A recent decision of the Federal Court has emphasised the difficulty associated with seeking summary judgment in patent matters, where issues of invalidity are often complex and require expert evidence. In such circumstances, it is very difficult to show that the opposing party has no reasonable prospects of success.
Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2)  FCA 710 concerned a patent claiming a method and apparatus for producing structural elements of a contact filter block. A key integer of the patent was the use of a foaming agent in the production of granulate material for the filter block. Buono-Net contended that while the patent referred to the use of a foaming agent in the production of the granulate material, failure to identify the particular foaming agent invalidated the patent on the basis that it did not describe the best method of performing the invention. Expo-Net argued that while no foaming agent was identified, the patent related to the use of any foaming agent, not a specific foaming agent, and that the skilled user would identify the most suitable foaming agent on the basis of their common general knowledge.
The Court found that Expo-Net had at least a reasonable prospect of defending Buono-Net's claim that the patent did not describe the best method known for performing the invention. In addition, Bennett J held that when making an order for summary judgment, care should be taken in cases that involve complex facts, such as in patent disputes.
While it may not be impossible to obtain a summary judgment in patent cases, this case reminds us of just how hard a task it is!