NOCO Company v Brown and Watson International - Full Federal Court Upholds Patent Infringement Ruling

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NOCO Company v Brown and Watson International - Full Federal Court Upholds Patent Infringement Ruling

Australia Federal Court Latest Judgments

Filed April 10th, 2026

Detected April 10th, 2026

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Summary

The Full Federal Court of Australia dismissed NOCO Company's appeal, upholding the primary judge's decision that patents for jump starter devices are invalid due to obviousness and lack of adequate disclosure. The court also partially allowed NOCO's notice of contention regarding priority date calculation for divisional applications under section 40(2)(aa) of the Patents Act 1990.

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What changed

The Full Federal Court dismissed NOCO Company's appeal, affirming that its jump starter device patents were invalid. The court upheld the primary judge's findings that certain claims would have been obvious to a person skilled in the art based on common general knowledge and prior art documents. The court also agreed that certain claims were not disclosed in the earlier PCT application and therefore were not entitled to the earlier priority date. The Full Court rejected NOCO's contention that the primary judge failed to consider whether the PCT application disclosed manual operation. However, the court partially allowed NOCO's contention regarding the relevant date for knowledge of best method under section 40(2)(aa), finding that the date should be the filing date of the divisional application, not the parent application.

Patent holders and manufacturers in Australia should note the court's strict application of the obviousness test and disclosure requirements. The ruling clarifies that divisional applications cannot claim priority from parent applications for subject matter not disclosed in the earlier filing. Entities relying on divisional patent strategies should ensure adequate disclosure in parent applications and carefully document the priority date arguments.

What to do next

Review patent filing strategies for divisional applications and priority dates
Assess validity of existing jump starter device patents under the stricter obviousness standard

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Apr 10, 2026

GovPing captured this document from the original source. If the source has since changed or been removed, this is the text as it existed at that time.

Original Word Document (335.2 KB) FEDERAL COURT OF AUSTRALIA

The NOCO Company v Brown and Watson International Pty Ltd [2026] FCAFC 44

| Appeal from: | The NOCO Company v Brown and Watson International Pty Ltd [2025] FCA 887
The NOCO Company v Brown and Watson International Pty Ltd (No 2) [2025] FCA 1176 |
| | |
| File number: | VID 1188 of 2025 |
| | |
| Judgment of: | BEACH, DOWNES AND JACKMAN JJ |
| | |
| Date of judgment: | 10 April 2026 |
| | |
| Catchwords: | PATENTS – appeal from decision of primary judge dismissing applicant’s claim of infringement of patents for jump starter device, declaring patents to be invalid and revoking patents – whether primary judge erred in finding that certain claims would have been obvious to a person skilled in the art in light of the common general knowledge – whether primary judge erred in finding that certain claims would have been obvious to a person skilled in the art in light of the common general knowledge combined with prior art documents – whether primary judge erred in finding that certain claims were not disclosed in the earlier PCT application and therefore were not entitled to the earlier priority date – whether primary judge erred in finding that a device which could operate in a “manual mode” was outside the scope of certain claims – reasoning of primary judge upheld – appeal dismissed

PATENTS – notice of contention – whether primary judge erred in failing to consider whether PCT application disclosed a device which allows manual operation – ground rejected – whether primary judge erred in finding that the relevant date for knowledge of best method for the purpose of s 40(2)(aa) of the Patents Act 1990 (Cth) is the date of filing of the parent application, not the date of filing of the divisional application – ground upheld – other grounds of contention not considered |
| | |
| Legislation: | Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 (Cth)

Patents Act 1952 (Cth)

Patents Act 1990 (Cth)

Allergan Inc v Aspire Pharma Ltd [2019] EWHC 1085

Allied Pumps Pty Ltd v LAA Industries Pty Ltd [2023] FCA 1457; (2023) s179 IPR 1

AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; (2015) 257 CLR 356

Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC [2023] FCA 1119; (2023) 180 IPR 199

British United Shoe Machinery Company Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631

Brugger v Medic-Aid Ltd (No 2) [1996] RPC 635

C Van Der Lely NV v Ruston’s Engineering Co Ltd [1993] RPC 45

Damorgold Pty Ltd v Blindware Pty Ltd [2017] FCA 1552; (2017) 130 IPR 1

Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd [2018] FCA 1573; (2018) 135 IPR 403

Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220; (2005) 224 ALR 168

Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; (2014) 222 FCR 336

GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Generic Partners Pty Ltd [2018] FCAFC 71; (2018) 264 FCR 474

Hallen Company v Brabantia (UK) Ltd [1989] RPC 307

Icescape Ltd v Ice-World International BV [2018] EWCA Civ 2219; [2019] FSR 5

Idenix Pharmaceuticals LLC v Gilead Sciences Pty Ltd [2017] FCAFC 196; (2017) 134 IPR 1

Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1

Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; (2016) 247 FCR 61

Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 CLR 173

Medimmune Ltd v Novartis Pharmaceuticals UK Ltd [2012] EWCA Civ 1234; [2013] RPC 27

Miele & Cie KG v Bruckbauer [2025] FCA 537

Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2002] FCAFC 315; (2002) 56 IPR 248

Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253

Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2; (2019) 175 IPR 187

Pfizer Overseas Pharmaceuticals v Eli Lilly & Co [2005] FCAFC 224; (2005) 68 IPR 1

Rescare Ltd v Anaesthetic Supplies Pty Ltd [1992] FCA 811; (1992) 25 IPR 119

Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; (2000) 49 IPR 225

The NOCO Company v Brown and Watson International Pty Ltd [2025] FCA 887

The NOCO Company v Brown and Watson International Pty Ltd (No 2) [2025] FCA 1176

ToolGen Incorporated v Fisher (No 2) [2023] FCA 794; (2023) 184 IPR 191

Unilin Beheer BV v Berry Floor NV [2004] EWCA Civ 1021; [2005] FSR 6

Appellant | |
| AND: | BROWN AND WATSON INTERNATIONAL PTY LTD

Respondent | |

1. The appeal be dismissed.

2. The appellant pay the respondent’s costs of the appeal.

3. The costs order made in Order 1 on 24 September 2025 be varied such that the applicant pay 85% of the respondent’s costs of the claim and the cross-claim (including reserved costs) on a party and party basis, such costs to be determined on a lump sum basis.

4. Orders 2 to 4 made on 24 September 2025 be set aside.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

Introduction

1 This is an appeal from the decision of the primary judge in The NOCO Company v Brown and Watson International Pty Ltd [2025] FCA 887 (the Primary Judgment or PJ). The appeal also concerns the subsequent decision by the primary judge concerning the question of costs in The NOCO Company v Brown and Watson International Pty Ltd (No 2) [2025] FCA 1176 (the Costs Judgment).

2 The appellant, The NOCO Company (NOCO), a company organised under the laws of Ohio in the United States of America, is the patentee of the three Australian patents in suit titled “Portable vehicle battery jump starter apparatus with safety protection”, namely:

(a) Australian Patent 2020201223 (the 223 Patent);

(b) Australian Patent 2021258059 (the 059 Patent); and

(c) Australian Patent 2022201338 (the 338 Patent),

(together, the Patents).

3 Each of the Patents relates to a jump starter apparatus for boosting a depleted or discharged battery (such as a car battery). The specifications of each of the Patents are in substantially the same terms except for the consistory clauses. All of the claims in the Patents are product claims. It is common ground that, for the purposes of assessing grounds of invalidity, the applicable version of the Patents Act 1990 (Cth) (the Act) is the version that was in force at the date of filing of the Patents. The filing dates of the Patents were 20 February 2020, 29 October 2021 and 25 February 2022 respectively. The Patents are from the same patent family, each claiming an earliest priority date of 3 July 2014 (the Asserted Priority Date), based on the filing date of PCT/US2014/045434 (PCT 434), which was filed on 3 July 2014.

4 NOCO brought the proceedings against the respondent, Brown and Watson International Pty Ltd (B&W), a company incorporated in Australia, alleging infringement of the Patents. The infringement claims relate to four B&W products (branded as “Projecta” jump starters, known as the IS 920, IS 1220, IS 1400 and IS 2000) (the Impugned Products). The letters “IS” stand for “Intelli-Start”.

5 The claims in the Patents relied on by NOCO in its opening at the trial (the Asserted Claims) were as follows:

32 to 34, 36. |
6 On the second last day of the trial, NOCO abandoned certain claims in respect of some or all of the Impugned Products, and the claims relied on by NOCO to allege infringement with respect to the Impugned Products were then as follows:

32 to 34, 36. |
7 B&W cross-claimed against NOCO, alleging invalidity of the Asserted Claims. B&W relied on the following grounds: lack of novelty, lack of inventive step, disclosure not including the best method, lack of support, insufficiency, and lack of utility.

8 To a large extent, the ground of lack of novelty depended on whether the Patents were entitled to the Asserted Priority Date of 3 July 2014 (the Priority Date issue). The primary judge found that many of the Asserted Claims were not entitled to the Asserted Priority Date, and, in light of a concession by NOCO, such claims were invalid for lack of novelty. The primary judge found that all of the Asserted Claims were invalid for lack of inventive step. The primary judge concluded that the best method ground was not made out. It was not necessary for the primary judge to consider the remaining grounds of invalidity, and his Honour did not do so.

9 The primary judge declared that the following claims were invalid and ordered that they be revoked:

(a) Claims 1 to 8, 11 to 14, and 16 to 21 of the 223 Patent;

(b) Claims 1 to 4, 6 to 12 and 14 to 24 of the 059 Patent; and

(c) Claims 1 to 8, 10 to 14, 16 to 26 and 29 to 36 of the 338 Patent.

The primary judge dismissed NOCO’s claim. In the Costs Judgment, the primary judge ordered NOCO to pay 80% of B&W’s costs, to be determined on a lump sum basis.

The Specifications of the Patents

223 Patent

10 The specification states, as the field of the invention, that the present invention relates generally to an apparatus for jump starting a vehicle having a depleted or discharged battery: [0001].

11 Under the heading “Background to the Invention”, it is stated at [0002] that:

Prior art devices are known for jump-starting a vehicle, which provide either a pair of electrical connector cables that connect a fully-charged battery of another vehicle to the engine start circuit of the dead battery vehicle, or portable booster devices which include a fully-charged battery which can be connected in circuit with the vehicle’s engine starter through a pair of cables.

12 The following problems are then identified at [0003]:

Problems with the prior art arose when either the jumper terminals or clamps of the cables were inadvertently brought into contact with each other while the other ends were connected to a charged battery, or when the positive and negative terminals were connected to the opposite polarity terminals in the vehicle to be jumped, thereby causing a short circuit resulting in sparking and potential damage and/or bodily injury.

13 Various attempts to eliminate those problems are said to have been made in the prior art, and reference was then made to a number of US patents: [0004]–[0012]. It is said that each of those prior art solutions suffers from other shortcomings, either in complexity, cost or potential for malfunction, and accordingly there exists a need in the art for further improvements to vehicle jump start devices: [0013].

14 Under the heading “Summary of the Invention”, the specification sets out a number of consistory clauses reflecting the terms of Claims 1 to 21: [0013a]–[0013u]. The specification then states as follows, at [0014]–[0016]:

Also described herein is an apparatus for jump starting a vehicle engine, comprising: an internal power supply; an output port having positive and negative polarity output; a vehicle battery isolation sensor connected in circuit with said positive and negative polarity outputs, configured to detect presence of a vehicle battery connected between said positive and negative polarity outputs; a reverse polarity sensor connected in circuit with said positive and negative polarity outputs, configured to detect polarity of a vehicle battery connected between said positive and negative polarity outputs and to provide an output signal indicating whether positive and negative terminals of said vehicle battery are properly connected with said positive and negative polarity outputs of said output port; a power switch connected between said internal power supply and said output port; and a microcontroller configured to receive input signals from said vehicle isolation sensor and said reverse polarity sensor, and to provide an output signal to said power switch, such that said power switch is turned on to cause said internal power supply to be connected to said output port in response to signals from said sensors indicating the presence of a vehicle battery at said output port and proper polarity connection of positive and negative terminals of said vehicle battery with said positive and negative polarity outputs, and is not turned on when signals from said sensors indicate either the absence of a vehicle battery at said output port or improper polarity connection of positive and negative terminals of said vehicle battery with said positive and negative polarity outputs. [Emphasis added.]

In accordance with an embodiment described herein, the internal power supply is a rechargeable lithium ion battery pack.

A jumper cable device may also be provided, having a plug configured to plug into said output port; a pair of cables integrated with the plug at one respective end thereof; said pair of cables being configured to be separately connected to terminals of a battery at another respective end thereof.

The highlighted words “in response to” in that extract differ from the language used in [0013a] and Claim 1 (integer 1.7), which used the expression “only when”.

15 The specification then refers to Figures 1 to 4: [0018]–[0021]. Figure 1 is described as a functional block diagram of a handheld vehicle battery boost apparatus in accordance with one aspect of the present invention. Figure 1 is as follows:

16 Under the heading “Detailed description of the Invention”, [0022] states in part, in relation to Figure 1, as follows:

FIG. 1 is a functional block diagram of a handheld battery booster according to one aspect of the invention. At the heart of the handheld battery booster is a lithium polymer battery pack 32, which stores sufficient energy to jump start a vehicle engine served by a conventional 12 volt lead-acid or valve regulated lead-acid battery.

17 The apparatus can be controlled by a programmable microcontroller unit (MCU), which is said to provide flexibility to the system by allowing updates in functionality and system parameters without requiring any change in hardware: [0023].

18 The embodiment shown in Figure 1 is discussed further at [0024] by reference to circuits identified as a car battery reverse sensor (item 10) and a car battery isolation sensor (item 12), as follows:

A car battery reverse sensor 10 monitors the polarity of the vehicle battery 72 when the handheld battery booster device is connected to the vehicle’s electric system. As explained below, the booster device prevents the lithium battery pack from being connected to the vehicle battery 72 when the terminals of the battery 72 are connected to the wrong terminals of the booster device. A car battery isolation sensor 12 detects whether or not a vehicle battery 72 is connected to the booster device, and prevents the lithium battery pack from being connected to the output terminals of the booster device unless there is a good (e.g. chargeable) battery connected to the output terminals.

19 The apparatus described operates so as to prevent the lithium battery pack from being connected to the vehicle battery when the terminals from the battery are connected to the wrong terminals of the booster device, and in addition, the specification at [0024] also refers to the other precondition relating to presence of a vehicle battery: PJ [29].

20 The specification explains this further at [0025], which begins as follows:

A smart switch FET circuit 15 electrically switches the handheld battery booster lithium battery to the vehicle’s electric system only when the vehicle battery is determined by the MCU 1 to be present (in response to a detection signal provided by isolation sensor 12) and connected with the correct polarity (in response to a detection signal provided by reverse sensor 10).

“FET” stands for Field Effect Transistor. A FET switch is one example of an electrically operable electric switch (as opposed to a mechanically operable electric switch): PJ [31].

21 At [0026], reference is made to the apparatus having a “manual mode”. That paragraph states in part:

On/Off manual mode and flashlight switches 46 allow the user to control power-on for the handheld battery booster device, to control manual override operation if the vehicle has no battery, and to control the flashlight function. The manual button functions only when the booster device is powered on. This button allows the user to jump-start vehicles that have either a missing battery, or the battery voltage is so low that automatic detection by the MCU is not possible. When the user presses and holds the manual override button for a predetermined period [of] time (such as three seconds) to prevent inadvertent actuation of the manual mode, the internal lithium ion battery power is switched to the vehicle battery connect port. The only exception to the manual override is if the car battery is connected in reverse. If the car battery is connected in reverse, the internal lithium battery power shall never be switched to the vehicle battery connect port.

Figure 1 of the specification includes a manual mode button at item 46.

22 The specification refers to a USB charging circuit and USB charger power source in the preferred embodiment at [0027]:

USB charge circuit 52 converts power from any USB charger power source, to charge voltage and current for charging the lithium battery pack 32. USB output 56 provides a USB portable charger for charging smartphones, tablets, and other rechargeable electronic devices. Operation indicator LEDs 60 provide visual indication of lithium battery capacity status as well as an indication of smart switch activation status (indicating that power is being provided to the vehicle's electrical system).

23 The way in which the reverse sensor and the isolation sensor (each being optically coupled isolator phototransistors) operate in the preferred embodiment is explained in [0028] and [0029] as follows:

Detailed operation of the handheld booster device will now be described with reference to the schematic diagrams of Figs. 2A-2C. As shown in Fig. 2A, the microcontroller unit 1 is the center of all inputs and outputs. The reverse battery sensor 10 comprises an optically coupled isolator phototransistor (4N27) connected to the terminals of vehicle battery 72 at input pins 1 and 2 with a diode D8 in the lead conductor of pin 1 (associated with the negative terminal CB-), such that if the battery 72 is connected to the terminals of the booster device with the correct polarity, the optocoupler LED 11 will not conduct current, and is therefore turned off, providing a “1” or high output signal to the MCU 1. The car battery isolation sensor 12 comprises an optically coupled isolator phototransistor (4N27) connected to the terminals of vehicle battery 72 at input pins 1 and 2 with a diode D7 in the lead conductor of pin 1 (associated with the positive terminal CB+), such that if the battery 72 is connected to the terminals of the booster device with the correct polarity, the optocoupler LED 11A will conduct current, and is therefore turned on, providing a “0” or low output signal to the MCU, indicating the presence of a battery across the jumper output terminals of the handheld booster device.

If the car battery 72 is connected to the handheld booster device with reverse polarity, the optocoupler LED 11 of the reverse sensor 10 will conduct current, providing a “0” or low signal to microcontroller unit 1. Further, if no battery is connected to the handheld booster device, the optocoupler LED 11A of the isolation sensor 12 will not conduct current, and is therefore turned off, providing a “1” or high output signal to the MCU, indicating the absence of any battery connected to the handheld booster device. Using these specific inputs, the microcontroller software of MCU 1 can determine when it is safe to turn on the smart switch FET 15, thereby connecting the lithium battery pack to the jumper terminals of the booster device. Consequently, if the car battery 72 either is not connected to the booster device at all, or is connected with reverse polarity, the MCU 1 can keep the smart switch FET 15 from being turned on, thus prevent[ing] sparking/short circuiting of the lithium battery pack.

24 Thus, each of the sensors will provide either a “0” (or low signal) or “1” (or high signal) to the MCU and these inputs can be used by the microcontroller software to determine when it is safe to turn on the power: PJ [36]. The primary judge referred to the outputs from those circuits as illustrated in the following table, which was based on NOCO’s opening submissions on infringement:

26 The specification at [0031], when read with [0036] and [0038], discusses the measurement of the voltage of the lithium battery, indicating that if the voltage is too low during discharge operation (or too high during charge) the MCU will not operate: PJ [38].

27 The temperature of the lithium battery is also monitored in the preferred embodiment, as discussed in [0032]. The MCU will not allow jump starting if the internal lithium battery is too hot. The input of this sensor is shown in Figure 1 as Lithium Battery Temperature Sensor (item 20).

28 The specification refers to a USB output circuit for charging portable electronic devices in the description of the preferred embodiment at [0036] as follows:

A USB output 56 circuit (Fig. 2C) is included to provide a USB output for charging portable electronic devices such as smartphones from the internal lithium battery pack 32. Control circuit 57 from the microcontroller 1 allows the USB Out 56 to be turned on and off by software control to prevent the internal lithium battery getting too low in capacity. The USB output is brought to the outside of the device on a standard USB connector 58, which includes the standard voltage divider required for enabling charge to certain smartphones that require it.

29 The specification also refers to a USB charge circuit that allows the internal lithium battery pack to be charged using a standard USB charger at [0037], as follows:

The USB charge circuit 52 allows the internal lithium battery pack 32 to be charged using a standard USB charger. This charge input uses a standard micro-USB connector 48 allowing standard cables to be used. The 5V potential provided from standard USB chargers is up-converted to the 12.4VDC voltage required for charging the internal lithium battery pack using a DC-DC converter 49. The DC-DC converter 49 can be turned on and off via circuit 53 by an output from the microcontroller 1.

30 The specification then describes the physical features of a handheld device and a jumper cable device of the preferred embodiment at [0039]–[0040] by reference to Figures 3 and 4, which provide a depiction of the device and its jumper cables respectively.

31 The specification then states at [0041]:

The invention having been thus described, it will be apparent to those skilled in the art that the same may be varied in many ways without departing from the spirit or scope of the invention. Any and all such variations are intended to be encompassed within the scope of the following claims.

32 The 223 Patent has 21 claims, two of which are independent claims, namely Claims 1 and 21. The Claims are as follows, adding numbered integers to the independent Claims 1 and 21 for ease of subsequent reference, and omitting claims that are not among the Asserted Claims:

1. (1.1) A jump starting apparatus configured for boosting or charging a

depleted or discharged battery having a positive battery terminal and a negative battery terminal, the apparatus comprising:

(1.2) a power supply;

(1.3) a positive battery connector for connecting the jump starter apparatus to the positive battery terminal of the depleted or discharged battery;

(1.4) a negative battery connector for connecting the jump starter apparatus to the negative battery terminal of the depleted or discharged battery;

(1.5) a power switch connected in circuit with the power supply and the positive and negative battery connectors, the power switch configured to turn power on or off from the power supply to the positive and negative battery connectors;

(1.6) a control system or circuit connected to and controlling the power switch, the control system or circuit configured (1.6.1) to detect presence of the depleted or discharged battery when connected between the positive and negative battery connectors and (1.6.2) to detect polarity of the depleted or discharged battery when connected between the positive and negative battery connectors;

(1.7) wherein the control system or circuit switches on the power switch to connect the power supply to the depleted or discharged battery only when (1.7.1) the depleted or discharged battery is present and properly connected between the positive and negative battery connectors and (1.7.2) the depleted or discharged battery is properly connected with a correct polarity between the positive and negative battery terminals;

2. The apparatus according to claim 1, wherein the control system or circuit does not switch on the power switch to connect the power supply to the depleted or discharged battery when the control system or circuit detects either that (i) the depleted or discharged battery is absent or not connected between the positive and negative battery connectors or (ii) the depleted or discharged battery is not connected with a correct polarity between the positive and negative battery terminals.

3. The apparatus according to claim 1, wherein the control system or circuit is configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery connectors and to detect polarity of the depleted or discharged battery when connected between the positive and negative battery connectors prior to turning power on from the power supply to the depleted or discharged battery.

4. The apparatus according to any one of the preceding claims, wherein the control system or circuit comprises a microcontroller configured for providing an output controlling the power switch.

5. The apparatus according to claim 4, wherein the microcontroller receives input from one or more sensors configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery connectors and to detect polarity of the depleted or discharged battery when connected between the positive and negative battery connectors.

6. The apparatus according to claim 5, wherein the one or more sensors includes one sensor configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery connectors, and another sensor configured to detect polarity of the depleted or discharged battery when connected between the positive and negative battery connectors.

7. The apparatus according to claim 5 or claim 6, wherein the one or more sensors comprises one or more sensing circuits.

8. The apparatus according to any one of claims 4 to 7, wherein the microcontroller switches the power switch on to provide power from the power supply to the depleted or discharged battery only when the depleted or discharged battery is determined by the microcontroller to be present and connected with the correct polarity.

…

11. The apparatus according to any one of the preceding claims, wherein the positive battery connector comprises a positive battery cable and the negative battery connector comprises a negative battery cable, and wherein the positive battery cable comprises a positive battery clamp and the negative battery cable comprises a negative battery clamp.

12. The apparatus according to any one of the preceding claims, wherein the power supply comprises a lithium ion battery disposed within the jump starting apparatus, and wherein the lithium ion battery comprises a battery pack comprising multiple lithium batteries.

The apparatus according to any one of the preceding claims, wherein the power switch comprises a plurality of FETs arranged in parallel.

14. The apparatus according to claim 6, or any one of claim 7 to 13 when appended to claim 6, wherein the one sensor is a depleted or discharged battery presence sensor and the other sensor is a reverse polarity sensor.

…

16. The apparatus according to any one of the preceding claims, further comprising a USB charging port configured to provide charging power from an external power source to the power supply.

17. The apparatus according to claim 16, further comprising a USB charging circuit connecting the USB charging port to the power supply.

18. The apparatus according to claim 17, wherein the USB charging circuit comprises a DC-DC converter.

19. The apparatus according to claim 18, wherein the DC-DC converter is configured to convert 5V potential provided from a USB charger to 12.4VDC.

20. The apparatus according to claim 18 or 19, wherein the DC-DC converter is configured to be turned on and off via a circuit by an output from a microcontroller.

21. (21.1) A jump starter apparatus for boosting or charging a depleted or

discharged battery having a positive battery terminal and a negative battery terminal, the apparatus comprising:

(21.2) a power supply;

(21.3) a positive battery connector for connecting the jump starter apparatus to the positive battery terminal of the depleted or discharged battery;

(21.4) a negative battery connector for connecting the jump starter apparatus to the negative battery terminal of the depleted or discharged battery;

(21.5) a power switch connected in circuit with the power supply and the positive and negative battery connectors, the power switch configured to turn power on or off from the power supply to the positive and negative battery connectors;

(21.6) a control system or circuit connected to and controlling the power switch, the control system or circuit configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery connectors and to detect polarity of the depleted or discharged battery when connected between the positive and negative battery connectors;

(21.7) wherein the control system or circuit switches on the power switch to cause the power supply to be connected to the depleted or discharged battery when, and only when, the depleted or discharged battery is present and properly connected between the positive and negative battery connectors and the depleted or discharged battery is properly connected with a correct polarity between the positive and negative battery terminals.

