Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421

Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421

The patents in suit are invalid because, while they passed tests for novelty, innovative step, and disclosure, they do not claim a 'manner of manufacture' within the meaning of s 6 of the Statute of Monopolies, as they merely involve the concatenation of known computing functions (network representation, remote data source querying, purchasing step) implemented on a computer, and do not amount to an improvement in computer functionality.

Jurisdiction
Australia
Judgment Date
29 March 2018
Procedural Posture
Patent Infringement and Revocation Proceedings / Judgment After Trial
Outcome
Applicants' amended originating application dismissed; Respondent entitled to declarations of invalidity and revocation of the patents.
Legal Topics
['patents' 'novelty' 'innovative Step' 'manner of Manufacture' 'disclosure' 'support' 'priority Date' 'secret Use' 'exclusive Licence']
['intellectual Property Law'] ['patents' 'novelty' 'innovative Step' 'manner of Manufacture' 'disclosure' 'support' 'priority Date' 'secret Use' 'exclusive Licence']

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Procedural Posture

Patent Infringement and Revocation Proceedings / Judgment After Trial

Legal Issues

  1. 1 ['Whether the asserted patents are invalid for lack of novelty, innovative step, manner of manufacture, or secret use; whether the specification meets statutory requirements for disclosure and support; whether SAI Global is an exclusive licensee; whether the patents are infringed by InfoTrack']

Ratio Decidendi

The patents in suit are invalid because, while they passed tests for novelty, innovative step, and disclosure, they do not claim a 'manner of manufacture' within the meaning of s 6 of the Statute of Monopolies, as they merely involve the concatenation of known computing functions (network representation, remote data source querying, purchasing step) implemented on a computer, and do not amount to an improvement in computer functionality.

Court Disposition

Applicants' amended originating application dismissed; Respondent entitled to declarations of invalidity and revocation of the patents.

Orders

  • ['Stand over for further hearing on costs at 9:30 am on 26 April 2018.' 'Parties to provide short minutes of order giving effect to reasons by 5 April 2018.' 'Any debate about orders to be dealt with at 26 April 2018 hearing.' 'Respondent to file and serve submission on costs (max 5 pages) within 7 days.'...