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

In broad terms, each of the Patents relates to a jump starter apparatus for boosting a depleted or discharged battery (eg, a car battery). The specifications of each of the Patents are in substantially the same terms aside from the consistory clauses. In each specification, in the section dealing with the background to the invention, the following problem is outlined at [0003]:

The NOCO Company v Brown and Watson International Pty Ltd [2025] FCA 887 | Case summary | Zoe

[25]

[0014] 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 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 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.

[0015] In accordance with an embodiment described herein, the internal power supply is a rechargeable lithium ion battery pack.

[0016] 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.

(Emphasis added.)

[40]

[0028] 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.

[0029] 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.

[57]

The hearing, which was on liability only, occupied ten days.
Originally, this proceeding (VID 264 of 2023) was due to be heard together with The NOCO Company v Hong Kong Haowei Technology Co., Ltd. (VID 122 of 2023) (the Carku proceeding). However, that proceeding settled on 6 February 2025, shortly before the hearing was due to commence.
The Carku proceeding concerned the same patents as this proceeding and included a cross-claim alleging invalidity of the Patents. There was considerable overlap in the grounds of invalidity, but there were some differences. Prior to the settlement, the parties in both proceedings filed their opening submissions in chief (both on infringement and invalidity). In preparing those submissions, B&W and the Carku parties divided responsibility for the invalidity case. In other words, some grounds of invalidity were dealt with in the submissions of one party rather than by both parties.
Following the settlement of the Carku proceeding, B&W adopted some of the grounds of invalidity that the Carku parties had relied on as part of their case, but which had not formed part of B&W's case. This was reflected in a document titled "Consolidated Particulars of Invalidity" dated 6 February 2025, which made clear which grounds of invalidity B&W relied on in this proceeding. B&W also adopted some of the submissions made by the Carku parties in their outline of opening submissions.
In relation to the best method ground, the parties proceeded on the basis that the contentions and submissions comprise or include material that is commercially sensitive. Accordingly, the Consolidated Particulars of Invalidity set out the details of this ground in a confidential annexure. The parties' outlines of submissions similarly deal with this ground in confidential sections. In these circumstances, the parts of this judgment dealing with factual issues concerning the best method ground will be redacted for an initial period of time. The parties will be given the opportunity to apply for a further suppression or non-publication order in respect of that part of these reasons.
NOCO relied on evidence from the following lay witnesses:

[59]

Mr Stanfield was cross-examined during the hearing. Neither Mr Adkins nor Ms Baker was required to attend for cross-examination.
Mr Stanfield was a good witness. He gave clear answers to questions and accepted propositions without regard to whether they helped or harmed NOCO's case. He was careful and considered. I generally accept his evidence. Where there are differences between his affidavit and oral evidence, I prefer his oral evidence.
B&W called expert evidence from Mr Jonathan (Jo) Banks, an industrial designer. Although Mr Banks was put forward as an independent expert, he had worked for B&W for many years. I would therefore not regard him as independent. However, I accept that he has considerable experience and expertise as an industrial designer. Mr Banks was cross-examined.
Mr Banks was a good witness. He answered questions clearly and succinctly. He was precise in his answers. He gave evidence in a straightforward way and made appropriate concessions. I will consider his evidence later in these reasons.
Both parties called evidence that comprised the translation of certain documents from the Chinese (Mandarin) language to the English language.
NOCO called evidence from Dr Xiangtong Xu, a registered Chinese patent attorney. Dr Xu prepared two affidavits, which went into evidence. Dr Xu was not required for cross-examination.
B&W called evidence from Ms Yang Liu, a registered Chinese patent attorney. Ms Liu's evidence comprised a translation of Chinese Patent Utility Model Patent CN202696190 (CN190), which was published on 23 January 2013. In its opening submissions, B&W relied on CN190 as prior art for the purposes of its lack of novelty and lack of inventive step grounds. Ms Liu gave evidence by video-conference with the assistance of an interpreter. Ms Liu was cross-examined by one of the junior counsel for NOCO. Following the cross-examination (and, I infer, in light of it) B&W abandoned reliance on CN190. Accordingly, CN190 and Ms Liu's evidence can be put to one side.
Each party called an expert witness in relation to electrical engineering and power electronics issues. The experts were:

[64]

Professor Holmes is an Honorary Professor of Smart Energy Systems at RMIT University, Melbourne. He has held that position since retiring as Professor of Smart Energy Systems at RMIT in 2020. Professor Holmes's qualifications and experience are set out in Section B of his affidavit dated 6 September 2024 (Holmes 1). In that section, Professor Holmes states that he is an electrical engineer and that electrical engineering encompasses a range of specialties and sub-areas. Since 1984, he has specialised in power electronics, which is an area of electrical engineering that deals with the control and conversion of electrical energy, and the design of electrical circuits to achieve that control and conversion. Professor Holmes's relevant experience, as detailed in Section B of that affidavit, is extensive.
Each of the experts prepared a number of affidavits.
A process was put in place for the preparation of a joint expert report. This process included the expert witness to be called by the respondents to the Carku proceeding, Professor David Ricketts. The three experts - Mr Wilson, Professor Holmes and Professor Ricketts - prepared a joint expert report dated 23 January 2025 (the Joint Expert Report). In circumstances where, because of the resolution of the Carku proceeding, Professor Ricketts was not called to give evidence, an evidentiary issue arose in relation to the parts of the report that were authored by Professor Ricketts. These fall into two categories: in some places, opinions are expressed by Professor Ricketts individually; in other places, opinions are expressed by Professor Ricketts together with one or both of Mr Wilson and Professor Holmes. While it was a straightforward matter simply to not admit into evidence the opinions expressed individually by Professor Ricketts and to treat jointly expressed opinions as the opinions of Mr Wilson or Professor Holmes or both (as applicable), in some cases the opinions expressed individually by Professor Ricketts provided context for opinions expressed by the other experts. In light of this, I made a ruling pursuant to s 136 of the Evidence Act 1995 (Cth) that the Joint Expert Report be admitted into evidence subject to the limitation that all statements attributed to "Professor Ricketts" or "DR" (or "the Experts" to the extent it is a reference to Professor Ricketts) be admitted solely for the purpose of providing context for any response to such statements provided by another expert or experts.
Mr Wilson and Professor Holmes gave evidence concurrently during the hearing, over four days. The evidence was structured around a series of topics, as agreed between the parties. Both experts gave evidence in a careful and considered way. Both had a command of the subject matter and were of considerable assistance to the Court.

[71]

(a) Integrated circuits (IC), a semiconductor (typically silicon) bearing many transistors and other electronics on a single "wafer" or "board".

(b) Control circuitry, being the circuit components which handle the processing of inputs and outputs. The most common "programmable" ICs, by the asserted priority date, were microprocessors (sometimes called microcontrollers or MCUs), being digital electronic circuits built into an IC that would be programmed to execute software.

(c) Transistors and switches, being the components used to close (i.e., connect) or open (i.e., disconnect) an electrical circuit (or portion thereof). Switch circuitry controls the flow of energy by withstanding voltage when turned "off" and conducting current when turned "on". Necessarily, this requires such components to withstand the maximum voltage and current of a product. At the asserted priority date, relevant switches included: (i) solenoids (also called relays), which provided robust switching, but were relatively large and slow; and (ii) semiconductor switches, including field-effect transistors (FET), which could switch faster and were smaller and lighter than solenoid switches.

(d) Sensors and sensing circuits, which are used to measure a parameter, commonly voltage and current (as a direct value and as a proxy for other parameters), and provide an input to an electrical circuit. Voltage and current are both analog signals. At the asserted priority date, the measurement of those signals typically involved electrically isolating the signal, conditioning the signal to a reduced voltage or current suitable for control circuitry, and then converting the analog signal to a digital signal to be "read" by a microcontroller. It was common to measure voltage by using: (i) an optical isolation structure (to isolate the power circuit from the control circuit); or (ii) a resistor divider (to reduce the measured voltage without isolation). It was common to measure current by using a Hall-effect sensor (a device that detects magnetic fields produced by current, with the magnetic field changing as a current changes). There were a very large number of sensors available at the asserted priority date that were purpose built for particular sensing operations.

(e) Isolation components, being components which allow a signal to be transferred between circuitry, without an electrical connection. At the asserted priority date there were a range of isolation components that were commonly used in power electronics circuits. A particularly common isolation component was an optocoupler, being a device with: (i) a light emitting diode (LED), connected to the circuit that is to transmit a signal; and (ii) a phototransistor, which is connected to the circuit that is to receive a signal. If the LED is illuminated, the phototransistor will turn on in response, allowing a signal to transfer from the circuit connected to the LED to the circuit connected to the phototransistor, without an electrical connection between the two.

(f) Power converters, being the electrical components which convert one voltage or current to another voltage or current, including where necessary converting from AC to DC (and vice versa). There were step down or buck converters (where the output voltage was lower than the input voltage) and step up or boost converters (where the output voltage was higher than the input voltage). A common type of power converter was a DC-DC converter.

(g) Analog to digital converters (being the circuitry used to convert a variable analog signal into a binary value) and digital to analog converters (vice versa).

(h) Batteries, being remote energy sources that allow a power electronics circuit to be used when disconnected from a fixed electrical circuit. It was common general knowledge that: (i) power generated by batteries is always DC (and so must be converted to AC where the load being powered requires AC power); (ii) batteries can be single use or rechargeable; and (iii) two common battery chemistries in power electronics were lead acid batteries and lithium-based batteries. 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 (thereby enabling the use of smaller and lighter batteries). To charge a rechargeable battery, it was known that DC current must be used and that as the charge of a battery increases, so does its voltage (such that level of charge can be measured by sensing voltage). Battery control circuitry was commonly used (often in the form of "off-the-shelf" ICs and microprocessors) to: (i) take measurements indicating the status of a battery; (ii) manage the charging process; (iii) prevent excessive charging; and (iv) prevent the battery from discharging too much power.

(i) Connection components, being the components used to electrically connect a power electronics circuit to another circuit. Such connections could be permanent (eg, soldered) or temporary (i.e., "quick fit" connections, such as three-pin wall connectors, USB connectors, and alligator clips).

[76]

(i) the proper construction of a specification is a matter of law: Décor Corporation Pty Ltd v Dart Industries Inc [1988] FCA 399; (1988) 13 IPR 385 at 400;

(ii) a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331; [2000] FCA 890 at [81] (Flexible Steel Lacing); and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1; 177 ALR 460; 50 IPR 513; [2001] HCA 8 at [24];

(iii) the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corporation Pty Ltd at 391;

(iv) while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd [1973] HCA 1; (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 4 All ER 221 at 224-5; (1938) 56 RPC 23 at 39;

(v) experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning_: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd_ [1994] FCA 1529; (1994) 30 IPR 479 at 485-6 (Sartas No 1 Pty Ltd); the court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberley-Clark v Arico at [24]); and

(vi) it is for the court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd at 485-6.

[87]

Construction issue 1 (as identified by NOCO) relates to integer 1.6.2 in Claim 1 of the 223 Patent (and comparable wording in other asserted claims). That integer requires the control system or circuit to be configured "to detect polarity of the depleted or discharged battery when connected between the positive and negative battery connectors". In B&W's opening submissions on infringement (which deal with construction issues) this construction issue is discussed in terms that relate to integer 1.6.1 as well as 1.6.2. Integer 1.6.1 requires the control system or circuit to be configured "to detect presence of the depleted or discharged battery when connected between the positive and negative battery connectors".
There is a lack of clarity in the parties' submissions as to the identification of this issue.
NOCO's submissions are directed to whether detection of polarity is to occur regardless of whether the connectors are connected.
B&W submits that "when connected" is a temporal limitation that requires the control system, circuit or sensors (depending on the particular claim) to be configured to make the specific detections (i.e. present or not, correct polarity or not) at the time specified in the asserted claims. However, B&W submits, the asserted claims do not assume battery presence. B&W submits that: the asserted claims are directed to an apparatus, not a method; the control system, circuit or sensors of that apparatus must be "configured" to make the specified detections; the asserted claims encompass such an apparatus, irrespective of whether it is, in fact, connected to a vehicle battery. In B&W's closing propositions (at [8]) and in its closing oral submissions (at T881) it seemed to be making a different point, namely that a reasonable construction of "when connected" is "upon and while connected", thus including the time after switch closure.
In relation to whether the vehicle battery needs to be connected at the time of detection for the purposes of integer 1.6.2, in my view, the answer is Yes. This is clear from the words "when connected" in integer 1.6.2. Further, as a matter of practicality, detection of polarity can only occur when the vehicle battery is connected. This conclusion is supported by the opinion of both experts expressed in the Joint Expert Report, Section A, page 3, lines 86 to 88, where they state:

[100]

(a) Each of those claims requires that it is the "control system or circuit" which must switch on the power switch. The claims require that this occur "when" two antecedent conditions are satisfied. For example, the claims do not contemplate (or permit) that the power switch is to be turned on by some manual act of (and at the discretion of) a user of the jump starter apparatus, at a time after the requisite conditions are satisfied. In that case, the power switch will have failed to have been turned on for a period "when the depleted or discharged battery is present and properly connected", contrary to the requirements of the claims.

(b) If, contrary to the above, the word "when" in the claims was construed to mean "at any point in time when", then the claims would encompass jump starters that only switched on for a period of time which, for example, was insufficient to jump start a vehicle. The claims should not be construed to encompass inutile products if they can be construed in a way which avoids this.

(c) To construe Claims 1 and 21 as requiring the control system or circuit to automatically switch on the power switch when the depleted or discharged battery is present and properly connected is consistent with the specification, which explains that it is the MCU (i.e., control system) which determines whether to close the FET switch based on the inputs received from reverse sensor 10 and battery isolation sensor 12. In the event that the MCU receives a "1" signal from the reverse polarity sensor and a "0" signal from the battery isolation sensor, the MCU output will be "driven to a logic high" which will place the FET switch "in a low resistance state, allowing current to flow" (emphasis added). This occurs based only on the binary inputs received from reverse sensor 10 and battery isolation sensor 12 - the switch turns on automatically once those inputs are received.

