Patent validity – sufficiency and support - patent infringement – construction of claims
Sufficiency and support are revealing themselves as powerful weapons in a patent revoker’s arsenal. The Full Court has continued this trend by upholding the primary judge’s findings that Jusand’s patent is invalid for lack of sufficiency and lack of support. In a judgment written by Justice Perram (with whom Nicholas and McElwaine JJ agreed), the Full Court provides a thorough analysis of the applicable principles, including the application of the UK concept of “relevant range” in the context of a method claim.
Jusand sought special leave to appeal, but that application was recently rejected by the High Court on the grounds that the appeal did not have sufficient prospects of success and the proceedings were not a suitable vehicle for the point of principle sought to be raised.
Background
Jusand Nominees brought patent infringement proceedings against Rattlejack Innovations, and three other respondents, asserting that three of its mining industry patents for a safety system for protecting against drill rod failure were infringed by Rattlejack’s SafetySpear product. Rattlejack cross-claimed, seeking revocation of the patents.
For the drill-rod-failure uninitiated, the system involves the use of a product which works as a “plug” in a bore hole to stop very heavy drill rods, that have broken off up the hole they were being used to drill, from accidentally dropping on people working in an underground mine (that is, a mine where bores are drilled upwards from an underground cavity into rock strata towards the ore deposit above). The following adaptation of figure 1 of the patent illustrates the utility of the system:
B = bore
O = ore body
F = rock face
C = cavity (underground)
R = rock strata
S = broken drill rod section
The “plug” of the invention is an apparatus inserted into the bore hole which relevantly comprises an “anchor member” holding the apparatus in place and an “impact reduction member” which reduces the impact of the broken drill rod.
At first instance, Rofe J found that the SafetySpear did not infringe and that the patents should be revoked for lack of sufficiency (s 40(2)(a) of the Patents Act 1990 (Cth) (Act)) and lack of support (s 40(3) of the Act).
Jusand appealed those findings in relation to one of the three patents. There were three issues in the appeal before Perram, Nicholas and McElwaine JJ:
- The proper construction of claim 1.
- Whether the SafetySpear infringes claim 1, properly construed.
- Whether the patent was invalid for lack of support and sufficiency.
Consideration of issues 1 and 2 involved the application of relatively straight forward construction principles and is not the subject of detailed consideration here. It is sufficient to say that the Full Court affirmed Justice Rofe’s finding of infringement and concluded that:
- an “anchor member” in the context of the specification was a member which could only move by a de minimis amount (i.e. less than 5mm) on impact (c.f. Jusand’s construction which would have allowed it to move considerably); and
- Jusand’s evidence was insufficient to prove that the SafetySpear moved by less than 5mm or that the SafetySpear was suitable for installation at or near to the rock face (as required by the claims).
The Full Court’s consideration of issue 3 is of most interest to patent practitioners. This section of the reasons constitutes the first appellate application of post-Raising the Bar sufficiency and support principles and firmly inserts into Australian law the UK “relevant range” approach.
Sufficiency
The requirement in s 40(2)(a) of the Act is referred to as a sufficiency requirement and, in the UK, failure to fulfil the requirement is referred to as “classical insufficiency”. As the Full Court put it, “sufficiency and support are large topics” but this appeal focused on the operation of those principles “where the claims of a patent are expressed such that it is possible to perform the invention in a range of ways.” The application of this decision can be seen as limited in this sense.
At a high level, the issue for the Full Court to decide was whether it was permissible for the patent to confer a monopoly in relation to a safety system fabricated from any material, in circumstances where the specification only disclosed how to make it from steel (and to a limited extent, a polymer foam material which, for reasons explained in the decision, was not relevant).
In resolving this question, the Full Court took direct guidance from two UK decisions: Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27; RPC 22 (Regeneron) and Illumina Cambridge Ltd v Latvia MGI Tech SIA [2021] EWHC 57 (Pat); RPC 12 (Illumina). It is useful to take a brief detour to consider these cases.
