Arbitron v Telecontrol Aktiengesellschaft [2010] FCA 302

Arbitron v Telecontrol Aktiengesellschaft [2010] FCA 302

The Patent was valid because the Claims were not confined to the preferred embodiment but were fairly based on the Specification, were not anticipated by the cited patents, and were not shown to lack inventive step. Although the Patent was granted contrary to s 64(2) because it claimed the same invention as the Grandparent Patent, that did not establish a ground of revocation under s 138(3)(a) or a basis for rectification under s 192. Telecontrol did not infringe because its system did not produce values grouped across frequency bands at a common instant of time and did not perform the comparing of groups of frequency band values required by Integer C; consequently it did not contain all...

Jurisdiction
Australia
Judgment Date
31 March 2010
Procedural Posture
Patent Infringement Proceeding With Cross Claims for Revocation and Rectification of the Register of Patents / Final Judgment After Hearing
Outcome
The application was dismissed and both respondents' cross-claims were dismissed.
Legal Topics
['construction of Patent Claims' 'fair Basis' 'novelty' 'inventive Step' 'double Claiming' 'entitlement to Patent' 'revocation of Patent' 'rectification of the Register of Patents' 'patent Infringement']
['patents' 'intellectual Property' 'administrative Law'] ['construction of Patent Claims' 'fair Basis' 'novelty' 'inventive Step' 'double Claiming' 'entitlement to Patent' 'revocation of Patent' 'rectification of the Register of Patents' 'patent Infringement']

Case Brief

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Procedural Posture

Patent Infringement Proceeding With Cross Claims for Revocation and Rectification of the Register of Patents / Final Judgment After Hearing

Legal Issues

  1. 1 ['Whether the Claims of the Patent should be construed narrowly by reference to the body of the Specification.' 'Whether the Claims of the Patent were fairly based on the matter described in the Specification.' 'Whether the claimed invention was anticipated by the Grandparent Patent, the Seiko Patent or the TRT Patent.' 'Whether the claimed invention involved an inventive step.' 'Whether the Patent was granted contrary to s 64(2) of the Patents Act 1990 (Cth) and whether that gave rise to revocation or rectification of the Register.' "Whether Telecontrol's devices infringed any valid Claims of the Patent."]

Ratio Decidendi

The Patent was valid because the Claims were not confined to the preferred embodiment but were fairly based on the Specification, were not anticipated by the cited patents, and were not shown to lack inventive step. Although the Patent was granted contrary to s 64(2) because it claimed the same invention as the Grandparent Patent, that did not establish a ground of revocation under s 138(3)(a) or a basis for rectification under s 192. Telecontrol did not infringe because its system did not produce values grouped across frequency bands at a common instant of time and did not perform the comparing of groups of frequency band values required by Integer C; consequently it did not contain all...

Court Disposition

The application was dismissed and both respondents' cross-claims were dismissed.

Orders

  • ['Orders 2, 3 and 4 made on 20 February 2009 in relation to Australian Patent Number 678163 are revoked.' 'The application be dismissed.' "The first respondent's cross-claim be dismissed." "The second respondent's cross-claim be dismissed." 'The question of costs be reserved for further argument on 12 April 2010.']