Lights Out – Patentee’s Own Publications Prove Fatal for Lighting Tower Patent

Southern Cross Industrial Group Pty Ltd v Mickala Mining Maintenance Pty Ltd (Liability Trial) [2025] FCA 1363.

Introduction

In Southern Cross Industrial Group Pty Ltd v Mickala Mining Maintenance Pty Ltd (Liability Trial) [2025] FCA 1363, Justice Downes of the Federal Court found an innovation patent for LED lighting towers invalid for lack of novelty and innovative step.  Mickala admitted infringement of claims 1 and 4 of Southern Cross’ innovation patent, but successfully cross-claimed for revocation on the basis of five pieces of prior art, including the patentee’s own prior publications.  The decision addressed claim construction, the limits of implicit disclosure in prior art, and the standard of evidence required to establish prior public use.

Background

Southern Cross Industrial Group Pty Ltd (Southern Cross) is the owner of Innovation Patent No. 2013100095 entitled ‘Lighting Tower’ (the Patent), which claims a priority date of 30 January 2013.  The Patent relates to portable LED lighting towers used for night construction and mining operations.

The claimed invention addresses inefficiencies in conventional lighting towers by combining a low-voltage alternator directly connected to the engine shaft with an LED lighting unit mounted on a manoeuvrable mast.  Claim 1 requires that the LED lighting unit comprise a plurality of arrays of LED elements arranged at an angle relative to each other.  Claim 4 adds that the LED lighting unit comprises at least one capacitor electrically connected in parallel to the alternator.

Claims 1 and 4 are as follows (with integers identified):

Claim 1

A lighting tower comprising [integer 1.1]:

an engine [integer 1.2];

an alternator mechanically connected to the engine [integer 1.3]; and

an LED lighting unit electrically connected to the alternator [integer 1.4];

the LED lighting unit being mounted on a manoeuvrable mast [integer 1.5];

wherein the alternator is a low voltage alternator [integer 1.6];

[the alternator] having a voltage output of less than 50V [integer 1.7];

[the alternator] connected directly to a shaft of the engine [integer 1.8];

wherein the LED lighting unit comprises a plurality of arrays of LED elements [integer 1.9]; and

at least some of the plurality of arrays being arranged at an angle relative to at least some of the other arrays [integer 1.10].

          Claim 4

The lighting tower of any one of the preceding claims, wherein the LED lighting unit comprises at least one capacitor electrically connected in parallel to the alternator [integer 4.1].

Mickala Mining Maintenance Pty Ltd (Mickala) admitted infringement of claims 1 and 4 but cross-claimed for revocation based on five pieces of prior art:

(i)   an advertisement published by Southern Cross in the Australasian Mine Safety Journal (AMSJ Article);

(ii)   a Southern Cross brochure;

(iii)  Innovation Patent No. 201110074 (the 774 Patent);

(iv)  Two “EcoTower” lighting towers sold in Papua New Guinea; and

(v)   Lighting Towers manufactured by Exsto Group Pty Ltd (the Exsto Towers).

Key Issues

The key issues for determination were:

(i) The proper construction of “manoeuvrable mast” in claim 1 and “electrically connected in parallel to the alternator” in claim 4;

(ii) Whether claims 1 and 4 were anticipated by any of the five prior art references;

(iii) Whether claims 1 and 4 lacked an innovative step; and

(iv) If the claims were valid, whether Mr Englebrecht (the Director for Mickala) was personally liable for authorising infringement or as a joint tortfeasor.

Construction

Two construction issues arose.  The first concerned “manoeuvrable mast” in claim 1.  Southern Cross’ expert, Mr Sizer, considered that, in the context of the Patent, “manoeuvrable” meant the mast would be “able to rotate relative to the light tower chassis”, relying on preferred embodiments set out in the specification the Patent.

Justice Downes rejected this narrow construction.  Her Honour considered that the ordinary meaning of “mast” encompassed poles, latticework towers, and tripods, while “manoeuvrable” simply meant “able to be manoeuvred” without importing any requirement to be manoeuvrable in a specific way.  The Patent itself used “manoeuvring” to describe different movements – along the ground, height adjustment, and upward movement of the mast. Her Honour noted that selecting preferred embodiments to alter the plain meaning was impermissible as it would impose a gloss on the meaning of the word as claimed.

The second issue related to the meaning of the phrase “electrically connected in parallel to alternator” in claim 4, which was disputed by the parties.  Her Honour resolved this issue by reference to the experts, both of whom agreed that this phrase referred to a component connected across each side of the device, providing an alternate path for electricity.

Novelty

AMSJ Article

The AMSJ Article was a Southern Cross advertisement published in 2011 which included the following critical sentence: “The revolutionary Linz direct drive alternator also minimises maintenance costs”.

Mickala’s expert, Mr Fogarty, gave evidence that “direct drive” discloses an alternator connected directly to the engine via a shaft, as opposed to a belt.  Mr Sizer accepted it was likely directly connected but considered it was not “definitively and explicitly disclosed”.  Her Honour preferred Mr Fogarty’s evidence and found that integer 1.8 – ‘[the alternator] connected directly to a shaft of the engine’ – was present.  As a result, the AMSJ Article anticipated claim 1, as Southern Cross conceded that all other integers were present. However, the AMSJ Article did not anticipate claim 4 because there was no disclosure of capacitors “electrically connected in parallel”.  Mr Sizer gave uncontradicted evidence that there were multiple possible configurations for capacitors.