Regeneron
Regeneron concerned a patent for the creation of transgenic mice who could produce human antibodies. The claims were drafted such that they included within their scope a mouse with any segment of the human variable region, up to and including the whole human variable region. This meant that the claims covered mice who could produce the full range of human antibodies. The Court found that the common general knowledge, combined with the teaching of the patent, was such that the skilled person could only produce a mouse with a small subset of the human variable region (and in turn, a small subset of the full range of human antibodies), and that the creation of mice for other parts of the human variable region would have involved considerable inventiveness and substantial work. Thus, the patent lacked sufficiency. In arriving at this conclusion, Lord Briggs for the majority of the Supreme Court set out the relevant test, including the following paragraph which encapsulates the concept of “relevant range” (emphasis added):
Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made.
This statement makes clear that a patent cannot be defeated by simply conjuring up a number of variables applicable to a claim. The range in question must be relevant.
Illumina
Illumina was decided after Regeneron, and related to a gene sequencing invention. The method claimed involved monitoring the incorporation of nucleotides into a chain and required that “at least one” incorporation should be of a nucleotide specified elsewhere in the patent. This meant that the invention could be performed in a range of ways and the question was whether the specification enabled the invention over that range. Birss J (as his Lordship then was) considered the “relevant range” analysi,s as articulated by Lord Briggs, and observed that, while that test was couched in the terms of a product (i.e. transgenic mice), it could be applied to processes. Birss J then went on to provide the following articulation of the test which builds on the concept of “purpose” developed by Lord Briggs (emphasis added):
An example of another range, not relevant in the Regeneron sense, will be a descriptive feature in a claim (whether structural or functional) which can cover a variety of things, but for which that variety does not significantly affect the value or utility of the claimed product or process in achieving its relevant purpose. The relevant purpose is judged in all the circumstances, starting from the terms of the claim itself but also, where appropriate, by reference to the essence or core of the invention.
Birss J explained that the “essence or core of the invention” is distinct from the invention but is “closely related to the technical contribution and/or the inventive concept.”
Birss J explained the concept by reference to a, appropriately very British, teapot. The example provided was of a new teapot which was inventive because its spout was shaped in a new way so as not to drip. If the claim was drafted without reference to a specific material (or with reference to any material), it would include within its scope teapots made of any material. However, that fact would not render the claim bad for lack of sufficiency, because the range of potential materials is not relevant to the invention. That is, it is not a “relevant range” in the Regeneron sense. While the material the teapot is made of is plainly relevant to its function, Birss J made clear that the kind of relevance required is a “more particular concept which depends on examining all the circumstances, and depends not simply on the invention (that is to say the claim as drafted) but also on what I can only think of calling the essence or core of that invention (closely related to the technical contribution and/or inventive concept).”
The Full Court’s approach
The Full Court embraced Birss J’s interpretation of the principle in Illumina but made clear that the above were not absolute statements and that the approach needs to be carefully adapted so that it applies to inventions of all kinds and not just product inventions. The Full Court articulated the appropriate approach for the determination of the “essence or core of that invention” as follows:
A good place to start is with the invention as it is claimed but the inquiry can extend into the invention’s essence or core. An assessment of that essence or core is likely to include a consideration of the patent’s technical contribution to the art and may involve an assessment of what it is that makes the invention inventive.
The Full Court also made clear that, at least in relation to a product claim, a patent’s technical contribution to the art is the product and not the inventive step. In the context of a method claim (as was the claim in suit), the Full Court said that the technical contribution to the art is not the same as the inventive step, although the inventive step may constitute an element of the contribution to the art.
In applying the “relevant range” approach from Regeneron and Illumina to the patent in suit, the Full Court found as follows:
- The innovative step was the idea of converting downward weight force into lateral braking forces using the interaction of an anchor member with a tapered impact reduction member, but its technical contribution to the art was taking that idea and explaining how to use it in a safety system using steel.
- It was impossible to accept the Appellant’s submission that the material from which the safety system is to be made is irrelevant – this would ignore the context in which the innovative concept is deployed in the invention claimed. The materials engineering issues involved in creating anchor and impact reduction members which would withstand the instantaneous application of forces of the requisite magnitude were not trivial.
