Pilkin v Sony Australia Limited [2020] FCAFC 51

Pilkin v Sony Australia Limited [2020] FCAFC 51

The complete specification as filed characterised any joystick by location or configuration, including on the rear, partially on the rear, on the lateral side, moving along the body, or associated with a cover. The amended claim omitted those limiting features and allowed a joystick without any location limitation, including on the front of the device, thereby claiming matter extending beyond the original disclosure. Section 114 and reg 3.14 were engaged, so the priority date was 11 July 2014. Because the PS Vita consoles were publicly available in Australia before that priority date and, on the applicant's case, possessed all essential features of the amended claim, the invention was not...

Jurisdiction
Australia
Judgment Date
06 April 2020
Procedural Posture
Application for Leave to Appeal in a Patent Infringement Proceeding / Full Court Application for Leave to Appeal From Summary Dismissal Under S 31 A(2) of the Federal Court of Australia Act 1976 (cth)
Outcome
Application for leave to appeal dismissed with costs.
Legal Topics
['innovation Patent' 'priority Date' 'amendment of Complete Specification' 'novelty' 'summary Judgment' 'leave to Appeal' 'service Out of the Jurisdiction']
['patents' 'practice and Procedure'] ['innovation Patent' 'priority Date' 'amendment of Complete Specification' 'novelty' 'summary Judgment' 'leave to Appeal' 'service Out of the Jurisdiction']

Case Brief

Summary, issues, holding and outcome

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Procedural Posture

Application for Leave to Appeal in a Patent Infringement Proceeding / Full Court Application for Leave to Appeal From Summary Dismissal Under S 31 A(2) of the Federal Court of Australia Act 1976 (cth)

Legal Issues

  1. 1 ['Whether amendments to the complete specification caused the priority date of the amended claim to be deferred to 11 July 2014.' 'Whether the amended claim was not novel because PS Vita consoles were publicly available in Australia before the deferred priority date and possessed all essential features of the claimed invention.' 'Whether the primary judge erred in finding lack of novelty by reference to Case (US 2009/0213081 A1).' 'Whether the primary judge erred in summarily dismissing the proceeding under s 31A(2) of the Federal Court of Australia Act 1976 (Cth).' 'Whether leave should have been granted to serve Sony Interactive Entertainment LLC out of the jurisdiction.']

Ratio Decidendi

The complete specification as filed characterised any joystick by location or configuration, including on the rear, partially on the rear, on the lateral side, moving along the body, or associated with a cover. The amended claim omitted those limiting features and allowed a joystick without any location limitation, including on the front of the device, thereby claiming matter extending beyond the original disclosure. Section 114 and reg 3.14 were engaged, so the priority date was 11 July 2014. Because the PS Vita consoles were publicly available in Australia before that priority date and, on the applicant's case, possessed all essential features of the amended claim, the invention was not...

Court Disposition

Application for leave to appeal dismissed with costs.

Orders

  • ['The application for leave to appeal be dismissed.' "The applicant pay the first respondent's and the fifth respondent's costs."]