IP SPOTLIGHT 8 MAR 21

I n the recent Federal Court decision of Axent v Compusign [2020] FCA 1373, Axent Holdings Pty Ltd’s (Axent) patent for variable speed limit signs (VSLS) was found both invalid and not infringed by Computing Australia Pty Ltd, Computing Systems Pty Ltd (together, Compusign) and Hi-Lux Technical Services Pty Ltd (Hi- Lux). In addition to the usual non-infringement and validity arguments, the decision covered a number of defences raised by Compusign and Hi-

ROADBLOCK FOR AXENT’S VARIABLE SPEED LIMIT SIGNAGE TECHNOLOGY

BACKGROUND Axent was the patentee of a patent for VSLSs (Patent). The claims related to VSLSs incorporating white LEDs forming the number representing the speed limit, and an annulus made up of concentric circles of red LED lights surrounding the number. The signs displayed a varied speed limit by changing the number displayed and flashing some (but not all) of the red rings to alert motorists to the altered speed limit and conditions. At least one of the red rings remained constant (i.e. did not flash) to comply with regulatory requirements for speed signs. The VSLS was capable of changing the display in response to an external sensor (such as wind or light sensor). Compusign and Hi-Lux both supplied VSLSs which Axent alleged infringed the Patent. CONSTRUCT ION Axent argued that the claims were directed to a product, limited by the result. Axent submitted that the features would be taken if a VSLS was capable of being used in the manner set out in the claims. Compusign and Hi-Lux argued that they were method claims because some of the features most naturally described how the product is to be used, as opposed to a functional limitation of the product. Justice Kenny concluded that the claims were product claims limited by the result because the features were in substance a “description of the physical characteristics” of the claimed product. However, Justice Kenny rejected Axent’s submissions that the claims covered signs that were merely capable of achieving such results as that would be overly broad, and could cover products

that were not and were never intended to be used as a speed limit sign (e.g. an electronic traffic sign with a fully controllable matrix display, even if its operation had nothing to do with the invention of the Patent). CLAR I TY Compusign and Hi-Lux argued that the terms “normal speed limit”, “input criterion” and “change in conditions” were unclear on the basis that they had no fixed meaning, but Justin Kenny considered that the person skilled in the art would be able to construe these features based on the information in the specification I NFR I NGEMENT Both Hi-Lux and Compusign supplied or intended to supply various types of VSLS which were capable of exhibiting the features of the claims. Axent alleged that this constituted both direct and indirect infringement of the claims. However, Justice Kenny found that these signs were not configured to meet all of the features of the claims, and the fact that they were merely capable of doing so was not sufficient. The fact that the relevant results could be achieved if the operator made the appropriate selections did not establish that, when the VSLS was in use, the features of the VSLS were necessarily such as to fulfil the functional limitations or achieve the results required by the claims. Justice Kenny found the claims not infringed. Axent also asserted an omnibus claim, which was defined “by reference to the examples”, but because there were no actual examples in the patent (only preferred embodiments), there could be no infringement.

Lux, including innocent infringement, crown use provisions, and prior use.

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