Caffitaly System S.P.A. v One Collective Group Pty Ltd [2021] FCAFC 118

Caffitaly System S.P.A. v One Collective Group Pty Ltd [2021] FCAFC 118

The appeal succeeds in part. The primary judge erred in finding that claims 1, 2, 9, 16, and 17 of the 627 patent lacked an inventive step; those claims did involve inventiveness as the hypothetical design task did not arrive at the claimed invention, especially the 'fluid director member' feature. However, the appeal fails in relation to infringement and other claims: respondents’ products do not infringe as construed; relevant claims of the 121 and 388 patents are invalid for lack of inventive step and lack of sufficiency respectively, as specification does not provide sufficient guidance without undue difficulty.

Jurisdiction
Australia
Judgment Date
30 June 2021
Procedural Posture
Appeal / Judgment
Outcome
Appeal allowed in part; majority of claims remain invalid; infringement claim fails.
Legal Topics
['patent Validity' 'patent Infringement' 'inventive Step' 'sufficiency of Description' 'claim Construction']
['intellectual Property'] ['patent Validity' 'patent Infringement' 'inventive Step' 'sufficiency of Description' 'claim Construction']

Case Brief

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Procedural Posture

Appeal / Judgment

Legal Issues

  1. 1 ['Whether certain claims of two patents invalid for lack of inventive step' 'Whether certain claims of the third patent were invalid because the invention, as claimed, was not fully described in the complete specification' 'Whether alleged infringing products fall within the scope of patent claims']

Ratio Decidendi

The appeal succeeds in part. The primary judge erred in finding that claims 1, 2, 9, 16, and 17 of the 627 patent lacked an inventive step; those claims did involve inventiveness as the hypothetical design task did not arrive at the claimed invention, especially the 'fluid director member' feature. However, the appeal fails in relation to infringement and other claims: respondents’ products do not infringe as construed; relevant claims of the 121 and 388 patents are invalid for lack of inventive step and lack of sufficiency respectively, as specification does not provide sufficient guidance without undue difficulty.

Court Disposition

Appeal allowed in part; majority of claims remain invalid; infringement claim fails.

Orders

  • ['The appeal be allowed in part.' 'Order 1 made in proceeding NSD 179/2019 on 19 June 2020 be discharged.' 'Subject to Order 4, the appellant pay the costs of the appeal, as agreed or assessed.' 'If the appellant seeks a different costs order, it may, within seven days, file and serve a written submission of not...