F45’s methods not fit enough for patentability
In F45 Training Pty Ltd v Body Fit Training Company Pty Ltd (No 2)  FCA 96, the Federal Court of Australia found that two patents in the name of F45 Training Pty Ltd (F45) were invalid because the substance of the invention, as a computer implemented scheme for arranging and configuring exercise stations within multiple fitness studios, was not patentable subject matter. The Federal Court also held that even if either of the patents were valid, the methods used by Body Fit Training Company Pty Ltd (BFT) did not infringe any of the claims.
F45 conducts a global fitness franchise for high-intensity group workouts and owns Australian innovation patents numbered 2015101604 and 2016101429 (the Patents) claiming a method and system for remote configuration and operation of fitness studios from a central server.
F45 commenced infringement proceedings against competitor BFT, four of BFT’s franchisees and one of BFT’s directors. F45 alleged that BFT infringed the Patents, resulting in BFT not only denying infringement, but also cross-claiming for invalidity.
The case was conducted on the basis that:
- if claim 1 of Australian patent 2015101604 was found invalid, then all of the other claims in both Patents were invalid
- if that claim was not infringed, then none of the other claims in either of the Patents were infringed.
The system disclosed in the specification of the Patents consists of, at its back-end, a server in communication with a database which holds a library of studio information program files. The server is configured to periodically retrieve a studio information program file from the library and communicate the retrieved file to a number of fitness studios over a communications network. The server sends the current studio information to the studio computer. Once the current studio information has been received at the studio computer, each exercise station and associated fitness equipment (if any) in the fitness studio are physically distributed throughout the studio. The studio computers then communicate station directions over a local network based on the received program file to various displays in the studio. Users then perform exercises at each station based on the directions appearing on the displays.
BFT contended that the invention described in the Patents was, in substance, a scheme or business method for delivering centrally managed exercise content using generic computer technology, and did not, therefore, involve a manner of manufacturer as required under Australian law. BFT submitted that what was claimed in the Patents was simply an improvement in the management and operation of fitness studios to maintain the interest and motivation of attendees using generic computer technology, and did not overcome any technical problem in computer technology. BFT submitted, with reference to Commissioner of Patents v RPL Central Pty Ltd  FCAFC 177 and Commissioner of Patents v Rokt Pte Ltd  FCAFC 86, that, although a computerised business method or scheme can, in some cases, be patentable, the claimed invention lies in the computerisation. Further, it referred to Encompass Corporation Pty Ltd v InfoTrack Pty Ltd  FCAFC 161 to submit that a computer-implemented business method which merely requires generic implementation cannot be a manner of manufacture.
F45 relied on the traditional principle in the High Court’s decision in National Research Development Corporation v Commissioner of Patents  HCA 67 (NRDC), to argue that the invention is a manner of manufacture because it is a method or system, involving a computer system, giving rise to an artificially created state of affairs of economic significance or utility in a field of economic endeavour. F45 submitted that the claimed method or system creates a physical result, being the physical configuration of exercise stations by a human being based on the information in the studio program, beyond the computerised process. F45 submitted that this was sufficient to meet the requirement for an 'artificially created state of affairs'. F45 also relied on its alleged 'remarkable success' as lending economic significance to the invention.
Nicholas J concluded that the inventions described and claimed were not a manner of manufacturer, explaining that the substance of the invention residesd in the computer implemented scheme which enables physical arrangements of exercise stations on a periodic basis in accordance with studio information program files, rather than the actual physical arrangements. His Honour also noted that the 'physical effect' of the invention does not necessarily, nor sufficiently, equate to an 'artificially created state of affairs' so as to satisfy the traditional principle in NRDC.
His Honour noted that the invention did not solve a technological problem and did not represent advancements in computer technology. His Honour regarded the alleged inventions as the kind of scheme which has 'historically never been regarded as patentable subject matter', and was not made patentable merely because it is implemented using generic computer technology. His Honour held that the Patents were invalid.
Although not necessary in light of the invalidity finding, on the issue of infringement, Nicholas J set out his approach to construing the claims of the Patents according to well established principles:
… including the need to avoid a construction of the relevant claims that is excessively technical or narrow. The claims must be read in the context of the patent specification as a whole through the eyes of the skilled addressee who is equipped with the common general knowledge in the relevant art.
His Honour also reiterated that the principles of purposive construction, on which F45 relied, does not equate with adopting the broadest construction a claim will bear, nor a construction that is more favourable to the patentee alleging infringement.
BFT argued that its methods did not involve a studio information program file being retrieved by a server from a database containing a pre-prepared multi-period fitness library of such files, as required by claim 1 of the 604 patent.
Nicholas J made a number of findings on the construction of claim 1 with reference to evidence from the expert witnesses. His Honour construed 'studio information program files' as files for particular studios which contain relevant information used to configure exercise stations within the studio, and therefore did not consider what F45 refers to as 'timetable files' and 'exercise program files' to be files within the meaning of the claim.
F45 argued that the logical relationship between the retrieval and communication of components of information utilised by BFT in its gyms is the same as what is set out in claim 1 of the 604 Patent, regardless of the information being converted to a different file format and the use of a USB device to transfer the file. However, Nicholas J disagreed, holding 'there never is a studio information program file retrieved by a server from a database containing a pre-prepared multi-period fitness library of such files' for BFT.
F45’s loss follows a string of Australian Full Court decisions which have held, in a number of different contexts, that implementing a business method, scheme or set of rules using the generic functions of computer technology, does not qualify as patentable subject matter under Australian law.
At the core of the enquiry is whether a given computer implemented method or scheme represents an advance in computer technology, or utilises unconventional technical methods.
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