(d) Both experts agree that there is no disclosure in the body of the 223 Patent (or the body of the 059 Patent or the 338 Patent) of a jump starter apparatus which "does not turn 'on' immediately under normal operating conditions ... upon the control system or circuit detecting the vehicle battery being properly connected". To construe the claims otherwise would be to introduce a lack of support.

(e) A construction which requires the control circuit or switch to automatically turn on is also consistent with the language used in the dependent claims of the 223 Patent, including Claim 2 ("...the control system or circuit does not switch on the power switch..."), Claim 3 ("...wherein the control system or circuit is configured to detect ... prior to turning power on ...") and Claim 8 ("... wherein the microcontroller switches the power switch on ... only when..."). By contrast, NOCO's construction would render Claims 2, 3 and 8 redundant.

(f) Thus, all claims of the 223 Patent require that the power switch will be turned on immediately upon a vehicle battery being detected as being present and properly connected to the jump starter.

[101]

In the Joint Expert Report, Section A, pages 7 and 8, Professor Holmes identifies three groups of claims, which he labels (i), (ii) and (iii). Claim 1 of the 223 Patent is in group (iii). He expresses the opinion that the claims in groups (ii) and (iii) "require that as soon as an (undefined) battery connection has been established for the claims in (ii), or a 'proper' battery connection has been established for the claims in (iii), the power switch will be turned on immediately thereafter". He refers back to Holmes 3, Section D.2.
Contrastingly, Mr Wilson expresses the opinion (in Section A of the Joint Expert Report, page 9) that Claim 1 does not require, "implicitly or explicitly, that the control system automatically switch on the power switch when the stated conditions are satisfied". He expresses the opinion that the wording of the relevant claims "indicates that the conditions are necessary for the action (the power switch closing), but it does not imply that the switch must automatically close once the conditions are met. Other factors could still prevent the switch from closing". Mr Wilson expresses the same view in relation to Claim 21, notwithstanding the difference in wording ("when, and only when").
During the concurrent evidence session, the experts were questioned on the Automatic Start issue. Professor Holmes was questioned at T457-501 and maintained the position he expressed in the Joint Expert Report. At T493, he said that he interpreted the words "only when" in [0025] of the specification of the 223 Patent (which relates to the preferred embodiment) as meaning "upon".
Mr Wilson was questioned about this issue at T527-549 and T552-554. Mr Wilson appeared to make concessions in relation to Claims 1, 2 and 36 of the 338 Patent (at T531-533). Further, he conceded that [0025], [0026], [0029] and [0030] of the specification of the 223 Patent (which relate to the preferred embodiment) describe the MCU acting automatically in response to the detection signals (T538, 542-544, 546).
In my view, and notwithstanding the opinion of Professor Holmes to the contrary and the concessions made by Mr Wilson, integer 1.7 in Claim 1 of the 223 Patent does not require that the switch automatically turn on upon satisfaction of the preconditions in 1.7.1 and 1.7.2.
First, the words of integer 1.7 (in particular, "only when") do not naturally suggest a requirement that the switch automatically turn on upon satisfaction of the preconditions. Rather, they suggest that the switch will not turn on unless the preconditions set out in 1.7.1 and 1.7.2 are satisfied. That is different from a requirement that the switch will turn on upon, or immediately upon, satisfaction of the two preconditions.
Secondly, the problems that the invention is designed to address and the solution provided by the invention do not require automatic start. The problems are identified in [0003] of the specification and concern: (a) the terminals or clamps of the jumper cables inadvertently coming into contact with each other; and (b) the positive and negative terminals being connected to the opposite polarity terminals in the vehicle. The solution is achieved by preventing the switch from closing unless the preconditions in 1.7.1 and 1.7.2 are satisfied. The solution does not require that the switch turn on automatically upon satisfaction of the two preconditions.
Thirdly, the contrast between the language of Claim 1 and that of Claim 21 supports this construction. While Claim 1 (integer 1.7) uses the words "only when", Claim 21 (integer 21.7) uses the words "when, and only when". The latter wording, read in context, implies both: (a) if the preconditions are not satisfied, the switch will not turn on; and (b) if the preconditions are satisfied, and upon that satisfaction, the switch will turn on. Therefore, in my view, Claim 21 does require that the switch turn on automatically upon satisfaction of the two preconditions. The difference in language between Claims 1 and 21 supports the view that Claim 1 does not require automatic start.
Fourthly, it may be said that the preferred embodiment described in the specification is an apparatus in which the switch automatically turns on upon satisfaction of the two preconditions, in that it does not refer to user input to turn the switch on. However, the preferred embodiment includes a lithium battery temperature sensor, which detects overheating, such that the device does not switch on if overheating is detected. In any event, for the reasons set out above, I consider that Claim 1 does not require automatic start upon satisfaction of the preconditions in 1.7.1 and 1.7.2. As noted in NOCO's submissions, it is a well-established principle in claim construction that the claims should not be limited to the operation of the preferred embodiment.
I note for completeness that the words "in response to" appear in [0014] of the specification. These words may suggest automatic start. However, in any event, for the reasons given above, I consider that Claim 1 does not require automatic start.
Fifthly, in relation to B&W's contention that the non-automatic start construction would render Claims 2, 3 and 8 redundant, I reason as follows. I do not accept that that construction would render Claim 2 of the 223 Patent redundant. The preconditions in Claim 2 are expressed in negative rather than positive terms, creating a point of difference. In relation to Claim 3, it may be that that claim is redundant on the non-automatic start construction, but that would appear to be the case on either construction. In any event, I consider the textual factors set out above to be compelling and to be preferred to any redundancy of Claim 3 in the construction exercise. In relation to Claim 8, I do not accept that the non-automatic start construction would render the claim redundant. The claim introduces an additional integer, namely that it is the MCU that switches the power on.
For these reasons, I consider that integer 1.7 in Claim 1 of the 223 Patent does not require that the switch automatically turn on upon satisfaction of the preconditions in 1.7.1 and 1.7.2.
I will now address the other relevant claims of the 223 Patent. In doing so, I have had regard to the expert evidence and the parties' submissions to the extent that they touch on these claims. The other asserted claims of that Patent are 2-8, 11-14 and 16-21.

[106]

(a) Claim 1 refers to the power switch or switch circuit being configured "to switch power on ... when connected between the positive and negative battery connectors" (integer 1.5). The claim does not refer to there being a proper connection or detection of correct polarity (cf Claim 2 of this Patent). In the context of the specification as a whole, including the safety objects of the invention, I construe integer 1.5 as not requiring power to be switched on automatically upon there being a connection. I note also that this construction fits comfortably with Claim 2 of this Patent, which adds an "only when" integer.

(b) Claim 2 adds an "only when" requirement, providing that power is to be turned on "only when" the jump starting device is connected with correct polarity to the depleted or discharged battery. For similar reasons as for Claim 1 of the 223 Patent, I consider that this means that power is not to be turned on unless the precondition is satisfied; it does not require that power be turned on automatically upon satisfaction of the precondition.

(c) Claims 3-8 and 10-14 are dependent claims and do not introduce any additional relevant integers. Accordingly, they follow the claims discussed above.

(d) Claim 16 is a dependent claim (referring to the device according to any one of the preceding claims) that refers to a power switch or switch circuit being configured "to turn power on from the rechargeable battery to the depleted or discharged battery when connected to the positive and negative battery connectors". This wording is very similar to integer 1.5 of Claim 1 of this Patent. There is no reference to a proper connection or correct polarity. In my view, this claim does not specify the time when power is turned on; it merely states that power will be turned on when (in the sense of while) there is a connection.

(e) Claim 17 (which is a dependent claim) refers to detection of whether there is a proper connection "prior to" the power switch or switch circuit being turned on. This language does not require automatic start upon satisfaction of the precondition.

(f) Claims 18 and 19 (which are dependent claims) do not refer to power being switched on. They follow the outcome of the preceding relevant claims.

(g) Claim 20 is a dependent claim that uses the language of "only when". It is relevantly similar to Claim 2 of this Patent. For the same reasons, it does not require the rechargeable battery to be switched on automatically upon satisfaction of the preconditions.

(h) Claims 21-23 (which are dependent claims) do not refer to power being switched on. They follow the outcome of the preceding relevant claims.

(i) Claim 24 (which is a dependent claim) refers to the MCU switching the power switch or switch circuit on "only when" the depleted or discharged battery is determined to be present and connected with correct polarity. This claim is relevantly similar to Claim 2 of this Patent. For the same reasons, it does not require the MCU to switch the power switch or switch circuit on automatically upon satisfaction of the preconditions.

(j) Claims 25, 26 and 29-31 (which are dependent claims) do not refer to power being switched on. They follow the outcome of the preceding relevant claims.

(k) Claim 32 is a dependent claim that refers to the power switch or switch circuit being configured to switch power on "only when" the jump starting device is properly connected to the depleted or discharged battery. This claim is relevantly the same as Claim 2 of this Patent and the same reasoning applies. Accordingly, the claim does not require automatic start upon satisfaction of the precondition.

(l) Claims 33-35 (which are dependent claims) do not refer to power being switched on. They follow the outcome of the preceding relevant claims.

(m) Claim 36 is an independent claim. Integer 36.5 refers to the power switch or switch circuit being configured to switch power on "when connected between the positive and negative battery connectors". There is no reference to this being a proper connection and no reference to detection of proper connection or correct polarity. This claim is relevantly the same as Claim 1 of this Patent. In the context of the specification as a whole, including the safety objects of the invention, I construe integer 36.5 as not requiring power to be switched on automatically upon there being a connection.

[107]

This construction issue may be stated as: whether a device that can be operated in 'manual mode' (thereby allowing a user to use the device without resorting to some or all of the safety features) falls within certain of the asserted claims in the Patents. More specifically, the issue concerns a device that allows the user to turn the power switch on in circumstances where a depleted or discharged battery (i.e. vehicle battery) is not present or the voltage of the vehicle battery is so low that it is not detected as being present.
This issue does not apply to all of the asserted claims. It applies only to the asserted claims that use the "only when" language and those that use the "does not switch on" language. Thus, the issue 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: see B&W's opening submissions on infringement, [96] and T886. I will refer to these claims as the relevant asserted claims in this section of these reasons (i.e. the section dealing with construction issue 5(i)).
NOCO contends that the fact that a device can be operated in manual mode (as described above) does not mean that it falls outside the scope of the relevant asserted claims. B&W contends that such a device does not meet the requirements of the relevant asserted claims.
This issue is relevant for the infringement case, and arises in circumstances where the B&W impugned products have a manual override function: Holmes 3 at [55].
This issue is quite different from the Automatic Start issue. That 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 (eg, 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 (detection that a vehicle battery is present) falls within the scope of the relevant asserted claims.
NOCO's submissions can be summarised as follows. It should be noted that some of NOCO's submissions refer to "automatic mode". As I understand these submissions, "automatic mode" does not correspond with a requirement that the power switch turn on automatically upon satisfaction of a precondition or preconditions. Rather, NOCO uses the expression "automatic mode" to refer to the mode of operation of the device that is not manual mode.

[110]

(a) Claims 1 and 21 of the 223 Patent require that the "control system or circuit" switch on the power switch "only when" or "when, and only when" the "depleted or discharged battery is present and properly connected" (emphasis added).

(b) Claim 8 of the 223 Patent is expressed in relevantly identical terms, save that it is the microcontroller that "switches the power switch on ... only when" the vehicle battery is present and properly connected (emphasis added).

(c) Claim 2 of the 223 Patent is expressed differently and requires that the control system or circuit "does not switch on the power switch" if it is detected that the battery is "absent or not connected" or "is not connected with correct polarity" (emphasis added). This is merely the inverse corollary of that claim.

(d) A relevantly identical requirement appears in Claim 16 of the 059 Patent ("does not switch on") and Claims 2, 20, 24 and 32 of the 338 Patent ("only when").

(e) In all instances, the claim language is clear - the control system or circuit (including the microcontroller) must not switch on the power switch unless the stipulated antecedent conditions are satisfied.

(f) A control system or circuit which is able to turn on a power switch when a vehicle battery is not properly connected is not a control system or circuit which switches on that power switch "only when" that battery is properly connected. It is irrelevant, in this respect, whether the control system or circuit turns on the power switch automatically or otherwise.

(g) Further, it is irrelevant that manual override functionality is disclosed in the Patents. There are two key points in this respect. First, manual override functionality is not claimed. Notably, this is common ground between the experts. Secondly, and relatedly, B&W does not contend that manual override functionality is precluded by all of the asserted claims. Thus, the construction for which B&W contends does not result in the preferred embodiment falling outside of all of the asserted claims.

(h) Finally, it is irrelevant that the apparatus described in the Patents may be configured to operate in both automatic and manual modes. The claims identified above are directed to an automatic mode apparatus and expressly exclude an apparatus with a different mode of operation. An apparatus with a manual override mode contravenes the clear requirement of the relevant claims - it does not have a control system or circuit which switches on the power switch "only when" a vehicle battery is properly connected.

[113]

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).
In my view, 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 relevant asserted claims.
Taking Claim 1 of the 223 Patent as an example, 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). In my view, this integer means that the power switch is not to turn on unless that precondition is satisfied. 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.
NOCO's submission, as I understand it, is that a device that is capable of operating in two modes - automatic mode and manual mode - does not fall outside of the relevant asserted 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. On this submission, the manual mode may be conceived of as an additional feature. The difficulty with these submissions is that the wording of the relevant asserted claims ("only when") is essentially negative and unqualified (as described above). That is, 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. A device with that type of alternative operation is capable of operating inconsistently with that negative integer.
I acknowledge that, on the above construction, the preferred embodiment described in the 223 Patent would fall outside the scope of all of the claims in that Patent. (This would not be the case in relation to the 059 Patent and the 338 Patent, as some of the claims in those Patents are not affected by this issue.) I am conscious of 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. However, I consider the wording of integer 1.7 to be intractable. In my view, it is clear that it has the construction outlined above, and that a manual mode of operation is inconsistent with that integer.
For these reasons, I consider 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.
The same reasoning applies to the other relevant asserted claims.

