SUMMARY JUDGEMENT IN PATENT CASES
The recent decision of the Federal Court of Australia in Expo-Net Danmark A/s v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710 makes it clear that summary judgement will be a rare occurrence in a patent dispute.
The Facts
The Applicant, Expo-Net alleged infringement of Australian Patent No 2006226731 and Australian Innovation Patent No. 20070100339 directed to a method and apparatus for producing structural elements of a contact filter block. The respondent Buono-Net cross-claimed by way of revocation on a number of grounds.
However, in an amended notice of motion Buono-Net sought summary judgement under section 31A(1) and (2) of the Federal Court of Australia Act 1976 (Cth). Particularly Buono-Net sought summary judgement on the sole ground that the Patents in question did not “describe the invention fully, including the best method known to the applicant of performing the invention” as required by s40(2)(a) of the Patents Act 1990 (Cth).
Buono-Net alleged that the best method known to the applicant had not been described. Neither specification (the disclosures were the same) gave any specifics of the foaming agent used, preferring to describe foaming agents by their properties and function. Buono-Net relied on the affidavit of the inventor that he had tried a number of foaming agents and only two had produced useful results and alleged that the failure to disclose the foaming agents that did not work represented a failure to disclose the best method.
Summary Judgment
Of most interest in the case is the Courts consideration of when there can be held to be “no reasonable prospect of successfully defending/prosecuting the proceeding” in accordance with Section 31A(1)/(2). Bennett J summarised at paragraph 8 a number of principles which aid in the determination of what is a “reasonable prospect”. Of particular relevance to the decision was the principle that:
“More complex cases are unlikely to be capable of being resolved by summary judgment without discovery and oral evidence. Where an application requires consideration of apparently complex questions of fact, the questions are unlikely to be capable of being resolved without conducting a mini trial on the documents without discovery and without oral evidence. “
In discussing whether there was a reasonable likelihood that Expo-Net could successfully defend against Buono-Net’s allegation of the failure to disclose the best method, the Court commented that
“…questions of patentability bases are complex and the different grounds of alleged invalidity may interrelate in evidence and submission.”
Best Method
In discussing whether the best method was disclosed, Bennett J cited as useful the test set down in Enka BV v E I Dupont De Nemours & Co (1987) BP 13 (TPD). This decision of the Supreme Court of South Africa Transvaal Provincial Division established that for revocation on the ground of lack of best method to succeed the applicant must establish:
“(a) the method which the patentee failed to disclose is a method of performing the invention;
(b) the method is in fact a better method of performing the invention than the method disclosed in the specification;
(c) the method was known to the patentee at the time when the application for the patent was lodged at the Patent Office;
(d) the method is not disclosed in the specification; and
(e) the patentee knew that the method was better than the method(s) described in the specification.”
Bennett J went on to summarise:
“In order to ascertain the best method of performing an invention, the cases illustrate that it is necessary first to understand what the invention is and to consider the method described in the Patents of performing that invention. The two may need to be considered concurrently.”
Decision
Bennett J. held that Expo-Net had a reasonable prospect of defending the cross-claim for revocation for two reasons:
Firstly, there was evidence in the proceedings that the skilled reader of the specification would find the invention obvious and accordingly it would be a matter of routine to determine foaming agents that would achieve the desired result for the particularly selected conditions.
Secondly, the inventor’s evidence related to an early period in the experimentation leading to the invention. It did not consider a wide range of temperatures or pressures at which different foaming agents may be effective.
On either of these points Bennett J. considered that it was a
“complex question to determine the need for a description or disclosure of details of the choice of foaming agent to the skilled reader where there is expert evidence that such matters were part of the common general knowledge of the person of ordinary skill in the art and were matters of routine experimentation.”
Accordingly, the application for summary judgement was dismissed.
Concluding remarks
Summary judgment is rare in patent cases. Questions of invalidity in patent cases are considered in light of what would be understood by the hypothetical “person skilled in the art” in light of the common general knowledge imputed to that person. What the person skilled in the art would understand, and indeed what is the common general knowledge in a particular field is a finding of fact for which the Court relies on expert evidence. Thus patent cases will almost invariably be “complex” requiring discovery and oral evidence, effectively ruling out the possibility of summary judgement. Expo-Net Danmark A/s v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710 is a good illustration of this. We will await with interest the Courts substantive consideration of “best method”.
July 2011 – David Nowak and Frank Callus