33 The only difference between Claims 1 and 21 is that Claim 1 uses the expression “only when” (in integer 1.7), whereas Claim 21 uses the expression “when, and only when” (in integer 21.7).

059 Patent

34 The specification of the 059 Patent is substantially the same as the body of the specification of the 223 Patent, except for the consistory clauses, which reflect the different claims made in the 059 Patent.

35 The 059 Patent contains 25 claims, five of which are independent claims, namely Claims 1, 14, 15, 21 and 24. The claims are as follows, adding numbered integers to the independent claims, and omitting the three claims which are not among the Asserted Claims:

1. (1.1) A jump starting apparatus configured for boosting or charging a

depleted or discharged battery having a positive polarity battery terminal and a negative polarity battery terminal, the jump starting apparatus comprising:

(1.2) a rechargeable battery;

(1.3) a positive polarity battery terminal connector configured for connecting the jump starting apparatus to the positive polarity battery terminal of the depleted or discharged battery;

(1.4) a negative polarity battery terminal connector configured for connecting the jump starting apparatus to the negative polarity battery terminal of the depleted or discharged battery;

(1.5) a power switch or circuit configured to turn on power from the rechargeable battery to the positive and negative polarity battery terminal connectors;

(1.6) a control system or circuit connected to and controlling the power switch, the control system or circuit configured to detect whether the positive and negative polarity battery terminal connectors have a proper or improper connection with the positive and negative polarity battery terminals of the depleted or discharged battery prior to turning on the power switch or circuit;

(1.7) a USB input charge circuit connected to the rechargeable battery, the USB input charge circuit comprising a DC/DC converter, the USB input charge circuit configured for converting power from a USB charger to increase charge voltage for charging the rechargeable battery; and

(1.8) a USB input connector connected to the USB input charge circuit, the USB input connector configured for connecting to the USB charger and providing charge input from the USB charger through the USB input connector and the USB input charge circuit to the rechargeable battery.

[Emphasis added.]

2. The apparatus of claim 1, wherein the rechargeable battery comprises a lithium ion battery, and preferably comprises a battery pack of multiple lithium ion batteries.

3. The apparatus of claim 1 or claim 2, wherein the power switch comprises one or more FETs.

4. The apparatus of any one of the preceding claims, wherein the control system or circuit is configured for detecting a presence of the depleted or discharged battery connected between the positive and negative polarity battery terminal connectors and detecting a proper polarity connection of the positive and negative polarity terminals with the positive and negative polarity battery terminal connectors.

…

6. The apparatus of any one of the preceding claims, further comprising a temperature sensor configured to detect temperature of the rechargeable battery and to provide a temperature signal to a microcontroller.

7. The apparatus of any one of the preceding claims, further comprising a voltage measurement circuit configured to measure output voltage of the rechargeable battery and to provide a voltage measurement signal to a microcontroller.

8. The apparatus of any of the preceding claims, further comprising a USB output port configured to provide charging power from the rechargeable battery to a USB-chargeable device.

9. The apparatus of any one of the preceding claims, further comprising a jumper cable device, the jumper cable device comprising a plug configured to plug into an output port of the jump starting apparatus, a pair of battery cables integrated with the plug at one end of the pair of cables, and the positive and negative battery terminal connectors connected to an opposite end of the pair of battery cables.

10. The apparatus according to any one of the preceding claims, wherein the DC-DC converter is configured for up-converting the input voltage received by the USB input connector.

11. The apparatus according to claim 10, wherein the input voltage is 5V that is up-converted to 12.4 VDC for charging the rechargeable battery.

12. The apparatus according to any one of the preceding claims, wherein the control systems or circuit comprises one or more sensors connected to a microprocessor for determining whether the depleted or discharged battery is present and connected between the positive and negative polarity battery terminal connectors and determining whether the depleted or discharged battery is properly or improperly connected to the positive and negative polarity battery terminal connectors.

…

14. (14.1) A jump starting apparatus for boosting or charging a depleted or

discharged battery having a positive polarity battery terminal and a negative polarity terminal, the jump starting apparatus comprising:

(14.2) a rechargeable battery;

(14.3) a positive polarity battery terminal connector configured for connecting the jump starting apparatus to the positive polarity terminal of the depleted or discharged battery;

(14.4) a negative polarity battery terminal connector configured for connecting the jump starting apparatus to the negative polarity terminal of the depleted or discharged battery;

(14.5) a battery presence sensor or circuit connected in circuit with the positive polarity battery terminal connector and the negative polarity battery terminal connector;

(14.6) a reverse polarity sensor or circuit connected in circuit with the positive polarity battery terminal connector and the negative terminal connector;

(14.7) a power switch or circuit connected or connectable in circuit with the rechargeable battery and the positive and negative polarity battery terminal connectors;

(14.8) a microcontroller configured to receive input signals provided by the battery presence sensor or circuit and the reverse polarity sensor or circuit, the microcontroller configured to provide an output signal to control the power switch,

(14.9) a USB input charge circuit connected to the rechargeable battery, the USB input charge circuit configured for converting power from a USB charger to increase charge voltage for charging the rechargeable battery; and

(14.10) a USB input connector connected to the USB input charge circuit, the USB input connector configured for connecting to the USB charger and providing charge input from the USB charger through the USB input connector and the USB input charge circuit to the rechargeable battery.

15. (15.1) A jump starting device for boosting or charging a depleted or

discharged battery having a positive polarity battery terminal and a negative polarity battery terminal, the jump starter device comprising:

(15.2) a rechargeable battery;

(15.3) a positive battery terminal connector for connecting the jump starter device to the positive battery terminal of the depleted or discharged battery;

(15.4) a negative battery terminal connector for connecting the jump starter device to the negative battery terminal of the depleted or discharged battery;

(15.5) a power switch or circuit connected in circuit with the rechargeable battery and the positive and negative battery terminal connectors, the power switch configured to turn power on or off from the rechargeable battery to the depleted or discharged battery when the positive and negative battery terminal connectors are properly connected to the positive and negative battery connectors;

(15.6) a power switch control system or circuit connected to and controlling the power switch, the power switch control system or circuit configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery terminal connectors and to detect polarity of the depleted or discharged battery when connected between the positive and negative battery terminal connectors;

(15.7) a USB input charge circuit connected to the rechargeable battery, the USB input charge circuit configured for converting power from a USB charger to increase charge voltage for charging the rechargeable battery; and

(15.8) a USB input connector configured for connecting to the USB charger and providing charge input from the USB charger through the USB input connector and the USB input charge circuit to the rechargeable battery.

16. The device according to claim 15, wherein the power switch control system or circuit does not switch on the power switch to connect the rechargeable battery to the depleted or discharged battery when the power switch control system or circuit detects either that (i) the depleted or discharged battery is absent or not connected between the positive and negative battery connectors, or (ii) the depleted or discharged battery is not connected with the proper polarity between the positive and negative battery terminal connectors.

17. The device according to claim 15 or claim 16, wherein the power switch control system or circuit is configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery connectors and to detect polarity of the depleted or discharged battery when connected between the positive and negative battery connectors prior to turning power on from the rechargeable battery to the depleted or discharged battery.

18. The device according to any one of claims 15 to 17, wherein the power switch control system or circuit comprises a microcontroller configured for providing an output controlling the power switch.

19. The device according to claim 18, wherein the microcontroller receives input from one or more sensors configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery connectors and to detect polarity of the depleted or discharged battery when connected between the positive and negative battery connectors.

20. The device according to claim 19, wherein the one or more sensors includes one sensor configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery terminal connectors, and another sensor configured to detect polarity of the depleted or discharged battery when connected between the positive and negative battery terminal connectors.

21. (21.1) A jump starting device for boosting or charging a depleted or discharged battery having a positive polarity battery terminal and a negative polarity battery terminal, the jump starter device comprising:

(21.2) a rechargeable battery;

(21.3) a positive battery terminal connector for connecting the jump starter device to the positive battery terminal of the depleted or discharged battery;

(21.4) a negative battery terminal connector for connecting the jump starter device to the negative battery terminal of the depleted or discharged battery;

(21.5) a power switch or circuit connected in circuit with the rechargeable battery and the positive and negative battery terminal connectors, the power switch configured to turn power on or off from the rechargeable battery to the depleted or discharged battery when connected to the positive and negative battery connectors;

(21.6) a power switch control system or circuit connected to and controlling the power switch, the power switch control system or circuit configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery terminal connectors and to detect proper or improper polarity of the depleted or discharged battery when connected between the positive and negative battery terminal connectors;

(21.7) a USB input charge circuit connected to the rechargeable battery, the USB input charge circuit configured for converting power from a USB charger to increase charge voltage for charging the rechargeable battery; and

(21.8) a USB input connector connected to the USB input charge circuit, the USB input connector configured for connecting to the USB charger and providing charge input from the USB charger through the USB input connector and the USB input charge circuit to the rechargeable battery.

22. The apparatus according to claim 21, further comprising a DC-DC converter connected to the USB input charge circuit.

23. The apparatus according to claim 22, wherein the USB input charge circuit is configured to turn on and off the DC-DC converter by an output of the control system or circuit comprising a microcontroller.

(24.1) A jump starting apparatus configured for boosting or charging a depleted or discharged battery having a positive polarity battery terminal and a negative polarity battery terminal, the jump starting apparatus comprising:

(24.2) a rechargeable battery;

(24.3) a positive polarity battery terminal connector configured for connecting the jump starting apparatus to the positive polarity battery terminal of the depleted or discharged battery;

(24.4) a negative polarity battery terminal connector configured for connecting the jump starting apparatus to the negative polarity battery terminal of the depleted or discharged battery;

(24.5) a power switch or circuit configured to turn on power from the rechargeable battery to the positive and negative polarity battery terminal connector;

(24.6) a control system or circuit connected to and controlling the power switch, the control system or circuit comprising a microcontroller, the control system or circuit configured to detect whether the positive and negative polarity battery terminal connectors have a proper or improper connection with the positive and negative polarity battery terminals of the depleted or discharged battery prior to turning on the power switch;

(24.7) a USB input connector configured for removably connecting to an external USB charger and providing charge input from the USB charger through the USB input connector to the rechargeable battery; and

(24.8) a USB input charge circuit connecting the USB connector to the rechargeable battery, the USB input charge circuit comprising a DC/DC converter, the USB input charge circuit configured for increasing voltage from the external USB charger to charge voltage for charging the rechargeable battery,

(24.9) wherein the DC-DC converter can be turned on and off by an output of the microcontroller.

…

338 Patent

36 The specification of the 338 Patent is also substantially the same as the body of the specification of the 223 Patent, except for different consistory clauses, which reflect the different claims made in the 338 Patent.

37 The 338 Patent contains 36 claims, two of which are independent claims, namely Claims 1 and 36. The claims of the 338 Patent are as follows, adding numbered integers for the two independent claims, and omitting the four claims which are not among the Asserted Claims:

1. (1.1) A jump starting device for boosting or charging a depleted or

discharged battery having a positive battery terminal and a negative battery terminal, the jump starting device comprising:

(1.2) a rechargeable battery;

(1.3) a positive battery connector for electrically connecting the jump starting device to the positive battery terminal of the depleted or discharged battery;

(1.4) a negative battery connector for electrically connecting the jump starting device to the negative battery terminal of the depleted or discharged battery;

(1.5) a power switch or switch circuit connected in series with the rechargeable battery and the positive and negative battery connectors, the power switch or switch circuit configured to switch power on from the rechargeable battery to boost or charge the depleted or discharged battery when connected between the positive and negative battery connectors;

(1.6) a USB input connector; and

(1.7) a USB charge circuit electrically connecting the USB input connector to the rechargeable battery, the USB charge circuit comprising a DC-DC converter configured to upconvert voltage from the USB input connector to the rechargeable battery.

2. The device according to claim 1, wherein the power switch or switch circuit is controlled to turn on power to the depleted or discharged battery only when the jump starting device is connected with correct polarity to the depleted or discharged battery.

3. The device according to claim 2, wherein the DC-DC converter is one or more DC-DC converters.

4. The device according to any one of the preceding claims, wherein the DC-DC converter is configured to convert about 5VDC from the USB input connector to at least 11.1VDC for the rechargeable battery when an active USB power source is connected to the USB input connector.

5. The device according to claim 4, wherein the USB power source is a USB charger, and the USB charging circuit is configured to convert power from the USB charger to charge voltage and current for supplying power or charging the rechargeable battery.

6. The device according to any one of the preceding claims, wherein the DC-DC converter is configured to be turned on and off via a circuit by an output from a microcontroller.

7. The device according to claim 6, wherein the microcontroller software can turn charge off if the rechargeable battery voltage is measured to be too high by an A/D input.

8. The device according to claim 7, wherein the rechargeable battery is a rechargeable lithium battery, and further comprising a rechargeable lithium battery charge controller configured to provide charge balance to internal lithium battery cells of the rechargeable lithium battery.

…

10. The device according to any one of the preceding claims, further comprising a USB output connector for providing a power output from the rechargeable battery to a USB-chargeable device.

11. The device according to claim 10, wherein the USB output connector is electrically connected to a USB output circuit, the USB output circuit connecting the rechargeable battery to the USB output connector.

12. The device according to claim 11, wherein the USB output connector and the USB output circuit define a USB output port.

13. The device according to any one of claims 10 to 12, wherein the USB output port is configured to provide a portable charger for charging smartphones, tablets, music players, and other rechargeable electronic devices.

14. The device according to claim 11, further comprising a microcontroller with a control circuit, the control circuit for the microcontroller allows the USB output circuit to be turned on and off by software control to prevent the rechargeable battery getting too low in capacity.

…

16. The device according to any one of the preceding claims, wherein the power switch or switch circuit comprises at least one power switch or switch circuit configured to turn power on from the rechargeable battery to the depleted or discharged battery when connected to the positive and negative battery connectors.

17. The device according to claim 16, wherein the power switch or switch circuit comprises one or more sensors configured to detect whether the positive and negative battery connectors are properly connected to the depleted or discharged battery prior to switching on the power switch or switch circuit.

18. The device according to claim 17, wherein the power switch or switch circuit is configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery connectors.

19. The device according to claim 17, wherein the power switch or switch circuit is configured to detect polarity of the depleted or discharged battery when connected between the positive and negative battery connectors.

20. The device according to claim 17, wherein the power switch or switch circuit is configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery connectors, and configured to detect polarity of the depleted or discharged battery when connected between the positive and negative battery connectors,

wherein, the power switch or switch circuit switches on the rechargeable battery to connect the rechargeable battery to the depleted or discharged battery only when the depleted or discharged battery is present and connected between the positive and negative battery connectors and the depleted or discharged battery is connected with correct polarity between the positive and negative battery terminals.

21. The device according to claim 16, wherein the power switch or switch circuit comprises a microcontroller configured for providing an output controlling the power switch or switch circuit.

22. The device according to claim 21, wherein the microcontroller receives input from one or more sensors configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery connectors, and to detect polarity of the depleted or discharged battery when connected between the positive and negative battery connectors.

23. The device according to claim 22, wherein the one or more sensors includes one sensor configured to detect presence of the depleted or discharged battery when connected between the positive and negative battery connectors, and another sensor configured to detect polarity of the depleted or discharged battery when connected between the positive and negative battery connectors.

24. The device according to any one of claims 21 to 23, wherein the microcontroller switches the power switch or switch circuit on to provide power from the rechargeable battery to the depleted or discharged battery only when the depleted or discharged battery is determined by the microcontroller to be present and connected with correct polarity to the positive and negative battery connectors.

25. The device according to any one of the preceding claims, wherein said power switch or switch circuit comprises a plurality of FETs in parallel.

26. The device according to claim 22, wherein the one or more sensors is a presence sensor configured for detecting presence of the depleted or discharged battery when connected between the positive and negative battery connectors, and a reverse polarity sensor configured to detect polarity of a connection of the positive and negative battery connectors of the jump starting device with the depleted or discharged battery.

…

29. The device according to any one of the preceding claims, further comprising an output port providing positive and negative polarity outputs to the positive and negative battery connectors.

30. The device according to any one of claims 21 to 24, or any one of claims 25 to 29 when appended to claim 21, further comprising a voltage measurement circuit configured to measure output voltage of the rechargeable battery and to provide a voltage measurement signal to the microcontroller.

31. The device according to any one of the preceding claims, wherein the positive and negative battery connectors are defined by a jumper cable device including a plug configured to plug into an output port of the jump starting device, a pair of cables integrated with the plug at one respective end of the pair of cables and being configured to be connected to positive and negative battery terminals of the depleted or discharged battery at an opposite end of the pair of cables.

32. The device according to any one of the preceding claims, wherein the power switch or switch circuit is configured to switch power on only when the jump starting device is properly connected to the depleted or discharged battery.

33. The device according to any one of the preceding claims, wherein the rechargeable battery is a rechargeable lithium battery pack.

34. The device according to claim 33, further comprising a rechargeable lithium battery pack voltage measurement circuit configured to monitor the rechargeable lithium battery pack to prevent voltage potential from rising to high during a charging operation and from dropping too low during a discharge operation.

35. The device according to claim 33 or claim 34, further comprising a fuel gauge LEDs for indicating a charge level of the rechargeable lithium battery pack.

36. (36.1) A jump starting device for boosting or charging a depleted or

discharged battery having a positive battery terminal and a negative battery terminal, the jump starting device comprising:

(36.2) a rechargeable battery;

(36.3) a positive battery connector for electrically connecting the jump starting device to the positive battery terminal of the depleted or discharged battery;

(36.4) a negative battery connector for electrically connecting the jump starting device to the negative battery terminal of the depleted or discharged battery;

(36.5) a power switch or switch circuit in series with the rechargeable battery and the positive and negative battery connectors, the power switch or switch circuit configured to switch power on from the rechargeable battery to boost or charge the depleted or discharged battery when connected between the positive and negative battery connectors;

(36.6) a USB input connector;

(36.7) a USB charge circuit electrically connecting the USB input connector to the rechargeable battery, the USB charge circuit configured to up-convert voltage from a USB charger power source connected to the USB input connector to the rechargeable battery using a DC-DC converter;

(36.8) a USB output connector; and

(36.9) a USB output circuit electrically connecting the rechargeable battery to the USB output connector.

Do the Patents lack an inventive step?

Legislative provisions and legal principles

38 A patentable invention, so far as claimed in any claim, when compared with the prior art base as it existed before the priority date of that claim, must involve an inventive step: s 18(1)(b)(ii) of the Act.

39 Section 7 of the Act relevantly provides:

(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).

(3) The information for the purposes of subsection (2) is:

(a) any single piece of prior art information; or

(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.

40 In relation to this ground of alleged invalidity, B&W relied in the first place on common general knowledge (CGK) alone, or CGK together with either of the following documents:

(a) a user manual for the Projecta HP 2012 and HP 2200 jump starters dated 9 August 2013 (the HP Manual) (the letters “HP” in the product name standing for “High Performance”); and

(b) a one-page document titled “Multi-Function Power Bank with JUMP START feature” that was circulated by Quitewin Technology Corporation in April 2014 (the QTC Brochure).

41 The primary judge noted that there was no real issue between the parties as to the well-established applicable principles: PJ [311]. The primary judge’s statements as to the agreed applicable principles may be summarised as follows:

(a) one approach for assessing whether a claimed invention is obvious is to consider whether the “person skilled in the art” (PSA) would directly be led as a matter of course to try a particular approach in the expectation that it might well produce a useful result (the “modified Cripps question”): Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; (2002) 212 CLR 411 (Alphapharm) at 53;

(b) that test can be useful, but it is not always appropriate, and the joint judgment in Alphapharm did not reject as an alternative expression of the test the question whether experiments were of a routine character to be tried as a matter of course (at [51]–[52], citing Wellcome Foundation Limited v VR Laboratories (Aust) Pty Ltd [1981] HCA 12; (1981) 148 CLR 262 at 280–281 and 286 (Aickin J); see also Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; (2014) 222 FCR 336 (Besanko, Middleton and Nicholas JJ) (Generic Health)). However, their Honours did reject a test formulated in terms of “worthwhile to try” (Alphapharm at [72]; see also Generic Health at [71]);

(c) a “scintilla of invention” remains sufficient in Australian law to support the validity of a patent, but there must be “some difficulty overcome, some barrier crossed” or something “beyond the skill of the calling”: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 CLR 173 (Lockwood v Doric (No 2)) at 52;

(d) an invention may be obvious despite the fact that “there are a number, and perhaps a large number, of other obvious routes as well”: Nichia Corporation v Arrow Electronics Australia Pty Ltd [2019] FCAFC 2; (2019) 175 IPR 187 (Nichia) at 93, citing Brugger v Medic-Aid Ltd (No 2) [1996] RPC 635 at 661 (Laddie J).

(e) where the claim is for a combination, the question of inventive step does not direct an inquiry respecting each integer of the claimed combination but looks to the interaction between the integers and asks whether the combination was obvious, rather than each of its integers: Alphapharm at [41] and 72, citing Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Ltd [1980] HCA 9; (1980) 144 CLR 253 (Minnesota Mining) at 293 (Aickin J); and

(f) there is a particular danger of hindsight in considering whether a combination claim is obvious: Alphapharm at 196, citing British United Shoe Machinery Company Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 at 646 (Fletcher-Moulton LJ).

42 The CGK may be described as “the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old”, adopting the language of Aickin J in Minnesota Mining at 292: PJ [78].

43 The “skilled addressee” or “person skilled in the relevant art” (sub-s 7(2) of the Act) is a hypothetical person (or team) who has a “practical interest in the subject matter of [the] invention” and who might be “interested in making, constructing, compounding or using the invention”: PJ [73], citing Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980; (2000) 49 IPR 225 at [70]–71. Such a person was described by French CJ in AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; (2015) 257 CLR 356 at [23] as a “tool of analysis” and “a pale shadow of a real person”, and not an “avatar” for the views of the particular expert witnesses who give evidence in a proceeding: PJ [74]. The PSA is assumed to be a skilled but non-inventive worker in the field of the invention: Minnesota Mining at 293 (Aickin J). The PSA may comprise a team: Pfizer Overseas Pharmaceuticals v Eli Lilly & Co [2005] FCAFC 224; (2005) 68 IPR 1 (Pfizer) at 288.

44 It was common ground at the trial that the PSA in the present case is a team, which includes an electrical engineer with experience in power electronics, and an industrial designer or product designer: PJ [76]–[77].

The findings and reasoning of the primary judge

45 The primary judge made a number of findings concerning the CGK of power electronics in terms of basic electrical concepts as well as components and protective features: PJ [81]–[88]. Irrespective of the precise components used, the primary judge found that it was CGK at the Asserted Priority Date that an important aspect of power electronics was the potential for hazard and damage if something went wrong, and accordingly a key aspect of designing a power electronic circuit involved the incorporation of safety features to avoid hazard or damage if a product was connected or operated improperly: PJ [86]. The primary judge at [87] found that, at the Asserted Priority Date, common safety features incorporated in power electronics circuits included:

(a) short circuit protection, being a way of detecting and protecting against the over-current created by an unintended direct connection;

(b) controlled shut down, where circuits are designed to detect a failing input power supply and shut down the system in a controlled fashion;

(c) reverse polarity protection, where circuits are designed to detect whether a power electronic circuit and load are connected with correct polarity and, in the event of reverse polarity, either prevent power from flowing the wrong way back into the power electronic circuit or avoid connecting the power electronic circuit to the load; and

(d) temperature overload protection, where circuits are designed to detect excessive heat and either shut down the system or reduce performance of the system to reduce heat.

46 The primary judge found that it was CGK at the Asserted Priority Date that two common battery chemistries in power electronics were lead acid batteries and lithium-based batteries, and that the growing availability of lithium-based batteries was a key advance before the Asserted Priority Date, as they could generate higher energy density and currents than lead acid batteries (thereby enabling the use of smaller and lighter batteries): PJ [85(h)]. Further, to charge a rechargeable battery, it was CGK that DC current must be used and that as the charge of the battery increases, so does its voltage (such that the level of charge can be measured by sensing voltage): PJ [85(h)]. The background knowledge also included that a DC-DC converter converts the 5V DC USB voltage to the appropriate voltage for charging the lithium battery for use in a jump starter: PJ [178]. The primary judge accepted the evidence of Mr Banks in relation to lithium batteries, that the overarching category is “lithium ion batteries” and within that category, one subset is “lithium iron phosphate batteries” and another subset is “lithium cobalt batteries” (T403): PJ [88]. The primary judge also accepted Mr Banks’s evidence that the expression “lithium polymer batteries” would generally be associated with lithium cobalt batteries (T403): PJ [88]. Mr Wilson gave evidence to the same effect (T795), and the primary judge found that these categories formed part of the CGK as at the Asserted Priority Date: PJ [88].

47 In a later passage of the primary judgment, the primary judge made further findings as to CGK, focussing on the product designer: PJ [317].

