FEDERAL COURT OF AUSTRALIA
Vald Pty Ltd v KangaTech Pty Ltd (No 5) [2024] FCA 333
File number(s): QUD 440 of 2019 Judgment of: DOWNES J Date of judgment: 5 April 2024 Catchwords: PATENTS – patent for apparatus for use in assessing the strength of at least one knee flexor muscle of a subject – claim construction – patent for method of assessing strength of at least one knee flexor muscle using an apparatus – infringement – validity
PATENTS – claim construction – whether results obtained from use of apparatus and method must be reliable – relevance of consistory clauses to construction of claims – whether disguised method claim – whether product claim limited by result
PATENTS – validity – sufficiency and support – whether patent met requirements of ss40(2)(a) and 40(3) Patents Act 1990 (Cth) if claim 1 was construed as only requiring one leg to be secured by securing member – whether lack of inventive step
PATENTS – infringement – infringement conceded in relation to original device and later device prior to software modifications – no infringement found in relation to device after software modifications made – whether infringement within meaning of s117(2)(b) Patents Act 1990 (Cth) – whether instruction or inducement within s117(2)(c) Patents Act 1990 (Cth)
EVIDENCE – infringement sought to be established by expert evidence based upon evidence of demonstrations performed on apparatus by non-independent person – relevant facts relating to demonstration not adduced into evidence – impact on weight attached to videos of demonstrations and expert evidence
Legislation: Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) s 2, Sch 1 item 55
Patents Act 1990 (Cth) ss 7, 30, 40, 116, 117, 138, Sch 1
Patents Regulations 1991 (Cth) reg 3.5AA(a)
Cases cited: Airco Fasteners Pty Ltd v Illinois Tool Works Inc (2023) 170 IPR 225; [2023] FCAFC 7
Aktiebolaget Hässle v Alphapharm Pty Limited (2002) 212 CLR 411; [2002] HCA 59
Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd (2015) 114 IPR 28; [2015] FCA 735
AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356; [2015] HCA 30
Axent Holdings Pty Ltd v Compusign Australia Pty Ltd (2020) 154 IPR 431; [2020] FCA 1373
Bitech Engineering v Garth Living Pty Ltd (2009) 84 IPR 78; [2009] FCA 1393
Boehringer Ingelheim Animal Health USA Inc v Elanco New Zealand (2021) 164 IPR 17; [2021] FCA 1457
D’Arcy v Myriad Genetics Inc (2015) 258 CLR 334; [2015] HCA 35
Davies v Lazer Safe Pty Ltd (2018) 132 IPR 202; [2018] FCA 702
Foxtel Management Pty Ltd v Advanced Technology Group Pty Ltd (2021) 166 IPR 632; [2021] APO 36
Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230; [2005] FCAFC 220
Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd (2021) 284 FCR 174; [2021] FCAFC 65
Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft (2014) 222 FCR 336; [2014]…
Keep reading for free
Create a free CaseChat account to read Vald Pty Ltd v KangaTech Pty Ltd (No 5) and more:
- Read every judgment in full
- Ask AI and get answers linked to paragraphs
- See how each paragraph was cited in later cases
- Download judgments as PDF or Word
One click creates your free account or signs you in.
By continuing you agree to the Terms and Privacy Policy.
- Case
- [2024] FCA 333
- Decision Date
CaseChat Overview and Summary
The legal issues included the construction of the claims in the patents, particularly whether the results obtained from using the apparatus and method needed to be reliable and whether the claims were limited by consistency clauses. The court also needed to determine whether the product claim was limited by the result and whether the method claim was a disguised product claim. Additionally, the court had to assess the validity of the patents, specifically whether they met the requirements of sufficiency and support, and whether there was a lack of inventive step. The court also considered whether there was infringement of the patents, particularly in relation to the device after software modifications were made.
The court found that the claims in the patents should be construed to require the results obtained from using the apparatus and method to be reliable. The court held that the consistency clauses were relevant to the construction of the claims and that the product claim was not limited by the result. The court also found that the method claim was not a disguised product claim. Regarding validity, the court held that the patents met the requirements of sufficiency and support, and there was no lack of inventive step. As for infringement, the court found that there was infringement in relation to the original device and the later device before the software modifications were made. However, the court did not find infringement in relation to the device after the software modifications were made, as the modifications were not within the scope of the claims.
The court ordered that the parties were to confer and provide an agreed form of order to the chambers of Downes J by a specified date. If the parties were unable to agree, they were to provide their proposed drafts of the order and directions to the court by a later date, accompanied by written submissions. The entry of orders was to be dealt with in accordance with Rule 39.32 of the Federal Court Rules 2011.
Orders
Orders of the court
1. The parties are to confer and provide to the chambers of Downes J an agreed form of order giving effect to the reasons for judgment and proposed directions as to the further conduct of this proceeding by 12.00 pm AEST on 12 April 2024.
2. If the parties are unable to agree upon a form of order and proposed directions, the parties shall each provide their proposed draft of same to the chambers of Downes J by 12.00 pm AEST on 16 April 2024 accompanied by any written submissions not exceeding three (3) pages.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
Full text does not contain this section.
Evidence
Evidence Before The Court
Full text does not contain this section.
Decision
Reasons for decision
Full text does not contain this section.
Ratio Decidendi
Legal Principle Established
Full text does not contain this section.