph 92) suggest that this kind of difficulty could be ameliorated/overcome by further modifying D3 to use smaller force sensors.
On balance, I am not satisfied that a person skilled in the art would, as a matter of routine, modify D3 such that it fell within the scope of claims 1 or 14.
Combination of GroinBar with either D2 (McDonough) or D3 (Weigle)
D2 discloses an instrument support (with a force sensor) that is substantially between, and height adjustable on, two members (that can be set in an upright position); the instrument support is rotatable and selectively lockable. D3 discloses a force sensor that is rotatable and selectively lockable on a cross bar that is height adjustable on two upright members. D2 and D3 do not disclose multiple perpendicular force sensors.
GroinBar discloses force sensors on an instrument support that is substantially between, and height adjustable on, two upright members. GroinBar does not disclose the instrument support is rotatable and selectively lockable. As discussed above, for explanatory purposes only I will assume that the GroinBar discloses perpendicular force sensors, however this is not clearly shown in the GroinBar evidence (D10 and D11).
Goinbar & D2 US 3,285,070 (McDonough)
The Opponents states at paragraph 73:
“In the above context, the Opponent submits that D2 includes examples of rotation mechanisms that could be implemented by the PSA into the GroinBar, to rotate, reorientate, and selectively lock in place the instrumentation support. These are the mechanisms to rotate and selectively lock in place the two arms 29, and the mechanism to rotate and selectively lock in place the instrumentation support. The Opponent contends that it would have been obvious for the PSA to implement this teaching of D2 into the GroinBar to similarly rotate the instrumentation between the two upright members, rather than needing to remove and reorientate, in order to reduce the set-up time during use of the GroinBar. The Opponent submits that the PSA would have been reasonably expected to combine the two references (being the GroinBar and D2), particularly if seeking to find a suitable in-situ rotation mechanism to reduce the set-up time or increase the efficiency of use of the GroinBar in operation, further he or she would consider (at least) publicly available patents (such as D2) that show similar exercise machines with rotatable elements.”
In D2, the rotatability of the instrument support is necessary because the arm members (equivalent to the upright frame of the presently opposed application) is also rotatable. That is, when the arm members are rotated and fixed at a particular angle, the instrument support must also be rotated and fixed so that the user’s leg can press against the pressure sensor (such that the direction of movement of the leg is aligned with the axis of the force sensor). In contrast the GroinBar has an upright frame that is not rotatable so the instrument support does not need to be rotatable. Although it is possible that a person skilled in the art could recognize that the rotatable instrument support of D2 could be used with a non-rotatable (vertical/upright) frame, this is not inevitable. A person skilled in the art would not be inexorably led to combine the rotatable instrument support of D2 with the multiple perpendicular sensors and fixed upright frame of GroinBar.
I am not satisfied that a PSA would, as a matter of routine, combine the teachings of D2 with the GroinBar to arrive at an invention that fell within the scope of the present claims.
Goinbar & D3 US 3,752,144 (Weigle)
The Opponent states at paragraph 82:
“The Opponent submits, including in light of the above, that D3 is another example of a mechanism to rotate that could be implemented by the PSA to rotate, reorientate, and selectively lock in place the instrumentation support of GroinBar. It would have been obvious to modify GroinBar’s instrumentation support to adopt this teaching of D3 to be able to rotate between the upright members to enable the GroinBar to rotate more quickly without the need of first removing the GroinBar from the upright members. The Opponent submits that the PSA would have been reasonably expected to combine the two references (being the GroinBar and D3), particularly if the PSA was trying to solve a problem of implementing an instrumentation or instrumentation support that could be rotated while connected to the upright frame, including so that the GroinBar could be used for different muscle groups more efficiently. In this context, he or she would consider (at least) publicly available patents (such as D3) that show similar exercise machines with rotatable elements.”
In the GroinBar, the end sleeves of the instrumentation support are slidably mounted on to the respective upright members. In D3, the instrumentation support (the force sensors) are mounted onto the mounting bar with a C-shaped mounting bracket.
The combination of the teachings of GroinBar with D3 would require the instrumentation support of GroinBar to be modified such that: a) the end sleeves were removed, and b) a C-Shaped mounting channel/bracket extending along its length was added so it could be mounted onto the mounting bar of D3, and c) a clamp (or locking pin) was added to secure the instrumentation support to the mounting bar.