48 The primary judge recorded that it was common ground between the parties (which his Honour accepted) that the following matters form part of the CGK known to at least the product designer (or industrial designer) in the team constituting the PSA as at the Asserted Priority Date (at PJ [318]):

(a) one way to jump start a vehicle with a depleted battery was to use a pair of jumper cables to connect the depleted battery to a charged battery in another vehicle;

(b) that method was not particularly safe if the jumper cables did not have safety protections and were: (i) not correctly connected to the depleted battery; (ii) connected with incorrect polarity; or (iii) touched together or connected to the same conductive material (in either case, forming a short circuit), because sparking or even destruction of the cables and damage to the batteries and the user might occur;

(c) jump starter devices with internal batteries, which suffered from the same concerns as jump starter cables if no safety protection was provided;

(d) jump starter devices for industrial or professional users had been on the market for many years and were large and relatively heavy because they used lead acid batteries;

(e) the proliferation of cheaper lithium batteries;

(f) pre-packaged battery management systems and other integrated circuits to implement charging controlled circuitry for lithium batteries were readily available;

(g) lithium batteries had a much higher energy density than lead acid batteries and could be significantly smaller and lighter than a lead acid battery of equivalent energy capacity and amperage;

(h) lithium batteries held their charge over a longer period than a lead acid battery;

(i) USB input and output ports in electronic devices, including USB charging; and

(j) a cranking capacity of 200A to 300A for 2 seconds would be needed to start a small to medium vehicle, with 300A to 600A for larger vehicles.

49 The primary judge found that the following matters were not established to be CGK as at the Asserted Priority Date, contrary to B&W’s submission that they were CGK (PJ [319]–[320]):

(a) jump starter devices with lithium batteries; and

(b) lithium-battery jump starters with reverse polarity protection and short circuit protection.

50 The primary judge first dealt with the expert evidence of Mr Banks, an industrial designer: PJ [322]–[324]. In section D of his affidavit, Mr Banks described the preparation of a design brief for a new jump starter, having been asked by the lawyers acting for B&W to describe a design brief that he would have prepared if, at the Asserted Priority Date, he had been asked to provide such a brief to an engineer working in power electronics, for the purpose of assisting them in the development of a new jump starter (the Design Brief). The primary judge found that the Design Brief was prepared on the basis of Mr Banks’s knowledge as at the Asserted Priority Date, but that that knowledge went beyond the CGK of the product designer in the team that constituted the PSA, and thus the primary judge did not accept that the Design Brief provided a sound basis to evaluate the issue of inventive step: PJ [324].

51 Turning to the expert evidence of Mr Wilson, an electrical engineer called by NOCO, the primary judge set out a lengthy passage of transcript from the concurrent oral evidence of Mr Wilson and Professor Holmes, an electrical engineer called by B&W, in which Mr Wilson gave evidence to the following effect (T731–737; PJ [326]):

(a) Mr Wilson had not operated a battery-powered jump starter before the relevant time but was aware of the risks of short circuiting and connecting with reverse polarity in the context of jump-starting vehicles;

(b) as an electronics engineer at the relevant date, Mr Wilson would have readily appreciated that one way to avoid those problems was to ensure the cables of the jump starter were not energised until the cables were properly connected;

(c) it would have been a matter of routine for Mr Wilson to implement a sensor or sensors capable of detecting presence or polarity, or presence and polarity;

(d) that may have involved using a simple binary output or other means, and may have involved using one or two sensors;

(e) one could conceive of separate sensors, one for reverse polarity and one for presence/correct polarity, and one could conceive of one sensor that spans the entire voltage range;

(f) provided there are sensing means to determine whether the two necessary preconditions have been satisfied (namely presence and connection with correct polarity), one would not be limited to the particular arrangement of sensors described in PCT 434 to provide the safety benefits of not turning on the switch unless those two preconditions were satisfied;

(g) a different arrangement of sensors would provide the same advantage, because the sensors provide the information and it is the microcontroller or the control circuit that then makes the decision to close, and provided it has the same functional information then there will be the same outcome;

(h) an uninventive power electronics engineer would understand that there were many obvious or plain ways to determine whether an external battery was properly connected, including binary sensing with two sensors, that being obvious in the sense of being one of the things that Mr Wilson would think of despite not being his preferred way;

(i) Mr Wilson regarded a single sensor which did not have a dead period as possibly a preferred way; and

(j) in terms of bringing about sensing with a microcontroller, that would take time, effort and skill but it was within the calling of Mr Wilson’s profession.

52 The primary judge referred to Mr Wilson having been asked, in the part of the concurrent oral evidence dealing specifically with the topic of inventive step, to put out of his mind the Patents, the Design Brief, the QTC Brochure, the HP Manual and all post-Asserted Priority Date information: PJ [328]. Mr Wilson was also asked to base his answers on what would be well known to, or appreciated by, a power electronics engineer with four years’ experience and without any inventive faculty (T787–788). When asked questions about a project to design a battery-powered jump starter, Mr Wilson accepted that you would have means for recharging the rechargeable battery, voltage sensing of the internal and external battery, and (as options) various power outs (such as 12 volt cigarette lighter outs, barrel connector outs or USB outs), and he accepted that they were available as at the Asserted Priority Date (T792–793). Mr Wilson accepted that the device would require circuitry and software to ensure the internal battery was charged and safely discharged (T793). Mr Wilson said that an MCU that controls all those various electronic features would likely be required, and could be done without an MCU, but was more likely to be an MCU as at the relevant date (T793). Mr Wilson was asked whether combining all those features would create any obvious adverse effects or problems, and responded that there was no reason why you could not combine them (T793–795). Mr Wilson accepted that combining all those features was within the skill and experience of a power electronics engineer with four years’ experience (T795).

53 The primary judge referred to Mr Wilson accepting that lithium ion batteries were a well-known source of power (T795) and that they have a higher current capability and a higher energy density than other batteries (T797): PJ [329]. Mr Wilson accepted that they would be a “sensible choice” for a jump starter product as at the Asserted Priority Date (T798). He accepted that USB charging of lithium batteries was well known as at the Asserted Priority Date (T799) and he could not see any adverse effect or problem in using lithium batteries and having USB charging in combination (T805).

54 In relation to the HP Manual, Mr Wilson accepted that if he was designing a jump starter device, he could discern features from the HP Manual that might be worth including (T805): PJ [330]. In relation to the QTC Brochure, Mr Wilson accepted that if he was designing a jump starter, the document would at least give him an indication that there was a competitor out there who was offering a jump starter with polarity protection, USB charging and a lithium internal battery (T805–806): PJ [331].

55 Turning to the evidence of Professor Holmes, the primary judge referred to questions he was asked about the design process that he had discussed (in his first affidavit (Holmes 1) at [254] and following) in relation to modifications that could be made to the HP jump starter which he considered were obvious alternatives to the features of that product: PJ [332]. Professor Holmes accepted that one of the main components was the battery, and said that the power switch was probably as significant in terms of designing an effective product (T819). Professor Holmes said that he would proceed to acquire specifications for various types of batteries and then assess them against what he understood to be the electrical performance requirements (T821). Professor Holmes said that he knew that lithium batteries came in a wide variety of shapes and electrical characteristics, and that he would look at all possible battery options that he could find at the time (T821–822).

56 Professor Holmes was asked questions about his evidence relating to a brief to design a jump starter with reference to the QTC Brochure (in his first affidavit at [571] and following): PJ [333]. Professor Holmes said that the brochure lists a series of features, and he assumed that it achieved what it claims although he said he had reservations as to whether the specifications of the battery in the QTC Brochure were consistent with the photograph of the battery and whether the battery would give an effective cranking performance (T824–825). In his first affidavit, (at [571] and following), Professor Holmes identified a number of issues associated with the QTC Brochure, such as the adequacy of the battery shown in the document, the effectiveness of the safety protection provided with the product, and a number of other issues: PJ [334]. The primary judge noted that some of the evidence of Mr Wilson and Professor Holmes relating to the HP Manual and the QTC Brochure which was given in the context of novelty (referred to at PJ [270]–[276] and [289]–[300]) was also relevant to the issue of inventive step: PJ [335].

57 For completeness, the primary judge noted that the evidence of Mr Stanfield (NOCO’s Chief Technical Officer and one of the named inventors of the Patents) as to the steps he undertook in developing NOCO’s product was potentially relevant: PJ [336]. The primary judge referred to Mr Stanfield’s oral evidence that the most dangerous part of a lithium ion battery jump starter was the fact that the customer could hold it in their hand while they were connecting it to a battery, and if the jump starter were connected to a car battery in reverse then the user could get a major shock (T251). Mr Stanfield said that they decided to have not only protection, but redundancy, and having two sensors rather than one provided redundancy (T251–252). Mr Stanfield also said that the large lead acid jump starters were too big and heavy to hold, such that the user would set it down somewhere, and while they still had the capacity for sparking, damage and injury, there was a little more protection (T251–252).

58 The primary judge dealt initially with the issue of inventive step on the basis of CGK alone, before considering the issue on the basis of CGK together with either the HP Manual or the QTC Brochure.

59 The primary judge found that Claim 1 of the 223 Patent would have been obvious to the PSA in the light of CGK as at the Asserted Priority Date: PJ [348]. The primary judge said that there did not appear to be anything inventive about integers 1.1 to 1.5 of Claim 1. The part of Claim 1 that the primary judge regarded as potentially inventive is the arrangement in integers 1.6 and 1.7 for there to be a control system or circuit connected to and controlling the power switch with the control system or circuit configured to detect presence and polarity of the depleted/discharged battery and to switch on the power switch (to connect to the power supply to the depleted/discharged battery) only when the depleted/discharged battery was present and connected with correct polarity. However, the primary judge said that the expert evidence suggested that the inclusion of such an arrangement in a jump starter device would have been a matter of routine, referring to Professor Holmes and Mr Wilson both agreeing that it would have been a matter of routine to implement a sensor or sensors capable of detecting presence and polarity. Further, Mr Wilson accepted that binary sensing with two sensors would not involve any great difficulty or require any great thought as at the Asserted Priority Date, and that the binary version (ie having two sensors) was available to him as an idea at the Asserted Priority Date; although it would take time and effort, it was within the calling of his profession. The primary judge said that that evidence was couched in terms of sensors, but his Honour considered it to be equally applicable to the arrangement described in integers 1.6 and 1.7: PJ [348].

60 Turning to each of the other Asserted Claims of the 223 Patent in the primary judge’s reasoning (at PJ [349]):

(a) Claims 2 and 3 are dependent claims that do not introduce additional features that affect the analysis, such that the analysis for Claim 1 was equally applicable.

(b) Claim 4 is a dependent claim wherein the control system or circuit comprises a microcontroller configured for providing an output controlling the power switch, and the primary judge referred to Mr Wilson’s evidence that an MCU that controls all the various electronic features to which he had been referred would likely be required (as at the relevant date), and was thus satisfied that the inclusion of a microcontroller, and the combination of this feature with the other features, were obvious in the relevant sense.

(c) Claim 5 states that the microcontroller receives input from “one or more sensors” configured to detect presence and polarity of the depleted/discharged battery, as to which Professor Holmes and Mr Wilson agreed that it would have been a matter of routine to implement a sensor or sensors capable of detecting presence and polarity. Further, the primary judge referred again to Mr Wilson’s evidence concerning binary sensing with two sensors referred to in relation to Claim 1, noting that while that evidence focussed to some extent on two sensors, the primary judge considered it equally applicable to a single sensor arrangement. The primary judge was thus satisfied that Claim 5 was obvious in the relevant sense.

(d) Claim 6 is a dependent claim that refers to two specific types of sensors, and the primary judge regarded the analysis in relation to Claim 5 as applicable also to Claim 6.

(e) Claims 7, 8 and 11 are dependent claims, but to the extent that they introduce additional integers, the primary judge did not regard those as affecting the analysis.

(f) Claim 12 refers to an apparatus according to any one of the preceding claims, wherein the power supply comprises a lithium ion battery disposed within the jump starter apparatus, and wherein the lithium ion battery comprises a battery pack comprising multiple lithium ion batteries. The primary judge found that Claim 12 would have been obvious to the PSA in light of the CGK as at the Asserted Priority Date, the CGK including that: two common battery chemistries in power electronics were lead acid batteries and lithium-based batteries; and the growing availability of lithium-based batteries was a key advance before the Asserted Priority Date, as they could generate higher energy density and currents than lead acid-based batteries. The primary judge said that the CGK known to the product designer in the team constituting the PSA included: the proliferation of cheaper lithium batteries; pre-packaged battery management systems and other integrated circuits to implement charging control circuitry for lithium batteries being readily available; lithium batteries having a much higher energy density than lead acid batteries and being able to be significantly smaller and lighter than a lead acid battery of equivalent energy capacity and amperage; and lithium batteries holding their charge over a longer period of time than did lead acid batteries. The primary judge found that the expert evidence suggested that the use of a lithium ion battery or a battery pack comprising multiple lithium ion batteries in a jump starter device was a matter of routine, referring to Mr Wilson’s acceptance that lithium ion batteries were a well-known source of power and that they would be a sensible choice for a jump starter as at the Asserted Priority Date. The primary judge found that this evidence suggested that the use of a lithium ion battery, or a battery pack comprising multiple lithium ion batteries, in a jump starter device was available to, and not difficult for, the PSA as at the Asserted Priority Date. To the extent that Professor Holmes gave evidence that he would look at all possible battery options that he could find at the time, the primary judge did not consider that that led to any different conclusion. The primary judge said that, having regard to the evidence generally, his Honour was satisfied that the combination of features claimed in Claim 12 would have been a matter of routine, saying that although Mr Wilson was not asked directly about this particular combination of features, the tenor of his evidence was that there was no problem combining the features that were the subject of his evidence. The primary judge then said that the combination of lithium ion batteries with the features set out in earlier claims in the 223 Patent was “merely a design choice” rather than a barrier crossed or difficulty overcome, and considered that combining those features was available to the team constituting the PSA. For these reasons, the primary judge concluded that Claim 12 was obvious in the relevant sense.

(g) Claim 13 refers to an apparatus according to one of the preceding claims, wherein the power switch comprises a plurality of FETs arranged in parallel. The primary judge found that Claim 13 would have been obvious to the PSA in light of the CGK as at the Asserted Priority Date. The primary judge said that by the Asserted Priority Date, there was a range of well-understood components that were routinely used in power electronics circuitry, including switches, and relevant switches included semiconductor switches, including FETs, which could switch faster and were smaller and lighter than solenoid switches. The primary judge referred to the evidence of Mr Wilson given in the context of the Priority Date issue, that it was well known at the Asserted Priority Date that a FET is generally smaller and lighter and can generally switch faster than a relay; and that each of FETs and relays had their own respective advantages and disadvantages depending on the particular application. The primary judge found that those matters formed part of the CGK of the power electronics engineer in the team comprising the PSA. The primary judge referred also to the evidence of Professor Holmes in the context of the Priority Date issue that he could have built a jump starter using a relay or a FET switch at the Asserted Priority Date, that the choice of switch was not germane to management of the preconditions, that the same safety advantage (in relation to prevention of closure of the switch) can be obtained regardless of the type of switch used, and thus found that the use of a FET switch or a plurality of FETs arranged in parallel would have been a matter of routine. Further, the primary judge found that combining the features in Claim 13 would have been a matter of routine, and concluded that Claim 13 was obvious in the relevant sense.

(h) Claim 14 is a dependent claim, which does not include additional integers that affect the analysis, such that the previous analysis led to a conclusion of obviousness.

(i) Claim 16 refers to the apparatus according to any one of the preceding claims, further comprising a USB charging port configured to provide charging power from an external power source to the power supply. The primary judge found that Claim 16 would have been obvious to the PSA in light of the CGK as at the Asserted Priority Date. By that date, there was a range of well-understood components that were routinely used in power electronics circuitry, including connection components, being components used electrically to connect a power electronics circuit to another circuit which could be permanent or temporary (ie “quick fit” connections, such as USB connectors). The primary judge found that the CGK known to the product designer in the team constituting the PSA included USB input and output ports in electronic devices, including USB charging. The primary judge referred to Mr Wilson accepting that USB charging of lithium batteries was well known as at the Asserted Priority Date, and that he could not see any adverse effect or problem in using lithium batteries and having USB charging in combination. The primary judge was thus satisfied that the inclusion of a USB charging port to provide charging power from an external power source to the power supply in a jump starter device would have been a matter of routine, and further found that combining the features in Claim 16 would have been a matter of routine, thus concluding that Claim 16 was obvious in the relevant sense.

(j) Claim 17 refers to the apparatus according to Claim 16, further comprising a USB charging circuit connecting the USB charging port to the power supply. The primary judge said that the analysis for Claim 16 was substantially applicable to Claim 17.

(k) Claim 18 refers to the apparatus according to Claim 17, wherein the USB charging circuit comprises a DC-DC converter. The primary judge found that Claim 18 would have been obvious to the PSA in light of the CGK as at the Asserted Priority Date. By the Asserted Priority Date, there were a range of well-understood components that were routinely used in power electronics, including power converters, being electrical components that convert one voltage or current to another voltage or current; a common type of power converter was a DC-DC converter. The primary judge was satisfied that the inclusion of a USB charging circuit that comprises a DC-DC converter in a jump starter would have been a matter of routine, and that combining the features in Claim 18 would have been a matter of routine, thus concluding that Claim 18 was obvious in the relevant sense.

(l) Claim 19 refers to the apparatus according to Claim 18, wherein the DC-DC converter is configured to convert 5V potential provided from a USB charger to 12.4VDC. The primary judge said that the evidence generally indicates that these conversion parameters were available to the PSA, and that for substantially the same reasons as for Claim 18, his Honour considered that Claim 19 was obvious in the relevant sense.

(m) Claim 20 refers to the apparatus according to Claim 18 or 19, wherein the DC-DC converter is configured to be turned on and off via a circuit by an output from a microcontroller. The primary judge found that the evidence generally indicated that this additional integer was available to the PSA, and for substantially the same reasons as for Claim 18, his Honour considered that Claim 20 was obvious in the relevant sense.

(n) Claim 21 is an independent claim, which differs from Claim 1 in that it uses the language “when, and only when” rather than “only when”. The primary judge said that it was not suggested that the distinction between claims that require automatic start and those that do not was relevant for the purposes of the inventive step analysis, and that putting that aspect to one side, the integers of Claim 21 are similar to those of Claim 1. The primary judge thus considered that the analysis set out in relation to Claim 1 was substantially applicable to Claim 21.

61 Accordingly, the primary judge concluded that all of the Asserted Claims of the 223 Patent were obvious in the relevant sense and therefore invalid: PJ [350].

62 Turning then to the Asserted Claims of the 059 Patent in the primary judge’s reasoning (at PJ [351]):

(a) Claim 1 refers to a rechargeable battery, and it was CGK that batteries can be single use or rechargeable such that the inclusion of this type of battery was a matter of routine. Claim 1 refers to a control system or circuit that is configured to detect whether there is a proper or improper connection with the positive and negative polarity battery terminals of the depleted/discharged battery prior to turning on the power switch or circuit, and in relation to that feature, the primary judge said that the analysis set out above in relation to Claim 1 of the 223 Patent was equally applicable. Claim 1 of the 059 Patent also refers to a USB input charge circuit connected to the rechargeable battery, the USB input charge circuit comprising a DC-DC converter, and in relation to those features the analysis set out above in relation to Claims 16 and 18 of the 223 Patent was equally applicable. Integer 1.8 of Claim 1 of the 059 Patent refers to a USB input connector connected to the USB input charge circuit, but the primary judge said that this feature does not affect the present analysis. The primary judge was satisfied that combining the features of Claim 1 would have been a matter of routine and therefore this claim would have been obvious to the PSA in the light of CGK as at the Asserted Priority Date.

(b) Claim 2 refers to the apparatus according to Claim 1, wherein the rechargeable battery comprises a lithium ion battery and preferably comprises a battery pack of multiple lithium ion batteries. The primary judge said that the analysis set out above in relation to Claim 12 of the 223 Patent was equally applicable, and therefore considered this claim to be obvious in the relevant sense.

(c) Claim 3 refers to the apparatus of Claim 1 or 2, wherein the power switch comprises one or more FETs. The primary judge said that the analysis set out above in relation to Claim 13 of the 223 Patent was substantially applicable and therefore considered this claim to be obvious in the relevant sense.

(d) Claim 4 is a dependent claim that does not introduce any integers that raise an issue for present purposes, and thus the analysis for the earlier claims applied.

(e) Claim 6 refers to the apparatus of any one of the preceding claims, further comprising a temperature sensor configured to detect temperature of the rechargeable battery and to provide a temperature signal to a microcontroller. The primary judge referred to his Honour’s earlier finding that as at the Asserted Priority Date, common safety features incorporated in power electronics circuits included temperature overload protection, and that this would have been a matter of CGK. The primary judge also referred to Mr Wilson’s evidence that, as at the Asserted Priority Date, one would want to include a temperature sensor to ensure that the lithium battery did not overheat, and his Honour did not consider that evidence to be limited to the device in the QTC Brochure, despite noting that the evidence arose in that context (T753). The primary judge thus considered that the inclusion of a temperature sensor would have been a matter of routine. Having regard to the evidence generally, the primary judge considered that combining the features in Claim 6 would have been a matter of routine, and thus considered Claim 6 to be obvious in the relevant sense.

(f) Claim 7 refers to the apparatus of any one of the preceding claims, further comprising a voltage measurement circuit configured to measure output voltage of the rechargeable battery and to provide a voltage measurement signal to a microcontroller. The primary judge referred to Mr Wilson’s evidence that in a project to design a battery-powered jump starter, one would have voltage sensing of the internal and external battery, that the device would require circuitry and software to ensure the internal battery was charged and safely discharged, and that an MCU that controls all those various electronic features would likely be required. The primary judge thus considered that the inclusion of a voltage measurement circuit as described in Claim 7 would have been a matter of routine, and that having regard to the evidence generally, combining the features in Claim 7 would have been a matter of routine, thus concluding that Claim 7 was obvious in the relevant sense.

(g) Claim 8 refers to the apparatus of any one of the preceding claims, further comprising a USB output port configured to provide charging power from the rechargeable battery to a USB-chargeable device. The primary judge found that Claim 8 would have been obvious to the PSA in light of the CGK as at the Asserted Priority Date. By that date, there was a range of well-understood components that were routinely used in power electronics circuitry including connection components, being components used to electrically connect a power electronics circuit to another circuit, which could be permanent or temporary (ie “quick fit” connections, such as USB connectors). Further, the CGK known to the product designer in the team constituting the PSA included USB input and output ports in electronic devices, including USB charging. The primary judge referred to Mr Wilson’s evidence, given in the context of a project to design a battery-powered jump starter, that various power outs (including USB outs) would be optional, and accepted that they were available as at the Asserted Priority Date. The primary judge thus considered that the inclusion of a USB output port configured to provide charging power from the rechargeable battery to a USB-chargeable device would have been a matter of routine, and that combining the features in Claim 8 would have been a matter of routine, thus concluding that Claim 8 was obvious in the relevant sense.

(h) Claim 9 is a dependent claim which does not add integers that affect the analysis, such that the analysis for the earlier claims applied.

(i) Claim 10 refers to the apparatus according to any one of the preceding claims, wherein the DC-DC converter is configured for up-converting the input voltage received by the USB input connector. For substantially the same reasons as for Claim 18 of the 223 Patent, the primary judge considered that Claim 10 of the 059 Patent was obvious in the relevant sense.

(j) Claim 11 refers to the apparatus according to Claim 10, wherein the input is 5V that is up-converted to 12.4VDC for charging the rechargeable battery. For substantially the same reasons as for Claim 18 of the 223 Patent, the primary judge considered that Claim 11 of the 059 Patent was obvious in the relevant sense.

(k) Claim 12 refers to the apparatus according to any one of the preceding claims, wherein the control system or circuit comprises “one or more sensors” connected to a microprocessor for determining (in summary) whether the depleted/discharged battery is present and properly connected to the positive and negative polarity battery terminal connectors. The primary judge noted that the additional integer in this claim is similar to that in Claim 5 of the 223 Patent, and the analysis for that claim was substantially applicable to this additional integer. Further, the primary judge considered that combining the features in Claim 12 would have been a matter of routine, and was therefore satisfied that Claim 12 was obvious in the relevant sense.

(l) Claim 14 is an independent claim that refers to two specific types of sensors or circuits: a battery presence sensor or circuit and a reverse polarity sensor or circuit. It also refers to a microcontroller configured to receive input signals provided by those sensors, and a USB input charge circuit connected to the rechargeable battery. In relation to the two specific types of sensors, the primary judge said that the analysis for Claim 5 of the 223 Patent was substantially applicable, and that in relation to the microcontroller, the analysis for Claim 4 of the 223 Patent was substantially applicable. In relation to the USB input charge circuit, the analysis for Claim 16 of the 223 Patent was substantially applicable. The primary judge considered that combining the features in Claim 14 would have been a matter of routine, and thus concluded that Claim 14 was obvious in the relevant sense.

(m) Claim 15 is an independent claim that refers to a power switch or circuit configured to turn power on or off from the rechargeable battery to the depleted/discharged battery “when” the positive and negative battery terminal connectors are properly connected to the positive and negative battery connectors, and also refers to a power switch control system or circuit configured to detect presence of the depleted/discharged battery and to detect polarity, and also refers to a USB input charge circuit and a USB input connector for providing charge input to the rechargeable battery. The primary judge said that in relation to the power switch or circuit being configured to turn power on or off “when” the positive and negative terminal connectors are properly connected, and the switch or circuit being configured to detect presence and polarity, the claim was similar for present purposes to Claim 1 of the 223 Patent and the analysis for that claim was substantially applicable. In relation to the USB input charge circuit and USB input connector, the primary judge said that the claim was similar to Claim 16 of the 223 Patent and the analysis for that claim was substantially applicable. Further, the primary judge considered that combining the features in Claim 15 would have been a matter of routine, and concluded that Claim 15 was obvious in the relevant sense.

