FEDERAL COURT OF AUSTRALIA

Vald Pty Ltd v KangaTech Pty Ltd (No 5) [2024] FCA 333

ORDERS

THE COURT ORDERS THAT:

1.    The parties are to confer and provide to the chambers of Downes J an agreed form of order giving effect to the reasons for judgment and proposed directions as to the further conduct of this proceeding by 12.00 pm AEST on 12 April 2024.

2.    If the parties are unable to agree upon a form of order and proposed directions, the parties shall each provide their proposed draft of same to the chambers of Downes J by 12.00 pm AEST on 16 April 2024 accompanied by any written submissions not exceeding three (3) pages.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

DOWNES J:

1.    SYNOPSIS

1    The applicant and cross-respondent (Vald) is the registered proprietor of Australian Standard Patent No. 2012388708 entitled “Apparatus and method for knee flexor assessment” (Patent).

2    The Patent claims a priority date of 3 September 2012 (the priority date).

3    In general terms, the Patent concerns an apparatus for use in assessing the strength of a knee flexor muscle of a person and, in one example, for assessing hamstring strength while the person performs an eccentric knee flexor contraction. In passing, I observe that the first “e” in “eccentric” in this context is pronounced with a long vowel sound, like “email”.

4    The respondent and cross-claimant (KangaTech) carries on the business of developing and commercialising testing devices to assist athletic performance and the prevention of physical injuries. KangaTech admits that it has made, sold and supplied, and offered to make, sell and supply (among other acts) in Australia the following devices:

(1)    before approximately November 2018, the KangaTech Product (also called the KT Product);

(2)    since approximately December 2018, the KT360 (also called the KangaTech360). The software code of the KT360 was modified in December 2019 and again in July 2022.

5    Vald alleges that, by its conduct, KangaTech has infringed claims 1–4, 6–14 and 16–20 of the Patent. Vald does not press its allegations of infringement of claims 5 or 15 of the Patent.

6    KangaTech accepts that, if any of claims 1–3, 6–14 and 18–20 are found to be valid, then KangaTech’s exploitation of the KangaTech Product infringed such claims. For the following reasons, claims 4, 16 and 17 were also infringed.

7    KangaTech also did not challenge the infringement case in relation to the KT360 prior to the software modifications being made to that device.

8    However, KangaTech did challenge the infringement case in relation to the versions of the KT360 following the software modifications. For the reasons which follow, that challenge was successful.

9    KangaTech otherwise denies infringement for reasons which include that the claims of the Patent are invalid for lack of support (s 40(3) of the Patents Act 1990 (Cth)), lack of sufficiency (s 40(2)(a) of the Patents Act) and want of inventive step. However, it did not press these claims if I adopted a particular construction of claim 1 of the Patent (which, for the following reasons, I have done).

10    By its cross-claim, it seeks orders which include an order revoking the claims of the Patent pursuant to s 138 of the Patents Act. That cross-claim should therefore be dismissed.

11    The present hearing concerns liability only, liability and quantum having been separated by an order of Greenwood J made on 21 August 2019. While Vald seeks additional damages, it is common ground that Vald’s entitlement to, and the quantum of, any additional damages is to be determined as part of any quantum phase of the proceeding.

12    I will order the parties to confer with a view to drafting a form of order giving effect to my findings and draft directions in relation to the further conduct of this proceeding. Subject to hearing from the parties, my preference is that any costs orders await the outcome of the further hearing.

13    Additionally, the parties should have leave to appeal and, if necessary, leave to cross-appeal.

2.    WITNESSES CALLED BY THE PARTIES

2.1    Witnesses called by Vald

14    Dr Tania Pizzari is a physiotherapist and academic and the expert witness called by Vald in this proceeding. Dr Pizzari holds a Bachelor of Physiotherapy and a Doctorate of Philosophy in the field of physiotherapy. Since 1997, she has worked as a physiotherapy clinician in hospitals, rehabilitation centres and private practice. Since 2000, Dr Pizzari has worked as a lecturer and researcher within the La Trobe University School of Allied Health. Her research focus includes the prevention and treatment of sport-related soft tissue injuries, including hamstring injuries. Since 2014, Dr Pizzari has been an Adjunct Senior Research Fellow at the Australian Centre for Research into Injury in Sports and its Prevention and has managed the Australian Football League (AFL) soft tissue registry which receives, collates and researches data provided by AFL clubs on all hamstring injuries that occur in players. Dr Pizzari is widely published and is regularly invited to present her research at national and international sports medicine and physiotherapy conferences. Dr Pizzari’s evidence was contained in three affidavits which were filed on 4 February 2021, 2 June 2022 and 6 July 2023. Dr Pizzari gave oral evidence together with the expert called by KangaTech (Dr Lovell) during a concurrent session on the second and third day of trial.

