Synthetic turf patent litigation highlights hindsight concerns with expert evidence
On 20 June 2014, the Federal Court handed down its decision in appeals against decisions of the Commissioner of Patents concerning two patent applications filed by FieldTurf Tarkett Inc (and opposed by TigerTurf International Limited) relating to synthetic turf. In relation to the first patent application, Justice Jagot overturned the Commissioner’s decision that the claimed invention lacked novelty, inventive step and clarity. In relation to the second patent application, her Honour agreed with the Commissioner that the application was valid and should proceed to grant.
In finding that the invention claimed in the first application was novel, Justice Jagot found that certain evidence of prior uses was tainted by the witness’ knowledge of the invention and was therefore unreliable. The decision highlights the different evidentiary considerations that apply to prior uses and the difficulties that may arise if the evidence is given with knowledge of the claimed invention.
Validity challenges to Fieldturf’s first patent application
(a) TigerTurf’s evidence for novelty challenge raises hindsight concerns
FieldTurf’s first patent application described artificial turf consisting of ribbons of synthetic material with a particular length and spacing on a backing mat. TigerTurf’s case alleging that the patent application lacked novelty included four installations of synthetic turf in the 1980s. The primary evidence concerning the installations was given by a single witness (Mr Rooks).
Justice Jagot noted that in order to anticipate the claimed invention, the prior use must be such that if the skilled person was asked to describe the prior use having carried out an appropriate test or examination, he would write down a clear and unambiguous description of the claimed invention.1 Justice Jagot also noted that evidence of prior uses should be weighed with caution.2 That is, evidence of prior public use must be strictly proved and evidence which is not corroborated must be scrutinised with care, particularly where the events in question occurred some years ago.3
In this case, Justice Jagot did not accept that after 20 years, Mr Rooks could recall the precise details of the particular installations. Her Honour found that the evidence gave an overall impression of reconstruction rather than recollection. Further, Mr Rooks had read the application before giving his evidence and her Honour found his evidence was given “with full knowledge of the target, being the claimed invention”. Her Honour accepted that the cautions against hindsight which are often found in the context of inventive step are relevant to the skilled addressee’s understanding of prior art.
Her Honour also found that the alleged prior art documents did not anticipate the claimed invention because although one of the documents contained directions which could be carried out in an infringing manner, they were at least as likely to be carried out in a different way.
(b) TigerTurf’s lack of inventive step and lack of clarity challenges fail
Justice Jagot rejected TigerTurf’s case that the early installations constituted prior art information for the purposes of section 7(3) of the Patents Act, noting that Mr Rooks’ evidence was not that of the skilled addressee and FieldTurf’s experts were unaware of the installations or any similar products.
Her Honour also rejected TigerTurf’s allegation that the claims were not clear.
Validity challenges to FieldTurf’s second patent application
TigerTurf’s novelty challenge fails
FieldTurf’s second patent application described artificial turf with a mixture of stiffer and softer ribbons. TigerTurf alleged that the claimed invention was anticipated by certain prior art patent applications. Justice Jagot agreed with the Commissioner and found that the documents did not disclose all of the integers of the claims.
Lessons for patent litigants
The judgment is a helpful reminder that the Court will exercise caution when assessing evidence of prior uses filed in support of a challenge to the validity of a patent or patent application, particularly relating to events from many years ago where the evidence is not corroborated by other witnesses or documents. The case also shows that the Court will be careful in accepting evidence as to prior uses or prior art documents where the witness has read the specification before giving that evidence.
- Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155 citing Lux Traffic Controls Ltd v Pike Signals Ltd  RPC 107 at 134.
- Old Digger Pty Ltd v Azuko Pty Ltd (2000) 51 IPR 43
- Aspirating IP Ltd v Vision Systems Ltd (2010) 88 IPR 52