“Sketchy” prior art renders Globaltech device patent not obvious

Globaltech Corporation Pty Ltd v Reflex Instruments Asia Pacific Pty Ltd [2022] FCA 797

12 July 2022

Federal Court of Australia

Jagot J

Background

Globaltech Corporation Pty Ltd (Globaltech) brought proceedings against Reflex Instruments Asia Pacific Pty Ltd (Reflex) for infringement of its Australian Patent No. 2012297564 (Patent) directed to an optical device for use with mining equipment.  Reflex did not deny that its products fell within the scope of the claims but counterclaimed for revocation on the basis of lack of novelty and inventive step.

The patented invention was a device used in conjunction with a core drill for gathering data in a borehole during a drilling operation.  When core samples are retrieved from a borehole, core orientation data provides information about the geospatial orientation of the samples in their original underground location, allowing geologists to correlate recovered samples to build a three-dimensional profile of subsurface resource deposits.   The prior art described systems to capture such data which sit within the core drill, and which had to be disassembled from the drill before analysis.  The patented device transferred such data from the subsurface tool to a device maintained at the surface by means of an “electromagnetic signal direction altering means”, such as an optical mirror, which diverts the signal and transmits data through an aperture on a side wall of the device.   

Key Issues

The patent was governed by the Patents Act 1990 (Act) in its post Raising the Bar form.

Reflex relied on three key pieces of prior art in support of its novelty case, which were dependent on the construction of various claim features.

Reflex further asserted that the patent was obvious in light of common general knowledge (CGK) alone under s7(2) of the Act, and under s7(3) when considered in light of the prior art documents.  The obviousness case relying on CGK alone was based on the evidence of Professor Tapson, who undertook a hypothetical design task to design a subsurface instrument for transferring data as at the priority date.

Outcome

Having construed a number of technical features of the claims, Jagot J concluded that none of the prior art documents disclosed all of the features of any of the claims of the patent, so that lack of novelty was not made out.

As to obviousness, Jagot J made a number of criticisms of Professor Tapson’s evidence, concluding that he was not representative of the hypothetical non-inventive skilled addressee before the priority date.  In particular her Honour found that he approached the task armed with information that was not established to be part of the CGK: (i) the design of a Reflex product sold before the priority date (information provided to him by Reflex’s lawyers), and (ii) information about another product covered by the patent (which he had obtained through his retainer as an expert in another proceeding).  Jagot J further found that in light of this knowledge, Professor Tapson had been alerted both to the perceived problem to be addressed in the patent and the solution by the nature of his instructions from Reflex’s lawyers.  Added to this was the fact that her Honour found the evidence of the CGK to be “sketchy”, and Professor Tapson to be an “inventive and imaginative” expert whose evidence did not consistently distinguish between his own knowledge and CGK. 

Simply put, Jagot J was not convinced that it was obvious to seek to design an improvement to existing products, even though once the idea of the potential improvement existed it was clear that a person skilled in the art could come up with means to carry out the improvement.  She rejected Reflex’s submission that the person skilled in the art must be taken to be motivated to improve on existing devices, relying on comments of the High Court in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; (2015) 257 CLR 356.  Jagot J considered that the High Court had not suggested that this was required in circumstances where there was no evidence of any perceived need for improvement, her Honour noting well established authority that an invention may lie in an idea and/or perception of a problem.

The s7(3) prior art documents did not assist Reflex.  Jagot J found that they all taught away from the invention and that two manifestly involved a different field.

Implications

This case provides an illustration of a patent in which the inventive concept is asserted to subsist in the identification of a problem with existing prior art devices, rather than a highly inventive solution.   Jagot J’s decision was largely based on her findings that there was no perceived need at the priority date to improve existing designs of downhole instruments.  The expert evidence merely indicated that once such a problem was identified there were relatively straightforward solutions to resolve it. 

In such cases, the instructions and information available to an expert tend to come under particular scrutiny.  In this case Jagot J found that in effect the expert had been informed about the perceived problem. 

Reflex has now appealed this decision to the Full Federal Court with a hearing held before Justices Moshinsky, Burley and Kennett in February 2023 awaiting judgment.

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