To fit a C-shaped mounting channel/bracket extending along the length of the GroinBar, further modifications would also be required since each of the four longitudinal sides of the GroinBar has elements on it: The top side has a handle, the vertical sides have channels allowing the force sensors to be repositioned, and the bottom side has the force sensors. It is plausible that the elements of the GroinBar could be re-arranged such that one side was free to form a channel therein. However, the Opponent has not articulated (nor is there evidence) about how this could be done.
I am not satisfied that a PSA would, as a matter of routine, combine the teachings of D3 with the GroinBar to arrive at an invention that fell within the scope of the present claims.
Inventive step conclusion
The Opponent’s inventive step arguments in relation to the prior art and common general knowledge (considered in the various combinations) are not successful. Even assuming the multiple perpendicular force sensors are disclosed in GroinBar (which the evidence does not clearly show), the Opponent’s inventive step arguments (especially in the absence of supporting evidence) are not persuasive. The claimed invention is considered inventive.
Secret use
Legal principles
Section 18(1)(d) of the Act relevantly states: “was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person or the patentee’s or nominated person’s predecessor in title to the invention.” The legal principles do not appear to be in contest. It was said relevantly by Greenwood J in Southern Cross Mining Services Pty Ltd v Mickala Mining Maintenance Pty Ltd [2020] FCA 1064 at [82]:
“The relevant “use” engaging the statutory conception of “not secretly used” in s 18(1A)(d) is taking a step (perhaps not a step constituting an act falling within the term “exploit”, but nevertheless possibly including such an act in the relevant class of case) from which it can be concluded that the patentee has, before the priority date, “reaped commercial benefit from what was done before the priority date” (Azuko, Gyles J at [181])...”
Consideration
The Opponent states at paragraphs 111-114:
“For this ground, the Opponent relies on the July 2017 KangaTech Information Memorandum that was filed as part of its Evidence in Support in January 2021. Relevantly, page 12 (extracted below), shows that there were already (within one month of the priority date) three “customers” of the Kangatech product (which the Opponent submits embodied the claims of the Application). One of the three customers is North Melbourne, obviously based within the patent area, being Australia.
Further, this page shows that the Applicant was in “Active Sales Discussions” with dozens of third parties, including Australian entities including Cricket Australia, Queensland Reds, Melbourne Storm and others.
The very definition of the word ‘customer’ means those are entities from which the Applicant was already deriving a commercial benefit. The Opponent further submits that premature sales discussions would similarly result in an unjust downstream commercial benefit to the Applicant. Given the vast number of discussions, and the immediate timing of the KangaTech Information Memorandum after the Application was filed, it is apparent that the Applicant secretly used the invention as claimed in Australia.
In July 2022, the Opponent sought leave to file a request for documents under s 210(c) of the Act, to seek documents in respect of those sales and discussions. Those requests were refused on 3 August 2022. Nevertheless, the Opponent submits that the above shows that the Applicant was either (i) secretly using the claimed invention within the patent area in contravention of s 18(1)(d) of the Act; or (ii) if such use was public, then making novelty destroying disclosure(s). On either basis, the grant of this Application should be refused.”
The Opponent relies on information that was published one month after the priority date. The implication being that by already having three customers at that point, the Applicant could have been secretly using the invention before the priority date.
Although one month is relatively small amount of time between the priority date and gaining three customers, there is nothing to suggest that this is impossible. Moreover, there is nothing in the opponent’s evidence that necessarily implies that the Applicant was secretly using the invention (in a commercial capacity) before the priority date.
Conclusion
The claimed invention does not lack an inventive step. The claimed invention is supported by the specification. The claimed invention was not used secretly before the priority date. The Opposition is unsuccessful.
Costs
It is the usual practice that costs follow the event. However, the specification was amended during the opposition. Based upon the evidence supplied in this opposition, the Applicant can be taken to have essentially conceded the opposition had merit up to the time the amendments were allowed. After the amendments were allowed, the Opponent has been unsuccessful in their opposition.
Costs are awarded according to Schedule 8 against the Applicant up to the day the parties were informed that the amendments had been allowed (10 May 2022). Costs are awarded according to Schedule 8 against the Opponent from the day after the parties were informed the amendments had been allowed (11 May 2022).
Xavier Gisz
Delegate of the Commissioner of Patents
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