Pilkin v Sony Australia Limited

Consideration 40 We do not accept the applicant's analysis of the complete specification as filed or of the amendments made on 11 July 2014. As will be apparent from the highlighted passages quoted at [37] and [38] above, the applicant's reading of the complete specification as filed is selective and fails to have regard to its syntax, in particular by failing to recognise antecedent characterisations of the joystick by reference to its location on the body of the device. These characteristics are limiting features of the invention that is disclosed. By not securing these limitations in the amended claim, the scope of the claimed invention has now been broadened. In the language of s 102(1) of the Patents Act, the result of the amendments is that the specification, as amended, claims matter that extends beyond the disclosures of the complete specification as filed. Thus, s 114(2) of the Patents Act and reg 3.14 of the Patents Regulations are engaged, with the result that the priority date of the claim is 11 July 2014. That being so, the invention cannot be novel in light of the prior public availability of the PS Vita console in Australia before the priority date and the amended claim cannot support a viable cause of action for infringement. 41 This was, in substance, the reasoning of the primary judge. There is no error in his Honour's finding as to the correct priority date or as to the validity of the amended claim. It follows that the primary judge did not err in the discretion he exercised to give judgment in favour of the first and fifth respondents under s 31A(2) of the Federal Court Act. For this reason, the first and fourth grounds of the proposed appeal cannot succeed. To the extent that the second ground of the proposed appeal (which pleads that the primary judge erred in finding that the patent lacks novelty) is to be taken as extending to the issues raised by the deferral of the priority date, that ground, too, cannot succeed.

Novelty in light of Case 42 Given the conclusions we have reached on the first and fourth grounds of the proposed appeal, the second ground, based on a consideration of Case, does not arise. Even if an arguable case of error in the primary judge's analysis of Case is demonstrated - thereby revealing arguable error in the exercise of his Honour's discretion in giving judgment in favour of the first and fifth respondents under s 31A(2) of the Federal Court Act on that basis - this would be to no avail; the amended claim would be invalid regardless of whether its validity could also be impugned by the prior publication of Case. However, in deference to the submissions advanced by the applicant, we make the following comments. 43 Case discloses nine electronic devices which, as described and illustrated, differ in their design and application significantly. In his summary of its disclosures, the primary judge referred to two such devices. The first was a handheld input device, illustrated in figs 1A and 1B. The second was a laptop computer, illustrated in fig 9. The primary judge noted that, as described and illustrated, neither device had a joystick. However, [0067] of Case said: In any of the implementations of the invention, the display may also be touch sensitive to provide input more (sic) modes and flexibility. As described throughout, the touchpad may correspond to a full keyboard. A joystick or thumb controller may also be added to provide free motion cursor operation. 44 After discussing the principles relevant to anticipatory disclosure, the primary judge said: [50] In my opinion, the Case application disclosed all of the integers of the invention in the claim made in the patent in suit. That is because the Case application disclosed the use of a touch screen device having a front and rear face or side, that was an electronic device in an arrangement with a joystick. Thus, the Case application disclosed the entire subject matter of the invention that is claimed in the patent in suit. A person skilled in the art, who was willing to make trial and error experiments, to get it to work, would have been able to produce from that disclosure an article the subject of the sole claim on which Mr Pilkin relies. [51] Indeed, the arrangement that the patent in suit claimed involved elements that were well-known to persons in the art, as the definitional provisions in the PCT application confirmed. The real substance of the claimed invention consisted of what was already disclosed in the Case application, namely, an arrangement that allowed the ability to integrate, in one electronic device, a screen that faced the user and, on the non-facing side of the device, a touch screen, or touchpad, together with an optional arrangement incorporating, at any location, a joystick that could control at least one virtual symbol or graphical object on the display. Accordingly, the Case application disclosed the essential integers that are the same as those in the claim subsequently made by the patent in suit. 45 The applicant mounted a number of arguments as to why Case could not be an anticipatory disclosure. He submitted, firstly, that there was no clear and unmistakable disclosure of a device which had all the features of the invention claimed in the amended claim. Secondly, with reference to the handheld device and the laptop computer noted by the primary judge, the applicant submitted that neither device, as described and illustrated, clearly and unmistakably disclosed all the features of the invention claimed in the amended claim, even if one were to read in the presence of a joystick in each device. 46 These arguments are cogent and persuade us that the question whether Case is an anticipatory disclosure of the invention as claimed is contestable, and one of substance. 47 We also note that central to the primary judge's reasoning was his finding (at [50]) that a person skilled in the art, who was willing to make trial and error experiments, would have been able to produce from Case an article the subject of the amended claim. We observe that this finding was made without evidence and is more aptly directed to an enquiry about whether the invention, as claimed, lacked an inventive step: see s 7(3) of the Patents Act. This was not the ground of invalidity on which the first and fifth respondents relied. Indeed, s 7(3) does not concern an innovation patent. 48 On balance, we do not think it can be said that the applicant had no reasonable prospect of successfully prosecuting his claim for infringement, had the only challenge to the validity of the amended claim been one based on the prior publication of Case. Thus, to this extent, the discretion exercised by the primary judge under s 31A(2) of the Federal Court Act miscarried. However, as we have said, this is to no avail because of our findings in respect of the first and fourth grounds of the prospective appeal.

