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What do you need to do?Be aware of the impact of the decision on the initial instruction of expert witnesses.
Shyama Jayaswal
Senior Associate
Cindy Varalla
Solicitor
Wayne McMaster
Partner
T +61 3 9643 4407
Robert Cooper
Partner
T +61 3 9643 4405
Sydney
Kim O'Connell
Brisbane
John Swinson
The Full Court of the Federal Court of Australia has confirmed that the manner in which an expert witness was briefed can appropriately lead the court to attach very little weight to his evidence on obviousness.
The Full Court also held that the evidence challenging obviousness must focus on the invention as claimed and not a concept in the general vicinity of what is claimed. It also found that the inventor’s evidence on whether an invention is obvious should not be accorded significant weight.
Further to our alert dated 14 May 2008, Mallesons acted for ESCO Corporation (ESCO) and Bradken Resources Pty Ltd (Bradken) in the matter against PAC Mining Pty Ltd and Central Queensland Mining Supplies Pty Ltd ([2009] FCAFC 18).
The Full Court made some important observations regarding the evidence required to prove an obviousness case:
1. The trial judge did not err in ascribing little weight to the appellants’ expert witness evidence on obviousness because it was inappropriately tainted from the outset as the witness was informed of both the nature of the problem encountered by the prior art and the solution ultimately developed by the patentee.
2. In proving obviousness, the expert evidence needs to relate to the invention as defined by all the words of the claim (in this case combination claims). It is not enough to lead evidence that a concept in the general vicinity of some of the elements of the claim is obvious.
3. The Full Court rejected the proposition that considerable weight should be given to the evidence of the inventor when deciding whether there has been an inventive step. However, the Full Court accepted that an inventor’s evidence of how the invention was developed and over what period were issues of fact upon which the trial judge could rely, and as such there was no error by the trial judge relying upon this in assessing if the invention was obvious.
4. Further, the fact that the inventors were employed by the commercial enterprise which was responsible for the closest prior art, and thus had every incentive to improve it, also meant that the fact that they only did so after a considerable period of time, pointed towards a finding that the invention was not obvious.
The decision further emphasises the care that needs to be taken when preparing evidence for an obviousness dispute.