[116]

These construction issues are conveniently dealt with together. The issue may be stated as: in relation to the asserted claims that refer to "USB charging port", "USB charging circuit", etc, whether these references encompass USB-C, which had not been released at the asserted priority date. NOCO contends that the relevant claims are not specific as to the type of USB and therefore include USB-C. B&W contends that the relevant claims do not include USB-C.
This issue is relevant to the infringement part of the case, as some of the B&W impugned products utilise USB-C.
The description of the preferred embodiment in the specification of the 223 Patent refers to the USB output circuit that allows for charging portable electronic devices at [0036] (set out at [40] above). The description of the preferred embodiment also refers to a USB charge circuit that allows the internal lithium battery pack to be charged using a standard USB charger at [0037] (set out at [41] above).
Claims 16, 17 and 18 of the 223 Patent, which use the expression "USB", have been set out at [45] above.
The expression "USB" is also used in the 059 Patent and the 338 Patent. All of the asserted claims of the 059 Patent require a "USB input charge circuit" and "USB input connector". All of the asserted claims of the 338 Patent require a "USB input connector" and a "USB charge circuit".
NOCO adopts Mr Wilson's opinions that the claims are not specific regarding the type of USB and that the claims use forward-looking language that allows for future advancements or changes: see the Joint Expert Report, Section A, page 18, lines 440 to 447.
B&W adopts Professor Holmes's opinions that the term "USB" refers to "standard USB connection types" available at the asserted priority date, including USB-A, Mini-USB and Micro-USB, and that "USB-C is a different type of connection to the set of standard USB-type plugs or sockets available" at the asserted priority date.
B&W submits that it is common ground between the experts that there are no USB-C input charging circuits, output circuits or connectors disclosed in the Patents; as such, if NOCO's construction were accepted, it would introduce a lack of support. On the basis of Professor Holmes's evidence, B&W submits that USB-C differs significantly (both in connector and electrical functionality) from the USB connections that were known and used in the field at the asserted priority date.
This issue is dealt with in the Joint Expert Report in Section A, pages 18 to 20.
Professor Holmes states that the earliest standard for USB-C was published on 11 August 2014 (that is, after the asserted priority date). There does not appear to be any dispute about this, and I accept it.
As set out in the Joint Expert Report, both experts agree that the term "USB Input Connector" means the mechanical structure that mates/connects to the physical structure of an incoming USB cable to create an electrical connection between the pins of the Input Connector and the incoming cable; the term "USB Input Socket" can be used interchangeably with the term USB Input Connector.
Further, the experts agree that the term "USB Charging Port" is a broader definition that includes the USB Input Connector and all associated circuitry and wiring connections that are necessary to enable USB power to be supplied to the internal circuitry of the apparatus from an incoming cable.
The experts also agree that the term "USB Output Connector" means the mechanical structure that mates/connects to the physical structure of an outgoing USB cable to create an electrical connection between the pins of the Output Connector and the outgoing cable; the term USB Output Socket can be used interchangeably with the term USB Output Connector.
The experts agree that the term "USB Output Circuit" defines the circuitry that is required to support the functionality of the USB Output Port (see below). This includes circuitry to create a regulated 5V output supply, output overcurrent protection and whatever other functionality is required to supply power to equipment that connects to the USB Output Connector.
The experts agree that the term "USB Output Port" is a broader definition that includes the USB Output Connector, the USB Output Circuit and any other circuitry and wiring connections that are necessary to allow equipment to be powered by connection to the USB Output Connector.
Mr Wilson was questioned on this topic at T555-557 and T593-594. He accepted that, as at the asserted priority date, although he was aware of the potential of USB-C, the actual specification had not been released and he was not aware of the number of pins it would have.
Professor Holmes was questioned on this issue at T559-590. Professor Holmes was taken to Holmes 1, where he referred to "quickfit connections" and explained that this is an umbrella term used to describe connectors that can be connected and removed easily without requiring a tool. Professor Holmes explained in his oral evidence that an input port provides power into the device and an output port is a means by which the device provides power to something else (eg, to charge a phone) (T563). Professor Holmes accepted that the definitions of terms relating to USB in the Joint Expert Report identified USB in broad functional terms (T569). Professor Holmes stated that USB-C is a completely different pin structure, a completely different connection arrangement; he said that you cannot plug a USB-C plug into a USB-A outlet (T574).
Professor Holmes was taken to the "Universal Series Bus Type-C Cable and Connector Specification", Revision 1.0, 11 August 2014 (CB, tab 213). He said that he was not familiar with the document (T576). (Later, Mr Wilson said that he was not familiar with it either: T593). In the absence of considered expert evidence about this document, I am not able to draw much assistance from it.
Professor Holmes accepted that, as of 2014, a primary function of USB-A was providing power to another device (T589). He also accepted that USB-C can provide that function (T589-590).
The parties approached this issue on the basis that it is to be resolved in the same way in relation to all expressions including "USB" across all three Patents. I consider that approach to be correct. There does not appear to be any basis to distinguish between the various expressions that contain "USB".
In my view, the expressions that contain "USB", such as "USB charging port" in Claim 16 of the 223 Patent, "USB charging circuit" in Claim 17 of the 223 Patent, and "USB input charge circuit" in Claim 1 of the 059 Patent, are referring to a type or category of quickfit connection, rather than to the specific ports, charging circuits, etc that were in use at the asserted priority date. More specifically, "USB" is a type of quickfit connector defined by specifications published from time to time and recognised within the field of power electronics as the specifications to which USB products are to conform. Accordingly, there is some capacity for new technology or specifications to be developed after the asserted priority date and to still fall within the type or category referred to as "USB" in the Patents. The real issue is whether any such new technologies or specifications fall within the type or category referred to as "USB" in the Patents.
In my view, USB-C does fall within the type or category referred to as "USB" in the Patents. It is apparent that USB-C ports and connectors are recognised in the field of power electronics as a form of USB technology. On the basis of the expert evidence, it appears that USB-C performs a functionally equivalent role to USB for the purposes of the Patents. For example, in relation to the "USB charging port" referred to in Claim 16 of the 223 Patent, a charging port using USB-C performs a functionally equivalent role for the purposes of the 223 Patent. The same applies for the other expressions using "USB". Further, I consider that there is sufficient technical similarity between USB-C and the earlier USB specifications that existed as at the asserted priority date to conclude that USB-C falls within the type or category referred to as "USB" in the Patents. Having regard to these matters, I consider that the expressions in the Patents using "USB" encompass USB-C.

[136]

In the context of discussing the B&W impugned products, Professor Holmes expressed the view that the circuits in those products are not DC-DC converters within the spirit and context of the Patents (T605). He said that this was, in part, because the DC-DC converter in the preferred embodiment in the Patents was an off-the-shelf component and, in part, because, even within the claims, the Patents refer to the control system - the MCU - controlling the DC-DC converter, and that suggests that the DC-DC converter is a standalone circuit (T605-606).
Mr Wilson accepted that the reference in Claim 18 of the 223 Patent to a DC-DC converter was to a "distinct thing" (T616). However, when it was put to him that that distinct thing is "something that is separate to the control system or circuit", he did not accept that proposition (T617). While he accepted that Claim 18 requires there to be a distinct DC-DC converter (T618), he said that he would see the impugned products as having a distinct DC-DC converter (T618). He said: "It's still distinct in terms of - so the microcontroller is controlling the power section of the DC-DC converter but it's still a distinct DC-DC converter". This evidence seems to qualify Mr Wilson's concession at T601. It is necessary to have regard to Mr Wilson's evidence as a whole.
In my view, notwithstanding the opinion of Professor Holmes and the concessions made by Mr Wilson (particularly at T601), NOCO's construction on this issue is the better construction. In circumstances where the term DC-DC converter can have different meanings in different contexts, and can refer to a component that effects the power conversion (even if it does not include a controller), I construe the term DC-DC converter as used in the Patents as referring to a component that effects the power conversion. While (on the evidence referred to above) such a component requires a controller to effectively operate, it does not follow that the controller needs to be part of the component that comprises the power stage, in order for the component to be a DC-DC converter. While it is true that in the preferred embodiment in each of the Patents the DC-DC converter is a stand-alone component having both a power stage and a controller, the construction of the claims should not be limited by the preferred embodiment. I do not read the language of the relevant claims as requiring that the DC-DC converter be a stand-alone device that includes both a power stage and a controller. I do not see why, in the context of the Patents (including the specification as a whole), the DC-DC converter referred to in the claims needs to include a controller.
For these reasons, I consider NOCO's construction in relation to this issue to be correct.

[177]

In the concurrent evidence session, the experts were questioned on the Priority Date issue at T625-651.
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] (in a different context) 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).
In the context of a later topic in the concurrent evidence session, Professor Holmes was asked if he accepted that the disclosure in PCT434 and the Patents is very similar. He accepted that the background and the detailed description are essentially word for word the same (T658). He accepted that the figures are the same apart from the error regarding one diode referred to above (T658). The following exchange then occurred:

[183]

B&W relied heavily on Nicholas J's discussion of the applicable principles in ToolGen at [160]-[193], in particular at [193]. B&W also relied on Icescape.
In relation to Claims 3 and 4 of the 338 Patent, B&W relies on two additional points, which are set out in its opening submissions on invalidity at [42].
In closing submissions, junior counsel for NOCO said that the issue ultimately comes down to a matter of characterisation of the invention. He said that there was no dispute that the preferred embodiment in PCT434 only describes the use of a FET switch. He also said that there was no dispute that the detection means in the preferred embodiment in PCT434 involves the use of two sensors to determine presence and polarity (T981). However, he submitted that, for each asserted claim, PCT434 does disclose the invention in the claim within the meaning of s 43(2A)(b) and reg 3.13D.
NOCO submitted that the disclosure in PCT434 and the Patents is very similar; in particular, the detailed description and the figures are identical or nearly identical. NOCO submitted that the invention disclosed in PCT434 and in the Patents is "essentially the same".
NOCO submitted that the adequacy of disclosure needed to be assessed in light of the technical contribution to the art; the invention in PCT434 is, broadly speaking, directed at improvements to jump starter devices; the improvements are in a device which has a combination of features; in particular, the device has safety features to ensure the satisfaction of two preconditions (namely battery presence and correct polarity) prior to jump starting, controlled by a control system or circuit. NOCO submitted that the use of a particular type of switch or the two sensor arrangement is not the technical contribution to the art; at the asserted priority date, the person skilled in the art understood that other types of switches (including a relay) could be substituted with minor and not substantial changes to the circuit; the safety advantage is achieved regardless of the type of switch used. NOCO submitted that the purpose of the sensors is to inform the MCU or the control system that the two preconditions have been met to allow switch closure; there were other sensor options available at the asserted priority date; the person skilled in the art could have implemented a sensor or sensors capable of detecting presence and polarity using the method described in PCT434 or via other means without difficulty.

[184]

I start by considering Claim 1 of the 223 Patent. The issues are whether the invention in the claim is disclosed in PCT434, and, if so, whether it is disclosed in a manner that is clear enough and complete enough for the invention in the claim to be performed by the person skilled in the art. (I will refer to the second aspect as the sufficiency test or requirement.)
As noted above, the detailed description of the invention in PCT434 is the same, or virtually the same, as the detailed description of the invention in the 223 Patent (and the other Patents). However, it is necessary to consider whether the invention in the claim is expressly or implicitly disclosed in PCT434. B&W contends that there are three features of Claim 1 that are not disclosed in PCT434 (see [233] above). I will address each in turn.
The first contention relates to the power switch. Claim 1 of the 223 Patent (set out in the Introduction to these reasons) requires a "power switch" connected in circuit with the power supply; 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 power switch is not further defined in this claim. The claim therefore includes electromagnetic switches and semiconductor switches. These types of switches, which were well known at the asserted priority date, work in different ways. Each of these types of switches had their own advantages and disadvantages. I consider 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. The device works in different ways depending on the type of power switch. The power switch is closely connected to the safety features that the invention is designed to achieve. PCT434 does not (expressly or implicitly) disclose a power switch of that breadth; the only type of switch it discloses is a FET switch. I therefore accept B&W's first contention.
The second contention relates to the two sensors referred to in PCT434. 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 way in which the control system or circuit detects the two matters is not specified and is left at large. In particular, the claim is not limited to a device that has two sensors to detect these matters. I consider 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. 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. The expert evidence establishes that there were various ways of achieving the safety features; a two sensor arrangement was not the only way. The control system or circuit is central to achieving the safety features that the invention in Claim 1 is designed to achieve. PCT434 does not (expressly or implicitly) disclose a control system or circuit of the breadth of Claim 1; PCT434 describes only an arrangement that utilises two sensors. I therefore accept B&W's second contention.
The third contention relates to automatic start. B&W contends that, if NOCO's construction on the Automatic Start issue is accepted (i.e. automatic start is not required by Claim 1), PCT434 does not disclose the invention in the claim because PCT434 discloses only an automatic start device. Earlier in these reasons, I concluded that Claim 1 of the 223 Patent does not require that the switch automatically turn on upon satisfaction of the preconditions in 1.7.1 and 1.7.2 (see [121] above). The question that arises for present purposes is whether PCT434 discloses a device of that breadth or whether it discloses only a device in which the switch automatically turns on upon satisfaction of the preconditions. The summary of the invention in PCT434 (set out at [218] above) and Claim 1 (set out at [223] above) use the language of "in response to". This language, at least at first blush, suggests that the switch is turned on immediately upon satisfaction of the two preconditions (presence of a vehicle battery and proper polarity). However, the detailed description of the invention refers to other matters that affect the analysis. The fourth paragraph of the detailed description in PCT434 is in the following terms:

[199]

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

(b) Claim 3 adds an integer, namely that "the power switch comprises one or more FETs". PCT434 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). Although there is some difference between the disclosure in PCT434 and in this claim, I consider that there is sufficient similarly to conclude that this integer is disclosed. Claim 3 incorporates the "control system or circuit" referred to in Claim 1 of the 059 Patent. In relation to this feature, the analysis relating to "control system or circuit" in Claim 1 of the 223 Patent is equally applicable. Accordingly, PCT434 does not disclose the invention in the claim.

