Vald Performance Pty Ltd v Kangatech Pty Ltd - [2024] APO 15

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2024] APO 15
Decision Date: 3 April 2024

CaseChat Overview and Summary

Vald Performance Pty Ltd (the Opponent) opposed the grant of a patent to Kangatech Pty Ltd (the Applicant) for a testing and training apparatus. The invention involved a height and orientation adjustable instrumentation support containing two force sensors, allowing the measurement of maximum voluntary contraction (MVC) of a user in two directions without significant adjustment to the device. The Opponent argued that the Applicant’s claims were not supported by the specification, lacked an inventive step, and had been secretly used in Australia prior to the priority date.

The court examined the support requirement under section 40(3) of the Patents Act 1990 (the Act). The court found that the claims, while not limited to the precise configurations of the embodiments, were supported by the specification. The technical contribution lay in the functions of the invention, not the specific embodiments, and a person skilled in the art could readily conceive of alternative means to achieve the claimed functions.

The inventive step was assessed by comparing the claimed invention with the prior art base, including common general knowledge, as at the priority date. The court considered various prior art documents and their combinations but found no evidence that a person skilled in the art would have been led to modify the prior art to arrive at the claimed invention. The Opponent's arguments, particularly those based on expert evidence, were deemed flawed due to the ex post facto approach.

Regarding secret use, the court found that the evidence did not necessarily imply that the Applicant was secretly using the invention before the priority date. The court concluded that the claimed invention did not lack an inventive step, was supported by the specification, and had not been secretly used before the priority date. Consequently, the opposition was unsuccessful.

The court awarded costs according to Schedule 8 against the Applicant up to the day the parties were informed that the amendments had been allowed and against the Opponent from the day after the parties were informed the amendments had been allowed.

Orders