03 September 2013


In Dynamite Games Pty Ltd v Aruze Gaming Australia Pty Ltd [2013] FCAFC 96 the Federal Court of Australia Full Court (FCAFC) has dismissed the appeal by Dynamite Games, a gaming product developer, against the FCA decision that revoked its innovation and standard patents.

Those patents related to Dynamite's electronic gaming apparatus and systems which have novel features for 'enhancing gameplay interest'.

The FCAFC states that
This appeal concerns the validity and infringement of a standard patent and an innovation patent relating to electronic gaming machines. The primary judge found the claims of both patents invalid in that they did not contain any inventive or innovative step (as applicable to the patent). As a result, the primary judge discussed but did not decide the other issues in the matter which were rendered hypothetical by his conclusions about lack of any inventive or innovative step. See Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited [2013] FCA 163; (2013) 100 IPR 86. 
The appellant, Dynamite Games Pty Ltd, contends that the primary judge erred in concluding that the patents lacked any inventive or innovative step as required. According to Dynamite, as the primary judge had not determined any of the other issues, including infringement, the appeal should be allowed and the matter remitted for determination in accordance with law. 
The respondents, Aruze Gaming Australia Pty Ltd and related entities, contend that the primary judge’s conclusions about lack of inventive and innovative step, as required, are correct. Aruze also contends, by notice of contention, that the primary judge’s orders may be sustained on the other grounds which were discussed by the primary judge including that, even if valid, there was no infringement of the patents. 
It follows that if Dynamite’s appeal, which raises only the issues of lack of inventive and innovative step, is unsuccessful, the orders of the primary judge must stand.
The FCAFC held that, properly understood, the decision of the FCA did not incorrectly apply the obviousness test which was rejected by the High Court of Australia in Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411; (2002) 194 ALR 485; (2002) 77 ALJR 398

In GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Limited [2013] FCAFC 102 the FCAFC states that
The applicant, GlaxoSmithKline Australia Pty Ltd (GSK) seeks leave to appeal from an interlocutory judgment restraining it from exploiting its proposed liquid dispensing apparatus consisting of a bottle, a bottle neck liner and a syringe. The apparatus was to be used in conjunction with a leading paediatric analgesic known as Children’s Panadol 1-5 years. The Court ordered that the application for leave to appeal be heard by the Full Court together with the appeal. The primary judge accepted the submissions of the respondents (Reckitt) that there was a sufficiently strong prima facie case that GSK’s apparatus infringed claim 1 of Australian Patent No. 2003283537 (the Patent) and that the balance of convenience favoured the grant of interlocutory injunctive relief. His Honour delivered ex tempore reasons on 17 July 2013 and ordered that GSK be restrained from exploiting this apparatus with regard to its Children’s Panadol 1-5 years product (Reckitt Benckiser Healthcare (UK) Ltd v GlaxoSmithKline Australia Pty Ltd (No 2) [2013] FCA 736 (Reasons 2)). 
This syringe is referred to as GSK’s “new” or “alternative” syringe which GSK agrees is a “design-around” the apparatus in claim 1 of the Patent. This followed the grant on 28 May 2013 of an earlier interlocutory injunction to Reckitt concerning GSK’s original syringe (Reckitt Benckiser Healthcare (UK) Ltd v GlaxoSmithKline Australia Pty Ltd [2013] FCA 583 (Reasons 1)). 
Although GSK’s application for leave to appeal is directed to the second interlocutory injunction and some related procedural orders made by the primary judge on 8 July 2013 – and not to the first interlocutory injunction – Reasons 2 should be read alongside Reasons 1, because they overlap.