Technology company Reflex Instruments has lost its challenge to rival Globaltech’s patent for two mining survey tools, with a judge finding Reflex had not established the technology wasn’t novel and lacked an inventive step.
Globaltech specialises in positioning systems that capture physical properties of the subterranean landscape and alleges that Reflex, as a unit of global mining tech company Imdex, sold two products, EZ-GYRO and EZ-TRAC, that infringed its Australian patent, ‘optical device for use with downhole equipment’.
In its lawsuit, filed October 24, 2019, Globaltech is seeking damages from losses stemming from the alleged infringement as well as court orders restraining Reflex from further selling the two products.
Federal Court Justice Jayne Jagot on Tuesday dismissed Reflex’s cross-claim that alleged Globaltech’s patent was invalid for lack of novelty or inventive step.
“The three prior art documents…do not anticipate the invention as claimed in the patent for numerous reasons in each case and, accordingly, do not deprive the claimed invention of novelty,” said Justice Jagot.
The patent describes an invention that transfers data from equipment used in drilling survey operations to help determine the orientation of the core once extracted. Its priority date is August 2011 and it is due to expire in August 2032.
The judge found there was an inventive step in the patent, which she said improved on existing downhole tools by enabling the light signal within the optical device to be reflected to an infrared communication port on the side of the device.
“[The inventive step] would mean that when the instrument was brought to the surface for data communication, the end of the housing did not need to be uncoupled to enable access to the infrared port for the data to be obtained, as it could be communicated from the side port to a hand-held communication device,” said Justice Jagot.
“This perceived capacity for a material improvement to existing devices was not obvious at the priority date. While the method chosen to effect this improvement would have been obvious to a person skilled in the art who had been asked to make that particular improvement at the priority date, there was no such problem perceived with the existing designs and no need felt to improve the designs in this or any similar manner.
“The inventiveness of the perception and related idea to improve the existing designs in this or some similar manner is sufficient to sustain the inventive step of the invention as claimed.”
Globaltech accuses Reflex of infringement by manufacturing, selling and hiring its EZ-GYRO and EZ-TRAC products from at least May 2019, including supplying the devices to mineral exploration company Boart Longyear Australia on three occasions.
Globaltech alleges that Reflex infringed the patent flagrantly, that it knew both of the existence of the patent and that it had no licence or authority for the invention, and that it had “no reasonable basis” for believing that its conduct did not amount to infringement.
Reflex has earned and continues to earn “substantial profits” from the allegedly infringing products and Globaltech “has suffered and will continue to suffer substantial loss and damage” through loss of sales as a result of this conduct, Globaltech says.
Reflex declined to comment on Justice Jagot’s decision.
Globaltech is represented by Adrian Ryan SC and Andrew Fox SC, instructed by Bird & Bird. Reflex is represented by John Hennessy SC, Phoebe Arcus and Amy Campbell, instructed by Gilbert + Tobin.
The case is Globaltech Corporation Pty Ltd v Reflex Instruments Asia Pacific Pty Ltd.
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