What will make or break a patent in the courts today?
The Rising Trend In Patent Litigation: Sufficiency and Support attacks
There are certain disclosure requirements that your patent applications must meet to be granted. The description must describe the invention in a way that a skilled person can replicate the invention without undue burden. The claims must be supported over their entire breadth by the disclosure. Amendments must not result in a claim that travels beyond the contribution of the invention.
The following recent cases stress the need for inventors and patent applicants to provide the right input during the drafting process. Detailed and considered patent specifications will likely stand up better in court.
Case Study: Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023]
In the recent appeal Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (13 November 2023), the need for a patent specification to be drafted to meet sufficiency and support requirements was critical to the Court’s finding of invalidity.
As the specification was not considered to adequately describe that the device could be made in a particular material, the patent was considered invalid. The patentee could not enforce rights against a potentially infringing party who had made the device out of that material.
While it was previously uncommon that the claims of a patent will be read down to a particular material, in this case it was considered that the contribution of the invention to the art lay in making the product out of steel and that choice of material “significantly affects the value or utility of the product” thus needing to be a “relevant range”.
In particular, the Full Court stated at [479]:
… the Patents provide no guidance to the person skilled in the art seeking to perform the invention by making a safety system out of a material other than steel. In order to make a safety system out of plastic (or another material other than steel) the skilled person would need to undertake a process of prolonged research, enquiry and experiment. It would not be the work of a non-inventive skilled person, requiring an exercise of inventive skill or ingenuity or undue effort.
A way to strengthen the patentees position would have been to consider what other variations or materials the invention could have been made of and to include this in the description.
Case Study 2: Glass Hardware Australia Pty Ltd v TCT Group Pty Ltd [2024]
In Glass Hardware Australia Pty Ltd v TCT Group Pty Ltd [2024] FCAFC 95 (17 July 2024) [Priority date], the role of external sufficiency in establishing a priority date of was emphasised.
A divisional innovation patent (belonging to Glass Hardware Australia Pty Ltd) described a hinge that could be used for soft closing glass panelled doors, such as shower screens or pool fences. In the patent specification, two embodiments were disclosed, in particular, direct and indirect contact between the dampener and the second leaf assembly.
The allegedly infringing party (TCT Group Pty Ltd), which provided hinges with indirect contact between a dampener and a second leaf assembly, had started selling the hinges before the priority date of the divisional innovation patent.
The parent patent, which was filed before TCT Group started selling their product, did not clearly describe the indirect embodiment. Instead, it was limited to a description of a hinge requiring direct contact.
The requirement for meeting external sufficiency as per the Patents Act 1990 (Cth) s 40(2), is that the invention be described “in a manner that (was) clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.”
It followed that Glass Hardware were unable to make out their earlier priority claim which meant that the claims of the divisional patent lacked novelty in view of TCT Group’s hinges.
This may have been avoided if variations had been considered earlier and included in the parent or a divisional with the new content had been filed as soon as the new subject matter was invented.
Case Study 3: Cytec Industries Inc. v Nalco Company (No 4) [2024]
In Cytec Industries Inc. v Nalco Company (No 4) [2024] FCA 1318 (15 November 2024), the judge upheld that any claim amendments must not travel beyond what is disclosed in the specification.
Nalco Company (Nalco), part of the global chemical company Ecolab, applied for a patent for ‘reducing aluminosilicate scale in the Bayer process’. The Bayer process is a method of extracting alumina from bauxite in order to produce aluminium and is well known in the mining world.
However, the process can result in an undesirable scale of aluminosilicate to build up on the equipment used to implement the Bayer process. To prevent this scale from forming, the patent specification proposed chemicals additives which were all small molecules.
Cytec opposed Nalco’s patent on multiple grounds and after a series of amendment attempts, the matter ended up in Federal Court. Cytec opposed the latest round of amendments to claim 1 based on lack of support, lack of clarity, claiming of matter that extends beyond that disclosed in the specification, and failure to disclose the best method.
Essentially, an amendment to a claim must not cause the claim to travel beyond what is disclosed in the specification. When a claim is made, there must be sufficient description to enable the person skilled in the relevant art to perform the invention across the entire scope of each claim, without undue experimentation.
It was found that the technical contribution of the claims was not greater than the discovery that small molecule-based inhibitors were effective against scale buildup of aluminosilicate.
It is important to think of variations or as many practical implementations (embodiments) of the invention, and include these in the description, as claims can only be drawn from subject matter later. It is also important to keep an eye on competitor filings and consider workarounds to the claims.
Key Takeaways
- A patent specification is a technical and legal document that needs to hold up in court if challenged
- The material included in patent specifications matter. It is strongly advised not to self-file a patent application
- Provide variations and alternative embodiments of the invention
- Keep an eye on competitor filings
- Consider work arounds to the claims presented to you and let your patent attorney know your thoughts
Authored by Naleesha Niranjan