- Thus, the range of materials from which the safety system could be made was part of the essence or core of the invention, would affect its utility for its purpose and so, was a relevant range.
- The skilled addressee would understand that the safety system could be plausibly constructed from a range of materials including plastics, fibreglass or carbon fibre, but would readily disregard materials which would not work such glass or paper. Thus, glass and paper did not form part of the relevant range.
- The specification did not provide any guidance on the selection of materials other than steel, and the design of the safety system with those other materials would involve inventiveness and undue burden. Once a material other than steel was selected, the skilled addressee would need to “invent the Safety System from scratch”.
In arriving at its conclusion that the patent lacked sufficiency, the Full Court at [220] drew a distinction between the safety system and Birss J’s teapot. The Full Court said that the “critical difference” between the safety system and the teapot was that, while Birss J could assume that the person skilled in the art could select an appropriate material for the teapot without inventive step or undue burden, that assumption could not be made in the case of the safety system.
These authors assume that the Full Court’s observation that the skilled person in the art could select an appropriate material for the teapot without inventive step or undue burden, must be referring to the fact that the “essence or core” of the teapot patent related to the spout design and so its material was not a variable which significantly affected the value or utility of the teapot as claimed and thus, variation in that material was not a relevant range. We do not think the Full Court could have been saying that the ability of the skilled person to select an appropriate material for the teapot without inventive step or undue burden itself resulted in the material not being a “relevant” range, because this would be inconsistent with Birss J’s analysis. In Illumina, Birss J postulated that the notional teapot claim might cover types of teapots which the specification does not enable (such as one constructed from an as-yet unknown material), but that did not matter because, when considered in light of the essence or core of the invention, there was no relevant range of materials in the requisite sense. However, the above statement from Birss J should not be taken to suggest that the teapot patent did not need to disclose any means to identify and use materials to make the teapot. Birss J’s analysis included the assumption that the skilled person could choose, identity and test suitable materials at the priority date to make the teapot – China would work, and chocolate would not. This suggests a threshold sufficiency requirement which is separate from the ‘relevant range’ assessment.
Support
The Full Court found that this was a case where the sufficiency and support analysis was fundamentally the same. Thus, the Full Court disposed of the support part of the case in three paragraphs. Putting the analysis in “support” language, the Full Court stated:
The invention as claimed was a safety system able to be constructed from a range of materials but the specification showed only how to make it from steel. Thus the monopoly defined by the claims exceeded the technical contribution to the art.
…
[T]he inventive and burdensome task of using other, possibly superior, materials lies
in the inventive future. The Appellant is not entitled to prevent others from using its insight to create inventions from materials other than steel when the only invention it has actually disclosed is one made from steel. If the selection and design of the Safety System in these other materials did not require inventive skill or undue burden, the answer would be different. However the short of the matter is that these endeavours do involve inventive skill and undue burden. In effect, therefore, this case is indistinguishable from Regeneron.
Authors’ observations on the ‘relevant range’ approach
From a revoker’s perspective, the Full Court’s reasoning fortifies a view that has been developing over the past 5 or so years in Australian patent law – lack of sufficiency and support are powerful weapons in invalidating (or narrowing) patent claims. This decision makes clear that there are two critical considerations when running such an attack: (1) precisely identifying the “essence or core” of the invention so that the “range” in question becomes relevant; and (2) adducing compelling evidence as to the burden associated with developing a product/process/method within that relevant range.
From a patentee’s perspective, one must ask whether the relevant range approach creates too much uncertainty. The Full Court has left a lot of flexibility in the interpretation of the “essence or core” of the invention, making it potentially very difficult for patentees to ensure that their specifications are drafted to cover all possible “relevant ranges”. Unintended consequences may include the generation of longer and more expensive patents, for example, showing how to make the system work with a vast range of materials, or the inclusion of cascading claims dealing with potential “relevant ranges” (for example, claims to products of materials a, b, c…) in order to avoid the outcome suffered by Jusand.