15    Ms Grace Gunn, solicitor, affirmed an affidavit dated 30 June 2023 and was cross-examined on the first day of trial.

16    Ms Ashleigh Sams, solicitor, swore an affidavit dated 4 February 2021 and was not required for cross-examination.

2.2    Witnesses called by KangaTech

17    Mr Carl Dilena is a non-executive Director and Chairman of the Board of KangaTech. He is qualified as a Chartered Accountant and holds a Bachelor of Economics and a Master of Business Administration. Mr Dilena affirmed one affidavit in this proceeding dated 17 July 2023 (with an unsigned version filed on 7 December 2021). Mr Dilena was cross-examined on the first day of trial.

18    Mr David Scerri is the Chief Technical Officer of Biarri Optimisation Pty Ltd, a company which develops bespoke commercial mathematics software for businesses. Mr Scerri holds a Bachelor of Science (majoring in computer science) from Royal Melbourne Institute of Technology University. From November 2015 until July 2020, he was the Chief Technical Officer of KangaTech. Mr Scerri affirmed one affidavit in this proceeding dated 18 July 2023 (with an unsigned version filed on 7 December 2021). Mr Scerri was cross-examined on the second day of trial.

19    Dr Steven Saunders is a science and medicine consultant, clinician and researcher. He holds a Bachelor of Applied Science, Physiotherapy from Sydney University and a PhD from the University of Queensland. He is also a founder and director of KangaTech. Dr Saunders affirmed three affidavits in this proceeding dated 19 July 2023 (with unsigned versions being filed on 7 December 2021, 8 July 2022 and 3 July 2023). Dr Saunders was not required for cross-examination.

20    Dr Ric Lovell, a sports scientist and academic, is the expert called by KangaTech in this proceeding. Dr Lovell holds a Bachelor of Sports Studies and a Masters of Sport Science from Teesside University in Middlesbrough, United Kingdom, and a Doctorate in Sport and Exercise Science from the University of Hull, United Kingdom. Dr Lovell worked as a sports physiologist at the University of Hull from 2006 to 2011. Since 2011, he has worked as a Senior Lecturer and, since 2019, has been an Associate Professor in Sport and Exercise Science at the University of Western Sydney. Dr Lovell’s primary research focus is optimal preparation and athletic development strategies for soccer players, including injury prevention and monitoring training and match loads. Dr Lovell has worked with various sports organisations in roles that include measuring and recording athletes’ lower limb muscle strength to assist their preparation, development and injury prevention. Dr Lovell’s evidence was contained in two affidavits which were filed on 7 January 2022 and 8 July 2022. Dr Lovell, together with Dr Pizzari, gave oral evidence during the concurrent session on the second and third day of trial.

2.3    Joint expert report

21    A joint expert report was prepared with the helpful assistance of a judicial registrar of this Court. The report followed a conclave attended by the expert witnesses, Dr Pizzari (for Vald) and Dr Lovell (for KangaTech). The report is dated 5 June 2023 and was filed on 29 June 2023 (JER).

2.4    Observations about the experts

22    The primary role of the independent experts was to assist the Court in understanding the technical background to, and the purpose of, the invention. In this regard, for the reasons given below and elsewhere in the judgment, the evidence of Dr Lovell has generally been preferred to the evidence of Dr Pizzari, where their evidence is in conflict.

23    Dr Lovell gave careful and considered answers to questions asked of him during the hearing, appeared to be attempting to assist the Court and, by his answers and general demeanour, did not appear to be favouring any party or outcome in the dispute.

