How’s Your Hamstring?

Vald Pty Ltd v KangaTech Pty Ltd (No 5) [2024] FCA 333 and Vald Pty Ltd v KangaTech Pty Ltd (No 6) [2024] FCA 408 

5 April 2024 and 23 April 2024

Federal Court Australia

Downes J

Background

Vald Pty Ltd sued KangaTech Pty Ltd for patent infringement and Kanga cross-claimed alleging that Vald’s patent is invalid on the basis of lack of support, lack of sufficiency and lack of inventive step.

Vald’s Australian patent 2012388708 relates to an apparatus for use in assessing the strength of a knee flexor muscle of a person, and more specifically to an apparatus for assessing hamstring strength while a person performs an eccentric knee flexor contraction.

The primary muscle group that flexes the knee is the hamstring muscle group, and exercises such as ‘Nordic curls’ are used to strengthen the hamstrings which assists in the prevention of hamstring injuries. It is therefore important to be able to determine whether the benefits of these exercises are being achieved, as well as to evaluate the risk of injury.  Vald’s invention purports to assist with the detection of hamstring strength and injury.

Kanga develops and sells testing devices to assist athletic performance and the prevention of physical injuries.  Vald alleged that Kanga had sold two products which infringed its patent.  Following Vald’s allegation, one of those products was subsequently twice modified.

Kanga accepted that, if certain claims of Vald’s patent are valid, its unmodified products (but not its modified products) infringe those claims.  It also accepted that, if the Court adopted a certain construction of claim 1, its counter-claim of patent invalidity would fail.

Justice Downes delivered her decision on infringement and validity in Vald Pty Ltd v KangaTech Pty Ltd (No 5) [2024] FCA 333 (the First Decision). Her Honour delivered a separate judgment on orders in Vald Pty Ltd v KangaTech Pty Ltd (No 6) [2024] FCA 408 (the Second Decision).

Key Issues

In the First Decision, the key issues centred on the expert evidence filed by the parties and claim construction.

Vald filed expert evidence from an experienced physiotherapist and academic.  Kanga filed expert evidence from an experienced sports scientist and academic.  Important parts of the experts’ evidence differed and, where that occurred, the Court favoured the evidence of Kanga’s expert.

The Court noted that the primary role of independent experts is to assist the Court in ‘understanding the technical background to, and the purpose of, the invention’.  After considering the expert evidence (both written and oral), the Court found that Kanga’s expert ‘gave careful and considered answers to questions asked of him during the hearing, appeared to be attempting to assist the Court and, by his answers and general demeanour, did not appear to be favouring any party or outcome in the dispute’.  In contrast, the Court found that Vald’s expert did, at times, ‘appear to be seeking to assist Vald when answering questions asked of her during the concurrent session, which affected my perception of her independence’.

The Court went on to note that there were also inconsistencies between Vald’s expert’s written and oral evidence, and the expert ‘appeared determined to ignore the plain meaning of parts of the specification which was inconsistent with her preferred construction of the claims’.

Regarding claim construction, the key issue was whether claim 1 requires both legs of the user to be secured within the apparatus, with claim 1 including the wording:

1. An apparatus ….. including:

          two securing members;

        each securing member being configured to secure a respective lower leg of the subject in a position that, in use, is substantially fixed relative to a support when the subject lowers the subject’s upper body from a kneeling position to perform an eccentric contraction of the at least one knee flexor muscle of the subject; …

Kanga’s position was that claim 1 required both legs to be secured in the securing members.  Vald’s position was that either one or both legs could be secured.  The Court found that a proper construction of claim 1 requires both legs to be secured in the securing members, and as such Kanga’s cross-claim on invalidity failed.

Following their win on validity and infringement, Justice Downes made orders in the Second Decision i) restraining Kanga from infringing the relevant claims of Vald’s patent without the licence or authority of Vald, and ii) requiring Kanga to deliver up or destroy all its infringing products and material promoting or marketing its infringing products.

Kanga sought a declaration of non-infringement for its modified product.  Justice Downes found that there was nothing to be gained in granting such a declaration, as the findings in the First Decision made it clear that Kanga’s modified product did not infringe Vald’s patent.  Her Honour also noted that Kanga should have sought such a declaration as part of the relief sought in its cross-claim and it had not done so.

At trial, Kanga had offered undertakings to the Court.  Because the trial related to liability only, the form of undertakings was not considered further by the Judge.  Following the trial, Kanga offered a form of undertakings, which included undertakings not to exploit any unmodified version of its product, and not to reverse, alter or otherwise change the modifications to its modified product. Vald also sought an order that Kanga be bound by these undertakings. Justice Downes declined to make such an order on the basis that it would be ‘disproportionate’ because the undertakings did not add to the level of protection provided by the injunction.  Her Honour went on to note that Kanga might wish to further modify its modified product in a manner that would not result in such further modified product infringing the claims of the patent, but which it would be prevented from doing unless it returned to the Court to be released from the undertakings.  Justice Downes considered such a level of supervision of Kanga’s conduct would be excessive in light of the injunctions already ordered.

Outcome

In the First Decision, Vald ultimately achieved partial success on its infringement claim in relation to the original Kanga products but failed in relation to the modified Kanga products. Accordingly, Justice Downes made orders i) restraining Kanga from infringing the relevant claims of Vald’s patent without the licence or authority of Vald, and ii) requiring Kanga to deliver up or destroy all its infringing products and material promoting or marketing its infringing products.

Implications

Justice Downes’ decision follows on from the earlier decision of Justice Greenwood, in which Justice Greenwood grappled with the procedural and evidentiary complexities which can arise when a product that is alleged to infringe is modified after infringement proceedings have been commenced. We previously reported on Justice Greenwood’s decision here.

Justice Downes’ First Decision has resolved the issue of patent infringement in the context of pre- and post-product modifications.  The decision highlights the influence that technical experts may have in infringement proceedings, and that care is needed to ensure that an expert’s opinion is considered as unbiased.

Justice Downes’ Second Decision provides guidance on the scope and nature of orders the court is prepared to make. Of particular note, Justice Downes declined to issue a declaration of non-infringement (which had not been requested in the pleadings) and also declined to make an order that Kanga be bound by undertakings already provided because the undertakings did not add to the level of protection provided by the injunction and would require a level of supervision of Kanga’s conduct which would be excessive in light of the injunctions already ordered.

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