Survival of the fittest: F45’s patents revoked, Body Fit found not to have infringed

On 15 February 2022, the Federal Court of Australia found that Body Fit Training Pty Ltd (BFT) had not infringed two of F45 Training Pty Ltd (F45)’s Australian innovation patents by implementing its personal software-integrated system for working group health lessons. Rather, in a double blow to F45, Justice Nicholas found that the two patents, masking a computer-implemented scheme, have been invalid for lack of patentable subject material, and that even when the patents have been legitimate, BFT’s actions would not have constituted infringement.  As a outcome of the invalidity findings, Justice Nicholas ordered that each innovation patents be revoked.

F45 Training Pty Ltd v Body Fit Training Company Pty Ltd (No 2) [2022] FCA 96 serves as a reminder that the mere computerisation of a scheme utilizing generic laptop know-how does not make a claimed invention patentable – slightly, some ingenuity is required in the approach during which the laptop is utilised earlier than the topic could also be thought of patentable.

Background

For the uninitiated, F45 is an operator of group health centres, first launched in Paddington, Sydney in 2011.[1] Its core providing consists of 45-minute useful group health lessons during which contributors rotate by way of a number of train stations. TV screens are positioned round the room to information contributors by way of the exercise, which show brief video demonstrations of every train, countdowns to the subsequent relaxation/train interval, and directions concerning the place and when to change stations. In its decade of operation, F45 has seen exceptional success, promoting 1000’s of franchises throughout the globe and inflicting one of its founders to amass a internet value of roughly AU $500 million.[2]

BFT was based in Australia in 2017 and gives 50-minute cardio and strength-based group health lessons during which contributors equally rotate by way of a number of train stations with TV shows guiding them by way of the exercise.[3] The firm has grown quickly since its inception, taking a chew out of F45’s market share and prompting F45 to begin patent infringement motion towards BFT in a number of jurisdictions globally, together with in the US and Australia.[4]

The patents & F45’s allegations

In 2019, F45 commenced proceedings in the Federal Court of Australia alleging that BFT had infringed two of its Australian innovation patents (2015101604 and 2016101429) (collectively, the Patents), which the events accepted have been, for sensible functions, equivalent.

In specific, F45 alleged that BFT had infringed declare 1 (reproduced under) and declare 5 (a product declare in associated phrases).

Claim 1: A pc carried out methodology for configuring and working a number of health studios every comprising a plurality of train stations in an open studio surroundings at which customers carry out related train routines, every train station having an related show, the methodology comprising the steps of:

periodically retrieving, by a server from a database, a studio info program file for a specific studio for a specified interval, from a pre-prepared multi-period health library comprising a succession of studio info program information; whereby the studio info program file that’s retrieved for a present interval is totally different from a studio info program file that was retrieved for a earlier interval, thereby offering periodic variation of train applications;

speaking, by the server to a studio laptop related to the specific studio, the retrieved studio info program file over a communications community;

receiving, by the studio laptop, the communicated studio info program file;

configuring the train stations dependent upon the obtained studio info program file; and

speaking, by the studio laptop to the train station shows, dependent upon the obtained studio info program file, station instructions to customers exercising at the stations for performing an train.

Justice Nicholas summarised the ingenious idea as follows:

“[t]he substance of the invention disclosed and claimed resides in the laptop carried out scheme which permits [the] configuration [of physical exercise stations] to happen on a periodic foundation in accordance with the content material of the studio info program information”,[5]

the place a ‘studio info program file’ is:

“a single file for a specific studio which accommodates the related info used to configure train stations inside the studio”.[6]

Validity: method of manufacture

BFT denied any infringement and lodged a cross-claim, alleging that the Patents have been invalid and ought to be revoked on the foundation that they did not disclose any patentable subject material.

More particularly, BFT submitted (inter alia) that:

• the Patents disclosed a mere scheme or enterprise methodology, which is not, per se, patentable subject material, as it’s not a ‘method of manufacture’;[7]
• though a computerised enterprise methodology or scheme can be patentable, that is solely true the place the invention lies in its computerisation – i.e. it requires some ingenuity in the approach during which the laptop is utilised;
• conversely, the place a enterprise methodology or scheme is carried out through the use of computer systems to carry out their strange features, the claimed invention “continues to be to the enterprise methodology itself” and subsequently unpatentable;[8]
• the requisite ingenuity was not current right here: the invention was not directed to fixing a technical downside in the discipline of laptop know-how nor did it lead to an enchancment of the functioning of the laptop; and
• slightly, the Patents disclosed the use of generic know-how, whereby the laptop was merely an middleman to ship train content material; accordingly, the subject material was not a fashion of manufacture and subsequently not patentable subject material.[9]

F45 submitted that the Patents did disclose a ‘method of manufacture’, as they gave rise to an ‘artificially created state of affairs’ in satisfaction of the take a look at in NRDC.[10] Specifically, F45 pointed to the proven fact that its invention required that the train stations be bodily configured primarily based on the info contained in sure ‘studio info program information’ and that the bodily configuration had to be carried out by a human being slightly than a pc.[11]

Justice Nicholas was not persuaded by this submission, discovering that the substance of the invention lay not in the bodily association of the train stations, however slightly in the laptop carried out scheme that enabled these bodily preparations to be made.[12] Noting that bodily results alone are not enough to fulfill the NRDC take a look at for an ‘artificially created state of affairs’,[13] his Honour found that the bodily configurations contemplated by F45’s Patents failed to meet this take a look at.[14]

His Honour additionally thought of that the Patents did not present an answer to any technological downside, did not characterize any advance in laptop know-how, and did not contain any uncommon technical impact due to the approach during which the laptop know-how was utilised.[15]

Ultimately, Justice Nicholas found that, as the Patents associated to a mere laptop carried out scheme carried out utilizing generic computing know-how, they did not disclose a fashion of manufacture. Accordingly, his Honour found the Patents invalid and made orders for his or her revocation.