24    By contrast, Dr Pizzari did, on occasion, appear to be seeking to assist Vald when answering questions asked of her during the concurrent session, which affected my perception of her independence. This was particularly evident when Dr Pizzari gave oral evidence about key disputed terms in the claims. During that evidence, Dr Pizzari appeared determined to ignore the plain meaning of parts of the specification which was inconsistent with her preferred construction of the claims. This occurred when Dr Pizzari gave oral evidence concerning her understanding of the consistory clauses and even extended to Dr Pizzari giving evidence that claim 18 – which refers to “securing the lower legs of the subject, using the respective securing members” – also encompasses only one leg being secured (which was inconsistent with her own affidavit evidence but which was evidence which was favourable to Vald’s case).

3.    OVERVIEW OF THE PATENT

3.1    Background

25    The Patent claims an earliest priority date of 3 September 2012, being the date on which the application was filed under the terms of the Patent Cooperation Treaty: s 30 of the Patents Act; reg 3.5AA(a) of the Patents Regulations 1991 (Cth). That application was filed by the Queensland University of Technology (QUT) and entered the national phase of processing on 25 February 2015.

26    The Commissioner of Patents issued a direction to QUT to request an examination of the Patent on 5 October 2016. In compliance with that direction, QUT requested an expedited examination of the Patent on 22 November 2016. Relevantly, because the examination was requested after the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), the Patent is subject to the Patents Act as amended by that Act: s 2 and Sch 1 item 55.

27    On 2 November 2017, IP Australia accepted an application by QUT to amend the Patent. Those amendments will become relevant later in these reasons.

28    The Patent was granted on 8 March 2018.

29    Relevantly, by a licence agreement dated 16 December 2014, QUT had earlier granted QUTBluebox Pty Ltd an exclusive licence to exploit the Patent.

30    On 11 November 2019, QUT and QUTBluebox Pty Ltd entered a deed of assignment with Vald, by which they assigned to Vald all of their property, rights, title and interest in and to the Patent, including all rights of action. As such, on 15 November 2019, Vald became the registered proprietor of the Patent.

3.2    Nordic curl or Nordic Hamstring Exercise

31    The primary muscle group that flexes (bends) the knee is the hamstring muscle group. The hamstrings are made up of the semimembranosus, the semitendinosus and the bicep femoris. Other muscles that contribute to knee flexion include the gracilis, the gastrocnemius and the sartorius. These muscles are referred to at [0074] of the specification of the Patent as the knee flexor muscles.

32    During an eccentric contraction, the muscle lengthens as the resistance becomes greater than the force which the muscle is producing whereas during a concentric contraction, the tension in the muscle increases to meet the resistance then remains stable as the muscle shortens. During an isometric contraction, the muscle does not change length during a contraction.

33    A Nordic curl or Nordic Hamstring Exercise (NHE) is an exercise thought to contribute to a reduction in hamstring injury (or HSI). According to Dr Lovell’s evidence in his first affidavit:

…This is primarily because it is an exercise which builds strength in the hamstrings through an eccentric contraction – that is, as the hamstrings are lengthening while they are under significant tension…

In its modern form, the NHE is performed [as follows]. That is, the athlete kneels on a padded surface of some sort – facing away from either a person (who will restrain her/his ankles) or, if being performed without assistance, with the athlete placing their ankles under an immovable restraint which may or may not be attached to the pad on which the subject kneels (for example, gymnasium wall-bars, a loaded barbell, sit-up apparatus, or common resistance training equipment). At the start, the torso is vertical, and the athlete then slowly leans forward from the knees, lowering their torso in a controlled manner. The pivot point is the knees rather than the hips. While doing this, athlete’s ankles/lower legs are restrained from moving upwards – either by another person or a firm restraint against which their ankles are pressing.

The motion forward in the NHE is done in a slow and controlled manner as the aim of the exercise is to benefit from the eccentric contraction of the hamstrings. This eccentric contraction controls (slows) the gradual lengthening of the hamstrings while they are under tension resisting the forward motion of the torso. Most people – unless they are elite athletes – are unable to control the movement of their torso much beyond 30 degrees (from a vertical position) and accordingly, they will need to catch their upper body with their hands at the end of the exercise.

