TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493

TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493

The Orion hinges fell within the scope of the claims of both patents, but the claims were not entitled to priority from the parent or provisional application because the earlier disclosure did not clearly and completely enable the broader claimed invention, particularly non-orthogonal dampener arrangements. The deferred priority dates meant the prior public availability of the Orion hinges anticipated the patents. The patents were also invalid for lack of clear and complete disclosure and lack of support, and claims 1 and 4 of the 485 patent lacked novelty over US015 and CN860, with all 485 claims lacking innovative step over US015. Accordingly, the revocation claim succeeded and the...

Jurisdiction
Australia
Judgment Date
14 December 2022
Procedural Posture
Patent Revocation, Unjustified Threats and Australian Consumer Law Claims, With Patent Infringement Cross Claim / Liability Heard Separately Before Quantum; Final Orders to Be Settled After Reasons
Outcome
TCT succeeded in its revocation claim and unjustified threats claim under s 128 of the Patents Act; the infringement cross-claim and the ACL claim under s 18 were dismissed; final orders, including costs and relief for unjustified threats, were to be settled after further submissions.
Legal Topics
['innovation Patents' 'patent Infringement' 'patent Validity' 'priority Date' 'sufficiency of Disclosure' 'support' 'novelty' 'innovative Step' 'unjustified Threats' 'misleading or Deceptive Conduct' 'claim Construction']
['patents' 'consumer Law'] ['innovation Patents' 'patent Infringement' 'patent Validity' 'priority Date' 'sufficiency of Disclosure' 'support' 'novelty' 'innovative Step' 'unjustified Threats' 'misleading or Deceptive Conduct' 'claim Construction']

Case Brief

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Procedural Posture

Patent Revocation, Unjustified Threats and Australian Consumer Law Claims, With Patent Infringement Cross Claim / Liability Heard Separately Before Quantum; Final Orders to Be Settled After Reasons

Legal Issues

  1. 1 ['Whether the Orion hinges fall within the scope of the claims of innovation patent No AU 2020100485 and innovation patent No AU 2020102918.' 'Whether the claims of the 485 patent and 918 patent were entitled to claim priority from the parent patent application or provisional application.' 'Whether the specifications disclosed the invention clearly enough and completely enough for performance by a person skilled in the art under s 40(2)(a) of the Patents Act 1990 (Cth).' 'Whether the claims were supported by matter disclosed in the specification under s 40(3) of the Patents Act 1990 (Cth).' 'Whether claims lacked novelty or innovative step over prior art documents including WO499, US015, CN860 and AU327 patents.' 'Whether Polaris made unjustified threats of patent infringement under s 128 of the Patents Act 1990 (Cth).' 'Whether correspondence to Glass Pro amounted to misleading or deceptive conduct under s 18 of the Australian Consumer Law.']

Ratio Decidendi

The Orion hinges fell within the scope of the claims of both patents, but the claims were not entitled to priority from the parent or provisional application because the earlier disclosure did not clearly and completely enable the broader claimed invention, particularly non-orthogonal dampener arrangements. The deferred priority dates meant the prior public availability of the Orion hinges anticipated the patents. The patents were also invalid for lack of clear and complete disclosure and lack of support, and claims 1 and 4 of the 485 patent lacked novelty over US015 and CN860, with all 485 claims lacking innovative step over US015. Accordingly, the revocation claim succeeded and the...

Court Disposition

TCT succeeded in its revocation claim and unjustified threats claim under s 128 of the Patents Act; the infringement cross-claim and the ACL claim under s 18 were dismissed; final orders, including costs and relief for unjustified threats, were to be settled after further submissions.

Orders

  • ['The parties confer and supply to the chambers of Justice Burley by 4pm on 1 February 2023 draft short minutes of order giving effect to these reasons and a timetable for further steps in the proceedings.' 'Insofar as the parties are unable to agree to the terms of the draft short minutes of order referred to in...