In a recent dispute between Vehicle Monitoring Systems Pty Ltd (VMS) and Orikan Group Pty Ltd (Orikan, formerly known as SARB), the Federal Court looked at whether a party can seek invalidity of a patent through revocation if it has already done so on opposition and appeal. Ellen Baker and Leanne Oitmaa from our Law & Trade Marks team review the decision, which provides useful guidance to patent practitioners, inventors and owners.
Summary of decision
- There has been a recent patent decision handed down on whether a party can seek invalidity of a patent through revocation if it has already done so on opposition and appeal.
- The Applicant in an interlocutory application sought to estop the Respondent from advancing an invalidity cross-claim in the patent infringement proceedings on the basis the claims were closely connected to the subject matter of an earlier opposition proceeding between the parties and the invalidity claim was an abuse of process, causing delay to the resolution of the validity of the patent.
- O’Bryan J dismissed the interlocutory application on the basis that the Respondent did not act unreasonably by failing to advance the grounds and particulars of invalidity on which it now relies on in the infringement cross-claim under section 121 of the Act, in the opposition proceeding.
- The decision highlights that a party can seek invalidity of a patent through revocation, if it has already done so on opposition and appeal.
We analyse the decision in more detail below.
Detailed analysis of decision
In Orikan Group Pty Ltd v Vehicle Monitoring Systems Pty Limited [2023] FCA 1031, O’Bryan J found that an opponent who unsuccessfully opposed a patent application under section 59 of the Act and later failed on appeal could seek to revoke the granted patent as a cross-claim when sued for infringement under section 121 of the Act. Interestingly, the grounds of invalidity raised in respect of the pre-grant opposition proceeding and post-grant revocation application were different. The outcome may have been different had the same grounds been raised.
VMS previously filed an opposition to the grant of Orikan’s patent on the grounds of lack of entitlement, lack of compliance with section 18(1)(b) of the Act (lack of novelty and inventive step), and lack of compliance with sections 40(2) and (3) of the Act (sufficiency, clarity and support). In these proceedings, VMS did not rely upon the prior art that it now relies on in this infringement proceeding. VMS’s opposition was unsuccessful and the subsequent appeals to the Federal Court and Full Court also failed. The latest chapter in the decade long dispute is that Orikan sued VMS for infringement of the granted patent and VMS as a cross-claim sought to revoke it under section 121 of the Act. VMS advances the invalidity cross-claim on the grounds of no entitlement to claim priority date, lack of novelty, secret use and lack of best method.
Orikan filed an interlocutory application on the basis that VMS should have raised the invalidity cross-claims in the earlier proceedings being the opposition by VMS to the grant of the patent. Orikan contended that VMS is estopped from advancing the invalidity claim in the proceedings because the claims were closely connected to the subject matter of the earlier opposition proceeding. In the alternative, Orikan submitted that the invalidity claim is an abuse of process and will cause further delay to the resolution of the validity of the patent.
O’Bryan J dismissed the interlocutory application on the basis that VMS did not act unreasonably by failing to advance the grounds and particulars of invalidity on which it now relies on in the cross-claim, in the opposition proceeding. Further, the fundamental difference in the nature of the opposition proceeding and the cross-claim proceeding was raised. O’Bryan J openly advised that although it is desirable to avoid a multiplicity of proceedings, parties ought not to be encouraged to raise each and every possible claim or issue irrespective of the time and cost associated with doing so. As for abuse of process, it was held that the matters raised by the invalidity claim do not overlap with the issues raised in the opposition proceedings, so there is no realistic prospect of inconsistent findings being made that would bring the administration of justice into disrepute.
Key takeaways
Justice O’Bryan’s decision provides useful guidance to patent practitioners, inventors and owners, including that:
- A party can seek invalidity of a patent through revocation if it has already done so on opposition and appeal.
- Parties ought not to be encouraged to raise each and every possible claim or issue irrespective of the time and cost associated with doing so.
- The grounds of invalidity raised in respect of a pre-grant opposition proceeding and post-grant revocation application can differ.
A full copy of the decision can be read here.