The building of strength using the NHE, as a training exercise not only strengthens the hamstrings but, because that strengthening is performed while the muscle is under tension and is also increasing in length – the NHE is also thought to assist in preventing HSI. The NHE can also assist an athlete to regain strength (and confidence) after suffering a hamstring injury as they prepare to return to their athletic discipline.

In order to determine whether these benefits are achieved and to assist athletes to reach their potential and, wherever possible to evaluate the risk of injury, sports scientists and those working in the field of training elite athletes, seek to accurately measure the forces generated by muscles in performing various knee flexion/extension actions.

(Emphasis original.)

34    When a subject’s knee flexor muscle force is measured during a Nordic curl, inferences can be drawn as to injuries, recovery rates and improvements from, for example, muscle strengthening activities.

35    Typically, the Nordic curl is performed using the knee flexor muscles in both legs (also called a bilateral Nordic curl). In such a situation, both legs are secured (such as by holding both ankles). However, the Nordic curl may also be performed using one leg (also called a unilateral Nordic curl). In performing a unilateral Nordic curl, the intention is for the subject (as best as they can) to hold their body up during descent using the hamstring muscles in one leg. The leg not in use is called the contralateral leg and must not be secured. If the contralateral leg is secured, the exercise being performed is no longer a unilateral Nordic curl but a bilateral Nordic curl.

36    In his first affidavit, Dr Lovell expressed concerns about asking an athlete to perform a one-legged NHE on the basis that it would be encouraging the performance of an activity that may lead to an HSI. He further stated:

In my opinion there would only be a small proportion of highly elite athletes who might be capable of performing such an exercise without unacceptable risk. It is not something I would ask an athlete to do, nor would I prescribe a unilateral NHE as part of an exercise program.

37    In his second affidavit, Dr Lovell stated that:

In my experience, even most elite athletes are unable to perform what I would describe as a controlled lengthening of the knee flexor unless both his or her legs are restrained or their body weight is, at least partly, supported in some manner – for example with resistance bands…

(Emphasis original.)

38    During the concurrent evidence session, Dr Lovell stated that:

I would say that it’s a relatively limited group of people that were familiar and advocating this kind of exercise [as at 3 September 2012], in my opinion. I would also state that performing unilateral in the way that you mention can certainly have some benefits but only, in my opinion, having read this information, only in the context of having some form of support to perform that unilateral exercise. So I agree that the unilateral exercise is important. Personally I wouldn’t do it without some additional support to stop rotation of the body during the exercise and also to make sure that we don’t exacerbate risk to the client.

(Emphasis added.)

39    This was consistent with the evidence of Dr Lovell in the JER that:

I consider unilateral (single leg) Nordic Curls to be of limited value unless performed with adequate support for both the contralateral leg and the torso to provide the necessary time under tension to either a) stimulate musculotendon unit adaptations or b) assess the eccentric hamstring muscle strength of a single limb with adequate measurement precision... Having been introduced to the concept, I agree that by using external support structures …, time under tension can be increased and the exercise can be useful in increasing unilateral eccentric strength. I maintain that without such support, assessment of unilateral hamstring strength via single leg Nordic curls is confounded by the stability requirements of the contralateral limb, and the speed of descent.

40    By contrast, Dr Pizzari did not think it was necessary to have support to reduce risk when performing a unilateral Nordic.

41    However, Dr Pizzari’s evidence concerning the topic of unilateral Nordic curls was difficult to follow and, in some respects, confusing and inconsistent. By her second affidavit, she stated that:

In my view, a single leg Nordic curl was (before the Relevant Date) and is an appropriate exercise for various athletes or subjects who have been specifically focused on building up hamstring strength through prior exercises.

42    During the concurrent evidence session, Dr Pizzari agreed that the NHE was not commonplace amongst elite sportspeople, indicated that she prescribed it for “younger athletes” and volunteered that “Most people don’t do Nordics if they’re not athletic”. Dr Pizzari also gave this evidence:

MR FITZPATRICK: And how did those patients perform the unilateral Nordic hamstring exercise?

DR PIZZARI: So within the clinic we had the gym bars, so the railings that are set up, stuck to the wall. And so they would hook their ankle heel under those gym bars or – and perform the Nordic in that way.

MR FITZPATRICK: So they perform these exercises in your – in the setting of your practice?