(n) Claims 16 and 17 are dependent claims that do not introduce new features that affect the analysis, and accordingly the analysis for Claim 15 was equally applicable.

(o) Claim 18 is a dependent claim wherein the power switch control system comprises a microcontroller configured for providing an output controlling the power switch. The primary judge referred to Mr Wilson’s evidence that an MCU that controls all the various electronic features to which he had been referred would likely be required. The primary judge was satisfied on the basis of the expert evidence that the inclusion of a microcontroller, and the combination of this feature with the other features, were obvious in the relevant sense.

(p) Claim 19 is a dependent claim that refers to “one or more sensors” configured to detect presence and polarity of the depleted/discharged battery. The primary judge said that the analysis for Claim 5 of the 223 Patent was substantially applicable, and was satisfied that combining the features in Claim 19 would have been a matter of routine, thus concluding that Claim 19 was obvious in the relevant sense.

(q) Claim 20 is a dependent claim that refers to two specific sensors, namely one to detect presence of the depleted/discharged battery and one to detect polarity. The primary judge said that the analysis in relation to Claim 19 was applicable also to Claim 20.

(r) Claim 21 is an independent claim that refers to a power switch control system or circuit that is configured to detect presence of the depleted/discharged battery and proper or improper polarity. The claim also refers to a USB input charge circuit and a USB input connector. In relation to the power switch control system or circuit that is configured in that way, the primary judge said that the analysis was substantially the same as for Claim 1 of the 223 Patent. In relation to the USB input charge circuit and the USB input connector, the primary judge said that the analysis was substantially the same as for Claim 16 of the 223 Patent. The primary judge was satisfied that combining the features of Claim 21 would have been a matter of routine, and concluded that Claim 21 was obvious in the relevant sense.

(s) Claim 22 refers to the apparatus according to Claim 21, further comprising a DC-DC converter connected to the USB input charge circuit. The primary judge said that the analysis for Claim 18 of the 223 Patent was substantially applicable to this additional integer, and was satisfied that combining the features of Claim 22 would have been a matter of routine, thus concluding that Claim 22 was obvious in the relevant sense.

(t) Claim 23 refers to the apparatus according to Claim 22, wherein the USB input charge circuit is configured to turn on and off the DC-DC converter by an output of the control system or circuit comprising a microcontroller. The primary judge said that the inclusion of this additional integer did not affect the analysis, and that for substantially the same reasons as for Claim 22, his Honour considered that Claim 23 was obvious in the relevant sense.

(u) Claim 24 is an independent claim, which for present purposes is similar to Claim 21, except that this claim also refers to the USB input charge circuit comprising a DC-DC converter and the DC-DC converter being able to be turned on and off by an output of the microcontroller. The primary judge said that the analysis for Claims 21, 22 and 23 was substantially applicable, and was satisfied that combining the features of Claim 24 would have been a matter of routine, thus concluding that Claim 24 was obvious in the relevant sense.

63 Accordingly, the primary judge found that all of the Asserted Claims of the 059 Patent were obvious in the relevant sense and therefore invalid: PJ [352].

64 Turning then to Asserted Claims of the 338 Patent in the primary judge’s reasoning (at PJ [353]):

(a) Claim 1 refers to a rechargeable battery; a power switch or switch circuit, the power switch or switch circuit configured to switch power on from the rechargeable battery to boost or charge the depleted/discharged battery when connected between the positive and negative battery connectors; a USB input connector; and a USB charge circuit comprising a DC-DC converter configured to upconvert voltage. In relation to the rechargeable battery, the primary judge considered the analysis of this feature in relation to Claim 1 of the 059 Patent to be equally applicable. In relation to the power switch or switch circuit configured in the way described, the primary judge was satisfied on the basis of the CGK and the expert evidence that this would have been a matter of routine. In relation to the USB input connector, the primary judge said that this was part of the CGK and inclusion of this feature would have been a matter of routine. In relation to the USB charge circuit comprising a DC-DC converter configured as described, the primary judge said that the analysis for Claim 18 of the 223 Patent was substantially applicable. Further, having regard to the evidence generally, the primary judge considered that combining the features of Claim 1 would have been a matter of routine, and thus concluded that Claim 1 was obvious in the relevant sense.

(b) Claims 2, 3, 4 and 5 are dependent claims that the primary judge said do not introduce additional features that affect the analysis, and thus the analysis for Claim 1 was equally applicable.

(c) Claim 6 refers to the device according to any one of the preceding claims, wherein the DC-DC converter is configured to be turned on and off via a circuit by an output from a microcontroller. The primary judge said that the evidence generally indicates that this additional integer was available to the PSA, and that for substantially the same reasons as for Claim 1, Claim 6 was obvious in the relevant sense.

(d) Claim 7 refers to the device according to Claim 6, wherein the microcontroller software can turn charge off if the rechargeable battery voltage is measured to be too high by an A/D input. The primary judge referred to Professor Holmes stating (in Holmes 1 at [520]) that he understands “A/D input” to refer to an analog to digital input. This integer was not addressed specifically in the concurrent evidence session, but the primary judge said that Mr Wilson accepted (in the context of a project to design a battery-powered jump starter) that one would have means for recharging the rechargeable battery and that one would have voltage sensing of the internal and external battery. Having regard to the CGK and that evidence, the primary judge considered that the inclusion of this additional integer would have been a matter of routine, and that combining the features of Claim 7 would have been a matter of routine, thus concluding that Claim 7 was obvious in the relevant sense.

(e) Claim 8 refers to the device according to Claim 7, wherein the rechargeable battery is a rechargeable lithium battery, and further comprising a rechargeable lithium battery charge controller configured to provide charge balance to internal lithium battery cells of the rechargeable lithium battery. The primary judge said that the analysis for Claim 12 of the 223 Patent was substantially applicable to this additional integer, and was satisfied that the combination of features in Claim 8 was also a matter of routine, thus concluding that Claim 8 was obvious in the relevant sense.

(f) Claim 10 refers to the device according to any one of the preceding claims, further comprising a USB output connector for providing a power output from the rechargeable battery to a USB-chargeable device. The primary judge said that the analysis for Claim 8 of the 059 Patent was substantially applicable to this additional integer, and that having regard to the evidence generally, combining the features of Claim 10 would have been a matter of routine.

(g) Claims 11, 12 and 13 are dependent claims that the primary judge said do not introduce additional features that affect the analysis, and accordingly, the analysis for Claim 10 was equally applicable.

(h) Claim 14 refers to the device according to Claim 11, further comprising a microcontroller with a control circuit, allowing the USB output circuit to be turned on and off by software control to prevent the rechargeable battery getting too low in capacity. The primary judge referred to Mr Wilson’s evidence that an MCU that controls all the various electronic features to which he had been referred would likely be required, and was satisfied on the basis of the expert evidence that the inclusion of a microcontroller with a control circuit as described, and the combination of this feature with the other features, would have been a matter of routine, thus concluding that Claim 14 was obvious in the relevant sense.

(i) Claim 16 is a dependent claim that the primary judge said does not add integers that affect the analysis. Accordingly, his Honour found that the analysis for the earlier claims (as applicable) applied to Claim 16.

(j) Claim 17 refers to the device according to Claim 16, wherein the power switch or switch circuit comprises “one or more sensors” configured to detect whether the positive and negative battery connectors are properly connected to the depleted/discharged battery prior to switching on the power switch or switch circuit. The primary judge said that the analysis for Claim 5 of the 223 Patent was substantially applicable to this additional integer, and that combining the features of Claim 17 would have been a matter of routine, thus considering that Claim 17 was obvious in the relevant sense.

(k) Claim 18 is a dependent claim (being dependent on Claim 17) that the primary judge said does not add integers that affect the analysis, and accordingly, for the reasons set out in relation to Claim 17, his Honour considered Claim 18 to be obvious in the relevant sense.

(l) Claim 19 is a dependent claim (being dependent on Claim 17) that the primary judge said does not add integers that affect the analysis. Accordingly, for the reasons set out in relation to Claim 17, the primary judge considered Claim 19 to be obvious in the relevant sense.

(m) Claim 20 is a dependent claim (being dependent on Claim 17) that refers to the power switch or switch circuit being configured to detect presence of the depleted/discharged battery and polarity of the depleted/discharged battery. It also refers to the power switch or switch circuit switching on the rechargeable battery to connect it with the depleted/discharged battery “only when” the depleted/discharged battery is present and connected with correct polarity. The primary judge said that additional integers introduced by this claim do not affect the analysis for present purposes, and thus considered Claim 20 to be obvious in the relevant sense, for the reasons set out in relation to Claim 17.

(n) Claim 21 refers to the device according to Claim 16, wherein the power switch or switch circuit comprises a microcontroller configured for providing an output controlling the power switch or switch circuit. The primary judge considered the analysis for Claim 4 of the 223 Patent to be substantially applicable for this additional integer, and considered that combining the features of Claim 21 would have been a matter of routine, thus finding Claim 21 to be obvious in the relevant sense.

(o) Claim 22 refers to the device according to Claim 21, wherein the microcontroller receives input from “one or more sensors” configured to detect presence of the depleted/discharged battery and polarity. The primary judge considered the analysis for Claim 5 of the 223 Patent to be substantially applicable to this additional integer, and that combining the features of Claim 22 would have been a matter of routine, thus finding Claim 22 to be obvious in the relevant sense.

(p) Claim 23 refers to the device according to Claim 22 and to two specific types of sensors: one configured to detect presence of the depleted/discharged battery, another to detect polarity. The primary judge considered the analysis in relation to Claim 22 to be applicable also to this claim.

(q) Claim 24 refers to the device according to any one of Claims 21 to 23, wherein the microcontroller switches the power switch or switch circuit on to provide power from the rechargeable battery to the depleted/discharged battery “only when” the depleted/discharged battery is determined by the microcontroller to be present and connected with correct polarity. The primary judge considered that the addition of this integer did not affect the analysis for present purposes, and accordingly, the analysis was the same as for the earlier claims (as applicable).

(r) Claim 25 refers to the device according to any one of the preceding claims, wherein the power switch or switch circuit comprises a plurality of FETs in parallel. The primary judge considered the analysis for Claim 13 of the 223 Patent to be substantially applicable for this additional integer. Further, having regard to the evidence generally, the primary judge considered that combining the features in Claim 25 would have been a matter of routine, and thus found Claim 25 to be obvious in the relevant sense.

(s) Claim 26 refers to the device according to Claim 22, wherein the sensors comprise a presence sensor and a reverse polarity sensor. The primary judge considered the analysis for Claim 5 of the 223 Patent to be substantially applicable to this additional integer, and that combining the features of Claim 26 would have been a matter of routine, thus concluding that Claim 26 was obvious in the relevant sense.

(t) Claim 29 is a dependent claim that the primary judge said does not add integers that affect the present analysis, and thus the analysis for the earlier claims (as applicable) applied.

(u) Claim 30 refers to various earlier claims and to a voltage measurement circuit configured to measure output voltage of the rechargeable battery and to provide a voltage measurement signal to the microcontroller. The primary judge considered the analysis for Claim 7 of the 059 Patent to be substantially applicable to this claim, and that combining the features of this claim would have been a matter of routine, thus finding Claim 30 to be obvious in the relevant sense.

(v) Claim 31 is a dependent claim that the primary judge said does not add any integers that affect the present analysis, and accordingly, the analysis for the earlier claims (as applicable) applied.

(w) Claim 32 refers to the device according to any one of the preceding claims, wherein the power switch or switch circuit is configured to switch power on “only when” the jump starting device is properly connected to the depleted/discharged battery. The primary judge said that the addition of that integer does not affect the analysis for present purposes. Accordingly, the analysis for the earlier claims (as applicable) applied.

(x) Claim 33 refers to a device according to any one of the preceding claims, wherein the rechargeable battery is a rechargeable lithium battery pack. The primary judge said that the analysis for Claim 12 of the 223 Patent was substantially applicable to this claim, and considered that combining the features of Claim 33 would have been a matter of routine, thus concluding that Claim 33 was obvious in the relevant sense.

(y) Claim 34 refers to the device according to Claim 33, further comprising a rechargeable lithium battery pack voltage measurement circuit configured to monitor the rechargeable battery pack to prevent voltage potential from rising too high during a charging operation and from dropping too low during a discharge operation. The primary judge said that the analysis for Claim 7 of the 059 Patent was substantially applicable to this claim, and considered that combining the features of Claim 34 would have been a matter of routine, thus concluding that Claim 34 was obvious in the relevant sense.

(z) Claim 35 refers to a device according to Claim 33 or 34, further comprising a fuel gauge LED for indicating a charge level of the rechargeable lithium battery pack. The primary judge said that it was CGK that battery control circuitry was commonly used (often in the form of “off-the-shelf” integrated circuits and microprocessors) to (among other things) take measures indicating the status of the battery. In light of this, and having regard to the evidence generally, the primary judge considered that the addition of this integer would have been a matter of routine, and that combining the features of Claim 35 would have been a matter of routine, thus concluding that Claim 35 was obvious in the relevant sense.

(aa) Claim 36 is an independent claim that refers to: a rechargeable battery; a power switch or switch circuit configured to switch power on from the rechargeable battery to boost or charge the depleted battery when connected between the positive and negative battery connectors; a USB input connector; a USB charge circuit configured to upconvert voltage from a USB charger using a DC-DC converter; a USB output connector; and a USB output circuit electrically connecting the rechargeable battery to a USB output connector. The primary judge said that, except for the USB output connector and the USB output circuit, this claim is similar for present purposes to Claim 1 of the 338 Patent, and that the analysis for Claim 1 was therefore substantially applicable. In relation to the USB output connector and the USB output circuit, the primary judge said that the analysis in relation to Claim 8 of the 059 Patent was substantially applicable. Further, having regard to the evidence generally, the primary judge considered that combining the features of Claim 36 would have been a matter of routine, and thus concluded that Claim 36 was obvious in the relevant sense.

65 Accordingly, the primary judge concluded that all of the Asserted Claims of the 338 Patent were obvious in the relevant sense and therefore invalid: PJ [354].

66 The primary judge then turned to consider the question of inventive step based on CGK together with the HP Manual, although it was unnecessary for his Honour to do so given his Honour’s findings based on CGK alone: PJ [355]. The HP Manual is a user manual that relates to the HP2012 and the HP2200 products, which were lead acid battery jump starters designed and sold by B&W: PJ [265]. It was the third iteration of the manual and was made available on or about 9 August 2013: PJ [265]. An image of the HP2200 was shown on page 6 of the document, and is annotated to identify various parts of the jump starter. On pages 3 and 4 of the document, certain features of the products are listed, including:

TOTAL SAFEGUARD PROTECTION

POLARITY & SURGE PROTECTION

Prevents sparking from accidental reverse connection, as well as protecting your vehicle from spikes in voltage levels.

…

UNDER & OVER VOLTAGE PROTECTION

The jumpstarter will deactivate and sound an alarm if connected to a battery of a different voltage to the setting of the jumpstarter, preventing reverse charge and damage to the jumpstarter battery. This feature will also disconnect the jumpstarter if the [vehicle’s] alternator is malfunctioning with high voltage.

…

REVERSE POLARITY PROTECTION & ALARM

Prevents sparking from accidental reverse connection. The alarm sounds when the jumpstarter clamps are connected incorrectly.

67 On page 5 of the document, the specifications of each product are provided in relation to particular topics. The specifications indicate that each product uses two 12 volt batteries, and the specifications include:

6. Connect the Red Positive (+) clamp to the positive (+) terminal of the battery in the vehicle and the Black Negative (-) clamp to any non-moving metal part of the engine block. DO NOT CONNECT TO FUEL LINE. Always double check that you have the proper connections.

If the jumpstarter fails to start your vehicle refer to the LCD screen for any error it may indicate & check that the clamps are correctly connected with good contact. If the vehicle’s battery is below 1.2V ensure all connections are correct and then press the OVER RIDE button to manually engage the jumpstarter.

69 Page 8 of the document sets out the screen display in a number of error-type situations, including “Reverse Connection”. Given its nature as a user manual, the document does not contain drawings of the circuitry of the products: PJ [269].

70 The primary judge referred to the HP Manual describing a jump starter with an internal (lead acid) battery, including that the jump starter had reverse polarity protection and an alarm: PJ [357]. The primary judge referred to the brochure stating that the product “[p]revents sparking from accidental reverse connection”, which his Honour construed as meaning that the product actually prevents reverse polarity connection rather than merely sounding an alarm if the device is connected with reverse polarity: PJ [357]. The primary judge also referred to the brochure stating (on page 5) that polarity protection is provided by an MCU-controlled solenoid (a type of switch, also called a relay), and that although that information appears under the heading “Jumpstart Leads”, it was likely that the polarity protection and switch were in the body of the device rather than in the leads: PJ [357].

71 The primary judge referred to Mr Wilson’s oral evidence in which he accepted that the HP Manual discloses that there is a solenoid which is used to protect against sparking caused by reverse polarity connection, although he could not tell how it would be configured: PJ [358]. The primary judge also referred to Mr Wilson accepting that the HP Manual was saying that the jump starter will not provide power to an external battery unless it detects an external battery connected to at least 1.2 volts, and that this involves the use of a switch to keep power off until such time as there has been detection of an external battery connected with 1.3 volts, thus providing protection against sparking by the two cables touching each other: PJ [358].

72 The primary judge found that Claim 1 of the 223 Patent would have been obvious to the PSA in the light of the CGK as at the Asserted Priority Date taken together with the HP Manual: PJ [359]. The primary judge found that the HP Manual describes a product that has a form of reverse polarity protection involving the use of a solenoid, and describes a product that detects whether the depleted/discharged battery is present with 1.2 volts and thereby provides protection against sparking by the cables touching. In light of those matters, the primary judge was satisfied that a combination as described in Claim 1 was a matter of routine: PJ [359]. The primary judge found that there did not appear to be anything inventive about integers 1.1 to 1.5 of Claim 1, and that developing the arrangement described in integers 1.6 and 1.7 would have been a matter of routine. Although the HP Manual does not describe how the reverse polarity protection is achieved, or how the presence detection works, the primary judge said that it would have been a matter of routine for the PSA to develop a device with these features, and it would have been a matter of routine to combine the features referred to in Claim 1, thus concluding that Claim 1 was obvious in the relevant sense: PJ [359].

73 The primary judge did not consider each of the other Asserted Claims individually, saying that in relation to each Asserted Claim that includes a feature broadly to the effect that the power switch does not turn on to connect the internal battery to the depleted/discharged battery unless the device detects that the depleted/discharged battery is connected with correct polarity and that the depleted/discharged battery is present, the HP Manual provides further support for the conclusion that the claim is obvious in the relevant sense: PJ [360]. In relation to the balance of the Asserted Claims, the primary judge said that the analysis was the same as set out above in relation to CGK alone: PJ [360].

74 The primary judge then dealt with the issue of inventive step based on CGK together with the QTC Brochure: PJ [362]–[368].

75 The QTC Brochure is a one-page quotation for a product that was provided by Quitewin Technology Corporation, a company based in Taiwan, to Mr Banks in April 2014: PJ [285]. In the top part of the page, the following information is set out:

77 In the column headed “ FOB HONG KONG ”, prices are provided for various quantities, including for 100,000 units. Given the nature of the document, it does not include drawings of any circuitry: PJ [288].

78 The primary judge summarised the description of the product in the QTC Brochure as including: a lithium polymer battery, USB output, Micro USB input, short circuit protection, and reverse polarity protection, and stating that the capacity of the battery is 10,000 milliamp hours: PJ [364].

79 The primary judge referred to the evidence of Professor Holmes and Mr Wilson in which both expressed reservations about whether the features which the brochure describes (in particular, the battery capacity) are accurate, but the primary judge considered that the PSA would still have some regard to the document and draw something from the features of the device that it identifies: PJ [365].

80 The primary judge found that Claim 1 of the 223 Patent would have been obvious to the PSA in light of the CGK as at the Asserted Priority Date together with the QTC Brochure: PJ [366]. The primary judge referred to the QTC Brochure as describing a product that has a form of reverse polarity protection and short circuit protection (albeit no detail is provided as to how these are achieved), and was thus satisfied that Claim 1 was a matter of routine as it would have been a matter of routine for the PSA to develop a device with those features: PJ [366]. The primary judge further considered that it would have been a matter of routine to combine the features referred to in Claim 1, and thus was satisfied that Claim 1 was obvious in the relevant sense: PJ [366].

81 The primary judge did not consider each of the other Asserted Claims individually, and said that in relation to each Asserted Claim that includes a lithium ion battery and/or a USB input connector and/or a USB output port, the QTC Brochure provides further support for the conclusion that the claim would have been obvious: PJ [367]. The primary judge said that, although the QTC Brochure does not contain any description of the lithium polymer battery, the micro USB input or the USB output, the reference to those features provides further support for the conclusion of obviousness: PJ [367]. Moreover, the primary judge said that the reference to those features in the one device provides further support for the conclusion that combining the features of the claims would have been a matter of routine: PJ [367]. In relation to the balance of the Asserted Claims, the primary judge said that the analysis would be the same as set out earlier in relation to CGK alone: PJ [367]. Accordingly, assessing the matter on the basis of CGK together with the QTC Brochure, the primary judge concluded that the Asserted Claims are obvious in the relevant sense and invalid: PJ [368].

Ground 1 of the Amended Notice of Appeal

82 Ground 1 challenges in general terms the primary judge’s findings at PJ [347]–[354] that all of the Asserted Claims of each of the three Patents are obvious in light of the CGK alone, as it existed in Australia before the earliest priority date.

83 NOCO’s submissions begin by observing that the primary judge expressly rejected the propositions that the CGK included (1) jump starter devices with lithium batteries, or (2) lithium batteries with reverse polarity protection and short circuit protection: PJ [319]–[320]. NOCO submits that this meant that the skilled team constituting the PSA knew of only two ways to jump start a car: either using traditional jump starter cables or, for industrial and professional users, a large or heavy device using a lead acid battery without any safety protection. NOCO submits that the CGK did not include small, portable battery jump starter devices, much less those combining safety protection advantages, a lithium battery and USB charging. NOCO submits that the Patents defined a new product with safety, portability and usability, and that the choice of features was an important part of devising this new product.

84 NOCO submits that obviousness is a question of fact which needs to be established on the evidence, citing Lockwood v Doric (No 2) at [52], [111] and 153. As their Honours said in that case at [111], the Court cannot substitute its own deduction or proposition for what the PSA would have regarded at the time as technically possible and practical, except in the rarest of circumstances, such as where an expressly admitted matter of CGK is the precise matter in respect of which a monopoly is claimed. In the present case, NOCO submits that B&W’s case on obviousness was that the invention as claimed was obvious to a skilled team comprising a product designer together with an electrical engineer with experience in power electronics, as indeed was common ground: PJ [76]. B&W adduced evidence from two witnesses, namely Mr Banks (a product or industrial designer) and Professor Holmes (an electrical engineer with experience in power electronics). NOCO submits that there were at least two significant limitations in the affidavit evidence adduced by B&W. First, NOCO submits that B&W did not seek to establish via that team or any individual expert that it would have been routine to arrive at the claimed invention from the CGK. Second, NOCO submits that the interaction in the skilled team was sought to be conveyed via the Design Brief, which comprised information as to the desirability of creating a portable battery jump starter, including safety protections, a lithium battery and USB input charging. NOCO observes that the primary judge found that the Design Brief and associated evidence went beyond CGK and did not provide a sound basis to evaluate the issue of inventive step: PJ [324]. NOCO submits that, in light of those findings which are not challenged on appeal, the primary judge should have concluded that there was no cogent evidence to establish that the Asserted Claims were obvious in light of the CGK alone. Rather, NOCO submits the primary judge erred by determining the question based on the evidence of Professor Holmes and Mr Wilson in their joint expert report and in their oral evidence in the concurrent evidence session. NOCO submits that that approach revealed three particular aspects of error.

85 Before dealing with those three alleged aspects of error, it is clear that the primary judge did not base his Honour’s determination of obviousness on the evidence of the electrical engineers (Professor Holmes and Mr Wilson) alone. The primary judge also based his Honour’s conclusions on the agreed CGK that included matters known to the industrial designer member of the notional team skilled in the relevant art. Further, there is no reason in principle why the primary judge was not entitled to make findings of obviousness based on the oral evidence given in the concurrent evidence session (together with other matters including the agreed CGK), having rejected the way in which B&W’s affidavit evidence had focussed on the Design Brief.

86 The first particular alleged aspect of error asserted by NOCO is a submission that the primary judge erred in finding that the Asserted Claims were obvious because each of the individual features of the portable battery jump starter as claimed were “available” and “merely a design choice”, referring to PJ [349(f)]. NOCO submits that this went no further than identifying the features as a possibility among others that might be considered, and did not go beyond finding that a feature could be worth a try. NOCO submits that this approach avoided consideration of why the skilled team would have been motivated to select that feature as part of a combination of features to create a new hitherto unseen device. In submitting that design choice was not enough, NOCO relies on the principle that even if an idea of combining integers, which individually may be considered mere design choices, is simple, its simplicity does not necessarily make it obvious, in that practical and technical issues can affect the means by which a concept may be implemented in respect of an already known vendible product, and scepticism can inhibit recognition of the utility of applying a concept or idea to a known set of integers: Lockwood v Doric (No 2) at [111]. NOCO submits that obviousness is not shown by establishing that the skilled team could assemble or technically implement the integers of the claims from known components, as such an approach gives insufficient regard to the fact that the claim was for a combination and it is the selection out of perhaps many possibilities which must be shown to be obvious: Alphapharm at [41].