(c) In relation to Claims 4, 6, 7, 8, 9, 10 and 11, the analysis is 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 analysis of this aspect of the claim is the same as for the comparable aspect in Claim 5 of the 223 Patent. Accordingly, PCT434 does not disclose this feature, and therefore does 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". I consider that these features are expressly or implicitly disclosed in PCT434. The "power switch" analysis for Claim 1 of the 223 Patent is equally applicable. Therefore, the invention in the claim is not disclosed by PCT434.

(f) In relation to Claim 15, which is an independent claim, the "power switch" analysis for Claim 1 of the 223 Patent is equally applicable. Further, although the language is not precisely the same, the "control system or circuit" analysis for Claim 1 of the 223 Patent is in substance applicable. Therefore, the invention in the claim is not disclosed by PCT434.

(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. This analysis of the comparable feature in Claim 5 of the 223 Patent is equally applicable. Further, the "power switch" analysis for Claim 1 of the 223 Patent is applicable.

(i) Claim 20, which is a dependent claim, refers to two sensors - one sensor configured to detect presence and another sensor configured to detect polarity. I consider that the two-sensor feature of this claim is disclosed in PCT434. Claim 20 incorporates a "power switch" as referred to in Claim 15. That power switch is broader than a FET switch. Therefore, the "power switch" analysis for Claim 1 of the 223 Patent is equally applicable. Therefore, the invention in the claim is not disclosed by PCT434.

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

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

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

[221]

Page 8 of the manual 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.
The Joint Expert Report deals with novelty and the HP Manual in section E, pages 3 to 25. In this part of the report, each expert indicates his opinions on whether each integer of the claims in the 223 Patent is disclosed in the HP Manual. Some of the opinions set out here by Mr Wilson were revised in his affidavit dated 12 February 2025 or in his oral evidence.
In the Joint Expert Report, Professor Holmes expresses the view that integer 1.7.1 in Claim 1 of the 223 Patent is not disclosed. He notes that the HP Manual discloses a manual override feature in paragraph 6 of the instructions (set out above). He notes that this feature can be used to manually engage the jump starter (i.e. close the power switch) when the battery is not detected as correctly connected (i.e. voltage below 1.2 volts). Professor Holmes's opinion is that this does not meet the requirement of integer 1.7.1 since it closes the power switch without requiring a battery to be detected as properly connected.
In the concurrent evidence session, the issue of novelty and the HP Manual was dealt with at T685-741.
Professor Holmes was taken to the reference to "POLARITY & SURGE PROTECTION" on page 3 of the manual (set out above), and accepted that it did not indicate, in terms of detailed circuitry, how any polarity and surge protection might be implemented (T693). Professor Holmes was also taken to the reference to "REVERSE POLARITY PROTECTION & ALARM" on page 4 (set out above). It was put to him that the alarm sounding constituted the reverse polarity protection. He disputed this, and said that the alarm was merely an indication (T694). In his view, given the reference to "[p]revents sparking", the device had a switch to prevent connection (T694-696). In response to questions about other ways to achieve reverse polarity protection, Professor Holmes maintained his position that, from everything in the manual, he could not see any other way the reverse polarity safety feature in the HP product could be implemented except by not connecting (T706).
Professor Holmes was taken to the specifications on page 5, and in particular the row for "Polarity Protection" in the section relating to "Jumpstarter Leads". In that row, the information is "MCU controlled solenoid". Professor Holmes said "MCU" is a reference to microcontroller and a "solenoid" is a reference to a switch (T709-710). Although this row is under the heading "Jumpstarter Leads", Professor Holmes said that the solenoid could not be in the leads (based on the picture) (T710). Professor Holmes said that it was quite clear that the product is using a solenoid (a relay) to control the connection to the leads (T710). Professor Holmes accepted that there are no further details of the operation of the reverse polarity protection and the alarm (T711).
Mr Wilson was taken to the section headed "REVERSE POLARITY PROTECTION & ALARM" on page 4 (set out above) and accepted that it was explaining two things that are happening: a prevention of sparking and a sounding of an alarm (T723). Mr Wilson was taken to several parts of the manual and it was then put to him that, putting all that together, the manual discloses that there is a solenoid which is used to protect against sparking caused by reverse polarity connection. Mr Wilson accepted this, but said he could not tell how it would be configured (T726). Mr Wilson was taken to the reference on page 5 to "MCU controlled solenoid", the passage on page 7 that states "[i]f the jumpstarter fails to start your vehicle refer to the LCD screen for any error ..." and the reference on page 8 to a screen display for "Reverse Connection" (T728-729). It was put to him that, when you put all that together, common sense dictates that what is happening in this product is that there is a solenoid acting as a switch between the internal battery and the external battery, and the switch will not turn on unless there is a correct polarity detection. Mr Wilson said he read it to mean that, if there is a switch in the product, it will be open, so that there is no connection to the external battery (T729). He said he was uncertain how it closes (T729). Mr Wilson was taken to page 16 of the HP Manual, which is headed "Q. Why didn't my jumpstarter start my vehicle?" and includes "[t]he vehicle's battery may be below 1.2V, the minimum start voltage for the jumpstarter". Mr Wilson accepted that this is 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 1.2 volts (T730-731).
In relation to integer 1.5 of Claim 1 ("a power switch ..."), Mr Wilson accepted that, reading the HP Manual in a common-sense way, he would imply the presence of this integer (T737). In relation to integer 1.6 ("a control system or circuit ..."), including 1.6.1 and 1.6.2, Mr Wilson's evidence was that this integer was not disclosed by the HP Manual, but would be implied (T738-739). In relation to integer 1.7 ("wherein the control system ..."), including 1.7.1 and 1.7.2, Mr Wilson's evidence was that this integer was not disclosed by the HP Manual, but that he would imply it (T739-741).
Having summarised the evidence, I now consider whether the HP Manual anticipates the relevant asserted claims of the 223 Patent.
In B&W's opening submissions on invalidity, it states at [53] that whether the HP Manual anticipates the claims of the 223 Patent (and, if so, which claims) will depend (at least in part) on how the Court construes the patent and, in particular, whether the claims prohibit manual override functionality. This is because, as B&W notes at [52] of those submissions, the HP Manual discloses a manual override button, so that a user can manually connect the jump starter batteries to the vehicle battery where the vehicle battery is so flat that the presence of that battery has not been detected.
I have considered the Manual Mode issue of construction earlier in these reasons. That issue related only to claims that use the "only when" language or the "does not switch on" language: see [133] above. I concluded 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 relevant claims: see [142] above.
It follows from that conclusion that the HP Manual does not anticipate Claim 1 of the 223 Patent (which uses the "only when" language). This is because the products described in the HP Manual have a manual override feature of the type referred to above. They are therefore outside the scope of the claim. It follows that the document does not provide a clear description of, or clear instructions to make, something that would infringe Claim 1 of the 223 Patent (if made after the grant of the patent).
The same result follows for Claims 2, 3, 4, 5, 7, 8 and 11 of the 223 Patent as these are dependent claims that incorporate the "only when" language and therefore are to be construed relevantly in the same way as Claim 1. The same reasoning applies to Claim 21 of the 223 Patent, which has the "only when" language.
For the above reasons, I conclude that the HP Manual does not anticipate Claims 1-5, 7, 8, 11 and 21 of the 223 Patent.

[235]

Mr Wilson was asked questions about the "Micro USB Input" referred to in the product description. He accepted that to make the charging work you would need to have an internal USB charging circuit (T753). He accepted that the device would need to include a DC-DC converter to lift the power from 5 volts in order to charge the lithium battery (T753). Mr Wilson accepted that one would want the circuitry to involve charging control software to ensure that the lithium battery was not overcharged (T753). Mr Wilson accepted that at the asserted priority date, one would want to include a temperature sensor to ensure that the lithium battery did not overheat (T753). Mr Wilson said you would want to control maximum charge, that is, to stop charging when it reached the maximum charge voltage (T753). He said this could be done by an MCU or it could just be the charging circuit itself (T754). He accepted that they were both reasonable things to have done at the asserted priority date (T754). Mr Wilson accepted that one could have the microcontroller turning the DC-DC converter off once it had reached a proper charge of the internal battery (T754). He accepted that all of these are the kinds of design considerations which one would apply as a matter of routine (T754).
Mr Wilson was asked questions about "USB Output" in the description of the device and said he would read this as two USB outputs (T754). He was asked whether, if you were designing a product like this, you would want to make sure that it didn't over discharge the battery. He said you would want something like that (T755). He was asked what type of power switches he would consider for this kind of product as at the asserted priority date. He said he would consider FETs and relays. In relation to FETs, he said you would likely utilise multiple FETs in parallel as these were a lot cheaper than one single higher-power, high-current FET (T755). He said that you would want to build a prototype and test it. He accepted that that kind of testing is the natural thing that electrical engineers do before putting out a product (T755-756).
Mr Wilson was asked questions about the LED light warning referred to at the end of the "Function" description for the product. He said that an LED light warning could be used to show that the internal battery was too flat (that is, power level) (T759). He was asked questions assuming that he was a member of a design team that includes a manufacturer of battery-powered jump starters, and that that manufacturer has a concern about using lithium polymer batteries and has a preference for using lithium iron phosphate batteries. He was asked if there would be any major difficulties in using a lithium iron phosphate battery. He said the cell voltages are different between the two, so you would need to adjust the charging circuit to accommodate this. He accepted that this work would be within the general calling of his profession (T759). Mr Wilson was asked whether features such as reverse-charge protection would work equally well in combination with a lithium iron phosphate battery as opposed to a lithium cobalt battery. He said they would be the same (T762). He was asked whether the QTC Brochure would encourage him to ensure that a product he was developing had protections against short-circuiting and reverse polarity. He responded that he would want those protections (T762).
Mr Wilson was asked about integer 1.5 of Claim 1 of the 338 Patent ("a power switch ..."). He accepted that a power switch would be implied in the QTC Brochure (T762). In relation to integer 1.7 of that claim ("a USB charge circuit ..."), Mr Wilson accepted that he would imply those features from the QTC Brochure (T763). Mr Wilson accepted that one would need to use a DC-DC converter to achieve the functionality as disclosed in the QTC Brochure (T763).
Professor Holmes expressed concerns about the jumper cables being quite thin and about the low price of the device disclosed by the QTC Brochure (T766). He had some concerns that the physical product was smaller, lighter and cheaper than he would expect for something that incorporates a 10-amp-hour lithium battery and the additional components that would be required for the functionality described (T766). He said he had reservations about its capacity to do what they claimed it could do (T766). His reservations included whether the battery was actually a 10,000-milliamp-hour battery (T766).
Professor Holmes's opinion was that there was an implied disclosure of a reverse polarity sensor by the QTC Brochure because one cannot offer "Reverse Polarity Protection" without detecting reverse polarity (T770). Professor Holmes was asked questions about cables that correct themselves and allow the current to effectively self-correct. He said that he would not describe such an apparatus as having reverse polarity protection because reverse polarity is no longer there and the protection is no longer required (T770). He said that he would not describe a fuse within a cable as reverse polarity protection, but rather as overload protection (T770). He accepted that it was possible that someone seeking to sell their products might describe this as reverse polarity protection (T770). Professor Holmes was taken to the description of a patent in [0008] of the specification of the 223 Patent. That paragraph describes a form of reversible battery jumper cables. It was put to Professor Holmes that that paragraph describes a form of reverse polarity protection. Professor Holmes said that there is no reverse polarity protection required because it is not possible to make a reverse connection (T772).
It was put to Professor Holmes that it was possible that the safety protection, as viewed in the QTC Brochure, is an LED light that lights up so that the user can manually disconnect. He responded that he would not consider that to be protection (T774). He accepted that the writer of the document may have seen that as a form of protection (T774).
Professor Holmes accepted that in the Joint Report at Section F, page 3, he had identified the effectiveness of the safety features of the product disclosed in the QTC Brochure as being of concern (T775). In [579] of Holmes 1, Professor Holmes identified the safety features that he would wish to ensure were properly managed; he said that he could not make any comment as to how well they are managed in the product in the QTC Brochure (T776). Professor Holmes was taken to [581] of Holmes 1. He gave the following clarification of his opinions:

[237]

Professor Holmes gave evidence that, while the QTC Brochure does not explicitly describe the circuitry of the product, he strongly expects that the product incorporates a semiconductor switch and a microcontroller (T778). He said that he based this on the fact that it is challenging to achieve the functionality without a switch and a microcontroller (T778). He accepted that there were other ways to achieve the functionality, but said they would be highly unlikely at the asserted priority date (T779). Professor Holmes said that there was an implication in the QTC Brochure of a power switch being maintained in an open position based on both presence and polarity (T781).
I will start by considering Claim 1 of the 223 Patent. In my opinion, the QTC Brochure does not provide a clear description of, or clear instructions to make, something that would infringe Claim 1 of the 223 Patent (if carried out after the grant of the Patents). The QTC Brochure is a brief document and the experts expressed reservations about whether the features it describes (in particular, the battery capacity) were accurate. The person skilled in the art would approach the document with some scepticism. Further, the document merely provides a list of features. It does not provide any detailed description of how the functionality that it offers is achieved. In particular, while the document does disclose "Reverse Polarity Protection", it does not make clear what is meant by such protection or how it is provided. The questioning of Professor Holmes, as summarised above, referred to a number of different mechanisms that could be adopted, such as cables that can correct themselves and allow the current to effectively self-correct; a fuse within a cable; and an LED light that lights up so that the user can manually disconnect. While Professor Holmes would not describe these as reverse polarity protection (for the reasons he gave), in my view, those mechanisms could be described as forms of reverse polarity protection in an everyday sense, and it is possible that the brochure uses the label "Reverse Polarity Protection" to describe such an arrangement. It is therefore unclear whether, in referring to "Reverse Polarity Protection", the brochure is describing a device that has an arrangement to detect presence of the vehicle battery and correct polarity and a switch that turns power on or off based on that detection. The QTC Brochure therefore does not anticipate Claim 1 of the 223 Patent.
The same outcome follows for the dependent claims in the 223 Patent. The same reasoning applies for Claim 21 of the 223 Patent.
In relation to the relevant claims of the 059 Patent, the same reasoning applies to Claims 1, 14, 15 and 21, which are the relevant independent claims. The same outcome follows for the dependent claims in that patent.
In relation to the relevant claims of the 338 Patent:

