F45 Cops a Punch in Further Australian Decision on Patents for Computer Implemented Inventions

The scorecard against computer implemented inventions being patentable in Australia took another hit this week when the Federal Court revoked two innovation patents from global fitness giant, F45 in F45 Training Pty Ltd v Body Fit Training Company Pty Ltd (No 2) [2022] FCA 96. Justice Nicholas of the Federal Court held that F45’s innovation patents, which involved a computer implemented system for configuring and operating one or more fitness studios, were invalid and even if they were valid, rival fitness franchise Body Fit Training did not infringe them.

The parties did not seek leave to address the recent decisions of the Full Court on computer implemented inventions in Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 and Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223, which were handed down after the F45 hearing had concluded (see our previous articles here and here).

However, Justice Nicholas reached similar conclusions regarding the substance of the invention in the claims failing to be a manner of manufacture. His Honour found that the patents did not provide a solution to any technological problem, nor did they represent an advance in computer technology or involve any unusual technical effect due to the way in which the computer technology was utilised. Rather, the inventions used generic computing technology to send files from a central server to displays at various exercise stations. F45 claimed that these exercise stations were required to be configured by humans, not computers, based on information in files retrieved from a central server and that this resulted in the relevant ‘physical effect’ justifying patent eligibility (i.e., that the claimed invention produced an ‘artificial state of affairs’ in compliance with the manner of manufacture requirement under Australian law).

In contrast, Justice Nicholas determined the invention to be a computer implemented scheme which enabled physical arrangements of exercise equipment to be made, and that this scheme was not made patent eligible merely because it is implemented using generic computing technology. Justice Nicholas consequently ordered costs against F45.

If not already apparent, a key observation is that the manner of manufacture standard for an invention disclosed and claimed in an innovation patent specification is the same for a standard patent, even though different tests on innovative step/obviousness may apply. Careful consideration must therefore be taken by holders of innovation patents when considering enforcement of claims encompassing a computer implemented technology.

Notably, F45 is entitled to appeal this decision and/or could choose to explore enforcing alternative claims under divisional applications which have been filed.

By Patrick Sands, Harrison Ottaway, Chris Vindurampulle and Stacey White

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