Infringement: F45’s patents vs. BFT’s system

Though it was pointless given his Honour’s findings on validity, Justice Nicholas made findings on infringement, figuring out that BFT’s conduct would not have infringed the Patents if legitimate.

Broadly, as per declare 1 set out above, every of the Patents associated to a pc carried out system for configuring and working health studios. In abstract, declare 1 required:

• a server;
• to retrieve;
• from a database comprising a pre-prepared library of such information;
• a single ‘studio info program file’ (containing the info used to configure train stations inside the studio); and
• to talk the file;
• over a communications community;
• to a ‘studio laptop’ (related to a specific health studio).

His Honour found that BFT’s system did not possess the claimed options, together with as a result of:

• BFT’s supposedly analogous ‘server(s)’ did not retailer nor talk any ‘studio info program information’ to its ‘studio computer systems’; slightly, the related BFT information have been created on a separate PC and despatched by electronic mail (or in some situations, transferred by USB) to a BFT ‘studio laptop’;[16]
• even when the electronic mail server have been to be deemed the related ‘server’, infringement would not have occurred as the electronic mail server may not be mentioned to ‘retrieve’ BFT information from a database;[17]
• the solely communication which occurred between BFT’s server and its equal ‘studio computer systems’ was for the goal of authenticating a login, which did not fall inside the scope of the claims;[18]
• BFT’s system did not contain the retrieval or communication of any single ‘studio program info file’ inside the that means of declare 1 — slightly, it concerned the switch of ‘timetable file(s)’, which set out a calendar with urged day by day lessons, and have been not thought of analogous to ‘studio info program information’;[19] and
• His Honour construed the Patent claimed a system involving one single ‘studio laptop’, related to a specific studio, whereas BFT’s system might be mentioned to include a number of such computer systems in any given studio.[20]

Lessons

This judgment follows a collection of latest Full Court selections concerning the patentability of laptop carried out innovations. Together with Repipe Pty Ltd v Commissioner of Patents [2021] FCAFC 223 and Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd [2021] FCAFC 202 (see additionally our corresponding articles here and here), these selections verify that mere generic computerisation of an in any other case unpatentable scheme does not, of itself, make a claimed invention patentable below Australian legislation.

Further, the resolution serves as a reminder of the following.

• Software is usually thought of to be patentable in Australia, and the requirement for patentable subject material (“method of manufacture”) is formally separate from the necessities of novelty and an ingenious/progressive step.[21] However, in latest assessments of patentable subject material for “software program” claims, the Federal Court has ignored chosen options from the related claims, similar to on this case “workings of computer systems by the storage of info in RAM and […] its communication over the web” and “train stations [being] bodily configured with health tools”, if such options are found not to be in the “substance” of the invention.  Accordingly, there now seems to be a requirement to clarify how the “substance” of a software program patent declare solves a technical downside or offers a brand new technical impact, which can be a step in direction of re-introducing the requirement for an ingenious step into the requirement for patentable subject material.
• Beware of the danger of main knowledgeable proof “with an eye fixed mounted on the alleged infringement”. In this case, F45’s knowledgeable witness had taken a really broad view of the that means of the phrase ‘file’ as contained in F45’s Patents, suggesting that any string of binary info (similar to that utilized in BFT’s system) may fall inside the scope of the Patents. His Honour found the broad definition unpersuasive, as an alternative contemplating that it represented an “overreach” generally seen the place patent building happens with points of infringement entrance of thoughts. [22]
• When drafting a patent specification, take care when utilizing nouns in the singular. F45’s Patent claims repeatedly referred to “a server”, “the studio laptop” and “the studio program info file” – main Justice Nicholas to construe the claims as being restricted to programs involving just one of every these objects. If F45’s Patents had as an alternative claimed “a number of” of these, F45 could have been in a position to draw extra compelling parallels between its Patents and BFT’s system.

Where to subsequent

Although it represents a setback for F45, it stays to be seen whether or not the resolution will trigger different health studio operators to extra readily undertake an analogous computer-implemented methodology of working group health lessons. F45 notably nonetheless owns a number of different granted Australian patents which have not been examined in Court – these could proceed to act as a deterrent, regardless of Justice Nicholas’s findings that the Patents on this case did not declare patentable subject material.

Further, F45 and BFT are concerned in related patent proceedings earlier than the courts in the United States, that are but to attain a ultimate resolution. F45 maintains that this Australian resolution is not indicative of what’s to are available in different jurisdictions; nevertheless this, too, stays to be seen.[23]