In patent infringement suits, defendants invariably allege invalidity as a primary and powerful defense strategy. For the patentholder, this creates the significant risk of the patent being declared unenforceable.
It is well-established that a patent can be invalidated if post facto the grant it is determined that the issued patent is non-compliant with the legal prerequisites of patentability. These include lack of novelty; obviousness (or, lack of inventive step); insufficient disclosure (lack of enabling disclosure); ineligible subject matter; prior public use/sale; inequitable conduct; and, fraud.
The ruling of the Supreme Court of Appeal of South Africa in the Groundprobe Pty Ltd and Another v. Reutech Mining (Pty) Ltd and Others(2021)[1] case exemplifies the risk patentees run in infringement lawsuits
GroundProbe Pty Ltd, an Australian entity, had proprietary rights over Patent No. 2012/08400 titled “Work Area Monitor” issued by the Companies and Intellectual Property Commission (CIPC) in the Republic of South Africa.
The patented invention specified the use of a RADAR-based slope-stability monitoring system for open-cast mines. The invention also featured claims for warning of dangerous movement. The patent owner, GroundProbe and its South African licensee sued Reutech Mining (Pty) Ltd and related companies for the infringement of the patented claims.
The respondents, Reutech and others, admitted the acts of making, using and carrying out the claimed system in the trial court. They, however, challenged the validity on the claims, arguing that the invention lacked an inventive step and was obvious to any person skilled in the art by virtue of prior disclosures. Hence, they counterclaimed revocation.
The trial court ruled in favor of Reutech, holding that the invention did not disclose any novel advancements, as the mounting of radar systems on vehicles was a known concept. Further, it concluded that the patent simply applied existing stabilization techniques to a bakkie (a pickup truck) instead of a trailer.
Hence, the patent was revoked for lack of inventive step.
GroundProbe appealed against the judgment
In the Supreme Court of Appeal (SCA), the appellants confined the appeal to the single ground of inventive step. The SCA framed the legal question in conventional patentability terms of whether the claimed invention differed from the prior art, when judged at the priority date, and produced an “inventive step,” as required by Section 25 of the Patents Act, 1978.
Relying on the judgments in Roman Roller CC and Another v Speedmark Holdings (Pty) Ltd and Ausplow (Pty)Ltd v Northpark Trading 3 (Pty) Ltd, the court observed that inventiveness can be ascertained through “expert evidence” and established on the basis of “common general knowledge of the person skilled in the art and the teachings of the cited prior art.”
In its analysis the SCA examined the practical differences between the prior arrangement and the claimed invention. It evaluated the broader technological context and noted that the patent did not disclose any advances in radar technology. Further, it observed that radars had been mounted on vehicles since World War II.
The court also highlighted that the use of stabilization apparatus to eliminate disturbances had already been disclosed in prior art; and, it had been previously used in Reutech's trailer-based systems. It also noted that several claims in the invention were overly broad.
Hence, it ruled that the only conceivable enhancement was the relocation of radar from trailer to vehicle, which did not amount to a step forward in inventive character. That idea, the court held, involved no inventive ingenuity beyond the routine skill of a person experienced in the art.
The appeal was dismissed, and GroundProbe's patent was revoked.
The judgment is notable as a clearly reasoned decision, and it underscores the reluctance to permit patents that would effectively privatize trivial mechanical or positional changes to long-established technology. Patent grants for such trivial advances impede, rather than promote, innovation and industry.
The case reinforces that mere obvious or incremental adaptations of known inventions will typically fail the non-obviousness requirement of patentability, which is critical for determining the outcome of and potential damages awarded in an infringement suit.
Further, the invalidation risk is a central constituent of patent litigation. Therefore, the patentee must be prepared to defend the patent's validity vigorously, often using legal opinions and expert testimony to show that the patent is strong and meets all patentability criteria.
At Blaze Ventures, we have elaborate processes and qualified professionals for advising parties and enterprises in patent infringement litigation cases, both for and against patentees and assignees.
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[1] [2021] ZA SCA 22 (19 March 2021)
