“Essence or Core” of an invention – Full Court adds non-statutory element to sufficiency in first appellate decision post-RTB

Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178

13 November 2023

Full Court of the Federal Court of Australia

Perram, Nicholas and McElwaine JJ (lead judgment written by Perram J, with whom Nicholas and McElwaine JJ agreed)

Highlight

In this first appellate decision to address the new test for sufficiency post-RTB we are left wondering whether an additional non-statutory element involving an analysis of the “essence or core” of the invention has been added to the test for sufficiency.

Background

In May 2022, Justice Rofe issued her decision in the Court below finding that three innovation patents for a ‘Safety System’ owned by Jusand Nominees Pty Ltd were not infringed by the ‘Safety Spear’ commercialised by Rattlejack Innovations Pty Ltd, and were invalid for lack of sufficiency and support¹.  We reported that decision in our 2022 Patent Case Summary.

Jusand’s appeal to the Full Federal Court was limited to one claim of one of the three innovation patents (AU 2019100556, the Patent) in suit below which Rofe J invalidated on the grounds of sufficiency and support.  The Patent is directed to a device used in underground mining to prevent the hazards of broken drill bits falling down a borehole.  Claim 1 of the Patent is to a safety system comprising ‘an anchor member configured to be fixed in a proximal end region of the bore adjacent to a rock-face’ and ‘an impact reduction member…configured to be located in the proximal end region of the drilled bore…’.

In this first appellate decision relating to the post-RTB test for sufficiency and support under s 40 of the Patents Act 1990 (Cth) (Act), the Full Court upheld the primary judge’s findings of invalidity for lack of sufficiency and support, applying UK common law concepts involving an analysis of the “essence or core” of the invention.  Jusand has filed an application for special leave to appeal the decision to the High Court of Australia.

Key Issues

This is the first time an appellate Court has considered the law on sufficiency and support post-RTB.  Sections 40(2)(a) and (3) of the Act, post-RTB, provide (our emphasis):

(2)  A complete specification must:

(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and

…

(3)  The claim or claims must be clear and succinct and supported by matter disclosed in the specification.

Section 40(2)(a) (sufficiency) requires that the specification sufficiently discloses how to perform the invention; section 40(3) (support) requires that the claims are clear and supported by what appears in the specification.  Suffiency and support are the “two sides of the same coin” – the result being often but not always the same.²  The Full Court stated “they are describing the same relationship although viewed from the differing perspectives of the claims and the specification”.³

The trial judge found the patent lacked sufficiency because the claims encompassed a system manufactured from a range of materials, but the specification only disclosed how to make it from steel.  The evidence was that the use of plastic (as in Rattlejack’s Safety Spear) in underground mining was rare, and the trial judge found that the skilled addressee would need to apply inventive skill and would be under an undue burden to implement the claimed system in any other material.   Her Honour found the patent lacked support because what is included within the scope of the claimed invention — a safety system made out of plastic or other material — exceeded the technical contribution of the specification, which was at most a safety system made out of steel.

The Full Court noted the statutory intention of the IP Laws Amendment (Raising the Bar Act) 2012 (Cth) (RTB) to align the Australian law on sufficiency and support with that of the UK and Europe.⁴  Noting that the intention of the RTB reforms were to “ensure that the Australian law of sufficiency and support developed along the same lines as the law of the United Kingdom and the members of the European Union”⁵, the Full Court proceeded to do so.  With a tip of its hat to the “very helpful” analysis of Burley J in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477,  the Court set out the UK common law principles relevant to sufficiency and support, with particular reference to the UK Supreme Court in Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 and to Birss J (as his Lordship was then) in Illumina Cambridge Ltd v Latvia MGI Tech SIA [2021] EWHC 57.

In relation to sufficiency (s40(2)(a)) the parties agreed that in this context (where the invention can be performed in a range of ways) the relevant principles to be applied are:

‘(a) the specification must disclose how to perform the invention across the whole of that range without inventive skill or undue burden; and

(b) this obligation does not apply unless the specified range is relevant to the invention.’

Where they differed was how to assess the relevance in (b) – the Appellant submitting that the relevance comes from the ‘essence or core’ of the invention, the Respondent preferring the identification of the “variable which significantly affects the value or utility of the invention for its purpose”.

Outcome

The Full Court found no reason to depart from the trial judge’s conclusions on claim construction, infringement or sufficiency/support.

Reviewing UK jurisprudence on disclosure requirements in Regeneron and Illumina, the Full Court placed the emphasis on the technical contribution to the art (our emphasis):

“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. 

It is then useful to consider what makes an invention inventive and what its technical contribution to the art is.”⁶

In a method claim, the technical contribution was “the explanation of how to perform the method disclosed in the specification” which is “not the same as the inventive step, although the inventive step may constitute an element of the contribution to the art.”⁷

The Court found that the ‘essence or core’ of the invention requires a consideration of each of the claimed invention, the inventive/innovative step, the technical contribution to the art and the context of the invention.  Here, each of the following were considered:

• the invention was the Safety System which disclosed a method using an anchor member and an impact reduction member made from steel;
• the innovative step was the idea of converting downward weight into lateral braking forces in a specific manner;
• the technical contribution to the art was taking that idea and explaining how to use it in a Safety System using steel; and
• the context of the invention cannot be ignored: this includes here a bore hole up to 60m long, with a rod section of up to 20m long and weighing 500kg, resulting in a potential impact load of 67,000 kg. As the trial judge found, this means that the Safety System cannot be made of ‘paper or glass’.

The Court found that the range of materials from which the Safety System can be made is part of the ‘essence or core’ of the invention and therefore a relevant range in question (b) above⁸.   As the range was relevant, it is necessary for the disclosure in the specification to enable the person skilled in the art to perform the invention across the full scope of the claim including that range.  The conclusion of Rofe J (that the claim lacked sufficiency) as it included materials beyond steel was upheld by the Full Court.

The court swiftly rejected the ‘other side of the coin’ (ie lack of support) in the final three paragraphs of the decision, finding the case indistinguishable from Regeneron.  The court concluded that there was no support for the same reasons, as “the monopoly defined by the claims exceeded the technical contribution to the art” which would (otherwise) “confer on the Appellant a monopoly over a range of Safety Systems which it simply has not invented”.⁹

Implications

It appears that the Court has added a new element to the test for sufficiency: the essence or core of the invention.  A subtle concept, this extends beyond the technical contribution to the art, encompassing the invention, the innovative (or inventive) step, and the context of the invention.  Jusand has applied for special leave to appeal the decision to the High Court of Australia, which may shed more light on the relationship between these elements.

___
¹ Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540
² Perram J at [222]
³ Perram J at [155]
⁴ Explanatory Memorandum, pp48-59 (Perram J at [165])
⁵ Perram J at [171]
⁶ Perram J at [194]
⁷ Perram J at [205]
⁸ Perram J at [217]
⁹ Perram J at [222]

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