[246]

The applicable principles are well established, and there is no real issue between the parties as to those principles.
One approach for assessing whether a claimed invention is obvious is to consider whether the person skilled in the art 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: Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59; 212 CLR 411 (Alphapharm) at [53] per Gleeson CJ, Gaudron, Gummow and Hayne JJ. This test is referred to as the "modified Cripps question". The test can be useful, but it is not always appropriate: Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2014] FCAFC 73; 222 FCR 336 (Generic Health) at [71]. In Generic Health, the Full Court noted at [71] that the plurality 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 (Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at 280-281, 286). The Full Court in Generic Health stated in the same paragraph that a test formulated in terms of "worthwhile to try" was firmly rejected by the High Court in Alphapharm.
In Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; 235 CLR 173, the High Court (Gummow, Hayne, Callinan, Heydon and Crennan JJ) considered the issue of lack of inventive step in relation to a door lock. The Court did not use the modified Cripps question, and said that the issue of obviousness involved a question of fact that was once a "jury question" (at [51]), saying further that a "scintilla of invention" remains sufficient in Australian law to support the validity of a patent (at [52]). Otherwise put, there must be "some difficulty overcome, some barrier crossed" or something "beyond the skill of the calling" (at [52]). See also Merck Sharp & Dohme Corp v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1 at [249]- [250] per Burley J.
It is established that 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; 175 IPR 187 at [93] per Jagot J (Besanko and Nicholas JJ agreeing), citing Brugger v Medic-Aid Ltd [1996] RPC 635 at 661. See also AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; 257 CLR 356 at [114]; Hytera Communications Corporation Ltd v Motorola Solutions Inc [2024] FCAFC 168 at [554].
In Alphapharm, the plurality said the following in relation to a combination claim:
1. ... The claim is for a combination, the interaction between the integers of which is the essential requirement for the presence of an inventive step. It is the selection of the integers out of "perhaps many possibilities" which must be shown by Alphapharm to be obvious, bearing in mind that the selection of the integers in which the invention lies can be expected to be a process necessarily involving rejection of other possible integers. This expression of the issue follows what was said by Aickin J in Minnesota Mining.

[255]

I will first deal with Mr Banks's evidence, then the evidence of Mr Wilson and Professor Holmes. I will then refer briefly to Mr Stanfield's evidence.
Mr Banks gave expert evidence in relation to matters of industrial design. Between 2007 and 2018, Mr Banks was employed by B&W. He was a Product Manager from 2007 to about 2011. He was a Product Development Manager from about 2011 to 2018. In that role, he was responsible for leading the product design and development team, which developed a range of products for B&W, including battery chargers (largely under the "PROJECTA" brand).
In Section D of Mr Banks's affidavit, he describes the preparation of a design brief for a new jump starter. He was 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. Annexure "JLB-16" to Mr Banks's affidavit is the design brief he prepared (the Design Brief). The Design Brief comprises two sections: the first is a basic overview of the design task; the second sets out specific features to be considered for inclusion in the jump starter. Mr Banks explains his reasoning for including these features in the Design Brief in his affidavit at [78]-[97].
The basic difficulty with the Design Brief and associated evidence is that it was prepared on the basis of Mr Banks's knowledge as at the asserted priority date, but that knowledge goes beyond that which I have found to be the common general knowledge of the product designer in the team that constitutes the person skilled in the art. I therefore do not accept that the Design Brief provides a sound basis to evaluate the issue of inventive step.
I now turn to the evidence of Mr Wilson and Professor Holmes. The issue of inventive step is dealt with in Section F of the Joint Expert Report. In the concurrent evidence session, the topic of inventive step was dealt with at T787-826. However, some of the evidence provided earlier in the concurrent evidence session is also relevant to the inventive step issue.
During the concurrent evidence session, in the course of dealing with the topic relating to the HP Manual and novelty, senior counsel for B&W asked Mr Wilson a series of questions that are also relevant to the inventive step issue. In this passage, senior counsel referred back to an earlier exchange that had taken place between junior counsel for NOCO and Professor Holmes (at T646-648, in relation to the Priority Date issue). In summary, senior counsel for B&W asked Mr Wilson whether he agreed with a series of propositions that had been put to, and accepted by, Professor Holmes. Mr Wilson largely agreed with those propositions. Although the exchange with Mr Wilson is lengthy, I set it out in full as it contains some important evidence of Mr Wilson and it is necessary to see the full context. Immediately before this passage, senior counsel had been asking Mr Wilson questions about the HP Manual. The following exchange then took place (at T731-737):

[256]

[SENIOR COUNSEL FOR B&W]: ... Now, just coming back to the problem in the patents. So the problem identified in the patents refers to, I think, jump starter cables, but also jump starter self-powered batteries, which is what we're concerned with here. Do you agree with that?

MR WILSON: Yes.

[SENIOR COUNSEL FOR B&W]: Yes. And your evidence is you had not operated a battery-powered jump starter before the relevant date?

MR WILSON: That's correct, yes.

[SENIOR COUNSEL FOR B&W]: Yes. And before the relevant date, nevertheless, you were aware of the risks of short circuiting and connecting with reverse polarity in the context of jump-starting vehicles?

MR WILSON: Yes.

[SENIOR COUNSEL FOR B&W]: Thank you. And one major risk was short circuiting caused by bringing one of the 12 volt cables in contact with the other?

MR WILSON: Yes. So shorting the positive and negative cables together?

[SENIOR COUNSEL FOR B&W]: Correct.

MR WILSON: Yes.

[SENIOR COUNSEL FOR B&W]: And the other major risk was connecting the cables to a battery source of different polarity.

MR WILSON: That's correct, yes.

[SENIOR COUNSEL FOR B&W]: Now, as an electronics engineer at the relevant date, you 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?

MR WILSON: That would be logically correct, yes.

[SENIOR COUNSEL FOR B&W]: Thank you. Now, do you [recall] [Counsel for NOCO] yesterday asking Professor Holmes to agree with a number of propositions yesterday regarding the use of one and two sensors - one or two sensors - to detect presence and polarity?

MR WILSON: Yes.

[SENIOR COUNSEL FOR B&W]: Thank you. I just want to check ... whether you agree with what [Counsel for NOCO] put to Professor Holmes. So this is in the context of the patent and the description of the two sensors, yes? The reverse polarity sensor and the battery isolation sensor?

MR WILSON: Yes.

[SENIOR COUNSEL FOR B&W]: Yes.

MR WILSON: Yes.

[SENIOR COUNSEL FOR B&W]: That's where the conversation started. Now, [Counsel for NOCO] said:

[280]

Do you agree with that?

MR WILSON: Yes, I do. Yes.

[SENIOR COUNSEL FOR B&W]: Yes. And this is all directed to providing the safety advantages of non-sparking from short circuiting or reverse polarity connection.

MR WILSON: Yes.

[SENIOR COUNSEL FOR B&W]: Thank you. So do you agree that an uninventive power electronics engineer would understand that there were many obvious or plain ways to determine whether an external battery was properly connected, and those included what Professor Holmes described as the - first of all, the binary sensing.

MR WILSON: Yes, there are several ways.

[SENIOR COUNSEL FOR B&W]: Yes.

MR WILSON: Yes.

[SENIOR COUNSEL FOR B&W]: Yes, but one obvious way is the binary sensing with two sensors.

MR WILSON: Yes, that would - I won't say obvious, but, yes, it's a way.

[SENIOR COUNSEL FOR B&W]: Well, would it be something that would require any great difficulty or thought for you to put together as at the relevant date.

MR WILSON: No, it wouldn't. No.

[SENIOR COUNSEL FOR B&W]: No. And is it ... a potential way of dealing with the safety concerns? Having two sensors in the binary way that Professor Holmes identified.

MR WILSON: Well, that's one way of doing it.

[SENIOR COUNSEL FOR B&W]: Yes.

MR WILSON: Of - of achieving that outcome, yes.

[SENIOR COUNSEL FOR B&W]: Yes. So it's one way that you would think about out of many.

MR WILSON: Yes.

[SENIOR COUNSEL FOR B&W]: Yes.

MR WILSON: Yes.

[SENIOR COUNSEL FOR B&W]: And so when you say it's not obvious, are you saying there could be many obvious ways to do it.

MR WILSON: Yes, though, I guess - - -

[SENIOR COUNSEL FOR B&W]: That's just one of them.

MR WILSON: - - - more of an obvious way is to just use a simple voltage measurement. You know, a voltage - - -

[SENIOR COUNSEL FOR B&W]: Yes. So when I said "obvious", I didn't mean preferred. I meant available to you.

MR WILSON: Okay.

[SENIOR COUNSEL FOR B&W]: So do you agree with me that the binary version, that is, having two sensors, is obvious in the sense of, it was available to you as an idea in the relevant date.

MR WILSON: Yes.

[SENIOR COUNSEL FOR B&W]: Yes. It's one of the things you would think of, but it's not your preferred way.

MR WILSON: Yes.

[SENIOR COUNSEL FOR B&W]: Yes. And your preferred way was the single sensor, and I think Professor Holmes might have agreed that ..... a single sensor which doesn't have that dead period.

MR WILSON: That would possibly be a preferred way of doing it.

[SENIOR COUNSEL FOR B&W]: Yes. Thank you. Yes. And just to - I think you said this before, but in terms of bringing about that sensing, if I could put it that way, with a microcontroller, it's not technically difficult. It would take time and effort and skill, but it's within the calling of your profession.

MR WILSON: Well, that's right, yes. It's mostly in the software.

(Emphasis added.)

[281]

I note for completeness that in Mr Wilson's affidavit dated 4 June 2024 filed in the Carku proceeding, which was incorporated by reference into his first affidavit in this proceeding, he described (at [41]) the two sensor arrangement in the preferred embodiment in the Patents as "quite clever". However, I place more weight on his oral evidence at the hearing, including in the passage set out above.
In the part of the concurrent evidence session dealing specifically with the topic of inventive step, Mr Wilson was asked to put out of his mind the Patents, the Design Brief, the QTC Brochure, the HP Manual and all post-asserted-priority-date information. He 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). Mr Wilson was 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 (T792). He accepted that you would have voltage sensing of the internal and external battery (T792). He said that various power outs (such as 12 volt cigarette lighter outs, barrel connector outs or USB outs) would be optional (T792-793). But he accepted that they were available as at the asserted priority date (T793). He accepted that the device would require circuitry and software to ensure the internal battery was charged and safely discharged (T793). He said that an MCU that controls all those various electronic features would likely be required; he said that it could be done without an MCU, but it 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. He 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).
Mr Wilson accepted that lithium ion batteries were a well-known source of power (T795). He said he did not disagree that lithium ion batteries have a higher current capability and a higher energy density (than other batteries) (T797). He agreed that they would be a sensible choice for a jump starter product as at the asserted priority date (T798). Mr Wilson accepted that USB charging of lithium batteries was well known as at the asserted priority date (T799). Mr Wilson was asked whether there was any adverse effect or problem in using lithium batteries and having USB charging in combination. He responded: not that he could see (T805).
Mr Wilson was asked questions with reference to the HP Manual. He accepted that if he was designing a jump starter device, he could discern features from the HP Manual that might be worth including (T805).
Mr Wilson was asked questions about the QTC Brochure. He 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).
Professor Holmes was asked questions about the design process that he discussed in Holmes 1 at [254] and following. Professor Holmes accepted that one of the main components was the battery (T819). He 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). He said that he knew that lithium batteries come in a wide variety of shapes and electrical characteristics; and he would expect some of those to have electrical characteristics that were more satisfactory or more suitable, and some to have electrical characteristics that were less suitable (T821). He said he would look at all possible battery options that he could find at the time (T822).
Professor Holmes was asked questions about the evidence in Holmes 1 at [571] and following, which related to a brief to design a jump starter with reference to the QTC Brochure. He said that the brochure lists a series of features, and he assumes in the first instance that it achieves what it states that it achieves (T824). Professor Holmes 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 (T825).
In Holmes 1, Section K2, Professor Holmes identifies 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.
Some of the evidence of Mr Wilson and Professor Holmes relating to the HP Manual and the QTC Brochure, in the context of novelty, is also relevant to the inventive step issue. That evidence has been summarised earlier in these reasons.
I note for completeness that Mr Stanfield's evidence as to the steps he undertook in developing NOCO's product is potentially relevant. In his oral evidence, Mr Stanfield said that he felt 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; if the jump starter were connected to a car battery in reverse, the user could get a major shock. He said it was "so dangerous that you can't imagine that you ever would want that to happen to a customer" (T251). He said that was where his idea for safety came from. He said that they decided to have not only protection, but redundancy; having two sensors rather than one provided redundancy (T251-252). Mr Stanfield also said that the large lead acid jump starters were just too big and heavy to hold; the user would set it down somewhere; while they still had the capacity for sparking, damage and injury, there is a little more protection (T251-252).