DR PIZZARI: Correct. And then they were encouraged to find a way to do that at home. So some people would do it just under their bed railings, for example, and some people may have had assistance by someone else holding their leg, which is reasonably common practice way of doing Nordic as well.

MR FITZPATRICK: Yes. And these exercises, when they were conducted in your practice, were supervised by you.

DR PIZZARI: Not always. They were – certainly initially when we – they were prescribed, but then if they came to the practice and were doing a gym sort of program that was part of it, then certainly they could be doing that independently.

MR FITZPATRICK: And did any of the patients performing this exercise measure the muscle force generated by the exercise?

DR PIZZARI: No.

(Emphasis added.)

43    Dr Pizzari also gave evidence at trial that she did not think that an eccentric contraction necessarily has to be controlled: T159/1–5. She later repeated this evidence, saying that:

An eccentric contraction, to be called eccentric, doesn’t have to be controlled, but I think a Nordic hamstring exercise, to the best that the person can perform it, should try and minimise that fall….

(Emphasis added.)

44    However, in Dr Pizzari’s first affidavit, in the context of discussing her interpretation of the Patent, she stated that:

An eccentric knee flexor contraction involves the controlled lengthening of the knee flexor as the subject lengthens his or her leg from a kneeling position, specifically a “Nordic contraction”.

(Emphasis added.)

45    This inconsistency between her affidavit and oral evidence raises a real doubt as to precisely what type of exercise Dr Pizzari was asking her patients to perform as at the priority date, and about her understanding of the unilateral Nordic curl (both as at the priority date and in the context of her evidence concerning her understanding of the claims). Further and in any event, Dr Pizzari did not obtain force measurements from the performance of this exercise by her patients.

46    This raises a real question about whether the performance of a unilateral or one-legged Nordic curl for the purposes of obtaining a reliable force measurement (and how that would be done) was common general knowledge as at the priority date.

47    As Vald submits, the common general knowledge is that which is “known and accepted without question by the bulk” of those in the art: see Idenix Pharmaceuticals LLC v Gilead Sciences Pty Ltd (2017) 134 IPR 1; [2017] FCAFC 196 at [192] (Nicholas, Beach and Burley JJ). Further, as Vald also submits, the fact that witnesses knew something at the priority date does not establish that it was common general knowledge. Conversely, that an expert was not aware of certain information “may be evidence, possibly powerful evidence depending on the circumstances”, that the information was not common general knowledge: Boehringer Ingelheim Animal Health USA Inc v Elanco New Zealand (2021) 164 IPR 17; [2021] FCA 1457 at [180] (Besanko J).

48    In this case, there is such powerful evidence, being that of Dr Lovell, an experienced sports scientist who has worked in the United Kingdom and Australia, and who has consulted for or worked with (for example) the English Premier League, Football Australia and the AFL before the priority date. His evidence is that he has never asked someone to perform an NHE, or observed an NHE being performed, with only one lower leg of the subject being restrained – whether using an apparatus said to fall within this Patent or any other apparatus – either in clinical practice or in training or strength assessments. I accept this evidence. One would have expected Dr Lovell to have been taught about, seen or himself asked someone to perform a unilateral Nordic curl at some stage between 2002 (when he obtained his first degree) and the priority date in 2012, a decade later, if such an exercise was common general knowledge as at the priority date.

49    Vald submits that nothing turns on whether unilateral Nordic curls were common general knowledge as at the priority date; however, I disagree. It is relevant to both construction of the specification as well as invalidity.

50    For these reasons, I find that the performance of a unilateral or one-legged Nordic curl for the purposes of obtaining a reliable force measurement, and the manner in which such an exercise would be done, are matters which were not common general knowledge as at the priority date.

51    My concerns about Dr Pizzari’s evidence also causes me to prefer the evidence of Dr Lovell (which is set out above) on the topic of unilateral Nordic curls generally. For that reason, I find that there is a real risk of an HSI if a person attempts to use the hamstring muscles in one leg only to stop their body from falling forward in a kneeling position (that is, if they attempt to perform a unilateral Nordic curl). The use of a support will reduce the risk, will stop rotation of the body and, if the exercise is being done for strengthening purposes, a support will assist in providing control so as to enable the gradual lengthening of the hamstrings while they are under tension.