87 NOCO submits that the primary judge’s reasoning concerning Claim 1 of the 223 Patent at PJ [348] addressed technical feasibility by one member of the team and overlooked the importance of selection. Further, NOCO submits that the limitations in the primary judge’s approach are reflected in the evidence which his Honour relied upon at PJ [321]–[335], consisting of responses to questions directed to the wrong inquiry, namely component availability or technical feasibility, and frequently asked in light of the solution known to the experts, the priority document or evidence given on that topic or its immediate context.

88 In our view, the primary judge made no such error. As B&W submits, NOCO’s argument wrongly characterises the primary judge’s findings.

89 It is important to note that the primary judge at PJ [348] found that there did not appear to be anything inventive about integers 1.1 to 1.5 of Claim 1 of the 223 Patent. NOCO accepted before us that a device that had integers 1.1 to 1.5 was within the CGK (T7.44–8.2), and accepted at first instance that jump starter devices with internal batteries were part of the CGK: PJ [318(c)]. The primary judge observed that the part of Claim 1 that is potentially inventive is the arrangement in integers 1.6 and 1.7, but having reviewed the expert evidence, his Honour found that the expert evidence suggested that the “inclusion” of such an arrangement in a jump starter device would have been a matter of routine. The primary judge referred specifically to the evidence of Professor Holmes and Mr Wilson to the effect that it would have been a matter of routine to implement a sensor or sensors capable of detecting presence and polarity, which the primary judge had referred to at PJ [326]–[328]. B&W submits, and we accept, that the expert evidence established that the primary judge’s observation that inclusion of such an arrangement in a jump starter device would have been a matter of routine involved an acceptance that there was a known problem, with a known solution, and the PSA would choose and apply that solution without any difficulty in a jump starter having all the features of Claim 1 of the 223 Patent.

90 The evidence to which the primary judge referred in this regard included the following matters: the PSA knew of the risks of short circuiting and connecting with reverse polarity in the context of jump starting vehicles (PJ [326], and see the agreed CGK referred to at PJ [318(a)–(c)]); the PSA would have readily appreciated that one way to avoid these problems was to ensure that the cables of the jump starter were not energised until the cables were properly connected (PJ [326]); Mr Wilson would want protections against short circuiting and reverse polarity (PJ [294]), and would require circuitry and software to ensure the internal battery was charged and safely discharged (PJ [328]); it would have been a matter of routine to implement a sensor or sensors capable of detecting presence or polarity to give those protections, and applying two sensors would have been one of the things that the PSA would think of and would be within the calling of the electrical engineer’s profession (PJ [326]); and the fact that the one-sensor approach may have been preferred over a two-sensor approach did not mean that both were not obvious (PJ [349(c)], [327]). Further, the primary judge was plainly conscious of the need for the combination to be obvious, as illustrated by the many references to the combination of the features in analysing the particular claims: PJ [348]–[353].

91 As to NOCO’s specific reference to the language of “merely a design choice rather than a barrier crossed or difficulty overcome” in PJ [349(f)], the primary judge was there addressing the feature added by Claim 12 of the 223 Patent, namely the use of a lithium ion battery. We deal with this aspect in further detail in relation to Ground 2 below, but at this point it should be observed that the primary judge identified that the CGK included that lithium-based batteries were one of two common battery chemistries, and the key advance at the priority date was their growing availability, given their relative cheapness, small size and lightness, and their higher energy density and ability to generate higher currents than lead acid-based batteries: PJ [88], [318(e), (g)], and [349(f)]. The primary judge held that the product designer would appreciate various advantages of using such batteries and found that the expert evidence suggested that use of a lithium ion battery in a jump starter device was a matter of routine and would be a sensible choice for a jump starter: PJ [349(f)]. The primary judge expressly held that the “ combination of features claimed in Claim 12” (his Honour’s emphasis) would have been a matter of routine, consistently with his Honour’s earlier findings. The primary judge further held that “the combination of lithium ion batteries with the features set out in earlier claims in the 223 Patent is merely a design choice rather than a barrier crossed or difficulty overcome” and that “combining those features was available to the team” constituting the PSA: PJ [349(f)]. It is therefore wrong to characterise the primary judge’s findings at PJ [349(f)] as simply that individual features of the invention were a design choice, as the primary judge plainly found that the claimed combinations should be characterised in that way.

92 Further, the primary judge’s finding that lithium batteries were a “sensible choice for a jump starter” was based not only on the expert evidence referred to at PJ [321]–[335] but also on the agreed CGK of the electrical engineer and product designer. In relying on the CGK as to the advantages of lithium batteries, the primary judge plainly addressed the question as to why the skilled team would have been motivated to select that feature as part of the combination of features in the device.

93 NOCO then submits that the second aspect of error in the primary judge’s approach was an alleged failure by the primary judge to assess obviousness in terms of the skilled team comprising a product designer and engineer. The submission again begins by observing the finding by the primary judge that the Design Brief did not provide a sound basis to evaluate the issue of inventive step: PJ [324]. NOCO submits that this meant that there was no evidence of interaction between the members of the skilled team, thereby severing an essential link in the evidentiary chain. NOCO submits that the evidence established that the design process involves significant input from, and interaction with, a product designer to guide the process, and that in finding obviousness, the primary judge effectively omitted that interaction and relied solely on the engineers. NOCO submits that that approach is contrary to the principle that the team approach to solving a problem, which requires the joint efforts of experts in more than one field, must involve interaction between or among the experts so that CGK can be shared: Minnesota Mining & Manufacturing Company v Tyco Electronics Pty Ltd [2002] FCAFC 315; (2002) 56 IPR 248 (3M v Tyco) at 91. However, in oral address, NOCO accepted that the primary judge was entitled to infer that the members of the notional team in this case would have shared their respective CGK with each other, but maintained the submission that the question of how those members would have deployed the combined CGK could not be inferred and had to be based on direct evidence (T17.34–42). NOCO submits that the difficulty in the present case was particularly acute, in that the engineers, while experienced in electronics, had no relevant experience with car battery jump starter devices at the priority date. NOCO further submits that the evidence shows that it would have been the designer, not the engineer, who would make the choice of features, and the engineer was reliant on the designer for direction.

94 In our view, this argument also should be rejected. The primary judge did not fail to assess obviousness using the skilled team as a whole. The primary judge combined the CGK of each of the product designer and the electrical engineer comprising the notional team when concluding that the invention was obvious. As indicated above, NOCO accepted in oral argument before us that the primary judge was entitled to infer that members of the team would have shared their respective CGK. The primary judge’s findings that the particular Asserted Claims would have been obvious to the PSA in light of the CGK at the priority date were not simply findings that those claims would have been obvious to an electrical engineer alone, as can be seen (for example) from the references to CGK in PJ [348], and particular references to CGK of the product designer in PJ [349(f), (i)].

95 In the particular circumstances of this case, to the extent that the primary judge’s conclusions as to obviousness relied on the evidence of electrical engineers (rather than a product designer), there is no lacuna in the evidence of the kind contended for by NOCO. In this regard, it is useful to refer to the three processes usually involved in developing an invention, as adopted by the High Court in Lockwood v Doric (No 2) at [59]: (i) the definition of the problem to be solved or the difficulties to be overcome; (ii) the choice of the general principle to be applied in solving this problem or overcoming these difficulties; and (iii) the choice of the particular means used. In the present case, the controversy between the parties involved the third of those processes. The first two processes were matters of CGK which would have been shared among the team members, namely the problem of the danger caused by improper connection and the general solution to the problem by way of the incorporation of safety features in the battery-operated jump starter (PJ [318(c)]), such as short circuit protection and reverse polarity protection (as referred to at PJ [87]). The third process of choosing the particular means within that general principle was quintessentially a question for an electrical engineer. In that context, it was entirely appropriate for the primary judge to focus on the evidence of the electrical engineers that the choice of the particular means used was a matter of routine. In this regard, the present case is distinguishable from 3M v Tyco at [87]–[92], in which the alleged inventive steps in issue went beyond the area of expertise of the expert witness on whose evidence the primary judge in that case had focussed.

96 To the extent that the industrial designer would be involved in the ultimate decision, Professor Holmes made clear that the electrical engineer would think of readily available options for the features of the device, and the ultimate choice between them (in combination) by the industrial designer would be driven primarily by commercial considerations relative to functionality: Holmes 1 at [265], [295] and [300]. However, the Court does not look at the commercial motives or the cost inhibitors or advantages in determining whether or not it was obvious to take a particular step in developing a product (recognising, however, that the PSA is not to be expelled from the real world and the commercial and social background known to the PSA cannot be excluded from the Court’s consideration): Damorgold Pty Ltd v Blindware Pty Ltd [2017] FCA 1552; (2017) 130 IPR 1 at 382. The question is whether an advance is technically or practically obvious, not whether it is commercially obvious: Allergan Inc v Aspire Pharma Ltd [2019] EWHC 1085 at 101; Hallen Company v Brabantia (UK) Ltd [1989] RPC 307 at 327 (Aldous J). Once the scope of the CGK was determined, the question of obviousness was an evaluative question for the Court, which involved the Court placing itself in the position of the hypothetical PSA as at the priority date in order to determine whether or not something within each claim could be made without new inventions or additions or prolonged study of matters presenting initial difficulty: Idenix Pharmaceuticals LLC v Gilead Sciences Pty Ltd [2017] FCAFC 196; (2017) 134 IPR 1 at 146. There was no need in the present case for additional direct evidence of some stylised kind as to hypothetical communications between members of the notional team comprising the PSA concerning how the CGK, once shared between them, would have been deployed in choosing the particular means to solve the problem at stake. NOCO accepted that seeking to recreate a hypothetical dialogue among members of the hypothetical team would be unrealistic (T42.31–43).

97 The third alleged aspect of error contended for by NOCO concerns what NOCO submits was the subconscious effect of hindsight in the evidence relied upon by the primary judge. NOCO submits that by the time the expert engineers gave evidence in the concurrent evidence session, they were intimately familiar with the prior art, the Design Brief and the solution demonstrated in the Patents and PCT 434. NOCO submits that, although the primary judge referred to the danger of hindsight at PJ [316], the primary judge did not return to that issue in the reasoning which led to the conclusion of obviousness. NOCO submits that in the present case the effect of hindsight was particularly acute because: (i) the Patents being a combination were particularly susceptible to hindsight; (ii) the features were being assessed over ten years after the earliest priority date in a rapidly changing field; (iii) the evidence in chief by way of affidavit based on the Design Brief was found to be unsound; (iv) the evidence relied upon for obviousness was elicited in cross-examination where witnesses were already appraised of the Design Brief, the Patents and various pieces of prior art; and (v) witnesses were asked questions about technical implementation in a context of having discussed the solutions shown in the Patents and in some cases, explicitly so. NOCO acknowledges that, as noted at PJ [328], Mr Wilson was asked to put out of his mind the Patents, the Design Brief, the QTC Brochure, the HP Manual and all information post-dating the Asserted Priority Date, and submits that he was then asked a series of questions that proceeded for almost 30 pages of transcript. NOCO goes as far as to submit that the primary judge’s reasoning does not expose any real attempt to guard against the dangers of hindsight. NOCO submits that the effect of hindsight is subconscious, such that it was not possible, or even practical, for those witnesses to set aside the knowledge they had gained even if they had been requested to do so.

98 This argument also should be rejected. The primary judge expressly referred at PJ [316] to Callinan J’s warning on the danger of hindsight in Alphapharm at [196]. In relation to Mr Wilson’s evidence, the primary judge referred expressly to the request made of Mr Wilson in the concurrent evidence session that he put out of his mind the Patents, the Design Brief, the QTC Brochure, the HP Manual and all information post-dating the Asserted Priority Date: PJ [328]. The primary judge was clearly alive to the issue of hindsight, and was satisfied that Mr Wilson’s evidence was not tainted or otherwise affected by any hindsight. While there certainly exists a type of barrister who believes that a point has not effectively been made unless accompanied by indignant repetition, the same cannot be said of judicial reasoning. In relation to Professor Holmes, he was given the standard instructions to expert witnesses in patent litigation at the outset of preparing his affidavit evidence, which described the risk of hindsight bias and set out steps that could be taken to minimise that risk. Professor Holmes confirmed in each of his affidavits that he had read, understood and complied with those instructions.

99 B&W submits, and we accept, that it is inevitably the case in a patent matter that, by the time of the joint expert conclave and the giving of oral evidence at the trial, each of the experts will be aware of the asserted prior art documents and the claimed features of the patents in suit. The standard instructions to expert witnesses seek to deal with that matter. The primary judge was alert to the issue and did not engage in any erroneous reasoning in relation to hindsight in assessing the evidence of any of the expert witnesses.

100 Accordingly, Ground 1 should be rejected.

Ground 2 of the Amended Notice of Appeal

101 Ground 2 challenges the primary judge’s finding that claims which expressly require, among other things, a lithium ion battery, were obvious in light of the CGK.

102 NOCO observes that the unsound Design Brief identified the requirement to use a lithium ion battery, and submits that the correct starting point of any analysis in light of the CGK was to put aside any knowledge of the choice of a lithium battery, and consider what modifications might be made (if any) to a large industrial or professional jump starter with a heavy lead acid battery without any safety protections. NOCO submits that that process required the hypothetical designer to appreciate a need in the market, to conceive of a problem and the desirability of improving or creating a new product, and then to bring his or her concepts to an engineer and interact with the engineer to arrive at a new product. NOCO submits that, in circumstances where the primary judge had found the Design Brief to be unsound, the evidence went no further than establishing that lithium batteries were part of the CGK, and therefore widely available. NOCO submits that this was insufficient to establish that the skilled team, armed only with the CGK, would as a matter of routine take the step of putting to one side the existing battery technology used in industrial or professional jump starter devices and use a lithium battery. NOCO submits that the question as to why the skilled team would have been motivated to select a lithium battery was central. NOCO submits that treating battery selection as merely a “design choice” overlooked the importance of the choices confronting the skilled team, particularly in light of the evidence of Mr Banks, which NOCO submits was that lithium ion batteries would have raised safety and performance concerns. NOCO submits that simply finding that the battery was a “design choice” meant that the primary judge did not address whether the skilled team, without knowledge of the solution, would as a matter of routine have departed from established lead-acid battery technology and would have selected a lithium battery.

103 In relation to the evidence of Professor Holmes, NOCO submits that he knew nothing of car battery jump starters until he was engaged in this proceeding, and he was directed by the Design Brief and the Patents by the time of his oral evidence. NOCO submits that, in his oral evidence, Professor Holmes described the inquiries he might have undertaken to select a power source, namely that he would give consideration to all battery types, thereby leaving open what battery might have been chosen, with reference to PJ [332]. NOCO submits that the outcome of that hypothetical consideration remained unknown and, in particular, whether it would have led Professor Holmes to a lithium ion battery and whether he would have then considered that suitable after reviewing whatever data sheets were available. NOCO submits that this was particularly so where Mr Banks and Mr Stanfield had expressed safety concerns about the use of such batteries, and performance concerns as to whether such batteries could provide sufficient charge to jump start a car.

104 We have dealt with aspects of this ground already in dealing with the general way in which Ground 1 was advanced by NOCO. It is important to note that lithium batteries, and their benefits as compared to lead acid batteries, were part of the CGK agreed between the parties, as set out at PJ [318]. The agreed CGK included the proliferation of cheaper lithium batteries (PJ [318(e)]), that lithium batteries had a much higher energy density than lead acid batteries and could be significantly smaller and lighter than a lead acid battery of equivalent energy capacity and amperage (PJ [318(g)]), and that lithium batteries held their charge over a longer period than a lead acid battery (PJ [318(h)]). The CGK also included jump starter devices with internal batteries that suffered from the same safety issues as jump starter cables if no safety protection was provided: PJ [318(b), (c)]. The CGK included the growing availability of lithium-based batteries as a key advance before the Asserted Priority Date as they could generate higher energy density and currents than lead acid batteries (thereby enabling the use of smaller and lighter batteries): PJ [85(h)]. The CGK included jump starter devices that may incorporate safety protection, as well as knowledge of the need for, and the means of achieving, those safety protections: PJ [86]–[87]. Contrary to NOCO’s submission, those agreed matters were not limited to jump starters for industrial or professional users.

105 In addition, the primary judge referred to the evidence of Mr Wilson regarding lithium ion batteries, including that such batteries were a well-known source of power and would have been a sensible choice for a jump starter product at the Asserted Priority Date: PJ [329]. In dealing with Claim 12 of the 223 Patent, the primary judge reiterated the CGK known to the product designer regarding the advantages of lithium batteries: PJ [349(f)]. Accordingly, there was ample reason for the PSA to choose to use lithium batteries as a matter of routine in a jump starter.

106 In relation to NOCO’s submission that the primary judge erred by not expressly referring to the evidence of Mr Banks and Mr Stanfield regarding concerns or reservations regarding the use of lithium ion batteries, there was no finding that such information formed part of the CGK regarding lithium batteries. Moreover, the evidence of Mr Banks was as an industrial designer and, on this issue, was inconsistent with the evidence of the electrical engineers who would be expected to know about safety concerns regarding lithium batteries. There was nothing inappropriate in the primary judge placing weight on the evidence given by the electrical engineers (see in particular PJ [326], [328]–[329] and [332]), and that evidence amply justified the findings that the use of a lithium ion battery for a jump starter device was an available and sensible choice (PJ [329] and [349(f)]). Further, as B&W submits, any increased safety concerns that arose out of using a lithium battery would have highlighted the very need for safety protections as features of the combinations adopted to solve the relevant problems rather than pointing away from the claimed invention.

107 As to the evidence of Professor Holmes, NOCO is wrong to submit that he was directed by and wholly reliant on the Design Brief or a design engineer. Much of Professor Holmes’ affidavit evidence was given prior to him seeing the Design Brief, and his oral evidence was not reliant on the Design Brief. The same can be said for the very large measure of agreement between the experts on matters relating to CGK, as accepted by the primary judge. Moreover, the primary judge correctly found that, even if Professor Holmes would look at all possible battery options that he could find, this did not change the conclusion that the use of a lithium ion battery was a matter of routine: PJ [349(f)]. In principle, an invention may be obvious even if there are numerous other obvious routes as well: Nichia at [93], as cited in PJ [314].

108 Accordingly, Ground 2 should be rejected.

Ground 3 of the Amended Notice of Appeal

109 Ground 3 challenges the primary judge’s findings that the Asserted Claims which expressly require, among other things, USB input charging are obvious in light of the CGK alone.

110 NOCO submits that jump starter devices with USB input charging were not found to form part of the CGK, and the evidence did not establish that the skilled team, armed only with the CGK, would have been motivated to adopt USB input charging. NOCO submits that the affidavit evidence of Professor Holmes, when considering modification of an existing jump starter device (the HP 2200) and prior to receiving the instruction in the Design Brief to use USB input charging, opined that USB charging was “unattractive” because of the lower amperage available when compared with conventional charging methods which would mean significant increase in charging time: Holmes 1 at [282]. NOCO submits that it was only after reviewing the unsound Design Brief that he altered his opinion. NOCO also submits that Mr Stanfield (one of the inventors named in the Patents) also gave evidence about his concerns about adopting USB charging when that was suggested to him during the development of the invention. NOCO submits that the primary judge did not embark on an analysis of why the skilled team would have been motivated to select USB charging from among the available charging options, and the reasoning proceeded on the basis merely that it could have been technically implemented. NOCO submits that this avoided asking whether, absent knowledge of the solution or a direction in the Design Brief, the skilled team would have been directly led to adopt USB charging as a matter of routine.

111 In our view, this ground should also be rejected. In addition to the matters referred to in relation to Ground 1 above, we observe the following.

112 As indicated above, an invention may be obvious even if there are numerous other obvious routes as well, and accordingly it is not a requirement to find that a PSA would be motivated to follow a single path and no others. In any event, there was sufficient motivation to use USB charging because: (a) batteries could be rechargeable and to charge a rechargeable battery a DC current was required (PJ [85(h)], [178]); (b) in designing a battery-powered jump starter, one would have means for recharging the rechargeable battery (PJ [328], [349(i), (k)]); and (c) USB charging was within the CGK (PJ [318(i)]). Mr Wilson accepted that USB charging was well known for lithium batteries, and he could see no adverse effect or problem in combining USB charging and those batteries: PJ [329].

113 In addition, NOCO misstates the effect of the evidence of Professor Holmes that USB charging may be “unattractive”. The evidence given in Holmes 1 at [282] concerned obvious modifications to the HP jump starter products described in the HP Manual. Professor Holmes clarified this evidence, saying that his comment as to USB charging being unattractive applied in the context of charging large lead acid batteries, which required a longer charging time compared to lithium ion batteries: T814.20–815.21. Accordingly, the evidence in Holmes 1 at [282] did not apply to USB charging of lithium ion batteries. Professor Holmes considered that the inclusion of USB charging was obvious in the context of lithium ion batteries at the Asserted Priority Date: Holmes 1 at [261] and [280], and T814.11–18. That was consistent with Mr Wilson’s evidence that a 1A 5V USB could charge a 3.3A 12V lithium battery pack in about 8 hours, and a 10A 12V lithium battery pack in 24 hours (and only if charging from zero percent, which was atypical): T800.35–801.43.

114 Accordingly, Ground 3 should be rejected.

Ground 4 of the Amended Notice of Appeal

115 Ground 4 challenges the primary judge’s finding that the Asserted Claims are obvious in light of the CGK when combined with the HP Manual.

116 NOCO submits that the HP Manual disclosed a different class of device, using a lead acid battery and a conventional charging arrangement. NOCO submits that the primary judge did not find that the skilled team armed with the HP Manual would select and combine features such as by substitution of a lithium ion battery for the lead acid battery disclosed in the HP Manual and adoption of USB input charging. NOCO also submits that the analysis of inventive step in light of the HP Manual also reveals an inconsistency in approach, in that the primary judge elsewhere found Claim 1 of the 223 Patent to be novel over the HP Manual because of the presence of a manual mode in the latter, but the reasoning on inventive step did not canvass whether a device not having that feature was obvious.

117 Further, NOCO submits that, while the primary judge’s findings extended to all of the Asserted Claims, his Honour failed to embark on any analysis of what means of charging would be selected. NOCO submits that the device disclosed in the HP Manual had a large lead acid battery which was charged using AC/DC power, and Professor Holmes initially opined against USB charging (an apparent reference again to Holmes 1 at [282]). NOCO submits that the primary judge did not identify why the HP Manual would have led the skilled team to select, and combine into a jump starter, device features not disclosed in the HP Manual including (relevantly) substitution of a lithium ion battery for the lead acid battery disclosed in the HP Manual and the adoption of USB input charging. NOCO submits that the primary judge’s reasoning addressed the question of implementation, not the question of selection.

118 In addition to the matters already considered in relation to Grounds 1–3, this ground should be rejected for the following reasons. As B&W submits, the evidence established, and the primary judge found, that the HP Manual teaches: (a) an internal rechargeable lead acid battery; (b) a form of reverse polarity protection involving the use of an MCU-controlled solenoid (a form of switch), which inherently requires an ability to detect reverse polarity; (c) capability to detect a depleted/discharged battery; and (d) because of (c), protection against sparking by the cables touching through the use of the solenoid: PJ [265]–[276] and [357]–[359]. As B&W submits, in light of the CGK together with these teachings, the primary judge correctly held in respect of Claim 1 of the 223 Patent that there was nothing inventive about integers 1.1 to 1.5, and it would have been a matter of routine to develop the arrangement described in integers 1.6 and 1.7: PJ [359].

119 Further, NOCO’s submissions are misdirected to the extent that they proceed on the basis that s 7(3) of the Act requires the prior art disclosure to be modified. It is sufficient if the disclosure adds to the CGK something that renders the claimed invention obvious in any relevant way, which is how the primary judge correctly approached the question: PJ [359]. It was therefore not necessary for the primary judge to ask whether one would modify the HP Manual, so as to move from the use of lead acid batteries to lithium batteries, and hence USB charging. In any event, as discussed above, the CGK included the benefits of using lithium batteries over lead acid batteries, which Mr Wilson considered a sensible choice.

120 Accordingly, Ground 4 should be rejected.

Ground 5 of the Amended Notice of Appeal

121 Ground 5 challenges the primary judge’s finding that the Asserted Claims are obvious in light of the CGK when combined with the QTC Brochure.

122 NOCO observes that the QTC Brochure was a brief one-page quotation, and that Professor Holmes and Mr Wilson expressed reservations about whether the features described in it were accurate, such that the skilled team would approach it with some scepticism, and it did not provide a detailed description of functionality: PJ [296], [301], [333], [365]. NOCO submits that those findings are consistent with the evidence of Mr Banks, who expressed reservations about the use of the type of lithium battery disclosed in the QTC Brochure (although it should be noted again that the knowledge of Mr Banks exceeded the CGK). NOCO submits that that evidence was inconsistent with the conclusion that the brochure would have led directly, and as a matter of routine, to the claimed invention. NOCO further submits that the primary judge engaged in a process of identifying features from the document (such as a lithium battery) without due regard to the quality of the disclosure, and that what was disclosed was an inferior or unsuitable product.