[282]

In B&W's oral closing submissions, it relied primarily on the common general knowledge together with the QTC Brochure to establish obviousness. B&W submitted, in summary, that the QTC Brochure describes, in terms, the combination of features that NOCO appears to assert is the invention. B&W submitted that, to the extent that the QTC Brochure does not, in terms, disclose each feature of the asserted claims, the person skilled in the art would either understand those features to be implicitly disclosed, or would arrive at those features when implementing the teaching of the brochure.
In oral closing submissions, B&W also relied on the common general knowledge alone to establish obviousness.
B&W also made submissions based on the common general knowledge together with the HP Manual.
In closing submissions, NOCO emphasised that not everything that Mr Banks knew was common general knowledge. I have accepted that submission above. NOCO also submitted that the Design Brief prepared by Mr Banks tended to lead towards the invention. I have concluded, above, that the Design Brief does not provide a sound basis upon which to assess inventive step.
NOCO did not put in issue publication of the QTC Brochure (T1011-1012).
NOCO submitted that the experts had significant reservations about the QTC Brochure. NOCO submitted that that was natural given that it is such a cursory document. NOCO submitted that Professor Holmes's affidavit evidence relating to the QTC Brochure was based on an assumption that the document was delivering safety features, when his own evidence questioned whether it did so. NOCO submitted that Professor Holmes, who is a very experienced electrical engineer, read a significant amount of information into the QTC Brochure.
NOCO submitted that Professor Holmes considered USB charging an unattractive option when considering the HP Manual; in this regard, Professor Holmes's initial inclination was not dissimilar to that of Mr Stanfield. NOCO emphasised that in the process of designing an apparatus such as a jump starter, one is dealing with different combinations and making different choices. It was submitted that this was fatal both to B&W's case based on common general knowledge alone, and to B&W's case based on common general knowledge together with the HP Manual or the QTC Brochure.
NOCO submitted that: the QTC Brochure did not represent a document that Mr Banks thought worth development; Professor Holmes gave his evidence on the QTC Brochure after seeing the Patents and after opining on the protection features of the HP Manual. NOCO emphasised Professor Holmes's reservations about the battery in the product the subject of the QTC Brochure: see Holmes 1, [573] (where he queries whether the battery has the stated 10-amp-hour capacity). NOCO relied on Professor Holmes's evidence that he would not see all lithium batteries as being suitable and he would not be limited to a particular battery type. NOCO submitted that all options were open on the batteries and that one cannot just "jump over" the battery selection and then go on to the selection of other features.
NOCO submitted that, when one looks at the QTC Brochure, it gives you a cause for concern; in other words, people were not looking at the QTC Brochure and saying that is going to be able to jump start a car; it was a teaching away from the invention.
NOCO emphasised that the invention as claimed was a combination; NOCO submitted that the combination has at least a scintilla of inventiveness; it is not very plain.

[283]

I will consider the issue of inventive step on the basis of the common general knowledge alone before considering the issue on the basis of the common general knowledge together with either the HP Manual or the QTC Brochure.
In my view, Claim 1 of the 223 Patent would have been obvious to the person skilled in the art in the light of the common general knowledge as at the asserted priority date. The common general knowledge has been set out above. The common general knowledge included the safety issues relating to jumper cables being not correctly connected to the depleted battery, or being connected with incorrect polarity, or being touched together. The common general knowledge also included jump starter devices with internal batteries, and that they suffered from the same concerns. There does not appear to be anything inventive about integers 1.1, 1.2, 1.3, 1.4 or 1.5 of Claim 1. The part of Claim 1 that is potentially inventive is the arrangement in integers 1.6 and 1.7 for there to be (in summary) 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 the power supply to the depleted/discharged battery) only when the depleted/discharged battery is present and connected with correct polarity. But the expert evidence suggests that the inclusion of such an arrangement in a jump starter device would have been a matter of routine. As set out above, Professor Holmes gave evidence that it would have been a matter of routine to implement a sensor or sensors capable of detecting presence and polarity. Indeed, he said it would be of no difficulty for his students. Mr Wilson agreed with Professor Holmes's evidence. 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. He accepted that the binary version, that is, having two sensors, was available to him as an idea at the asserted priority date. He accepted that it would take time and effort, but it was within the calling of his profession. While this evidence was couched in terms of sensors, I consider it to be equally applicable to the arrangement described in integers 1.6 and 1.7. In light of the expert evidence, I am satisfied that Claim 1 is obvious in the relevant sense.
I will now consider each of the other asserted claims of the 223 Patent:

[284]

(a) Claims 2 and 3 are dependent claims that do not introduce additional features that affect the analysis. Accordingly, the analysis for Claim 1 is 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. I am satisfied on the basis of the expert evidence that the inclusion of a microcontroller, and the combination of this feature with the other features, are obvious in the relevant sense. In Mr Wilson's evidence (set out above) he said 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).

(c) Claim 5 states (in summary) that the microcontroller receives input from "one or more sensors" configured to detect presence and polarity of the depleted/discharged battery. As discussed above (in the context of Claim 1), Professor Holmes gave evidence that it would have been a matter of routine to implement a sensor or sensors capable of detecting presence and polarity. Indeed, he said that it would be of no difficulty for his students. Mr Wilson agreed with Professor Holmes's evidence. 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. He accepted that the binary version, that is, having two sensors, was available to him as an idea at the asserted priority date. He accepted that it would take time and effort, but it was within the calling of his profession. While that evidence focussed to some extent on two sensors, I consider it equally applicable to a single sensor arrangement. In light of the expert evidence, I am satisfied that Claim 5 is obvious in the relevant sense.

(d) Claim 6 is a dependent claim that refers to two specific types of sensors. The analysis in relation to Claim 5 is applicable also to Claim 6.

(e) Claims 7, 8 and 11 are dependent claims. To the extent they introduce additional integers, they do not affect the analysis. Accordingly, the analysis set out above for the earlier claims (as applicable) applies also to these claims.

(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. In my view, Claim 12 would have been obvious to the person skilled in the art in the light of the common general knowledge as at the asserted priority date. The common general knowledge has been set out above. The common general knowledge included 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. Further, the common general knowledge known to the product designer in the team constituting the person skilled in the art included: the proliferation of cheaper lithium batteries; pre-packaged battery management systems and other integrated circuits to implement charging control circuitry for lithium batteries were readily available; 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; and lithium batteries held their charge over a longer period of time than did lead acid batteries. The expert evidence suggests 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. As set out above, Mr Wilson accepted that lithium ion batteries were a well-known source of power. He agreed that they would be a sensible choice for a jump starter as at the asserted priority date. This evidence suggests 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 person skilled in the art as at the asserted priority date. To the extent that Professor Holmes gave evidence in the concurrent evidence session that he would look at all possible battery options that he could find at the time, I do not consider that that leads to any different conclusion. Further, having regard to the evidence generally, I am satisfied that the combination of features claimed in Claim 12 would have been a matter of routine. 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. In my view, 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. I consider that combining those features was available to the team constituting the person skilled in the art. For these reasons, I conclude that Claim 12 is 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. In my view, Claim 13 would have been obvious to the person skilled in the art in light of the common general knowledge as at the asserted priority date. The common general knowledge has been set out above. By the asserted priority date, there were a range of well-understood components that were routinely used in power electronics circuitry, including switches. At the asserted priority date, relevant switches included semiconductor switches, including FETs, which could switch faster and were smaller and lighter than solenoid switches. In the context of the Priority Date issue, Mr Wilson gave evidence 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. I find that these matters formed part of the common general knowledge of the power electronics engineer in the team comprising the person skilled in the art. In the context of the Priority Date issue, Professor Holmes accepted that he could have built a jump starter using a relay or a FET switch at the asserted priority date; he accepted that the choice of switch is not germane to management of the preconditions; 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. Having regard to this evidence and the evidence generally, the use of a FET switch or a plurality of FETs arranged in parallel would have been a matter of routine. Further, having regard to the evidence generally, combining the features in Claim 13 would have been a matter of routine. For these reasons, I consider that Claim 13 is obvious in the relevant sense.

(h) Claim 14 is a dependent claim. It does not include additional integers that affect the analysis for present purposes. The analysis set out for the earlier claims (as applicable) applies.

(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. In my view, Claim 16 would have been obvious to the person skilled in the art in light of the common general knowledge as at the asserted priority date. The common general knowledge has been set out above. By the asserted priority date, there were 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. Such connections could be permanent or temporary (i.e. "quick fit" connections, such as USB connectors). Further, the common general knowledge known to the product designer in the team constituting the person skilled in the art included USB input and output ports in electronic devices, including USB charging. As set out above, Mr Wilson accepted that USB charging of lithium batteries was well known as at the asserted priority date. He said that he could not see any adverse effect or problem in using lithium batteries and having USB charging in combination. Having regard to this evidence, I am 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. Further, having regard to the evidence generally, I consider that combining the features in Claim 16 would have been a matter of routine. For these reasons, I consider that Claim 16 is 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 analysis for Claim 16 is 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. In my view, Claim 18 would have been obvious to the person skilled in the art in light of the common general knowledge as at the asserted priority date. The common general knowledge has been set out above. 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. Having regard to the evidence generally, I am 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. Further, having regard to the evidence generally, I consider that combining the features in Claim 18 would have been a matter of routine. For these reasons, I conclude that Claim 18 is 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 evidence generally indicates that these conversion parameters were available to the person skilled in the art. For substantially the same reasons as for Claim 18, I consider that Claim 19 is 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 evidence generally indicates that this additional integer was available to the person skilled in the art. For substantially the same reasons as for Claim 18, I consider that Claim 20 is obvious in the relevant sense.

(n) Claim 21 is an independent claim. It differs from Claim 1 in that it uses the language "when, and only when" rather than "only when". However, it is not suggested that the distinction between claims that require automatic start and those that do not is relevant for the purposes of the inventive step analysis. Putting that aspect to one side, the integers of Claim 21 are similar to those of Claim 1. The analysis set out above in relation to Claim 1 is substantially applicable to Claim 21. I therefore conclude that the claim is obvious in the relevant sense.

[286]

(a) Claim 1 refers to a rechargeable battery. As set out above, it was common general knowledge that batteries can be single use or rechargeable. 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 (in summary) 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. In relation to this feature, the analysis set out above in relation to Claim 1 of the 223 Patent is equally applicable. Claim 1 of the 059 Patent also refers (in summary) to a USB input charge circuit connected to the rechargeable battery, the USB input charge circuit comprising a DC-DC converter. In relation to these features, the analysis set out above in relation to Claims 16 and 18 of the 223 Patent is 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. This feature does not affect the present analysis. Having regard to the evidence generally, I am satisfied that combining the features of Claim 1 would have been a matter of routine. I am therefore satisfied that this claim would have been obvious to the person skilled in the art in the light of the common general knowledge 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 analysis set out above in relation to Claim 12 of the 223 Patent is equally applicable. I therefore consider 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 analysis set out above in relation to Claim 13 of the 223 Patent is substantially applicable. I therefore consider 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. The analysis for the earlier claims (as applicable) therefore applies.

(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. I have found, above, 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 common general knowledge. In the context of questions about the QTC Brochure and novelty, Mr Wilson accepted that, as at the asserted priority date, one would want to include a temperature sensor to ensure that the lithium battery did not overheat. I do not consider that evidence to be limited to the device in the QTC Brochure. The question was asked and the evidence given in a more general way (at T753). Having regard to that evidence, I consider that the inclusion of a temperature sensor would have been a matter of routine. Further, having regard to the evidence generally, I consider that combining the features in Claim 6 would have been a matter of routine. I therefore consider 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. In the concurrent evidence session, Mr Wilson accepted that, in a project to design a battery-powered jump starter, you would have voltage sensing of the internal and external battery. He accepted that the device would require circuitry and software to ensure the internal battery was charged and safely discharged. He said an MCU that controls all those various electronic features would likely be required. Having regard to that evidence, I consider that the inclusion of a voltage measurement circuit as described in Claim 7 would have been a matter of routine. Further, having regard to the evidence generally, I consider that combining the features in Claim 7 would have been a matter of routine. I therefore consider Claim 7 to be 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. In my view, Claim 8 would have been obvious to the person skilled in the art in light of the common general knowledge as at the asserted priority date. The common general knowledge has been set out above. By the asserted priority date, there were 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. Such connections could be permanent or temporary (i.e. "quick fit" connections, such as USB connectors). Further, the common general knowledge known to the product designer in the team constituting the person skilled in the art included USB input and output ports in electronic devices, including USB charging. In the concurrent evidence session, Mr Wilson said (in the context of a project to design a battery-powered jump starter) that various power outs (including USB outs) would be optional. He accepted that they were available as at the asserted priority date. Having regard to that evidence and the evidence generally, I consider 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. Further, having regard to the evidence generally, I consider that combining the features in Claim 8 would have been a matter of routine. I therefore consider Claim 8 to be obvious in the relevant sense.

(h) Claim 9 is a dependent claim. It does not add integers that affect the analysis. The analysis for the earlier claims (as applicable) will therefore apply.

(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, I consider that Claim 10 of the 059 Patent is 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, I consider that Claim 11 of the 059 Patent is 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 additional integer in this claim is similar to that in Claim 5 of the 223 Patent. The analysis for that claim is substantially applicable to this additional integer. Further, having regard to the evidence generally, I consider that combining the features in Claim 12 would have been a matter of routine. I am therefore satisfied that Claim 12 is 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 analysis for Claim 5 of the 223 Patent is substantially applicable. In relation to the microcontroller, the analysis for Claim 4 of the 223 Patent is substantially applicable. In relation to the USB input charge circuit, the analysis for Claim 16 of the 223 Patent is substantially applicable. Having regard to the evidence generally, I consider that combining the features in Claim 14 would have been a matter of routine. For these reasons, I consider that Claim 14 is 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. It also refers to a power switch control system or circuit configured to detect presence of the depleted/discharged battery and to detect polarity. It also refers to a USB input charge circuit and a USB input connector for providing charge input to the rechargeable battery. 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 is similar for present purposes to Claim 1 of the 223 Patent and the analysis for that claim is substantially applicable. In relation to the USB input charge circuit and USB input connector, the claim is similar to Claim 16 of the 223 Patent and the analysis for that claim is substantially applicable. Further, having regard to the evidence generally, I consider that combining the features in Claim 15 would have been a matter of routine. For these reasons, I consider that Claim 15 is obvious in the relevant sense.