3.3    The specification

52    The invention is entitled “Apparatus and method for knee flexor assessment”.

53    At [0001], the “Background of the Invention” is stated as follows:

The present invention relates to an apparatus for use in assessing the strength of at least one knee flexor muscle of a subject, and in one example, for assessing at least the hamstring strength in at least one leg of the subject while the subject performs an eccentric knee flexor contraction.

54    In the section entitled “Description of the Prior Art” at [0003] and [0004], the specification refers to the prevalence of HSIs in amateur and elite participants in a number of sports, and the high rate of reoccurrence after an initial HSI, with the period of recovery increasing following subsequent HSIs. It observes that numerous investigations have been conducted into the factors that influence a subject’s susceptibility to HSI, as well as circumstances which aid a subject’s recovery and decrease instances of reoccurrence. It refers to a study concerning the correlation between hamstring strength and the incidence of HSIs and then refers to another patent (WO-03/094732) as providing an example apparatus for performing eccentric exercises including a padded board and ankle straps.

55    The specification then details various limitations with existing devices for quantitatively assessing knee flexor muscle strength, such as the current “gold standard” laboratory based isokinetic dynamometer. At [0005], the specification explains that during assessment on an isokinetic dynamometer:

[A] subject is seated, or prone, with an ankle secured to a rotatable arm such that the torque applied by the leg upon rotating the arm is sensed, while the maximum velocity of rotation is constrained by the dynamometer. Isokinetic dynamometers are, however, expensive, require experienced operators, have limited portability, and require significant time to assess each leg of a subject independently... Thus they are largely used for research purposes and only occasionally by elite athletes or sporting teams to assess players at a higher risk of HSI, or to monitor rehabilitation progress. Furthermore, there is a perception among some sporting support personnel that isokinetic dynamometry itself poses an injury risk.

56    After identifying other disclosures and devices, the specification then explains at [0012]:

It will be appreciated that the abovementioned disclosures suffer from a number of disadvantages including a substantial size or weight which impedes portability, and, significant assessment times that preclude mass screenings, for example, of entire sporting teams. Furthermore, previous methods and apparatus have failed to provide simultaneous assessment of hamstring strength in both legs, independently, during a bilateral exercise, or a combined assessment of hamstring strength in both legs during a bilateral exercise. Additionally existing techniques have questionable reliability and repeatability of measurements of between limb strength imbalances.

57    In clause [0013], the specification states that the invention seeks to ameliorate “one or more” of the problems associated with the prior art.

58    Under the heading “Summary of the Present Invention”, the specification goes on to describe the invention in what are termed three “broad forms” or consistory clauses. Each of these broad forms describes an apparatus in which both legs of the subject are secured or constrained by the securing members.

59    In relation to the first broad form, which is addressed at [0014] to [0039], the following is stated:

[0014] In a first broad form the present invention seeks to provide an apparatus for use in assessing strength of at least one knee flexor muscle of a subject, the apparatus including:

a)    a support;

b)    two securing members, each securing member securing a respective lower leg of the subject in a position that in use is substantially fixed relative to the support; and,

c)    at least one sensor, which in use senses a force indicative of the strength of the at least one knee flexor muscle in at least one leg of the subject while the subject performs an eccentric contraction of the at least one knee flexor muscle.

[0015] Typically the at least one sensor is coupled to at least one of the two securing members, and wherein the sensor senses a force exerted at an [sic] lower leg of the subject.

[0016] Typically the at least one sensor includes two sensors, each sensor being coupled to a respective securing member to thereby sense the force indicative of the strength of the at least one knee flexor muscle in each leg of the subject.

[0017] Typically in use the sensors sense the force indicative of the strength of the at least one knee flexor muscle in each leg of the subject simultaneously.

[0018] Typically in use the sensors sense the force indicative of the strength of the at least one knee flexor muscle in each leg of the subject at different times.

…

[0038] Typically the sensor senses a force indicative of the hamstring strength in at least one leg of the subject while the subject performs a Nordic hamstring exercise.

[0039] Typically the at least one knee flexor muscle includes at least a hamstring muscle.

(Emphasis added.)