123 NOCO submits that the acknowledged problems with, and lack of disclosure in, the QTC Brochure means that it would not be regarded as useful by any hypothetical skilled team. NOCO submits that, while deemed available as a s 7(3) document, the skilled team is not assumed to consider all prior art documents as being equally interesting, and is not assumed or compelled to use any information contained within it: Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC [2023] FCA 1119; (2023) 180 IPR 199 at [381]–382. NOCO submits that the primary judge’s conclusion that the QTC Brochure lent support to a finding that combining the relevant features would have been routine (PJ [366]–[367]), was not supported by an identified reasoning process grounded in the document itself. NOCO submits that such an approach tends to suggest that the primary judge was engaging in a process of identifying features from that document, and then adding features from the CGK with hindsight and without reference to any consideration of motivation.

124 NOCO also submits that the QTC Brochure did not disclose the safety features of Claim 1 of the 223 Patent as found by the primary judge. NOCO accepts that it did disclose a lithium battery, but submits that there was concern by the expert witnesses (as referred to above) about whether that would in fact be safe or adequate for charging a motor vehicle. NOCO also says that there was significant concern about the accuracy of the claims made in the document, and the primary judge should have found that there was an insufficient basis to prove that any of the claims of the Patents were obvious in light of the document.

125 This ground should also be rejected. As B&W submits, the question is not whether the QTC Brochure would have led directly, and as a matter of routine, to the claimed invention, as that is not the question to which s 7(3) of the Act is directed. Section 7(3) directs attention to the combination of information in the CGK and the s 7(3) document, that being the approach the primary judge took in finding that the PSA would have some regard to the document and draw something from the features of the device that it identifies: PJ [365].

126 To the extent that the QTC Brochure adds information to the CGK, that combined information does render the Asserted Claims obvious, as the primary judge found: PJ [366]–[367]. The primary judge observed that the reference in the QTC Brochure to the use of a lithium polymer battery with a USB input connector (and therefore USB charging) in one device provides further support for the conclusion that combining the features of the claims would have been a matter of routine: PJ [367]. Thus, even if NOCO were correct in its submission on the question of inventive step in light of CGK alone that lithium batteries and USB charging would not have been obvious inclusions in a jump starter, the QTC Brochure would fill that asserted gap and put the matter beyond any doubt.

127 Further, as B&W submits, the fact that a witness has reservations in respect of certain aspects of a document does not, without more, lead inevitably to the consequence that the PSA would entirely disregard the document. The primary judge was clearly alive to the experts’ concerns regarding certain features disclosed in the QTC Brochure, noting the reservations which Professor Holmes and Mr Wilson expressed about whether the features that the brochure describes (in particular the battery capacity) are accurate: PJ [365]. Despite those reservations, the primary judge was entitled to conclude that the PSA would have some regard to the document and draw something from its features. That conclusion is further supported in what the primary judge found the experts understood about the QTC Brochure (at PJ [291]–[300]), which the primary judge adopted in the context of analysing the issue of inventive step (PJ [363]).

128 Accordingly, Ground 5 should be rejected.

The Priority Date issue: Which of the Claims in the Patents are disclosed by PCT 434?

Introduction

129 The Patents, via the filing of a series of divisional applications, claim the priority date of 3 July 2014 (referred to in these reasons as the Asserted Priority Date) from PCT 434. B&W contended that the claims are not entitled to the Asserted Priority Date on the basis that the invention claimed in each of the Asserted Claims is not disclosed in PCT 434, as required by s 43 of the Act and the relevant regulations. NOCO accepted that, if any claim is found not to be entitled to the Asserted Priority Date, the claim is invalid for lack of novelty: PJ [13], [197].

Legislative provisions and legal principles

130 As indicated above, it was common ground between the parties that, for the purposes of assessing grounds of invalidity, the applicable version of the Act is the version that was in force at the date of filing of the Patents, being 20 February 2020, 29 October 2021 and 25 February 2022 respectively. In relation to the Patents Regulations 1991 (Cth) (the Regulations), the parties agreed that compilation No. 75, dated 14 October 2024, contains the Regulations as they stood at the relevant time.

131 Section 43(1) of the Act provided that each claim of a specification must have a priority date. Section 43(2) provided:

(2) The priority date of a claim is:

(a) if subsection (2A) applies to the claim—the date determined under the regulations; or

(b) otherwise—the date of the filing of the specification.

The primary judge noted that this section was subsequently amended in a minor respect by the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020 (Cth), but the parties agreed that the amendment did not impact the operation of s 43: PJ [200].

132 Section 43(2A) of the Act provided:

(2A) This subsection applies to a claim if:

(a) prescribed circumstances apply in relation to the invention defined in the claim; and

(b) a prescribed document discloses, or a prescribed set of prescribed documents considered together disclose, the invention in the claim in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

(Emphasis added.)

133 Section 29A(1) provided that a Patent Cooperation Treaty (PCT) application is to be treated as a complete application under the Act for a standard patent. Section 79B provided in part:

79B Divisional applications prior to grant of patent

(1) If:

(a) a complete application (the first application) for a patent is made; and

(b) the first application is not a divisional application for an innovation patent provided for in section 79C;

the applicant may make a further complete application for a patent for an invention disclosed in the specification filed in relation to the first application.

134 Each of the Patents is a divisional of an earlier patent application, the ultimate Australian divisional application being Australian Patent Application No. 2015258229 (filed 18 November 2015), which was a divisional of PCT 434 (filed 3 July 2014).

135 Regulations 3.12 and 3.13D are contained in Div 2 of Pt 1 of Ch 3 of the Regulations. Regulation 3.12 relevantly provided:

(4) In this Division, a document, or a set of documents considered together, clearly discloses an invention if the document, or set of documents, discloses the invention in a manner that is clear enough, and complete enough, for the invention to be performed by a person skilled in the relevant art.

136 Regulation 3.13D relevantly provided:

3.13D Priority date for divisional application filed prior to grant of patent

(1) This regulation applies to a claim if:

(a) the specification containing the claim that defines the invention was filed for:

(i) a divisional application under section 79B of the Act; or

(ii) a complete application that has been amended to become a divisional application under section 79B of the Act; and

(b) the specification mentioned in subsection 79B(1) of the Act (the earlier specification) clearly discloses the invention in the claim.

…

(3) Subject to regulation 3.12, the priority date is the priority date that the claim would have had if the claim was in the earlier specification.

(4) For subsection 43(2A) of the Act:

(a) the circumstance mentioned in paragraph (1)(a) is a prescribed circumstance; and

(b) the document mentioned in paragraph (1)(b) is a prescribed document.

(Emphasis added.)

137 The primary judge identified the issue to be determined in respect of each Asserted Claim as being whether the invention in the claim is disclosed in PCT 434 as required by s 43(2A)(b) and reg 3.13D: PJ [207]. If so, the claim will be entitled to the Asserted Priority Date. If not, the priority date of the claim will be the priority date of the first earlier divisional that does make such a disclosure (or, failing this, the date of filing of the relevant Patent): PJ [207].

138 In terms of the relevant authorities concerning these provisions, the primary judge referred to ToolGen Incorporated v Fisher (No 2) [2023] FCA 794; (2023) 184 IPR 191 (ToolGen) at [160]–193 as being the most directly relevant discussion of the applicable principles: PJ [208]. In that case, Nicholas J considered the meaning of s 43(2A)(b) and reg 3.13A of the Regulations, and the primary judge considered that the discussion was equally applicable to reg 3.13D, the contrary not having been suggested: PJ [208].

139 The primary judge carefully reviewed the reasoning of Nicholas J, including his Honour’s reference to Icescape Ltd v Ice-World International BV [2018] EWCA Civ 2219; [2019] FSR 5 (Icescape) at [43]. The primary judge also noted that the relevant passages from ToolGen were applied in Allied Pumps Pty Ltd v LAA Industries Pty Ltd [2023] FCA 1457; (2023) 179 IPR 1 at [545]–547 and in Miele & Cie KG v Bruckbauer [2025] FCA 537 (Miele) at [300]–[301] and 304.

140 Without wishing to diminish the thoroughness of the primary judge’s review of the authorities, it is sufficient for the present purposes to set out the effect of his Honour’s summary of the applicable principles as follows (at PJ [215]):

(a) it is necessary to determine both: (1) whether the invention in the claim is disclosed in the priority document; and (2) if so, whether it is clear enough and complete enough for it to be performed by the PSA: ToolGen at [181], [183], [193]; Miele at [300]–[301];

(b) it is not sufficient for the priority document to provide a starting point from which the PSA may transition from one invention to another by use of the CGK; the mere fact that it would be obvious to the PSA to use the disclosure in the priority document to produce what is claimed is not enough to obtain priority if, properly characterised, the priority document and the claim are for different inventions: ToolGen at [193]; Miele at [304];

(c) the position under Australian law is not materially different from the UK law as explained in the English authorities to which Nicholas J referred (such as Icescape): ToolGen at [193].

The findings and reasoning of the primary judge

141 The primary judge dealt with the terms of PCT 434 at PJ [216]–[224]. PCT 434 is an international patent application filed by NOCO on 3 July 2014 under the Patent Cooperation Treaty. The title is “Portable vehicle battery jumpstart apparatus with safety protection.”

142 The primary judge referred to the section headed “Background of the invention” as being in substantially the same terms as the sections headed “Field of the invention” and “Background to the invention” in each of the Patents: PJ [217]. The section headed “Summary of the invention” in PCT 434 is in the following terms:

In accordance with an aspect of the invention, apparatus is provided for jump starting a vehicle engine, including: an internal power supply; an output port having positive and negative polarity outputs; a vehicle battery isolation sensor connected in circuit with said positive and negative polarity outputs, configured to detect presence of a vehicle battery connected between said positive and negative polarity outputs; a reverse polarity sensor connected in circuit with said positive and negative polarity outputs, configured to detect polarity of a vehicle battery connected between said positive and negative polarity outputs; a power FET switch connected between said internal power supply and said output port; and a microcontroller configured to receive input signals from said vehicle isolation sensor and said reverse polarity sensor, and to provide an output signal to said power FET switch, such that said power FET switch is turned on to connect said internal power supply to said output port in response to signals from said sensors indicating the presence of a vehicle battery at said output port and proper polarity connection of positive and negative terminals of said vehicle battery with said positive and negative polarity outputs.

In accordance with another aspect of the invention, the internal power supply is a rechargeable lithium ion battery pack.

In accordance with yet another aspect of the invention, a jumper cable device is provided, having a plug configured to plug into an output port of a handheld battery charger booster device having an internal power supply; a pair of cables integrated with the plug at one respective end thereof; said pair of cables being configured to be separately connected to terminals of a battery at another respective end thereof.

(Emphasis added.)

143 The primary judge observed that the wording of those paragraphs is similar to [0014] to [0016] of the 223 Patent, and corresponding passages of the 059 Patent and the 338 Patent: PJ [219]. However, the primary judge observed that each of the Patents also includes in the “Summary of the invention” section a series of consistory clauses before those paragraphs: PJ [219].

144 The primary judge noted that the first paragraph in the “Summary of the invention” section in PCT 434 (and the corresponding paragraph in each of the Patents) uses the language of “in response to” in the context of when the power switch is turned on. By contrast, none of the Asserted Claims uses the language of “in response to”, and Claim 1 of the 223 Patent uses the words “only when”: PJ [220].

145 The next section of PCT 434 is headed “Brief description of the drawings” and contains a summary of the figures that are attached to the specification. The primary judge said that these figures were subsequently corrected, and the corrected figures are, with one minor exception, the same as the figures forming part of the Patents: PJ [221]. The one exception was an error in the corrections to PCT 434 relating to the inversion of the orientation of a diode (as Professor Holmes said at T634): PJ [221].

146 The next section of PCT 434 is headed “Detailed description of the invention” and contains a description of the preferred embodiment by reference to the figures. The primary judge said that the text of this section is the same, or virtually the same, as in the Patents: PJ [222].

147 PCT 434 contains 26 claims, two of which are independent claims, namely Claims 1 and 24. Claim 1 is as follows:

Apparatus for jump starting a vehicle engine, comprising:

an internal power supply;

an output port having positive and negative polarity outputs;

a vehicle battery isolation sensor connected in circuit with said positive and negative polarity outputs, configured to detect presence of a vehicle battery connected between said positive and negative polarity outputs;

a reverse polarity sensor connected in circuit with said positive and negative polarity outputs, configured to detect polarity of a vehicle battery connected between said positive and negative polarity outputs;

a power FET switch connected between said internal power supply and said output port; and

a microcontroller configured to receive input signals from said vehicle isolation sensor and said reverse polarity sensor, and to provide an output signal to said power FET switch, such that said power FET switch is turned on to connect said internal power supply to said output port in response to signals from said sensors indicating the presence of a vehicle battery at said output port and proper polarity connection of positive and negative terminals of said vehicle battery with said positive and negative polarity outputs.

(Emphasis added.)

148 The primary judge noted that Claim 1 in PCT 434 uses the language of “in response to” to describe when the power FET switch is turned on, being different from the language of the Asserted Claims: PJ [224]. Further, the primary judge noted that Claim 1 in PCT 434 refers to a power FET switch, whereas many of the Asserted Claims do not. A further point noted by the primary judge is that Claim 1 in PCT 434 refers to two specific sensors (namely a vehicle battery isolation sensor and a reverse polarity sensor), whereas many of the Asserted Claims do not refer to two specific sensors: PJ [224].

149 The primary judge then turned to the expert evidence given in the concurrent evidence session concerning the Priority Date issue (T625–651). The primary judge set out the effect of that evidence as follows at PJ [226]–[230]:

Mr Wilson accepted that the two sensors described in PCT434 (the vehicle battery isolation sensor and the reverse polarity sensor) have discrete functions (T626). Mr Wilson accepted that PCT434 repeatedly and consistently teaches that the two sensors performing discrete functions are to be used as part of the invention (T627). He accepted that there is no disclosure in PCT434 of a jump starter in which a single sensor is used to monitor both polarity and whether or not a battery is present (T627). It was put to Mr Wilson that there is no disclosure in PCT434 of a user pushing a button, or taking some other action, to close the power switch if the MCU has determined (based on signals from the two sensors) that a battery is present and connected with correct polarity. Although Mr Wilson initially referred to the manual mode, he subsequently accepted the proposition that had been put to him (T627).

Mr Wilson was asked questions about power switches based on his knowledge as at the asserted priority date. Mr Wilson accepted that it was well known that the two main categories of power switches were electromagnetic switches and semiconductor switches (T628). Mr Wilson accepted that a well-known example of an electromagnetic switch was a relay (T628-629). He gave evidence about how a relay switch works (T629-630). Mr Wilson was then asked questions about semiconductor switches. He accepted that, unlike electromagnetic switches, semiconductor switches do not rely on physical movement of components to open or close the switch (T630). He accepted that it was well known at the asserted priority date that a FET is generally smaller and lighter and can generally switch faster than a relay (T630). He accepted that it was well known at that date that each of FETs and relays had their own respective advantages and disadvantages depending on the particular application (T631).

Mr Wilson accepted that in PCT434 the invention is described as including a FET power switch (T632). He accepted that the only type of power switch that PCT434 identifies to be used in the invention to control the flow of current in the jump starter apparatus is a FET power switch (T632). He accepted that there is no disclosure in PCT434 of the use in the invention of an electromagnetic power switch instead of a semiconductor switch (T632-633). He accepted that PCT434 repeatedly and consistently teaches the use of a FET power switch as a core part of the invention (T633).

Professor Holmes was asked questions about PCT434, on the basis of what was widely known in the field of power electronics at the asserted priority date. Professor Holmes was taken to Holmes 1, where he had observed at 258 that, if a relay component is to be used, there is a certain set of power electronics circuitry required; if a semiconductor device component is to be used, there is a different set of power electronics circuitry required; neither set of circuitry is out of the ordinary or particularly complex, but each must be designed in light of and in response to the specific components that have been selected (T638). Professor Holmes accepted that, at the asserted priority date, he would not have had any difficulty substituting a FET for another type of switch (such as a relay), with appropriate associated ancillary circuit changes (T639). He said the changes were not substantial (T639). Professor Holmes accepted that each type of switch had its own advantages and disadvantages, and these were known at the asserted priority date (T640). Professor Holmes gave evidence that the only switch referred to in the preferred embodiment and the claims in PCT434 is a FET switch (T640). Professor Holmes accepted that he could have built a jump starter using a relay or a FET switch at the asserted priority date (T640). He accepted that the switch is not germane to management of the preconditions; it is the control system that manages the preconditions (T641). He accepted that the same safety advantage (in relation to prevention of closure of the switch) can be obtained regardless of the type of switch used (T641).

Professor Holmes said that at the asserted priority date there were many ways to build a sensor (T646). He accepted that it would have been a matter of routine for him to implement a sensor or sensors capable of detecting presence or polarity (T646). Professor Holmes said that there were various ways to do this, and it could involve separate sensors or one sensor (T647). He accepted that PCT434 only refers to one particular sensor arrangement, which has two separate sensors (T647). He accepted that, provided that the sensor or sensors determined whether the two preconditions were satisfied, one would not be limited to the particular arrangement of sensors described in PCT434 to provide the safety benefits (T647-648).

150 The primary judge then referred to the evidence of Professor Holmes in the context of a later topic in the concurrent evidence session in which Professor Holmes accepted that the background and the detailed description in PCT 434 and in the Patents are essentially word for word the same (T658). Professor Holmes also accepted that the figures are the same, apart from the error regarding the inversion of the orientation of a diode referred to above (T658). Professor Holmes agreed that “in substance” the invention which is disclosed in PCT 434 and each of the Patents is “essentially the same” (T658): PJ [231]. Professor Holmes also accepted that Claim 1 of the 223 Patent (and specifically integer 1.7) is not a materially different invention to what is in PCT 434 (T660): PJ [232].

151 The primary judge said that the detailed description of the invention in PCT 434 is the same, or virtually the same, as the detailed description of the invention in the Patents, but that it was necessary to consider whether the invention in the claim is expressly or implicitly disclosed in PCT 434: PJ [240]. The primary judge then addressed in turn each of the three features of Claim 1 of the 223 Patent that B&W contended were not disclosed in PCT 434.

152 The first of those features relates to the power switch: PJ [241]. The primary judge said that Claim 1 of the 223 Patent requires a “power switch” connected in circuit with the power supply; and a control system or circuit connected to and controlling the “power switch”, wherein the control system or circuit switches on the “power switch” to connect the power supply to the depleted/discharged battery only when two preconditions are satisfied. The primary judge said that the power switch is not further defined in this claim, and the claim therefore includes electromagnetic switches and semiconductor switches: PJ [241]. The primary judge said that these types of switches, which were well known at the Asserted Priority Date, work in different ways, and each had their own advantages and disadvantages: PJ [241]. The primary judge considered the reference to a “power switch” of that breadth to be a feature of the invention in the claim that needs to be disclosed in the priority document, adding that the device works in different ways depending on the type of power switch and the power switch is closely connected to the safety features that the invention is designed to achieve: PJ [241]. The primary judge said that PCT 434 does not (expressly or implicitly) disclose a power switch of that breadth, and the only type of switch it discloses is a FET switch, and thus the primary judge accepted B&W’s first contention: PJ [241].

153 B&W’s second contention relates to the two sensors referred to in PCT 434. Claim 1 of the 223 Patent describes a “control system or circuit” that is configured (1) to detect presence of the depleted/discharged battery and (2) to detect polarity of the depleted/discharged battery (integer 1.6). The primary judge said that the way in which the control system or circuit detects the two matters is not specified and is left at large, and the claim is not limited to a device that has two sensors to detect these matters: PJ [242]. The primary judge considered the reference to a “control system or circuit” of that breadth to be a feature of the invention in the claim that needs to be disclosed in the priority document, adding that the device would work in different ways depending on whether (for example) one sensor is used or two sensors are used or some other system is used: PJ [242]. The primary judge referred to the expert evidence establishing that there were various ways of achieving the safety features, and a two sensor arrangement was not the only way, adding that the control system or circuit is central to achieving the safety features that the invention in Claim 1 is designed to achieve: PJ [242]. The primary judge said that PCT 434 does not (expressly or implicitly) disclose a control system or circuit of the breadth of Claim 1, and that PCT 434 describes only an arrangement that utilises two sensors: PJ [242]. The primary judge therefore accepted B&W’s second contention: PJ [242].

154 B&W’s third contention relates to automatic start: PJ [243]. B&W contended that, if the primary judge construed Claim 1 of the 223 Patent as not requiring that the switch automatically turn on upon satisfaction of the preconditions in integers 1.7.1 and 1.7.2 (which the primary judge found was the proper construction at PJ [121]), then PCT 434 does not disclose a device of that breadth.

155 The primary judge rejected B&W’s third contention: PJ [244]. B&W does not contest that finding by way of its notice of contention (although B&W does raise a closely related point in Ground 1 of its notice of contention). It is thus not necessary to set out the primary judge’s reasoning on this particular point.

156 The primary judge acknowledged that Professor Holmes accepted in the concurrent evidence session that, in substance, the invention disclosed in PCT 434 and the 223 Patent is essentially the same, and that Claim 1 of the 223 Patent is not materially different from the invention in PCT 434: PJ [245]. However, the primary judge observed that these opinions were qualified by the use of words such as “in substance” and “essentially,” and in any event they were not opinions expressed in the context of the applicable legal principles: PJ [245].

157 In light of the primary judge’s acceptance of B&W’s first and second contentions, the primary judge found that PCT 434 does not expressly or implicitly disclose the invention in Claim 1 of the 223 Patent: PJ [246]. It was therefore unnecessary for the primary judge to consider the sufficiency requirement, namely whether the disclosure of the invention in the priority document is clear enough and complete enough to be performed by the PSA.

158 The primary judge then turned to consider the other Asserted Claims of the 223 Patent as follows (at [247]):

(a) In relation to Claims 2, 3 and 4, the primary judge’s analysis for Claim 1 applied.

(b) In relation to Claims 5, 6 and 7, the “power switch” analysis for Claim 1 was equally applicable, and for that reason the invention in the claim in each of Claims 5, 6 and 7 was not disclosed in PCT 434. However, the primary judge said that the analysis in relation to the “control system or circuit” for Claim 1 is not necessarily applicable because (unlike Claim 1), Claims 5, 6 and 7 refer to sensors. Claim 5 refers to the MCU receiving inputs from “one or more sensors” configured to detect presence of the depleted/discharged battery and to detect polarity of the depleted/discharged battery, and thus includes a device with one sensor, whereas PCT 434 only discloses a two-sensor device. Claim 6 refers to two specific sensors (one to detect presence of the vehicle battery and the other to detect polarity), and these two sensors are disclosed in PCT 434. The primary judge said that while, on one view, Claim 6 could include more than two sensors, it appeared from B&W’s opening submissions on invalidity that B&W’s point was focussed on claims in the Patents where presence and polarity may be detected by one sensor. Accordingly, in relation to the sensors feature of Claim 6, the primary judge considered that PCT 434 did disclose that aspect of the invention in the claim. In relation to Claim 7 and this feature, the analysis was the same as either Claim 5 or 6 (as applicable).

(c) In relation to Claims 8, 11 and 12, which are dependent claims, and which do not add any integers that are relevant for present purposes, the analysis was the same as for the earlier claims (as applicable).

(d) Claim 13 refers to FETs and states that the power switch comprises “a plurality of FETs arranged in parallel”. PCT 434 discloses the use of three FETs in parallel (in the last paragraph on page 8). The primary judge said that, while the wording is not the same, this feature of the invention in Claim 13 was expressly or impliedly disclosed in PCT 434, and accordingly the “power switch” analysis for Claim 1 was inapplicable. However, apart from that issue, the primary judge said that the analysis was the same as for the earlier claims (as applicable). It followed that, if Claim 13 is read with Claim 6 (or any earlier claim that includes Claim 6), the invention in the claim is disclosed in PCT 434, and because the disclosure of the relevant features in Claims 6 and 13 is express, the sufficiency test was satisfied by PCT 434. Thus, the primary judge concluded that Claim 13 read with Claim 6 (or any other earlier claim that includes Claim 6) was entitled to the Asserted Priority Date.

(e) Claim 14 refers to two sensors, one that is a depleted or discharged battery sensor and one that is a reverse polarity sensor. The primary judge said that the analysis of this feature was the same as for Claim 6, and that the two-sensor feature of this claim is disclosed in PCT 434. It followed that, if Claim 14 is read with Claim 13 (when appended to Claim 6), both the two-sensor feature and the feature of a plurality of FETs in parallel are disclosed by PCT 434, and given the express disclosure of these features in PCT 434, the sufficiency test was satisfied in respect of these features. The primary judge concluded that Claim 14 (when read with Claim 13, when appended to Claim 6) was entitled to the Asserted Priority Date.

(f) Claims 16–20 are dependent claims, which do not raise any issues beyond those already discussed. The analysis was therefore the same as for the earlier claims (as applicable).

