Federal Court Makes F45 Sweat Over Patent Validity

F45 Training Pty Ltd (F45) is a highly successful fitness company. F45 provides high intensity group work-outs for its many customers around the world.

F45 registered innovation patents in relation to the implementation of its circuit classes into an automated computer system (Patent).

Essentially, F45 devised a system by which a server communicated with a database containing information for F45 circuit classes. The right class/workout information would be extracted from the database and provided to each individual F45 location for configuration. The end result would be information being displayed on screens in each gym, so that customers could view in real time information pertaining to workout, repetitions, form and timing. The purpose of this system was to allow for a computer to run circuit classes (largely) autonomously.

 It came to F45’s attention that competitor Body Fit Training Company Pty Ltd (BFT) was providing a similar system at its gyms. Accordingly, F45 sued BFT for patent infringement. BFT denied infringement and, by cross-claim, sought orders revoking the Patent. Justice Nicholas in the Federal Court of Australia determined the dispute in BFT’s favour, finding that the Patents was invalid and should be revoked. F45 was also ordered to pay BFT’s court costs.

Validity of the Patent

As a general rule, a mere business method is not patentable subject matter. Further, merely implementing a business method through a computerised system may not be patentable subject matter, unless the computerisation itself is inventive, new and novel.

F45 argued that the Patent was valid as the invention was to be considered a technological innovation which combined interacting elements involving a computer system to achieve economic utility.

BFT argued that the invention described in the Patent was a generic computer implemented scheme or business method. The Patent did not demonstrate any ingenuity in how the computer was utilised. The way in which the business method was implemented was neither new or remarkable. F45 was not required to overcome any technical computing problem in order to bring its idea to fruition.

The Court agreed, noting that F45 provided no evidence demonstrating any advance in computer technology. Although F45’s system was commercially valuable, given it was a mere implementation of a business method through the use of generic computing technology, it was not the proper subject matter for letters patent.

In making this determination, the Federal Court summarised matters it will have regard to when considering whether the implementation of a business method by computerisation will reach the threshold for patent protection:

  1. Whether the contribution by way of computerisation is technical in nature;
  2. Whether the invention solves a technical problem within or outside the computer;
  3. Whether the invention requires generic computer implementation, as distinguished from steps foreign to the normal use of computers; and
  4. Whether the computers are merely an intermediary, configured to carry out the method using the program code, but adding nothing to the substance of the scheme or business method.

Lavan comment

Computer software is now used in all trade and commerce to automate business processes. Although software will generally be protected by copyright law, it is also common to see businesses also apply for patent protection.

The implementation of a business method will only be patentable if it is paired with a technological advancement with respect to computing. Accordingly, you may not be able to prevent competitors from implementing similar automation of business processes.

Even if you obtained patent registration, careful consideration needs to be taken before commencing an action for infringement, given the defendant may cross-claim to seek that your patent be revoked.

The parameters for registering a patent are likely to change as technology advances. If you have questions in relation to protecting your valuable intellectual property, please do not hesitate to contact Iain Freeman or Andrew Sutton.