60    The second broad form describes the same apparatus for assessing the muscle strength of a subject and is not confined to the measurement of knee flexor muscle strength. It is addressed at [0040] in these terms:

In a second broad form the present invention seeks to provide an apparatus for use in assessing muscle strength of a subject, the apparatus including:

a)    a support;

b)    two securing members, each securing member constraining movement of a respective lower leg of the subject relative to the support; and,

c)    at least one sensor, which in use senses a force indicative of the muscle strength while the subject performs an exercise of the muscle, the exercise exerting at least some force on the sensor.

(Emphasis added.)

61    The third broad form describes a method for assessing hamstring strength of a subject using the apparatus. It is addressed at [0041] to [0047]. This part of the specification includes the following:

[0041] In a third broad form the present invention seeks to provide a method of assessing hamstring strength of a subject using an apparatus including a support, two securing members, and at least one sensor, the method including:

a)    securing two lower legs of a subject using the respective securing members, at a position that is in use substantially fixed relative to the support;

b)    sensing a force indicative of the strength of the at least one knee flexor muscle in at least one leg of the subject using the sensor while the subject performs an eccentric contraction of at least a hamstring.

[0042] Typically at least one sensor includes two sensors, each sensor being coupled to a respective securing member, and wherein the method includes sensing the force indicative of the strength of the at least one knee flexor muscle in each leg of the subject.

[0043] Typically the method includes sensing the force indicative of the strength of the at least one knee flexor muscle in each leg of the subject simultaneously.

[0044] Typically the method includes sensing the force indicative of the hamstring strength in at least one leg of the subject while the subject performs a Nordic hamstring exercise.

(Emphasis added.)

62    The specification then contains a “Brief Description of the Drawings”, being examples of the invention. Those drawings will be addressed in these reasons where relevant. However, it suffices to observe that the drawings portray various examples of the apparatus, including examples of the apparatus in use by a subject performing a bilateral NHE. There is no drawing of a subject performing a unilateral NHE on any example of the apparatus.

63    Figures 1D to 1F are schematic drawings of a first example of a subject performing an eccentric contraction of at least a knee flexor using the apparatus: [0050]. They depict a subject performing a bilateral NHE (with both legs secured in the securing members) as follows:

64    The various drawings are referred to throughout the section of the specification entitled “Detailed Description of the Preferred Embodiments”. The following is stated in relation to Figures 1A to 1F:

[0072] In this example, the apparatus 100 includes a support 110, and two securing members 121, 122, that in use secure a respective lower leg of the subject S in a position that is substantially fixed relative to the support 110.

[0073] The apparatus 100 further includes two sensors 130.1, 130.2 that, in use, sense a force indicative of the strength of at least one knee flexor muscle in one or both legs of the subject S while the subject S performs an eccentric contraction of the at least one knee flexor muscle.

[0074] It should be noted that the knee flexor muscles typically include the three major hamstring muscles, semitendinosus, semimembranosus and biceps femoris, as well as the minor knee flexors, sartorius, gastrocnemius, and gracilis. For ease, the following description will refer primarily to measuring the strength of the hamstring. However, it will be appreciated that the techniques can apply to measuring any one or more of the knee flexor muscles and that reference to the hamstring is not intended to be limiting.

[0075] Figures 1D to 1F show a subject S performing an eccentric contraction of at least a hamstring using the apparatus 100. In this respect, Figure 1D shows the subject S in an initial kneeling position prior to commencing the contraction, in which the subject’s lower legs are secured using the respective securing members 121, 122 in a position that in use is substantially fixed relative to the support. The subject S subsequently proceeds to lower their upper body toward the support 110 in a controlled manner, while substantially maintaining alignment of the upper legs or thighs and torso, as shown in Figure 1E. Figure 1F shows a final position, with the subject S laying substantially prone on the support 110. It will be appreciated that the abovementioned eccentric contraction is typically called the ‘Nordic hamstring exercise’, ‘Nordic curl’, or the like.

[0076] Accordingly, the above-described arrangement provides apparatus 100 for use in assessing hamstring strength of a subject S, in which the force exerted at the lower leg of the subject S while they perform an eccentric contraction of at least the hamstring is indicative of hamstring strength. In this regard, the apparatus 100 can be utilised to monitor hamstring strength, including any changes in hamstring strength over time, for example, to detect injury precursors such as temporal strength differences, imbalances between legs at rest (i.e. not fatigued) or in response to fatigue, to monitor rehabilitation progress, to monitor progress during strength training, or to benchmark against a population. Additionally or alternatively, the apparatus 100 can also be used in order to strengthen the hamstring, for example, by performing repetitions of an eccentric contraction of the hamstring using the apparatus 100, such as shown in Figures 1D to 1F.