(g) Claim 21 is an independent claim that refers to a “power switch” and a “control system or circuit” in a similar way to Claim 1. The “power switch” analysis and the “control system or circuit” analysis for Claim 1 thus applied equally to this claim.

159 The primary judge summarised his Honour’s conclusions in relation to the 223 Patent, saying that the following Asserted Claims are entitled to the Asserted Priority Date (at PJ [248]):

(a) Claim 13, when read with Claim 6 (or any other earlier claim that includes Claim 6);

(b) Claim 14, when read with Claim 13 (when appended to Claim 6); and

(c) Claims 16–20, when read with the claims referred to in (a) or (b).

Otherwise, the primary judge concluded that the Asserted Claims in the 223 Patent are not entitled to the Asserted Priority Date, and noted that it followed from NOCO’s concession that all such claims are invalid on the ground of lack of novelty: PJ [249].

160 The primary judge then addressed the Asserted Claims of the 059 Patent as follows (at PJ [250]):

(a) In relation to Claims 1 and 2, the analysis in relation to Claim 1 of the 223 Patent was equally applicable.

(b) Claim 3 adds an integer, namely that “the power switch comprises one or more FETs”. PCT 434 discloses a device with one FET (in the summary of the invention) and a device with three FETs in parallel (in the last paragraph on page 8). The primary judge said that, although there is some difference between the disclosure in PCT 434 and this claim, there is sufficient similarity to conclude that this integer was disclosed. The primary judge said that Claim 3 incorporates the “control system or circuit” referred to in Claim 1 of the 059 Patent, and the analysis relating to “control system or circuit” in Claim 1 of the 223 Patent was equally applicable. Accordingly, PCT 434 did not disclose the invention in the claim.

(c) In relation to Claims 4, 6, 7, 8, 9, 10 and 11, the analysis was the same as for the earlier claims (as applicable).

(d) Claim 12 adds an integer, namely that the control system or circuit “comprises one or more sensors connected to a microprocessor” for determining whether the depleted/discharged battery is present and properly connected. The primary judge said that the analysis of this aspect of the claim was the same as for the comparable aspect in Claim 5 of the 223 Patent. Accordingly, PCT 434 did not disclose this feature, and therefore did not disclose the invention in the claim.

(e) Claim 14, which is an independent claim, refers to a “battery presence sensor or circuit” and a “reverse polarity sensor or circuit”. The primary judge considered that these features were expressly or implicitly disclosed in PCT 434, but the “power switch” analysis for Claim 1 of the 223 Patent was equally applicable. Therefore, the invention in the claim was not disclosed by PCT 434.

(f) In relation to Claim 15, which is an independent claim, the “power switch” analysis for Claim 1 of the 223 Patent was equally applicable. Further, although the language is not precisely the same, the “control system or circuit” analysis for Claim 1 of the 223 Patent was in substance applicable. Therefore, the invention in the claim was not disclosed by PCT 434.

(g) Claims 16, 17 and 18 are relevantly the same as Claim 15.

(h) Claim 19, which is a dependent claim, refers to the MCU receiving input from “one or more sensors” configured to detect presence of the depleted/discharged battery and polarity. The primary judge said that the analysis of the comparable feature in Claim 5 of the 223 Patent was equally applicable, as too was the “power switch” analysis for Claim 1 of the 223 Patent.

(i) Claim 20, which is a dependent claim, refers to two sensors, namely one sensor configured to detect presence and another sensor configured to detect polarity. The primary judge considered that the two-sensor feature of this claim is disclosed in PCT 434. Claim 20 incorporates a “power switch” as referred to in Claim 15, which is broader than a FET switch. Therefore, the primary judge said that the “power switch” analysis for Claim 1 of the 223 Patent was equally applicable, and the invention in the claim was not disclosed by PCT 434.

(j) Claim 21 is an independent claim, and the analysis for Claim 1 of the 223 Patent was equally applicable.

(k) In relation to Claims 22 and 23, the analysis was the same as for Claim 21.

(l) Claim 24 is an independent claim, and the analysis was the same as for Claim 1 of the 223 Patent.

161 The primary judge then summarised his Honour’s conclusion as being that none of the Asserted Claims in the 059 Patent was entitled to the Asserted Priority Date, and it followed from NOCO’s concession that all of these claims were invalid on the ground of lack of novelty: PJ [251].

162 The primary judge then considered the Asserted Claims of the 338 Patent as follows (at PJ [252]):

(a) In relation to Claim 1, the analysis for Claim 1 of the 223 Patent was equally applicable.

(b) In relation to Claims 2, 3, 4, 5, 6, 7, 8, 10, 11, 12, 13, 14 and 16, the same analysis applied, and it was unnecessary to consider two additional points relied on by B&W in relation to Claims 3 and 4.

(c) Claim 17 refers to “one or more sensors” configured to detect whether the positive and negative battery connectors are properly connected to the depleted/discharged battery. The primary judge said the analysis of the comparable feature of Claim 5 of the 223 Patent was equally applicable, as too was the analysis of “power switch” in relation to Claim 1 of the 223 Patent.

(d) In relation to Claims 18, 19, 20 and 21, the analysis was the same as for Claim 16 or 17 (as applicable).

(e) Claim 22 refers to “one or more sensors” configured to detect presence and polarity. The primary judge said that the analysis of the comparable feature of Claim 5 of the 223 Patent was equally applicable, as too was the analysis of “power switch” in relation to Claim 1 of the 223 Patent.

(f) Claim 23 refers to two specific sensors, namely one to detect presence and the other to detect polarity. The primary judge considered that these features were expressly disclosed in PCT 434, but otherwise the analysis was the same as for the earlier claims (as applicable).

(g) In relation to Claim 24, the analysis was the same as for the earlier claims (as applicable).

(h) Claim 25 refers to a “plurality of FETs in parallel”. The primary judge said that the analysis of this feature was the same as for the comparable feature in Claim 13 of the 223 Patent. If Claim 25 is read with Claim 23, both the two-sensor feature and the feature of a plurality of FETs in parallel are disclosed in PCT 434. Further, the primary judge said that the disclosure in PCT 434 was express and met the sufficiency requirement, and thus Claim 25 read with Claim 23 was entitled to the Asserted Priority Date.

(i) Claim 26 refers to two specific sensors, namely a presence sensor and a reverse polarity sensor. The primary judge said that the analysis of the two-sensor feature of this claim was the same as for that feature of Claim 23, and otherwise the analysis was the same as for the earlier claims (as applicable).

(j) In relation to Claims 29, 30, 31, 32, 33, 34 and 35, if these claims are read with Claim 25 (when read with Claim 23), the primary judge said that the claim was entitled to the Asserted Priority Date. Otherwise, the primary judge said that the analysis was the same as for the earlier claims (as applicable).

(k) Claim 36 is an independent claim, and the primary judge said that the analysis in relation to Claim 1 of the 223 Patent was equally applicable.

163 The primary judge summarised his Honour’s conclusions in relation to the 338 Patent as follows (at PJ [253]):

(a) Claim 25, when read with Claim 23, was entitled to the Asserted Priority Date; and

(b) Claims 29, 30, 31, 32, 33, 34 and 35, when read with the claims in (a), were entitled to the Asserted Priority Date.

Otherwise, the primary judge concluded that the Asserted Claims in the 338 Patent were not entitled to the Asserted Priority Date, and it followed from NOCO’s concession that all such claims were invalid for lack of novelty: PJ [254].

Grounds 6 and 7 of the Amended Notice of Appeal

164 Grounds 6 and 7 challenge the primary judge’s findings that certain of the Asserted Claims are not disclosed in PCT 434, specifically in that PCT 434 does not disclose a power switch of the breadth of those Asserted Claims and the only type of switch it discloses is a FET switch (Ground 6), and that PCT 434 does not disclose a control system or circuit of the breadth of certain of the Asserted Claims and describes only an arrangement that utilises two sensors (Ground 7).

165 NOCO does not submit that the primary judge erred in his Honour’s summary of the applicable principles and authorities at PJ [215], and submits that the issue is whether the primary judge correctly applied them in the present case. NOCO emphasises that the authorities in the UK state that the Court’s approach to the issue of priority is not formulaic and is directed to the issue of whether there is enough in the priority document to give the PSA essentially the same information as forms the subject of the claim and enables the PSA to work the invention in accordance with that claim: HTC Corporation v Gemalto SA [2014] EWCA Civ 1335; [2015] RPC 17 (HTC Corp) at 64, citing Medimmune Ltd v Novartis Pharmaceuticals UK Ltd [2012] EWCA Civ 1234; [2013] RPC 27 at 153, which in turn cited Unilin Beheer BV v Berry Floor NV [2004] EWCA Civ 1021; [2005] FSR 6 at 48. In HTC Corp, the UK Court of Appeal approved the reasoning of Birss J at first instance, who construed the priority document as disclosing an illustrative example of a general idea or principles of general application, that being how the PSA would understand the priority document. NOCO submits that the correct approach to determining the nature of disclosure required does not involve identification of a literal disclosure and all possible ways of performing the method, and it is sufficient if the PSA would understand the method disclosed as describing a way of performing the invention while knowing there are other ways of doing it. NOCO submits that the critical question is whether the skilled person would understand the disclosed embodiment as an example of a broader inventive concept, or whether the disclosure is confined to the technique described.

166 At the level of legal principle, we accept that the proper approach to the issue of priority is not formulaic and is concerned with whether there is enough in the priority document to give the PSA essentially the same information as forms the subject of the claim. That said, one must also bear in mind that the skilled person must be able to derive the subject matter of the claim directly and unambiguously from the disclosure of the priority document: HTC Corp at [65]. As is common ground, the primary judge was correct to say at PJ [215(b)], that it is not sufficient for the priority document to provide a starting point from which the PSA may transition from one invention to another by use of the CGK. The priority document should be read according to what it discloses to the PSA, with that person’s knowledge and background, but it is not permissible to go further than eliciting the explicit or implicit disclosure, and take account of what a document might lead a skilled person to do or try, or what it might prompt him to think of: HTC Corp at [65].

167 NOCO submits that in the present case, the PSA would not understand PCT 434 as confined to a particular switch type or sensor configuration. NOCO submits that the disclosures in PCT 434 and the Patents are very similar, particularly in that the detailed description and figures are identical and, in substance, NOCO submits that the invention disclosed is essentially the same, consistently with the evidence of Professor Holmes referred to in PJ [231]–[232]. NOCO submits that Professor Holmes accepted that the preferred embodiment described in PCT 434 was “merely an example” of how the apparatus could be built and was non-limiting (T493.7–21), although we note that that evidence was given in relation to the 223 Patent rather than PCT 434. NOCO relies on the evidence of Professor Holmes referred to at PJ [229] to the effect that the PSA would not have had difficulties substituting an FET for another type of switch (such as a relay) and the changes were not substantial. Further, NOCO relies on the evidence of Professor Holmes referred to at PJ [230] to the effect that it would have been a matter of routine for the PSA to implement a sensor or sensors detecting presence and polarity and that this could be done in various ways. NOCO submits that the critical point is that the evidence demonstrated that the PSA would understand the embodiment in PCT 434 as an example of a broader inventive concept, not as confined to the particular device described.

168 As to the question of power switch, NOCO submits that, contrary to PJ [241], the PSA would approach PCT 434 with background knowledge of a wide variety of power switches and would understand that the particular switch identified in the embodiment was disclosed as an example of a suitable switch for implementing the disclosed safety architecture. NOCO relies on evidence of Professor Holmes who accepted that the purpose of the switch was to inform the MCU when two preconditions had been met (T642.44–643.1), there were many options available that could be implemented without difficulty (T646.33–647.34), and the skilled team would not have been limited to the particular sensor arrangement in PCT 434 to provide the safety benefit or functional outcome disclosed in the Patents (T647.42–648.10, T832.40–834.19). NOCO submits that the priority document needed to be read in light of the CGK, not to add further disclosures or to generalise by obviousness, but to explain why the disclosed embodiment would be understood as illustrative rather than exhaustive. NOCO submits that the fact that different types of power switches may work in different ways at the level of technical implementation does not mean that they represent different inventions. NOCO submits that the evidence did not establish any difficulty for the PSA in using other types of switches, but established only that their implementation would differ, with reference to PJ [229]. NOCO submits that the subject matter of the claims, including the use of “power switch” broadly, can be derived directly and unambiguously from the disclosure of PCT 434.

169 As to the question of sensors, NOCO submits that, properly characterised, the invention is not limited to a particular sensor arrangement. NOCO relies on the reasoning of the primary judge at PJ [230] to the effect that there were many ways to implement sensing of presence and polarity at the Asserted Priority Date, that the PSA would not be limited to the particular arrangement shown in PCT 434, and that implementation of alternative sensing arrangements would have been routine. Accordingly, NOCO submits that the PSA would understand the sensor arrangement described in PCT 434 as an example of a suitable technique for implementing the disclosed inventive concept (namely, a device having the relevant safety preconditions) rather than as defining the invention itself.

170 NOCO thus submits that, properly understood, PCT 434 discloses the same general inventive concept as the invention in the Asserted Claims. NOCO submits that, when read in light of the CGK, the PSA is able to derive the subject matter of those claims directly and unambiguously from PCT 434, and the fact that later claims encompass routine alternative implementations does not mean that priority is lost. NOCO also observes that, once it is accepted that the subject matter of the claims of the Patents is disclosed in PCT 434, the second question of the sufficiency of disclosure would arise (as the primary judge observed at PJ [215(a)]). However, the primary judge did not determine that issue (PJ [246]), and B&W has not raised the issue by notice of contention.

171 As to Ground 6, the use of a FET switch is not merely identified in an embodiment described in PCT 434, contrary to NOCO’s submissions. As B&W submits, the use of a FET switch is consistently identified as essential throughout PCT 434, namely in the abstract, summary of the invention, detailed description, figures and claims. Mr Wilson accepted that PCT 434 repeatedly and consistently teaches the use of a FET switch, being a semi-conductor switch, as a core part of the invention: PJ [228]. PCT 434 does not disclose the possibility that other types of power switches, such as electromagnetic switches, may be used. Those of the Asserted Claims which raise this issue encompass the use of any type of power switch, and are thus not entitled to claim priority from PCT 434. PCT 434 cannot be construed as disclosing a FET switch as a mere illustrative example of a general idea, unlike HTC Corp.

172 As to Ground 7, the use of two sensors to detect presence and polarity respectively is also consistently identified as essential in PCT 434, namely in the abstract, summary of the invention, detailed description, figures and claims. Mr Wilson accepted that PCT 434 repeatedly and consistently teaches the use of two sensors with discrete functions: PJ [226]. Further, Mr Wilson’s evidence was that it is these two sensors which are to be used to address the safety risks associated with a reverse polarity connection: T626.1–627.11. Professor Holmes confirmed that there was no disclosure in PCT 434 of the use of a single sensor to detect both presence and polarity: Holmes 1 at [555(a)] and [556]. Accordingly, those of the Asserted Claims which do not require the use of two sensors, and encompass the detection of presence and polarity by other means, are not entitled to claim priority from PCT 434.

173 Further, in our view, the primary judge was correct to say that Professor Holmes’s acceptance that the invention disclosed in PCT 434 and the 223 Patent is essentially the same and not materially different were not opinions expressed in the context of the applicable legal principles: PJ [245]. The particular context of that evidence by Professor Holmes was identified earlier by the primary judge, namely that the background and the detailed description are essentially word for word the same, and the figures are the same apart from the error regarding one diode: PJ [231]. That is not sufficient for present purposes. Further, it was not put to Professor Holmes (and he did not say) that the PSA would read PCT 434 as illustrative and non-limiting in relation to the FET switch and the two sensors. Nor did he say that PCT 434 was expressing a general idea, as counsel for NOCO accepted (T77.33–47).

174 Accordingly, Grounds 6 and 7 should be rejected.

Ground 1 of the Notice of Contention

175 Ground 1 of the Notice of Contention concerns whether PCT 434 discloses an apparatus allowing a user to exercise discretion as to whether to close, or leave open, the power switch, in the event that a proper connection is detected. The primary judge construed the Asserted Claims, except Claim 21 of the 223 Patent and Claims 15–20 of the 059 Patent (Manual Operation Claims), as encompassing an apparatus which does not turn on automatically upon detecting a proper connection, but instead allows a user to manually turn on (for example, by pressing a button) or leave off (for example, by not pressing a button) the apparatus (Manual Operation). B&W accepts that construction on this appeal. However, B&W submits that PCT 434 does not disclose, and the primary judge failed to consider whether PCT 434 discloses, any apparatus allowing Manual Operation. B&W observes that the primary judge held that PCT 434 discloses a device which does not necessarily turn on upon satisfaction of the preconditions relating to presence of the vehicle battery and a connection with correct polarity: PJ [243]–[244]. B&W does not challenge that finding, but submits that the finding does not address whether PCT 434 discloses an apparatus allowing Manual Operation.

176 B&W submits that there is no disclosure in PCT 434 of such an apparatus. B&W submits that the matters identified in PJ [243]–[244] disclose an apparatus which may not “turn on” because other specified conditions have not been met (for example, because the lithium battery is too hot). However, B&W submits that in each instance it is the apparatus, not the user, which will determine whether to close the power switch or not. B&W relies on the concession by Mr Wilson that there is no disclosure in PCT 434 of an apparatus in which a user is provided with the ability to decide whether to close the power switch or not if the apparatus has detected that a battery is present and connected with correct polarity: PJ [226], referring to T627.30–40. B&W submits that this would be a fundamentally different jump starter, referring to the Joint Experts’ Report, section A, p 9, lines 211–6 and section C, p 18, item 2. Accordingly, B&W submits that the Manual Operation Claims are not entitled to claim priority from PCT 434.

177 In our view, as NOCO submits, the flaw in this contention is that there is no claim in any of the Patents which expressly claims the user closing the power switch upon the satisfaction of the conditions. In effect, B&W’s submission is that such Manual Operation is not excluded by the Asserted Claims, in that there is a way of constructing a jump starter by including an additional Manual Operation button which falls within the scope of the claims but is not expressly described. The primary judge construed the invention as claimed as a jump starter device that need not automatically switch on upon satisfaction of the safety preconditions: PJ [121]–[128]. The relevant inquiry is whether that subject matter is disclosed by PCT 434, and the primary judge found correctly that it is: PJ [243]–[244].

178 Accordingly, in our view, this ground of contention should be rejected.

The Manual Mode issue of construction: Is a device that allows the user to turn the power switch on, in circumstances where a depleted or discharged battery is not present or the voltage of the vehicle battery is so low that it is not detected as being present, within certain of the Asserted Claims?

Findings and reasoning of the primary judge

179 The primary judge noted that this issue of construction applies only to those of the Asserted Claims that use the “only when” language and those that use the “does not switch on” language: PJ [133]. The issue thus applies to all of the Asserted Claims of the 223 Patent, Claim 16 of the 059 Patent and Claims 2, 20, 24 and 32 of the 338 Patent (referred to in these reasons as the Manual Mode Issue Claims): PJ [133]. The issue is relevant for NOCO’s infringement case, as the Impugned Products have a manual override function: PJ [135].

180 The primary judge distinguished the “Manual Mode” issue from the “Automatic Start” issue: PJ [136]. The Automatic Start issue was concerned with whether it is a requirement of the Asserted Claims that the power switch turn on automatically upon satisfaction of a precondition or preconditions (for example, detection that the vehicle battery is present and detection that the vehicle battery is connected with correct polarity). In contrast, the Manual Mode issue is concerned with whether a device that allows a user to override one of those preconditions (namely, detection that a vehicle battery is present) falls within the scope of the Manual Mode Issue Claims: PJ [136].

181 The primary judge set out the expert evidence in relation to this construction issue at PJ [139]–[141]. At PJ [139], the primary judge set out a passage from the Joint Expert Report prepared by Professor Holmes, Professor Ricketts and Mr Wilson in which all three experts agreed on the following matters:

All claims listed above for AU233, AU059 and AU338, require that the “control system or circuit”, as identified in all associated claims in AU223 and AU059, or the “power switch or switch circuit” and/or “microcontroller”, as identified in all associated claims in AU338, will not turn on the “power switch” to connect the internal battery to the vehicle battery when the conditions of battery presence and polarity (i.e. a proper connection) are not met. None of these claims (or any other claims in the AU patents) disclose any form of a manual mode or override feature that would turn on the power switch if these conditions are not satisfied. Thus, the claims listed above do not disclose any switch closure unless battery presence with correct polarity is detected.

However, none of the claims listed above for AU233 and AU059 exclude the use of a separate independent control system to turn on the power switch if the proper battery conditions are not met, since all claims only require the “control system or circuit” to abide by the proper connection conditions. For AU338, none of [the] claims listed above exclude the use of a separate independent “power switch or switch circuit” to connect the internal battery to the vehicle battery if the proper connection conditions are not satisfied. However, for avoidance of doubt, while the preferred embodiments of the AU patents describe a form of manual override, it is not disclosed as part of the invention in any claim of the AU patents.

A Skilled Person could have envisaged an unclaimed, separate and independent control circuit or system, to control the power switch when the presence sensor, for example, does not detect presence. Such an unclaimed circuit or system could be a manual override circuit.

182 The primary judge then set out the effect of the oral evidence of Professor Holmes and Mr Wilson as follows (at [140]–[141]):

Professor Holmes was questioned about this issue at T501-506 and 515-527. Professor Holmes’s opinion was that the device depicted in Fig 1 of the 223 Patent (i.e. the preferred embodiment) did not fall within the scope of Claim 1 in this aspect (T504). Professor Holmes accepted that the claims are silent on the manual mode override being implemented by separate circuitry to the control system or circuit (T516). He accepted that the claims do not exclude an apparatus having a manual override function (T516-517). However, if an apparatus has a single control system that has two modes – one mode that is automatic and one mode that is manual – in Professor Holmes’s opinion this would bring the control system outside the scope of the claims (T518). Professor Holmes expressed the opinion that the detailed description is not consistent with the disclosure of the claims (T523, 526).

Mr Wilson was questioned about this issue at T549-551. It was put to Mr Wilson that if there is a device with a control system or circuit that allows the switch to be closed when it is not connected to the vehicle battery, the device would not fall within Claim 1 of the 223 Patent, in that it would not meet the requirement of integer 1.7. Mr Wilson agreed that it would not meet that requirement of the claim (T550-551). However, when asked more directly about a manual override, Mr Wilson expressed the opinion that Claim 1 did not exclude having an additional function such as a manual override (T551).

183 The primary judge found that a device that has a manual mode that allows the user to turn on the power switch in circumstances where no depleted/discharged battery is present, or in circumstances where the voltage of the depleted/discharged battery is so low that it cannot be detected, is inconsistent with and therefore outside the scope of the Manual Mode Issue Claims: PJ [142].

184 The primary judge took Claim 1 of the 223 Patent as an example, saying that an integer of the claim is that the control system or circuit switches on the power switch to connect the power supply to the depleted or discharged battery “only when” (relevantly) “the depleted or discharged battery is present and properly connected between the positive and negative battery connectors” (integer 1.7.1): PJ [143]. The primary judge expressed the view that this integer means that the power switch is not to turn on unless that precondition is satisfied: PJ [143]. The primary judge said that it is inconsistent with that integer to have a manual mode as described above, because this would mean that the control system or circuit would be capable of switching on the power switch in circumstances where the depleted or discharged battery is not present or is not detected as being present.

185 The primary judge referred to NOCO’s submission to the effect that a device that is capable of operating in two modes (namely, automatic mode and manual mode) does not fall outside the Manual Mode Issue Claims, because the manual mode should be seen as an additional feature; provided the device satisfies the integers of the claim in its automatic mode, it does not matter that it also has an alternative mode of operation. The primary judge said that the difficulty with the submission was that the wording of the relevant claims (“only when”) is essentially negative and unqualified. That is, the primary judge said that the relevant claims preclude the power switch turning on if the precondition is not satisfied, without allowing for or describing any alternative mode of operation to which this negative integer does not apply, such that a device with that type of alternative operation is capable of operating inconsistently with that negative integer: PJ [144].

186 The primary judge acknowledged that, on his Honour’s construction, the preferred embodiment described in the 223 Patent would fall outside the scope of all of the claims in that Patent. That was a reference to the specification of the 223 Patent at [0026], which refers to the apparatus having a “manual mode”, and Figure 1 of the specification which refers to a manual mode button at item 46: see [21] above. The specification for the 223 Patent states at [0026] that this feature “allows the user to jump-start vehicles that have either a missing battery, or the battery voltage is so low that automatic detection by the MCU is not possible”. The primary judge noted that the difficulty of the preferred embodiment described in the 223 Patent falling outside the scope of all the claims in that Patent did not arise in relation to the 059 Patent and the 338 Patent, as some of the claims in those Patents were not affected by this issue. The primary judge referred to the principle that the claims are to be construed in the context of the specification as a whole, which includes the description of the preferred embodiment, but considered the wording of integer 1.7 in Claim 1 of the 223 Patent to be “intractable”: PJ [145]. The primary judge expressed the view that it was clear that integer 1.7 has the construction adopted by his Honour, and that a manual mode of operation is inconsistent with that integer: PJ [145].

187 Accordingly, the primary judge concluded that a device that has a manual mode as described above is inconsistent with, and therefore outside the scope of, Claim 1 of the 223 Patent, and the same reasoning applied to the other Manual Mode Issue Claims: PJ [146]–[147].

