On 15 February 2022, Justice Nicholas of the Federal Court of Australia handed down the decision in F45 Training Pty Ltd v Body Fit Training Company Pty Ltd (No 2) [2022] FCA 96 in which two patents owned by F45 Training Pty Ltd (F45) were held to be invalid. The decision preserves the position that mere business methods are not patentable.
The Parties, the Patents and the proceedings
F45 operates 45 minute, team-based, high intensity interval training. The company owned two patents numbered 2015101604 and 2016101429 (the Patents) over the method or system which it uses for configuring and operating its fitness studios from a central server.
The specification of the Patents described the invention as a series of arrangements which download periodic exercise routines from a central server to a number of remote fitness studios. This is communicated to the user by animated directions on various displays in the studio. The invention described a method or system to improve the novelty of exercising, therefore improving its effectiveness.
F45 brought infringement proceedings against methods used by a competitor, Body Fit Training Company Pty Ltd (BFT), four of its franchisees and one of its directors. In turn, BFT denied infringement and cross-claimed that, in any event, the Patents were invalid.
Validity
Section 18(a) of the Patents Act 1900 (Cth) provides that an invention is patentable if it is a manner of manufacture. This has come to denote whether the invention enables a product to be made, or a process produced, as a result of human action.1
BFT claimed that the Patents were invalid as the invention was not a manner of manufacture because it pertained to a mere business method. Further, for computerised business methods to be patentable, the invention must lie in that computerisation.2 BCT submitted that the invention was not directed to any problem in the field of computer technology, but rather was intended to maintain the user’s interest and motivation using generic computer technology.
F45 relied on the traditional principle in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 (NRDC) to submit that the invention was a manner of manufacture as it “gave rise to an artificially created state of affairs of economic significance or utility in a field of economic endeavour”. To satisfy the ‘artificially created state of affairs’ limb of such test, F45 noted the physical effort required in configuring exercise stations to reflect the method or system.
The Federal Court found that the invention described in the Patents was not a manner of manufacture as [49-51]:
- the substance of the invention was not in the actual physical arrangement of the exercise stations themselves, but rather the computer implemented scheme which enabled such physical arrangement;
- demonstrating ‘physical effort’ does not necessarily mean that an invention results in an ‘artificially created state of affairs’ as required under the NRDC test;3 and
- although accepting that computer implemented inventions may encompass ‘physical effort’, this is not sufficient to result in an ‘artificially created state of affairs’.4
Justice Nicholas likened F45’s invention to a scheme for the layout of a sports field which is changed periodically to take account for the seasons, noting that such a scheme has historically never been regarded as patentable subject matter. In turn, the Court found that F45’s Patents were invalid and made orders for their revocation.
Despite the finding of invalidity Justice Nicholas continued to resolve that, in any event, BFT’s actions did not infringe the Patents. The finding was informed by reading the specific words of the specifications within their context, construed in light of any relevant common general knowledge. This relied heavily on expert evidence.
If you would like any further information as to whether your invention is patentable or could potentially infringe third party patents, please contact the authoring partner.
This article was written by Helen Kavadias, Partner and Tiana Totaro, Graduate-at-Law.
1 D’Arcy v Myriad Genetics (2015) 258 CLR 344.
2 Commissioner of Patents v Rokt Pte Ltd (2020) 277 FCR 267 (‘Rokt’); Encompass Corporation Pty Ltd v Infotrack Pty Ltd (2019) 372 ALR 646)
3 TA Blano White, Patents for Inventions, 5th ed. Stevens & Sons, London, 1983 at 4-903,4-911 citing Rolls Royce Lt’s Application [1963] RPC 251; In the Matter of an Application for a Patent by W (1914) 31 RPC 141.
4 Commissioner of Patents v RPL Central Pty Ltd (2015) 96-98.