(n) Claims 16 and 17 are dependent claims that do not introduce new features that affect the analysis. Accordingly, the analysis for Claim 15 is 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. In his evidence, Mr Wilson said that an MCU that controls all the various electronic features to which he had been referred would likely be required. I am satisfied on the basis of the expert evidence that the inclusion of a microcontroller, and the combination of this feature with the other features, are 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 analysis for Claim 5 of the 223 Patent is substantially applicable. Further, on the basis of the expert evidence generally, I am satisfied that combining the features in Claim 19 would have been a matter of routine. I therefore consider that Claim 19 is 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 analysis in relation to Claim 19 is 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 analysis is 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 analysis is substantially the same as for Claim 16 of the 223 Patent. Further, I am satisfied having regard to the evidence generally that combining the features of Claim 21 would have been a matter of routine. For these reasons, I consider that Claim 21 is 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 analysis for Claim 18 of the 223 Patent is substantially applicable to this additional integer. Further, having regard to the evidence generally, I am satisfied that combining the features of Claim 22 would have been a matter of routine. For these reasons, I consider that Claim 22 is 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 inclusion of this additional integer does not affect the analysis. For substantially the same reasons as for Claim 22, I consider that Claim 23 is obvious in the relevant sense.

(u) Claim 24 is an independent claim. For present purposes, this claim is similar to Claim 21, save 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 analysis for Claims 21, 22 and 23 is substantially applicable. Further, having regard to the evidence generally, I am satisfied that combining the features of Claim 24 would have been a matter of routine. For these reasons, I consider Claim 24 to be obvious in the relevant sense.

[288]

(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 analysis of this feature in relation to Claim 1 of the 059 Patent is equally applicable. In relation to the power switch or switch circuit configured in the way described, I am satisfied on the basis of the common general knowledge and the expert evidence that this would have been a matter of routine. In relation to the USB input connector, this was part of the common general knowledge 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 analysis for Claim 18 of the 223 Patent is substantially applicable. Further, having regard to the evidence generally, I consider that combining the features of Claim 1 would have been a matter of routine. For these reasons, I consider that Claim 1 is obvious in the relevant sense.

(b) Claims 2, 3, 4 and 5 are dependent claims that do not introduce additional features that affect the analysis. Accordingly, the analysis for Claim 1 is 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 evidence generally indicates that this additional integer was available to the person skilled in the art. For substantially the same reasons as for Claim 1, I consider that Claim 6 is 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. Professor Holmes states 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. However, Mr Wilson accepted (in the context of a project to design a battery-powered jump starter) that you would have means for recharging the rechargeable battery and that you would have voltage sensing of the internal and external battery. Having regard to the common general knowledge and that evidence, I consider that the inclusion of this additional integer would have been a matter of routine. Further, having regard to the evidence generally, I consider that combining the features of Claim 7 would have been a matter of routine. For these reasons, I consider that Claim 7 is 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 analysis for Claim 12 of the 223 Patent is substantially applicable to this additional integer. Further, having regard to the evidence generally, and for substantially the same reasons as for Claim 12 of the 223 Patent, I am satisfied that the combination of features in Claim 8 was also a matter of routine. For these reasons, I consider that Claim 8 is 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 analysis for Claim 8 of the 059 Patent is substantially applicable to this additional integer. Further, having regard to the evidence generally, I consider that combining the features of Claim 10 would have been a matter of routine.

(g) Claims 11, 12 and 13 are dependent claims that do not introduce additional features that affect the analysis. Accordingly, the analysis for Claim 10 is 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. In his evidence, Mr Wilson said that an MCU that controls all the various electronic features to which he had been referred would likely be required. I am 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. For these reasons, I consider that Claim 14 is obvious in the relevant sense.

(i) Claim 16 is a dependent claim that does not add integers that affect the analysis. Accordingly, the analysis for the earlier claims (as applicable) applies 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 analysis for Claim 5 of the 223 Patent is substantially applicable to this additional integer. Further, having regard to the evidence as a whole, I consider that combining the features of Claim 17 would have been a matter of routine. For these reasons, I consider that Claim 17 is obvious in the relevant sense.

(k) Claim 18 is a dependent claim (being dependent on Claim 17) that does not add integers that affect the analysis. Accordingly, for the reasons set out in relation to Claim 17, I consider Claim 18 to be obvious in the relevant sense.

(l) Claim 19 is a dependent claim (being dependent on Claim 17) that does not add integers that affect the analysis. Accordingly, for the reasons set out in relation to Claim 17, I consider 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 additional integers introduced by this claim do not affect the analysis for present purposes. Accordingly, for the reasons set out in relation to Claim 17, I consider Claim 20 to be obvious in the relevant sense.

(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 analysis for Claim 4 of the 223 Patent is substantially applicable for this additional integer. Further, having regard to the evidence generally, I consider that combining the features of Claim 21 would have been a matter of routine. For these reasons, I consider 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 analysis for Claim 5 of the 223 Patent is substantially applicable to this additional integer. Further, having regard to the evidence generally, I consider that combining the features of Claim 22 would have been a matter of routine. For these reasons, I consider 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 analysis in relation to Claim 22 is 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 addition of this integer does not affect the analysis for present purposes. Accordingly, the analysis will be 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 analysis for Claim 13 of the 223 Patent is substantially applicable for this additional integer. Further, having regard to the evidence generally, I consider that combining the features in Claim 25 would have been a matter of routine. For these reasons, I consider 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 analysis for Claim 5 of the 223 Patent is substantially applicable to this additional integer. Further, having regard to the evidence generally, I consider that combining the features of Claim 26 would have been a matter of routine. For these reasons, I consider that Claim 26 is obvious in the relevant sense.

(t) Claim 29 is a dependent claim that does not add integers that affect the present analysis. Accordingly, the analysis for the earlier claims (as applicable) applies.

(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 analysis for Claim 7 of the 059 Patent is substantially applicable to this claim. Further, having regard to the evidence generally, I consider that combining the features of this claim would have been a matter of routine. For these reasons, I consider Claim 30 to be obvious in the relevant sense.

(v) Claim 31 is a dependent claim that does not add any integers that affect the present analysis. Accordingly, the analysis for the earlier claims (as applicable) applies.

(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 addition of that integer does not affect the analysis for present purposes. Accordingly, the analysis for the earlier claims (as applicable) applies.

(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 analysis for Claim 12 of the 223 Patent is substantially applicable to this claim. Further, having regard to the evidence generally, I consider that combining the features of Claim 33 would have been a matter of routine. For these reasons, I consider that Claim 33 is 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 analysis for Claim 7 of the 059 Patent is substantially applicable to this claim. Further, having regard to the evidence generally, I consider that combining the features of Claim 34 would have been a matter of routine. For these reasons, I consider that Claim 34 is 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 common general knowledge has been set out above. It was common general knowledge that battery control circuitry was commonly used (often in the form of "off-the-shelf" ICs 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, I consider that the addition of this integer would have been a matter of routine. Further, I consider that combining the features of Claim 35 would have been a matter of routine. For these reasons, I consider that Claim 35 is 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. Save for the USB output connector and the USB output circuit, this claim is similar for present purposes to Claim 1 of the 338 Patent. The analysis for Claim 1 is therefore substantially applicable. In relation to the USB output connector and the USB output circuit, the analysis in relation to Claim 8 of the 059 Patent is substantially applicable. Further, having regard to the evidence generally, I consider that combining the features of Claim 36 would have been a matter of routine. For these reasons, I consider that Claim 36 is obvious in the relevant sense.

[290]

In light of the conclusions I have reached above based on the common general knowledge alone, it is unnecessary to consider the inventive step issue on the basis of the common general knowledge together with the HP Manual. Nevertheless, for the sake of completeness, I will consider the issue on that basis.
The HP Manual has been described above in the section of these reasons dealing with novelty. Also in that section, I have summarised the expert evidence relating to the HP Manual. That evidence is relevant to the inventive step issue as well as to novelty.
As set out above, the HP Manual describes a jump starter with an internal (lead acid) battery. The description included that the jump starter had reverse polarity protection and an alarm. The brochure stated that the product "[p]revents sparking from accidental reverse connection". I think the better reading of this is that the product actually prevents reverse polarity connection rather than merely sounding an alarm if the device is connected with reverse polarity. The brochure also states (on page 5) that polarity protection is provided by an MCU-controlled solenoid (a type of switch, also called a relay). Although that information appears under the heading "Jumpstart Leads", it seems more likely that the polarity protection and switch were in the body of the device rather than in the leads. In any event, the feature is disclosed.
As set out above, in the concurrent evidence session, Mr Wilson was taken to several parts of the manual and it was then put to him that, putting all that together, the manual discloses that there is a solenoid which is used to protect against sparking caused by reverse polarity connection. Mr Wilson accepted this, but said he could not tell how it would be configured. Further, Mr Wilson was taken to page 16 of the manual, which is headed "Q. Why didn't my jumpstarter start my vehicle?" and includes "the vehicle's battery may be below 1.2V, the minimum voltage for the jumpstarter". Mr Wilson accepted that this 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 1.2 volts. This provides protection against sparking by the two cables touching each other.
In my view, Claim 1 of the 223 Patent would have been obvious to the person skilled in the art in the light of the common general knowledge as at the asserted priority date taken together with the HP Manual. I have already described key aspects of the common general knowledge. The HP Manual describes a product that has a form of reverse polarity protection involving the use of a solenoid. Further, the HP Manual 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 these matters, I am satisfied that a combination as described in Claim 1 was a matter of routine. There does not appear to be anything inventive about integers 1.1, 1.2, 1.3, 1.4 or 1.5 of Claim 1. Further, in light of the common general knowledge and the HP Manual, 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, it would have been a matter of routine for the person skilled in the art to develop a device with these features. Further, I consider that it would have been a matter of routine to combine the features referred to in Claim 1. For these reasons, I am satisfied that Claim 1 is obvious in the relevant sense.
I do not consider it necessary to consider each of the other asserted claims individually. It is sufficient to express my views in the following general way. These views apply to the asserted claims in all three Patents. Although in the context of novelty, the HP Manual was relied on only in relation to the 223 Patent, in relation to inventive step the HP Manual is relevant to all three Patents. 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. In relation to the balance of the asserted claims, the analysis will be the same as set out above under the heading "Consideration - CGK alone".
For these reasons, assessing the matter on the basis of the common general knowledge together with the HP Manual, I conclude that all of the asserted claims are obvious in the relevant sense and invalid.

[291]

In light of the conclusions I have reached above based on the common general knowledge alone, and the common general knowledge together with the HP Manual, it is unnecessary to consider the inventive step issue on the basis of the common general knowledge together with the QTC Brochure. Nevertheless, for the sake of completeness, I will consider the issue on that basis.
The QTC Brochure has been described above in the section of these reasons dealing with novelty. Also in that section, I have summarised the expert evidence relating to the QTC Brochure. That evidence is relevant to the inventive step issue as well as to novelty.
As set out above, the QTC Brochure is a one-page quotation. The description of the product includes: a lithium polymer battery; USB output; Micro USB input; short circuit protection; and reverse polarity protection. The description also states that the capacity (of the battery) is 10,000 milliamp hours.
As set out above, both Professor Holmes and Mr Wilson expressed reservations about whether the features the brochure describes (in particular, the battery capacity) are accurate. Notwithstanding those concerns, I consider that the person skilled in the art would have some regard to the document and draw something from the features of the device that it identifies.
In my view, Claim 1 of the 223 Patent would have been obvious to the person skilled in the art in light of the common general knowledge as at the asserted priority date together with the QTC Brochure. I have already described key aspects of the common general knowledge. The QTC Brochure describes 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). In light of these matters, I am satisfied that Claim 1 was a matter of routine. Although the QTC Brochure does not describe how the reverse polarity protection or the short circuit protection are achieved, it would have been a matter of routine for the person skilled in the art to develop a device with those features. Further, I consider that it would have been a matter of routine to combine the features referred to in Claim 1. For these reasons, I am satisfied that Claim 1 is obvious in the relevant sense.
I do not consider it necessary to consider each of the other asserted claims individually. 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. 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 these features provides further support for that conclusion. Moreover, 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. In relation to the balance of the asserted claims, the analysis will be the same as set out above under the heading "Consideration - CGK alone".
For these reasons, assessing the matter on the basis of the common general knowledge together with the QTC Brochure, I conclude that the asserted claims are obvious in the relevant sense and invalid.