Service out of the jurisdiction 49 As with the second ground of the proposed appeal, the third ground does not arise for consideration given our findings in relation to the first and fourth grounds. 50 The primary judge said that he would refuse leave to serve the second respondent, Sony LLC, out of the jurisdiction for the reason that the applicant had not established a prima facie case for relief against that party. This finding was based on the evidence before the primary judge on this question. 51 The case alleged against the second respondent was that, from at least 22 February 2012, it was the manufacturer of PS Vita consoles and that it had kept for sale; offered for sale; and authorised the third respondent, Sony Interactive Entertainment Europe Limited, to sell the consoles in Australia. 52 The first difficulty with the applicant's case was that the second respondent was incorporated in 2016 and, therefore, could not have been the manufacturer of the PS Vita consoles, or authorised the third respondent to sell the consoles, from at least 22 February 2012. The second difficulty was that the applicant's case was based on revelations made in a press release, which announced the formation of the second respondent. The applicant argued that the press release evidenced the fact that the second respondent was the assignee of another Sony company, referred to in the press release as Sony Computer Entertainment Inc (now called Sony Interactive Entertainment Inc (SIE Inc)) and that the second respondent was now responsible for manufacturing the PS Vita consoles and their supply. This, according to the applicant, enabled the second respondent to be treated as the manufacturer of the consoles from the earlier pleaded date. 53 The primary judge rejected that argument, finding (at [58] - [59]): [58] That argument has no basis. In my opinion, the press release can only reasonably be understood as announcing that the formation of Sony LLC would effect a corporate reorganisation that would impose Sony LLC as the company controlling, in one location, or through one head office, the worldwide operations of a variety of related companies within the Sony group and, in that position, Sony LLC would coordinate the other companies' manufacture, sales and marketing of the PlayStation products. There is no textual basis for supposing, in the absence of any other evidence, that SIE Inc had ceased to manufacture the accused product, particularly having regard to SIE Inc's retention of ownership of the trademark for the subsequent three years after the introduction of Sony LLC. [59] Accordingly, I am not satisfied that Mr Pilkin has established a prima facie case warranting service out of the jurisdiction under r 10.43(4)(c). That is because the material before me does not supply a sufficient basis on which it would be reasonable to infer that, first, Sony LLC is, or has become, the manufacturer of the accused product or, secondly, it has somehow assumed obligations for SIE Inc's alleged infringement that arose from sales prior to Sony LLC's incorporation. 54 Having considered the same evidence that was before the primary judge, we see no error in his Honour's findings or conclusion. Therefore, this ground of appeal could not succeed. 55 For completeness, we also note that the primary judge discussed the claim made against the fourth respondent, Sony Interactive Entertainment Network Europe Ltd, also an overseas corporation. The primary judge did not consider it necessary to consider the position of that respondent in light of the other findings made in respect of the validity of the amended claim. As we are satisfied that the primary judge did not err in finding that the applicant's case on infringement could not succeed because of the deferred priority date of the amended claim, we see no error in the primary judge not considering, further, the position of the fourth respondent.

Disposition 56 For the above reasons, the applicant's proposed appeal could not succeed based on the first, third and fourth grounds. The second ground, to the extent that it relates to the primary judge's findings in relation to Case, could not result in the granting of any relief having utility if leave were to be granted in respect of that ground and the appeal allowed to that extent. Therefore, the appropriate course is to refuse leave to appeal. 57 The applicant should pay the first and fifth respondents' costs. I certify that the preceding fifty-seven (57) numbered paragraphs is a true copy of the Reasons for Judgment herein of the Honourable Justices Greenwood, McKerracher and Yates.

Associate: Dated: 3 April 2020 SCHEDULE OF PARTIES NSD 938 of 2019 Respondents Fourth Respondent: SONY INTERACTIVE ENTERTAINMENT NETWORK EUROPE LIMITED Fifth Respondent: SONY INTERACTIVE ENTERTAINMENT AUSTRALIA PTY LIMITED