Southern Cross brochure

Southern Cross published the Southern Cross Brochure in 2011. Justice Downes found that this brochure did not anticipate claims 1 and 4 based on the shared views of the experts that the brochure did not disclose a lighting tower that possessed an alternator connected directly to a shaft of the engine (integer 1.8) or a lighting tower that possessed an LED lighting unit comprising at least one capacitor electrically connected in parallel to the alternator (integer 4.1).

774 Patent

Mickala also relied on Innovation Patent No. 2011100774 (the 774 Patent) entitled “A Portable Lightning Tower”, which was granted in August 2011.  The 774 Patent disclosed a “manoeuvrable mast”, but Justice Downes did not find that it anticipated claims 1 or 4.

While the 774 Patent referred to Coolon CP96 LED lights, a commercial LED lighting product, as suitable for use with the invention, and those lights were capable of angled mounting and contained parallel capacitors, the 774 Patent did not identify these features as criteria of suitability.  The person skilled in the art would understand they could use “any suitable LED lamp” without those features being required.  Her Honour observed that implicit disclosure is confined to what the document actually discloses – common general knowledge cannot be used complementarily to arrive at a disclosure the document alone does not make.

The EcoTowers

Mr Torok, another expert witness for Mickala (also the inventor of the 774 Patent), gave evidence regarding two EcoTower lighting towers sold by his company to a client in Papua New Guinea in September 2012.  Mr Torok gave unchallenged evidence that the LED lights were “capable of being arranged at different angles” and photographs showed the lights splayed on rotatable bolts, leading to Justice Downes’s finding that the EcoTowers anticipated claim 1.

However, the evidence was insufficient to establish that the EcoTowers anticipated claim 4.  Mr Torok’s affidavit stated capacitors were present, but under cross-examination, resiled from this position, stating only that “potentially there could also be capacitors installed in the lights” but that he did not know.  No direct evidence established that the Magna Vision light installed contained parallel capacitors.

The Exsto Towers

Mr Tate, a former director of Exsto Group, whom Mickala also relied on as an expert witness, gave evidence that five Exsto Towers were sold to Rio Tinto in December 2012.  The critical issue was whether the ‘LP33’ Exsto Lighting Tower was delivered on 29 January 2013, one day before the priority date of the Patent.

Mr Tate’s evidence was that he personally delivered LP33 to Clermont Coal Mine on 29 January 2013, exchanging it for a trial tower (LP14) loaned pending delivery.  His evidence was supported by a build spreadsheet recording “Send to Site” on 29 January 2013.

Southern Cross challenged this evidence on multiple grounds, including that Cyclone Oswald flooding would have prevented the journey.  Mr Tate explained that the flooding was in Bundaberg, not North Bundaberg where Exsto’s premises were located, and that he departed via Childers.  Her Honour found Mr Tate’s “spontaneous responses” reinforced his own genuine recollection, which he was able to recall by reference to the unusual flooding event, and was corroborated by contemporaneous documents.

Southern Cross admitted LP33 possessed all integers of claims 1 and 4, including the ‘Coolon CP56’ LED lights which contained capacitors connected in parallel.  Both claims were therefore anticipated by LP33.

LP14 (the trial tower loaned to Rio Tinto) was found also to have anticipated both claims, based on Mr Tate’s unchallenged evidence that all Exsto Towers from LP11 onwards had uniform features including the Coolon CP56 lights.

Innovative Step

Justice Downes found that claims 1 and 4 also lacked innovative step, on the basis that the claim integers relevant to this issue were not different to the prior art.

Infringement

Although unnecessary given the invalidity findings, Justice Downes addressed whether Mr Engelbrecht would have been personally liable for infringement.

As Mr Englebrecht was the sole director, in effective control, and the “guiding mind” of the Mickala, her Honour found that she would have inferred personal knowledge, approval and power to prevent infringing conduct, and thus, would have found Mr Englebrecht liable for authorising infringement but for the invalidity finding.

However, Mr Englebrecht would not have been liable as a joint tortfeasor, which would require showing that he “directed or procured” the tort with “close personal involvement” beyond the proper role of director.  Mickala’s admissions only established that Mr Englebrecht was involved in day-to-day management and effective control, which was insufficient to establish joint tortfeasorship.

Outcome and Implications

Sothern Cross’ infringement claims were dismissed, with Southern Cross subsequently ordered to pay Mickala’s costs on a standard basis until March 2023, and on an indemnity basis thereafter.  This aligned with Mickala’s third and final offer of compromise made on 28 February 2023 which provided that all related proceedings be dismissed and that Southern Cross pay Mickala’s costs in a fixed amount of $300,000. Her Honour considered that this offer constituted a significant compromise, given Mickala had incurred nearly $700,000 in costs to that date.

Justice Downes’s decision covered familiar territory in patent validity disputes: claim construction, the boundaries of implicit disclosure in prior art, the evidentiary requirements for establishing prior public use, and the personal liability of directors for authorised infringement and joint tortfeasorship.  Notably, the decision serves as a reminder that a patentee’s own prior publication can prove fatal to validity.

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