The Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd case marks a clarifying moment in Australian patent law with regard to sufficiency and support requirements. It has significant implications for patent holders and applicants, relating to the need to identify the essence (or core) of the invention and the relevant range of variable(s) that significantly affect the value or utility of the product.
Approximately 12 months ago, the Full Court of the Federal Court of Australia delivered its decision in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [1] (Rattlejack), which is Australia’s first appellate judgment concerning the post-Raising the Bar amendments to the support and sufficiency requirements [2].
The Rattlejack decision is notable as it considers the “sufficiency” requirement, which is whether the complete specification discloses the invention “in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art” [3].
As readers will be aware, the requirement for sufficiency was first considered in the CSR decision [4], and then expanded in Evolva SA [5] to comprise two enquiries: (a) is it plausible that the invention can be worked across the full scope of the claim; and (b) can the invention be performed across the full scope of the claim without undue burden?
The asserted patents
The claimed invention in Rattlejack was a safety system used in mining for preventing the hazard of a broken longhole drill rod from falling down an overhead drill bore hole and injuring a person in a workspace.
The claims were directed to a plug-like product which was inserted into a bore hole containing a broken drill rod(s) (which could weigh many hundreds of kilograms) and was designed to operate in a manner that would break the fall of any drill rods that fell down. In particular, the safety system comprised:
- an anchor member configured to be fixed in a proximal end region of the bore adjacent to a rock-face; and
- an impact reduction member for reducing an impact of the broken drill rod section striking the anchor member in the proximal end region of the bore.
The materials expressly mentioned in the specification which would be suitable were steel and/or polymer foam. However, the claims were not limited by material and instead were defined in functional terms.
The trial
At trial, it was generally agreed by the parties’ experts that, whilst the claims of the patents were not limited to materials mentioned in the specification, the skilled addressee would understand that the safety system could plausibly be made from a range of materials, including plastics and fibre reinforced polymer materials.
The trial judge considered what the skilled addressee would need to do to construct the safety system from a range of other materials, and found that the patent specifications (a) failed to give any indication as to what materials other than steel might be suitable for making the system, or (b) disclose what properties or characteristics such other materials would desirably have in order to be suitable.
Based on these findings of fact, the trial judge concluded that the skilled addressee would be unable to perform the invention across the full scope of the claims without undue experimentation and without needing inventive skill, and therefore that the patents were invalid for sufficiency (and for substantially equivalent reasons lacked support).
The appeal
In the Appeal, focus was drawn on the issue of where the claims of a patent encompass a range of ways of performing the invention, and the relevance of that specified range to the invention. His Honour looked to the UK decisions in Regeneron[6] and Illumina[7] for guidance, along with the decision of Burley J in Merck[8]. The following paragraph from Regeneron encapsulates the concept of a “relevant range”[9]:
Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made. (emphasis added)
Relying on Illumina, Perram J found that the question of whether a claim includes a relevant range in the Regeneron sense:
…is to be judged in all the circumstances beginning … with the terms of the claims and extending … to the essence or core of the invention … [which] is distinct from the invention but is ‘closely related to the technical contribution and/or the inventive concept’.[10] (emphasis added)
In the present circumstances, Perram J concluded that the inventive concept was the idea of converting downward weight force into lateral braking forces using the interaction of the anchor member and the impact reduction member, and the technical contribution to the art was embodying that concept in a safety system utilising steel.[11]
Perram J went on to find that the range of materials from which the safety system may be made was part of its essence or core due to the substantial and non-trivial materials engineering involved in creating suitable anchor and impact reduction members. Importantly, once a material other than steel was selected, the skilled addressee would basically need to invent the safety system “from scratch”[12], placing undue burden on the skilled person. On this basis, the patents failed to comply with sufficiency and support provisions.
Recent Patent Office decision in relation to a “relevant range”
In CQMS Pty Ltd v ESCO Group LLC[13], the patent application in suit was directed to systems and methods for monitoring the status, health, and/or performance of wear parts used on various kinds of earth working and excavation equipment. In particular, claim 1 defined a bucket for use with excavating equipment comprising walls defining a containment portion for gathering earthen material to be excavated, a digging edge, wear parts secured to the digging edge, and at least one electronic sensor for producing an image, and secured to one of the walls to monitor the health of the bucket and wirelessly transmit the monitored information.
In a situation reminiscent of Rattlejack (and Regeneron), neither the claims nor the specification described how the sensor was mounted in a manner robust enough to operate in a typical excavating environment. The Delegate considered the mounting arrangement of the sensor to the wall of an excavating bucket to be a “relevant range”, in that the manner in which the sensor was to be protected from damage or obscuration to allow useful images to be taken was an essential feature of the invention that needed to be derivable from the specification, and included in the claims. Expert evidence established that the attachment of a sensor to the wall of such a bucket is “not straightforward” and required “ingenuity” to achieve. Accordingly, the Hearing Officer found that the sufficiency requirement had not been satisfied.
Conclusions
In summary, in Rattlejack it was determined that the range of materials from which the safety system may be made is part of its essence or core, as the material from which the safety system is made significantly affects its utility for that purpose.
At [216], Perram J stated that whilst “the innovative concept underpinning the safety system is the ingenious conversion of downward weight force into lateral braking forces, this does not allow one to ignore the context in which that concept is deployed in the invention as claimed.” Similarly, in CQMS the mounting arrangement of the sensor to the wall of an excavating bucket was an essential feature of the invention, and the absence of that information in the specification (and being defined in the claims) was fatal to the sufficiency requirement.
It appears that patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant part of the claimed range to be made, as at the priority date. Accordingly, applicants should consider the degree of difficulty that may be involved in extrapolating beyond any embodiments, or in working the invention across its whole range.
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[1] [2023] FCAFC 178
[2] in section 40 of the Patents Act 1990 (Cth)
[3] s 40(2)(a)
[4] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR)
[5] [2017] APO 57
[6] Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 (Regeneron)
[7] Illumina Cambridge Limited v Latvia MGI Tech SIA and ors [2021] EWHC 57 (Pat) (Illumina)
[8] Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477, [543]. (Merck)
[9] Regeneron at [56]
[10] Illumina at [190]
[11] Illumina at [215]
[12] Illumina at [219]
[13] [2024] APO 17 (CQMS)