[292]

In light of the conclusions I have reached above in relation to inventive step, it is unnecessary to consider the remaining grounds of invalidity. Nevertheless, I will consider the best method ground for completeness.
Section 40(2)(aa) of the Patents Act requires that a complete specification "disclose the best method known to the applicant of performing the invention". The applicable principles were discussed by the Full Court of this Court in Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138; 126 IPR 427 (Sandvik) at [93]-[115].
B&W contends, in relation to each of the Patents, that the complete specification does not comply with the requirements of s 40(2)(aa) of the Patents Act, in that the complete specification does not disclose the best method known to NOCO of performing the invention. B&W provides particulars in Confidential Annexure A to the Consolidated Particulars of Invalidity dated 6 February 2025. In summary, B&W contends that in late 2014 and early 2015 (that is, after the filing date of PCT434) NOCO became aware of problems with its commercial product, the GB30 (or Genius Boost 30), which is the commercial embodiment of the invention, and made improvements to that product. B&W contends that, as at the filing date of each of the Patents (i.e. dates in 2020, 2021 and 2022), NOCO had knowledge that there was an improved embodiment of the invention, but NOCO did not disclose this embodiment in the complete specification for each Patent.
This ground raises both factual and legal issues. A threshold legal issue is whether the relevant date for the purposes of ascertaining NOCO's knowledge of the best method is the date of filing PCT434 (3 July 2014) or the date of filing of each of the Patents. If the relevant date is the date of filing PCT434, this ground of invalidity fails. If the relevant date is the filing date of each of the Patents, there is 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.
I will start by considering the threshold legal issue.
B&W contends that the best method known to a patentee which must be disclosed is that known at the time of filing of the complete application; thus, where a complete specification (such as each of the Patents) claims priority from an earlier filed PCT application (or earlier filed divisional application), it is the best method known to the applicant at the filing date of the complete specification of the patent in suit that must be disclosed, not the best method known to the patentee at some antecedent date, such as the date of filing of the PCT application from which priority is claimed. B&W relies on Pfizer at [375]-[379]; Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27; 247 FCR 61 (Servier) at [111]-[114], [116]; Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd [2018] FCA 1573; 135 IPR 403 (Dometic) at [229]-[234]. B&W submits that the Court should follow Dometic unless satisfied it is plainly wrong.
NOCO contends that the knowledge requirement should be assessed at 3 July 2014, being the filing date of PCT434, which is the first filed application in the claim of divisional applications and the date from which the term of each patent runs. NOCO relies on Rescare Ltd v Anaesthetic Supplies Pty Ltd [1992] FCA 811; 25 IPR 119 (Rescare) at 135 per Gummow J. NOCO contends that the reasoning of Gummow J in that passage was approved by the Full Court in Pfizer at [375]-[379] and by the Full Court in Servier at [113], [114]. NOCO also relies on Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84; 176 FCR 575 (Mont Adventure) at [14], [18]. NOCO submits that the Court ought not follow Dometic on the basis that it is inconsistent with Pfizer, Servier and Mont Adventure and because the arguments now put were not considered. NOCO submits that Dometic is plainly wrong.
In my view, for the reasons that follow, NOCO's position is to be preferred.
In Rescare, in relation to best method, there was both a factual issue and an issue of law. The factual issue arose because the use of a "one tube" apparatus had distinct advantages over a "two tube" apparatus (see at 132). The evidence indicated that the "one tube" apparatus was not known to the relevant person (Professor Sullivan) as the best method for performing the invention on the international filing date (23 April 1982). On the other hand, it was contended that he was aware of that method on the date of publication (4 November 1982). Gummow J first dealt with the factual issue and concluded that he was not satisfied that by 4 November 1982 the "one tube" method was known to Professor Sullivan. It was therefore unnecessary to determine the issue of law, which concerned the relevant date as at which the best method known to the applicant for performing the invention is to be identified. Nevertheless, his Honour considered that issue for completeness (at 133-135), concluding (at 135) that 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". His Honour said that, in this case, it was the international filing date, 23 April 1982, being the "date from which the term of the patent runs". In his Honour's view, one of the two historical rationales of the best method requirement was to prevent the patentee from obtaining "the benefit of a monopoly without giving to the public the corresponding consideration of the best method of performing the invention" (at 133).
I would make the following observations about Rescare. Clearly, Gummow J's conclusion on the issue of law was obiter. Nevertheless, it was a considered view on the issue. The issue in that case was not the same as the issue in the present case. In Rescare, the contest was between the international filing date and the date of publication, whereas here it is between the international filing date and the filing date of the divisional application. Nevertheless, Gummow J's view supports NOCO's position. Gummow J considered that the relevant date for the best method ground was the international filing date, which was, in that case, the date from which the term of the patent ran. By parity of reasoning, in the present case, the relevant date is the date of filing PCT434, being the date from which the term of each of the Patents runs (on the assumption that I am making in this section of my reasons - see [255] above).
In Pfizer, French and Lindgren JJ considered the best method issue at [348] and following. Crennan J agreed with their Honours' reasons in relation to best method (at [408]). The positions of the parties in that case were as follows. Lilly contended that the best method must be included in the complete specification at the filing date, which, in that case, was the international filing date of the PCT application (13 May 1994) (see [350]). Pfizer submitted that the date by which disclosure of the best method must be made was either the date of grant (10 July 1997) or the date of commencement of the proceeding at first instance (17 September 2002) (see [351]). The primary judge in that case held that the relevant date was the date of commencement of the proceeding or, alternatively, the date of grant. The primary judge's conclusion was that the relevant date was, at the earliest, the date of grant. By that date, the best method of claim 8 was included in the specification (see [356]).
At [366] and [375], their Honours drew a distinction between two dates:

[297]

In this paragraph, their Honours were primarily directing themselves to the second of the two dates they had identified in their reasons at [375], that is, the date by which the specification's full description of the invention must include disclosure of it. Their Honours held that the disclosure of the best method must be made in the complete specification when it is filed (which was, in that case, the date of filing the international patent application). Thus, it was insufficient for the best method to be included in the complete specification later by way of amendment.
During some of B&W's submissions before me, there seemed to be a suggestion that the Full Court in Pfizer had qualified Gummow J's statement in Rescare in some way. I do not read the reasons of the Full Court in that way. In my opinion, French and Lindgren JJ's view as to the first date referred to in [375] aligns with the view expressed by Gummow J in Rescare. Their Honours explained that Gummow J was concerned with the first date rather than the second date referred to in [375] of Pfizer.
The important point for present purposes is that at [375], French and Lindgren JJ held that the relevant date for the purposes of the knowledge element is the filing date of the complete specification (which was, in that case, the international filing date). In this regard, I note that s 29A(2) of the Patents Act provides that "[t]he 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". For this reason, the filing date of a PCT specification (i.e. the international filing date) is capable of constituting the filing date of the complete specification. It is not clear to me why the analysis in Pfizer at [375] would not apply in the circumstances of this case. In other words, it is not clear to me why the filing date would not be treated as the filing date of PCT434. This is the date from which the term of each of the Patents runs, a matter to which Gummow J referred in Rescare at 135. Thus, by parity of reasoning, the relevant date for the knowledge element is the filing date of PCT434. Further, the disclosure was required to be made in the complete specification for PCT434 when it was filed.
The judgment of the Full Court in Servier at [111]-[114] does not take the issue any further. In that case, the Full Court adopted the relevant statements of principle in Pfizer in substantially the same terms.
While a different view was taken in Dometic at [233], I consider that I should follow (what I understand to be) the view of the Full Court in Pfizer rather than the holding in that case. I do not consider it necessary for me to form a view on whether the holding in Dometic is plainly wrong.
For these reasons, applying Pfizer, I consider that the relevant date for the knowledge element is the date of filing PCT434. Further, the disclosure was required to be made in the complete specification for PCT434 when it was filed. The earliest date on which NOCO is said to have become aware of a better method of performing the invention than was disclosed in PCT434 was, relevantly, after the date on which PCT434 was filed. It follows that the best method ground of invalidity is not made out.
I will now consider the remaining factual issues relating to best method on the assumption that (contrary to my conclusion above) the relevant date for the knowledge element is the date of filing each of the Patents (i.e. dates in 2020, 2021 and 2022).
The GB30 was launched in September 2014. The preferred embodiment described in the Patents reflects the GB30 as launched.
B&W relies on seven documents, and the evidence of the experts and Mr Stanfield in relation to those documents, to make out its case. The seven documents are annexed to the second affidavit of Professor Holmes as "GH-18" through to "GH-24". These documents, and the evidence in relation to them, establish that, in late 2014 and early 2015, NOCO experienced certain problems with the GB30 as launched and made changes to address those problems, thereby improving the product. In particular:

[299]

In relation to the first issue, on 11 September 2014, Mr Jonathan Nook (the President of NOCO) sent an email to Mr Stanfield and Mr Derek Underhill (an industrial designer working for NOCO) that included "OK. We f***ed up. The Gb30 battery needs to be bigger - in fact double its size". Mr Stanfield during cross-examination accepted that Mr Nook was expressing the need for the battery in the GB30 to be able to put out more discharge current. The solution that was contemplated at that time was to adopt a 90C rated battery. During cross-examination, Mr Stanfield said that, among the improvements to the product, the higher power batteries were "the most important thing" and the main advantage was "the higher discharge rate from the batteries" (T268-269).
In relation to the second issue, in an email dated 25 September 2014, Mr Stanfield wrote to Mr Jonathan Nook and Mr Underhill that "[w]e can remove the FET/DIODE smart switch and replace it with the RELAY/DIODE smart switch". Mr Stanfield accepted in cross-examination that the relay was a simpler solution. While he said that it had some advantages and some disadvantages, I am satisfied based on his evidence as a whole that it represented an improvement because it was more durable and could handle a higher discharge current as the battery size increased.
I find that NOCO as a corporate entity was aware of these improvements to the product. Mr Jonathan Nook, the President of NOCO, authored or received the relevant correspondence.
Having regard to the nature of the invention (see Sandvik at [107]), I am satisfied that the improved product constituted the best method for performing the invention and that NOCO was aware of this.
Therefore, if the relevant date for the purpose of the knowledge element is the date of filing of each of the Patents, NOCO failed to disclose the best method known to it as at each of those dates.
However, for the reason set out in [389] above, I consider that the best method ground of invalidity is not made out.

[301]

In light of my conclusion that all of the asserted claims are invalid on the basis of lack of inventive step, it is unnecessary to consider the infringement issues. However, I do so for completeness. I proceed in this section on the assumption that the asserted claims are valid.
In NOCO's opening submissions on infringement, it identifies 10 infringement issues. I will address each of these in turn.
In B&W's opening submissions on infringement, it accepts that the IS 920 and IS 1220 products do infringe Claim 14 of the 059 Patent.
Infringement issue 1 concerns automatic start. The expert evidence establishes that each of the B&W impugned products requires an extra step to turn on the power switch after the battery presence and polarity conditions have been met. B&W contends that that extra step avoids infringement in respect of many of the asserted claims on the basis that those claims require automatic start after satisfaction of the preconditions. The outcome of this infringement issue follows the conclusions I have reached in relation to the Automatic Start issue. In respect of the asserted claims that I have concluded do not require automatic start, infringement is not avoided on the basis put forward by B&W. In respect of the asserted claims that I have concluded do require automatic start, infringement is avoided.
Infringement issue 2 relates to manual override. The expert evidence establishes that each of the B&W impugned products includes an override feature, where a user can force the power switch to turn on where the jump starter has not detected presence. B&W contends that 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 require that the control system or circuit (including the microcontroller) must not switch on the power switch unless the depleted/discharged battery is both present and properly connected (see [133] above). B&W contends that the impugned products therefore do not infringe the claims identified in this paragraph. The outcome of this infringement issue follows the conclusions I have reached in relation to the Manual Mode issue. I have concluded that a device that has a manual mode as described above is inconsistent with and therefore outside the scope of the claims identified in this paragraph. Accordingly, the impugned products do not infringe those claims.
Infringement issue 3 relates to the DC-DC converter. Claims 18-20 of the 223 Patent, Claims 1-13 and 22-25 of the 059 Patent and all claims of the 338 Patent require the use of a "DC-DC converter" to up-convert voltage (either generally or to a specific voltage). The expert evidence establishes that the USB charging circuit identified by Mr Wilson in each of the impugned products only includes the power stage section and excludes the controller section; the controller section of the alleged DC-DC converter is, instead, incorporated within the software of the microcontroller. On this basis, B&W contends that the impugned products do not infringe the claims referred to in this paragraph. The outcome of this infringement issue follows the conclusions I have reached in relation to construction issue 10. I have accepted NOCO's construction in relation to this construction issue. It follows that I reject B&W's non-infringement contention.
Infringement issue 4 relates to charging to at least 11.1V or 12.4V. B&W's non-infringement contention in this regard related to Claim 19 of the 223 Patent, Claim 11 of the 059 Patent and Claim 4 of the 338 Patent. NOCO no longer relies on those claims. As a result, this infringement issue falls away.
Infringement issues 5 and 6 relate to the power switch and the output controlling the power switch. It appears from NOCO's closing notes on infringement at [37] that B&W does not press the relevant non-infringement contentions. Accordingly, these infringement issues fall away.
Infringement issue 7 concerns the USB input charge circuit. Claims 16 and 17 of the 223 Patent (and dependent claims), all asserted claims in the 059 Patent, and all asserted claims in the 338 Patent require the use of a "USB charging port", "USB charging circuit", "USB input charge circuit" or "USB input connector". B&W accepts that the IS 920 and the IS 1220 products satisfy the USB connector requirements in these claims. However, B&W contends that the IS 1400 and IS 2000 products do not fall within these claims on the basis that they are each charged through a USB-C connector and charging port. B&W contends that the person skilled in the art would not have understood, as at the asserted priority date, the claims referred to in this paragraph as encompassing USB-C. I accept that the IS 1400 and IS 2000 products are each charged through a USB-C connector and charging port. However, for similar reasons as discussed above in relation to the USB issue, I consider that the expression "USB" is broad enough to encompass USB-C. Accordingly, I reject B&W's non-infringement contention.
Infringement issue 8 relates to the use of two sensors to make detections. B&W contended that Claims 6 and 14 of the 223 Patent, Claims 14 and 20 of the 059 Patent and Claims 23 and 26 of the 338 Patent (and their dependent claims) all require the use of two sensors. B&W contended that the IS 1400 and the IS 2000 products do not fall within the scope of these claims because they do not involve the use of the two sensors required by these claims. NOCO no longer relies on these claims in relation to the IS 1400 and the IS 2000. Accordingly, this infringement issue falls away.
Infringement issue 9 relates to the DC-DC converter controlled by a microcontroller. It appears from [37] of NOCO's closing notes on infringement that B&W does not press the relevant non-infringement contention. Accordingly, this infringement issue falls away.
Infringement issue 10 relates to the voltage measurement circuit. It appears from [37] of NOCO's closing notes on infringement that B&W does not press the relevant non-infringement contention. Accordingly, this infringement issue falls away.
In the circumstances of this case, it is unnecessary to identify which, if any, of the impugned products infringe claims in the Patents. This can be worked out by applying the above conclusions.

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