Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138

Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138

The appeal was dismissed because the specification failed to disclose the best method known to the applicant for performing the invention, as required by s 40(2)(a) of the Patents Act 1990 (Cth), due to omission of the superior sealing member known to the inventors. Claims 1, 2, 4, and 7 were anticipated by prior use (Colrok), and although the appellate court would have reversed the primary judge on the inventive step issue, this could not alter the outcome since the best method and novelty findings were determinative.

Jurisdiction
Australia
Judgment Date
31 August 2017
Procedural Posture
Appeal / Final Judgment on Appeal
Outcome
Appeal dismissed
Legal Topics
['patents' 'patent Revocation' 'patent Infringement' 'novelty' 'inventive Step' 'utility' 'best Method Requirement']
['intellectual Property Law'] ['patents' 'patent Revocation' 'patent Infringement' 'novelty' 'inventive Step' 'utility' 'best Method Requirement']

Case Brief

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Procedural Posture

Appeal / Final Judgment on Appeal

Legal Issues

  1. 1 ['Whether the patent specification disclosed the best method known to the applicant of performing the invention under s 40(2)(a) of the Patents Act 1990 (Cth)' 'Whether the claims lacked novelty in view of prior use by Colrok Mining Pty Ltd' 'Whether the invention as claimed involved an inventive step under s 7 of the Patents Act 1990 (Cth)' 'Whether the claims were useful (utility) under s 18 of the Patents Act 1990 (Cth)']

Ratio Decidendi

The appeal was dismissed because the specification failed to disclose the best method known to the applicant for performing the invention, as required by s 40(2)(a) of the Patents Act 1990 (Cth), due to omission of the superior sealing member known to the inventors. Claims 1, 2, 4, and 7 were anticipated by prior use (Colrok), and although the appellate court would have reversed the primary judge on the inventive step issue, this could not alter the outcome since the best method and novelty findings were determinative.

Court Disposition

Appeal dismissed

Orders

  • ['The appeal be dismissed.' 'Within seven days, each party file an outline of submissions (of no more than three pages) on costs.']