Ground 8 of the Amended Notice of Appeal

188 By Ground 8 of the Amended Notice of Appeal, NOCO challenges the primary judge’s construction of the Manual Mode Issue Claims. NOCO submits that the primary judge erred in treating the capability of operating in a different mode as determinative. NOCO submits that the relevant integers regulate the circumstances in which the “control system or circuit” switches on the power switch, and do not prohibit the device from having an alternative mode of operation. NOCO submits that the primary judge’s acknowledgement that his Honour’s construction rendered the preferred embodiment described in the 223 Patent outside the scope of all Asserted Claims of the 223 Patent is a powerful indication that the construction is wrong unless compelled by clear language, in that it created an internal disconformity in the specification between the body and the claims.

189 NOCO submits that the specification of the 223 Patent teaches that there is no disconformity between a device configured to operate in a mode with the claimed control functionality and the presence of a manual override mode. NOCO submits that in the specification of the 223 Patent, 0013a and [0025] describe a device in which the control system allows closure of the power switch “only when” the stipulated preconditions are satisfied, while [0026] describes the same device as also permitting manual override in circumstances of low or undetectable battery voltage, such a device being illustrated in Figure 1. NOCO submits that the specification does not treat the “only when” requirement as creating an “intractable” conflict with the manual mode; rather, NOCO submits that those modes were taught as complementary features capable of co-existing within the one device. NOCO submits that the claims require that the device include “a control circuit” which can be “configured” to hold the power switch open unless the stipulated preconditions are satisfied, thereby bestowing the safety advantages of the invention. NOCO submits that it is sufficient that the device can be configured to operate in that mode. NOCO submits that a user might reconfigure the device to operate in a manual mode, but that involves a reconfiguration and operation of the device in a different state. NOCO submits that it does not follow that a device capable of operating in two different modes falls outside the scope of the relevant claims, it being sufficient that the device is “configured” to operate, and capable of being operated, in accordance with the claimed control functionality.

190 NOCO also relies on the common ground between the parties which is expressed by the primary judge at PJ [148], that the Asserted Claims define a device that does not operate where the battery is in a particularly low voltage range. NOCO submits that when the voltage is low, the manual mode permits the user manually to close the power switch. NOCO submits that, as taught and claimed, both modes of operation may co-exist within the one device, submitting that the claims are directed to the configuration of the control circuit when configured to close the power switch “only when” the safety preconditions are satisfied, but not to the exclusion of any other operational state.

191 NOCO submits that the Manual Mode Issue Claims are “silent as to the presence of the manual mode” and in that sense, are “agnostic” to it. NOCO describes the manual mode as an additional feature (or mode) not excluded by the claim language and not expressly claimed, citing Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220; (2005) 224 ALR 168 at 70. In that passage, the Full Court said that if additional integers to a claimed combination are properly characterised as inessential or do not make a new working of the combination, and all of the essential integers of the claimed combination are present, there will be infringement; and, where a patentee defines the claimed invention as consisting of a number of essential integers, it is no answer to infringement that the claimed combination is taken but additional integers are added that do not affect and are not part of the invention. NOCO also submits that the expert evidence did not compel the construction adopted by the primary judge, in that Mr Wilson and Professor Holmes both shared the view that the claims did not exclude an apparatus having a manual override function.

192 This ground of appeal should be rejected. The primary judge correctly construed the “only when” or “does not switch on” language as essentially negative and unqualified, such that a device capable of manual override is capable of operating inconsistently with that negative integer. The primary judge correctly held that a device capable of manual override is inconsistent with, and therefore outside the scope of the Manual Mode Issue Claims. The expert evidence was relevant but not determinative of this issue of construction.

193 The claim language is clear and unambiguous to the effect that manual override functionality is precluded. The clear effect of the language is that the control system or circuit must not switch on unless the stipulated preconditions are satisfied. It is wrong to say that the claims are silent and thus agnostic as to manual override functionality, in that the language of the relevant claims has precluded the presence of such functionality. The primary judge expressly acknowledged that the construction would result in the preferred embodiment falling outside the scope of the Manual Mode Issue Claims, but correctly expressed the view that the claim language was “intractable”. The plain and unambiguous meaning of a claim cannot be varied or qualified by reference to the body of the specification, although terms in the claim which are unclear may be defined or clarified by reference to the body of the specification: Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1 at 15. In any event, as the primary judge said, the correct construction does not result in the preferred embodiment falling outside all of the Asserted Claims, because it would still fall within certain claims of the 059 Patent and the 338 Patent.

194 Accordingly, Ground 8 should be rejected.

Was the best method disclosed?

195 In light of the conclusions which the primary judge had reached in relation to lack of inventive step (with which we agree), it was unnecessary for his Honour to consider the remaining grounds of invalidity. However, the primary judge considered the best method ground for completeness: PJ [369]. This ground has a bearing on the costs order made by the primary judge, which B&W seeks to vary in its cross-appeal, and thus it is necessary for us to consider the best method issue.

Legislative provisions

196 Section 40(2)(aa) of the Act requires that a complete specification “disclose the best method known to the applicant of performing the invention”. Section 138(3) provides that the Court may, by order, revoke a patent, either wholly or so far as it relates to a claim, on various grounds, including in para (f) that “the specification does not comply with subsection 40(2), (3) or (3A)”.

197 Section 29A(2) provides that the “description, drawings, graphics, photographs and claims contained in a PCT application are to be treated as a complete specification filed in respect of the application”.

198 The Patents are standard patents, which had been filed as divisional applications: PJ [204]. Section 79B(1) of the Act (which has been set out above, but which we repeat here for convenience) provides as follows:

If:

(a) a complete application (the first application) for a patent is made; and

(b) the first application is not a divisional application for an innovation patent provided for in section 79C;

the applicant may make a further complete application for a patent for an invention disclosed in the specification filed in relation to the first application.

199 The Dictionary in Sch 1 of the Act defines “complete specification” relevantly as “a specification filed in respect of a complete patent application”.

The reasoning of the primary judge

200 The primary judge noted that the best method ground raised both legal and factual issues. A threshold legal issue was whether the relevant date for the purposes of ascertaining NOCO’s knowledge of the best method was the date of filing PCT 434 (namely, 3 July 2014) or the date of filing of each of the divisional applications containing the complete specifications for the Patents (being dates in 2020 to 2022). It was not suggested by either party that the relevant date was the date of filing of any intermediate parent application subsequent to the date of filing PCT 434 but before the filing of the divisional applications for the Patents. If the relevant date was the date of filing PCT 434, as NOCO contended, this ground of invalidity failed. However, if the relevant date was the filing date of each of the divisional applications containing the complete specifications for the Patents, as B&W submitted, then there was a factual issue as to whether NOCO was aware of a better method of performing the invention in late 2014 and early 2015 than that which was disclosed in each of the patents: PJ [372].

201 As to the threshold legal issue, the primary judge carefully reviewed the relevant Australian cases, namely:

(a) Rescare Ltd v Anaesthetic Supplies Pty Ltd [1992] FCA 811; (1992) 25 IPR 119 (Rescare);

(b) Pfizer Overseas Pharmaceuticals v Eli Lilly & Co [2005] FCAFC 224; (2005) 68 IPR 1 (Pfizer);

(c) Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; (2016) 247 FCR 61 (Servier); and

(d) Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd [2018] FCA 1573; (2018) 135 IPR 403 (Dometic).

202 The primary judge held that the relevant date for the element of knowledge was the filing date of PCT 434, and that the disclosure was required to be made in the complete specification for PCT 434 when it was filed: PJ [389]. The primary judge regarded that conclusion as consistent with the reasoning in Rescare (at IPR 135) and Pfizer (at [375]), and also with s 29A(2) of the Act: PJ [386]. The primary judge acknowledged that a different view was taken in Dometic at [233], but considered that what his Honour regarded as the view of the Full Court in Pfizer should be followed: PJ [388].

203 The primary judge then considered the factual issues relating to best method on the assumption that (contrary to his Honour’s conclusion) the relevant date for the knowledge element was the date of filing of each of the divisional applications containing the complete specifications for the Patents in 2020 to 2022. The primary judge found that in late 2014 and early 2015, NOCO experienced certain problems with its commercial product (known as the GB30 or Genius Boost 30) as launched, and made changes to address those problems, thereby improving the product: PJ [392]–[394]. Those problems and improvements were as follows:

(a) the GB30 as launched used a lithium ion battery pack and generated a continuous discharge current of 25C and a burst discharge current of 50C, but the battery discharge capability was considered insufficient and the size of the battery was increased; and

(b) the GB30 as launched used three FETs in parallel, but problems were experienced with the FETs and they were replaced with relays.

204 The primary judge found that NOCO as a corporate entity was aware of those improvements to the product: PJ [395]. Further, having regard to the nature of the invention, the primary judge was satisfied that the improved product constituted the best method for performing the invention and that NOCO was aware of this: PJ [396]. Accordingly, if the relevant date for the purposes of the knowledge element had been the date of filing of each of the divisional applications containing the complete specifications for the Patents, NOCO failed to disclose the best method known to it as at each of those dates: PJ [397]. However, as indicated above, the primary judge considered that the best method ground of invalidity was not made out because of his Honour’s conclusion that the relevant date for the purpose of the knowledge element was the date of filing PCT 434.

Ground 3 of the Notice of Contention

205 By Ground 3 of the Notice of Contention, B&W contends that, although the primary judge correctly held that as at the date of filing of each of the divisional applications containing the complete specifications for the Patents NOCO was aware of a better method of performing the invention than that disclosed in each of the divisional applications, the primary judge ought to have held that the relevant date for assessing the knowledge of NOCO for the purpose of s 40(2)(aa) of the Act was the date of filing each of the divisional applications containing the complete specifications rather than the date of filing PCT 434.

206 Before going to the cases which have considered this issue, it is instructive simply to look at the statutory language in question. As indicated above, the primary jux`dge held that because s 29A(2) of the Act provides that the description, drawings and claims in a PCT application are to be treated as a “complete specification” filed in respect of the application, the filing date of a PCT specification (that is, the international filing date) is capable of constituting the filing date of the complete specification for the purpose of s 40(2): PJ [386]. As B&W submits, the difficulty with that analysis is that it misapprehends the “complete specification” to which s 40(2) is directed when an order for revocation is sought. Where revocation under s 138(3) is sought on the ground that the specification does not comply with subs 40(2), (3) or (3A), the question for the Court is whether “the specification” of the standard or innovation patent in suit complies with subs 40(2), (3) or (3A).

207 As noted above, the Patents are standard patents which had been filed as divisional applications. Each specification filed in respect of each of those divisional applications was a “complete specification”. That follows from the terms of s 79B(1), which make clear that a divisional application for a patent is a “complete application”, and the Dictionary, which defines a “complete specification” as “a specification filed in respect of a complete patent application”. Accordingly, as B&W submits, the issue arising under s 40(2) is whether the “complete specification” of each of the Patents, being the “specification filed” in respect of each of the divisional applications, disclosed “the best method known to the applicant of performing the invention”, as required by s 40(2)(aa) of the Act. The filing date of those complete specifications could not be treated as the filing date of PCT 434 (contrary to PJ [386]), because those specifications were not filed in respect of PCT 434.

208 That is reinforced by focussing on the context of an application for revocation under s 138. Section 40(2) prescribes requirements that apply to a “complete specification”. Accordingly, if an application for revocation of a patent is made under s 138, the “complete specification” to be considered is the specification of the patent sought to be revoked, not the specification filed in respect of any PCT (or other) application from which priority might be claimed. As B&W submits, it does not matter that the specification filed in respect of a priority document might also be a “complete specification” (whether by reason of s 29A(2) or otherwise), because that would be a different complete specification from the one sought to be revoked.

209 That reasoning is also supported by the reference in s 40(2)(aa) to “the best method known to the applicant”. The applicant in question could only mean the applicant who has filed the complete specification to which s 40(2) is directed. It is not referring to the applicant of the first application from which priority is said to spring. Moreover, as B&W submits, NOCO could not, at the time of filing PCT 434 on 3 July 2014, be described as the applicant in respect of the complete specification of any of the Patents, as they did not exist for at least another 5½ years. In addition, the applicant for a PCT application (or other parent application) may be different from the applicant for a divisional application (for example, by reason of an assignment of the PCT application or other parent application).

210 Turning then to the decided cases on the question, the approach for which B&W contends is consistent with the reasoning in those cases, with some relatively minor qualification with respect to Rescare.

211 In Rescare, the best method ground of invalidity failed on the facts as to what was known to the relevant person, and thus it was unnecessary for Gummow J to determine the issue of law as to the relevant date as at which the best method known to the applicant for performing the invention was to be identified. Nevertheless, Gummow J considered that issue for completeness. The contest was between the international filing date of 23 April 1982 (as asserted by the patentee) and the date of publication of 4 November 1982 (as asserted by the alleged infringer). We note that a provisional specification had been lodged on 24 April 1981, but neither party appears to have contended for that date to be applicable. Justice Gummow began by saying (at 132) that, on its face, s 40 would suggest that the complete specification should include the best method of performing the invention known to the applicant when lodging the complete specification. His Honour then considered the position in the UK, namely that the best method that had to be disclosed was that known to the applicant at the time the specification was left at the Patents Office (at 133–135). Justice Gummow said that that should be treated as applicable to the requirement in s 40 of the Patents Act 1952 (Cth) of the disclosure by the inventor of the best method known to the inventor, despite the differences in text with the corresponding UK provision. Reference was then made to the provisions of the 1952 Act providing for a term of a standard patent of 16 years, reckoned from the date of the patent, this being the date on which the complete specification was lodged (at 135). Justice Gummow then said the following:

The adequacy of the disclosure should be judged by reference to the time from which dated the monopoly granted the applicant in exchange for the disclosure. In the present case that is the international filing date, 23 April 1982. This is the date from which the term of the patent runs.

212 The clear and unequivocal effect of Gummow J’s reasoning up to that quoted passage was that the operative date was the date of lodging the complete specification. The sentence immediately preceding the quoted passage was to the effect that the term of 16 years of a standard patent commenced on the date on which the complete specification was lodged. Accordingly, there was no apparent divergence between the date of lodging the complete specification and the date of commencement of the monopoly granted in exchange for the disclosure. In contrast to the thorough review which Gummow J conducted of the cases and commentary in support of the date of lodging the complete specification being operative, no authority or commentary was cited for the proposition quoted above that the operative date was the date on which the monopoly commenced. Accordingly, we read the reasoning of Gummow J as finding that the operative date is the date of lodging the complete specification, that being the central thrust of the analysis.

213 In Pfizer, the contest over the relevant date was between (a) the filing date of the complete specification, which was accepted as being the international filing date of the PCT application of 13 May 1994 (as the alleged infringer contended), and (b) either the date of grant of the patent on 10 July 1997 or the date of commencement of the proceeding at first instance on 17 September 2002 (as the patentee contended): see [350]–[351]. French and Lindgren JJ (with whom Crennan J agreed at [408] in relation to best method) said the following at [375]:

The date as at which the best method known to the applicant is to be identified is conceptually distinct from the date by which the specification’s full description of the invention must include a disclosure of it. The parties correctly proceeded on the basis that it is the best method known to the applicant as at the filing date that must be disclosed. In Rescare, Gummow J expressed the opinion (at ALR 223; IPR 135) that this was so under s 40 of the 1952 Act, and s 40(2)(a) is to the same effect as s 40(1)(a) of the 1952 Act.

214 French and Lindgren JJ then analysed the facts and reasoning in Rescare, and said the following at [379]:

Once it is accepted, however, that an applicant for a patent must disclose the best method known to the applicant at the date of filing, it is also not difficult to think, as Gummow J appears to have done and as we do, that disclosure must be made in the complete specification when it is filed. Lest there be any doubt, we would make it clear that s 40(2)(a) requires an applicant for a patent to disclose in the complete specification at the time of filing it the best method of performing it known to the applicant at that time …

215 Their Honours cited for that last proposition C Van Der Lely NV v Ruston’s Engineering Co Ltd [1993] RPC 45 at 56 (Nicholls LJ). In that case, the contest was between, on the one hand, the dates of convention applications (being the priority dates for the patent in suit) and, on the other hand the subsequent date of filing a complete specification (at 50, lines 26–29). That debate was resolved in the passage cited by French and Lindgren JJ at 379, in favour of the proposition that the relevant legislative provision required disclosure of the best method known to the applicant at the time when the complete specification was filed. One of the arguments advanced in favour of the relevant date being the priority date for the invention in question was that that was the time from which the patentee was entitled to claim protection, but that argument was rejected (at 57, lines 1–10). In citing that case with approval, French and Lindgren JJ indicated that where the dispute is between the priority date and the filing date of the complete specification, the operative date was the latter. That was not the dispute which arose in Pfizer, as it was simply accepted in that case that the filing date of the complete specification was the same as the international filing date of the PCT application.

216 In Servier, the Full Court (Bennett, Besanko and Beach JJ) treated Gummow J’s conclusion in Rescare as being that the date upon which the best method was to be disclosed was the date of filing of the application: [113]. The Full Court then referred to Pfizer at [375] and [379] and said (at [114]):

In Pfizer (at [375]) the Full Court decided that the date on which the best method known to the applicant is to be identified is conceptually distinct from the date by which the full description must include the disclosure of it. An applicant is required to disclose the best method known to it as at the filing date, as concluded by Gummow J in Rescare with respect to the 1952 Act. It follows, their Honours said (at [379]), that the disclosure must be made in a complete specification when it is filed, adding, ‘[l]est there be any doubt’, that s 40(2)(a) requires an applicant for a patent to disclose in the complete specification at the time of filing the best method of performing it known to the applicant at that time.

217 In Dometic, the contest was the same as that which arises in the present case, namely between the date of a PCT filing (being 6 March 2015) and the date of filing of a divisional application for the patent in suit (being 7 November 2016): see [223]–[224]. Justice White rejected a submission based on Rescare that the relevant date was the filing date of the PCT application, noting that the position had been clarified by French and Lindgren JJ in Pfizer to the effect that the relevant date was the date of filing the complete specification: [228]–[229]. We respectfully agree.

218 Accordingly, in our view, the language of the relevant statutory provisions and the previous decisions of this Court support the conclusion that the relevant date for ascertaining the patentee’s knowledge of the best method is the date of filing the complete specification for the patent in suit, not the earlier date of a PCT specification. In the present case, the operative dates are the dates on which the specifications for the Patents were filed, namely 20 February 2020 (for the 223 Patent), 29 October 2021 (for the 059 Patent) and 25 February 2022 (for the 338 Patent).

219 Finally on this topic, the parties advanced what could be described as various policy arguments that were said to support their competing positions. We do not need to delve into these arguments in any detail given our clear view as to the proper construction of the statutory provisions. But there is some force in B&W’s policy arguments supporting the construction that it has advanced and we have preferred.

220 As B&W points out, it is only at the time of filing a divisional application that an applicant defines the monopoly sought in a divisional. Further, a valid divisional application need only include one claim which is entitled to claim priority from its parent; this claim may ultimately need to be different to that claimed and granted in the parent to avoid a s 64(2) concern. But s 79B does not preclude the divisional application also including other claims that are not clearly disclosed in the parent, although the price to pay for including these other claims would be a later priority date (ss 43(1) and (4)). Further, s 79B does not prohibit disclosure in a divisional application of matter that extends beyond that disclosed in its parent; there is not such a prohibition as exists in other albeit different contexts such as addressed in s 102(1).

221 All of these points support the notion that the disclosure required by s 40(2)(aa) is concerned with the later filing date being the filing of the divisional applications containing the complete specifications and what is known by the applicant of those applications at that time to be the best method.

222 Moreover, we agree with B&W that to use such a time of filing does not create any unjustifiable asymmetrical burden as NOCO would have it. NOCO through the divisional applications has claimed an enlarged monopoly as compared with that claimed in PCT 434. The relevant claims in PCT 434 were limited to a jump starter with an FET switch and two sensors. Further, NOCO discovered that such a switch was unreliable and removed such a limitation from the relevant claims in the specifications in the divisional applications but did not disclose that a different switch ought to be used. We agree with B&W that there is nothing unjustifiably asymmetrical about requiring NOCO to make a disclosure corresponding to the enlarged monopoly claimed in the divisional applications. Indeed, not to require such disclosure at the later time would seem to be at odds with the policy underpinning s 40(2)(aa) and would allow NOCO to withhold knowledge of the best method known at that later time.

223 But whatever the policy arguments, our construction is consistent with the statutory language and the authorities.

Response to the Notice of Contention

224 NOCO has filed a Response to the Notice of Contention to the effect that, if we were to find that the relevant date for assessing the knowledge of NOCO for the best method issue was the filing date of each of the divisional applications for the Patents, then NOCO contends that the primary judge should have found that B&W had not established that NOCO had failed to disclose the best method known to it of performing the invention at those dates.

225 NOCO did not address this issue orally, and its written submissions were perfunctory, consisting of a single paragraph of eight lines with no references to the evidence. That paragraph raises two contentions. First, NOCO submits that the primary judge’s findings were not as to the best method of performing the invention, in that it is submitted the invention was not as to the type of power switch. Second, NOCO submits that the primary judge should in any event have found that the matters relied on involved refining the type of switch in a commercial embodiment, which NOCO submits is not in the nature of the best method to be disclosed. NOCO relies for that second submission on the reasoning in GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Generic Partners Pty Ltd [2018] FCAFC 71; (2018) 264 FCR 474 at 203, in which it was found that the best method did not extend to the more detailed but inessential manufacturing and production information applicable to the commercial embodiment.

226 We have referred above to the primary judge’s findings concerning problems in relation to the battery and the switch for the GB30 product, and improvements which NOCO made to address those problems in late 2014 and early 2015.

227 As to NOCO’s first submission, the primary judge (in our view correctly) did not characterise the invention as a type of power switch. The power switch was, however, one of the features of the claimed invention as a combination of integers, and thus its selection was part of the best method of performing the invention. As to NOCO’s second submission, the evidence of Mr Stanfield (one of the named inventors) was that the increased battery size in conjunction with other improvements generated significant improvements in product performance (T262.24–26, 263.8–11, 265.12–18, 283.41–42 and 290.24–40), and the relay provided a higher efficiency level which minimised power losses (T268.31–42). These features were not inessential product information (contrary to NOCO’s submission), but were improvements to the two core features of the device. The relevant expert witnesses agreed that the two main or key components of a jump starter product were the battery and the power switch (Professor Holmes at T819.22–33; Mr Wilson at T837.45–838.8 and 839.31–38).

228 Accordingly, the primary judge was correct to find in B&W’s favour on the factual question whether NOCO failed to disclose the best method known to it as at each of the filing dates of the Patents.

Conclusion on Best Method

229 It follows that the specification for each of the Patents does not comply with the requirement in s 40(2)(aa) to disclose the best method known to the applicant of performing the invention. That is a further ground on which the Asserted Claims are invalid and should be revoked.

Notice of Cross-Appeal

230 B&W has filed a Notice of Cross-Appeal in which it contends that if we hold that each of the Patents does not disclose the best method known to NOCO of performing the invention, then the primary judge erred in the Costs Judgment by reducing the costs payable by NOCO to B&W on account of the best method issue.

231 In the Costs Judgment, the primary judge ordered NOCO to pay 80% of B&W’s costs. The reduction of 20% was attributable to NOCO’s success on (a) three of the construction and associated infringement issues, (b) the issues in relation to a piece of prior art which was abandoned by B&W late in the trial, and (c) the best method issue.

232 In light of our conclusion that B&W should have succeeded on the best method issue, the reduction of 20% should be adjusted to reflect NOCO’s success only on the other two matters. In our view, the appropriate reduction should be 15% rather than 20%, and thus the costs order made by the primary judge should be varied such that NOCO should pay 85% of B&W’s costs at first instance.

Other alleged grounds of invalidity

233 B&W also raises in its Notice of Contention two further grounds of invalidity, namely (i) that none of the Asserted Claims are supported by matter disclosed in the Patents as required by s 40(3) (Ground 2), and (ii) that Claims 21 to 23 of the 059 Patent and all of the Asserted Claims to the 338 Patent (except Claims 2, 17, 20, 24 and 32), are not a patentable invention within the meaning of s 18(1)(c) as they are not useful (Ground 4).

234 It was not necessary for the primary judge to deal with those grounds in light of his Honour’s findings on lack of inventive step, and the primary judge did not do so: PJ [399]. We regard it as appropriate to take the same course.

Conclusion

235 It follows that the appeal should be dismissed. In relation to the cross-appeal, the costs order of the primary judge should be varied such that NOCO should pay 85% of B&W’s costs at first instance. NOCO should pay B&W’s costs of the appeal.

| I certify that the preceding two hundred and thirty-five (235) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justices Beach, Downes and Jackman J J. |
Associate:

Dated: 10 April 2026

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Named provisions

Patents Act 1990 (Cth) s 40(2)(aa)

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April 10, 2026

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Classification

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FCAFC

Filed

April 10th, 2026

Instrument

Enforcement

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Final

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Substantive

Document ID

[2026] FCAFC 44

Docket

VID 1188 of 2025

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Patent holders Manufacturers Legal professionals

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3341 Computer & Electronics Manufacturing

Activity scope

Patent litigation Patent validity challenge Patent enforcement

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Australia AU

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Intellectual Property

Operational domain

Legal

Topics

Civil Rights Judicial Administration

NOCO Company v Brown and Watson International - Full Federal Court Upholds Patent Infringement Ruling

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