…

[0079] It will also be appreciated that the apparatus 100 including two sensors 130.1, 130.2 allows the assessment of the hamstring strength of both hamstrings of a subject S, at the same time. Accordingly the sensors 130.1, 130.2 may sense the force indicative of at least the hamstring strength in each leg of the subject S simultaneously. In this regard, the assessment may be performed in significantly less time than existing methods, for example isokinetic dynamometry, which is limited to assessing hamstrings of opposing legs at different times. The apparatus also appears to provide enhanced sensitivity and reliability for the assessment of between limb strength imbalances compared to existing techniques. This reduces the time required to assess a subject S, which allows the assessment of hamstring strength to become accessible to entire sporting teams as part of regular health and fitness assessments. In this example, two sensors 130.1, 130.2 are shown, however this is not essential and any number of sensors, including a single sensor may be used for monitoring force in one leg, or alternatively a single sensor may be used to monitor the combined hamstring strength of both legs.

[0080] In this example, an eccentric contraction of at least the hamstring of a subject S is shown in Figures 1D to 1F, however it will be appreciated that any suitable exercise which includes an eccentric contraction of the hamstring may be performed. For example, the subject’s hip may be positioned differently, such that the eccentric contraction is performed with the subject's hip and trunk flexed forward. However, this is not essential, and although in this example, the apparatus 100 is for use during an eccentric contraction of at least the hamstring of a subject S, it will be appreciated that the apparatus 100 may be used to measure other muscles or muscles groups while performing other types of muscle contractions. For example, the apparatus 100 may be used to assess any suitable muscle or muscle group, such as the knee flexor, hip flexor, knee extensor, quadriceps, or the like. In this regard, the assessment may be made during an eccentric, isometric, or concentric contraction, or the like, of the respective muscle or muscle group.

65    At [0083], it is stated that a number of further features will now be described.

66    The section of the specification following this statement includes [0085], which was the focal point of the expert evidence of Dr Pizzari in support of Vald’s posited construction of claim 1:

Furthermore, the assessment of hamstring strength may occur during a unilateral or bilateral contraction/s of the hamstring/s. For example, during a bilateral contraction, two sensors 130.1, 130.2 may be used to sense the force in each leg of the subject simultaneously or at different times, or alternatively a single sensor 130.1, 130.2 may be used to sense the force in either or both legs. During a unilateral contraction, the apparatus may include one sensor 130.1, 130.2 which is interchangeable between the lower legs of the subject, by repositioning the sensor 130.1, 130.2 and/or the securing members 121, 122 and/or the subject S relative to the support 110, such that the hamstring strength in both legs can be assessed sequentially. However, this feature is not essential.

67    The specification addresses the support from [0088] to [0095] (which is relevant to one of the issues of construction).

68    For example, at [0091], it is stated that the support 110 may include any suitable shape, including oval, circular, polygonal, square, rectangular, ergonomic, or the like. Furthermore, the support 110 may be composed of any suitable material in order to withstand the weight of at least part of the subject S, such as timber, medium density fibreboard (MDF), plastic, fibreglass, carbon fibre reinforced polymer (CFRP), aluminium, or the like.

69    At [0093], it is stated that:

It will also be appreciated that whilst a single unitary support is shown, this is for ease of illustration only and that in practice the support could be formed from multiple support members, which may or may not be interconnected. In one example, the support could include two parallel support members, each of which is for coupling to a respective securing member.

70    The specification addresses IT aspects of the apparatus and methods of assessment from [0145] to [0169].

71    The specification then describes the various experiments that were performed to demonstrate the effectiveness of the invention as arranged in Figures 1A to 1C. These experiments are addressed in further detail below.

72    Finally, the specification stated at [0192] that:

Persons skilled in the art will appreciate that numerous variations and modifications will become apparent. All such variations and modifications which become apparent to persons skilled in the art, should be considered to fall within the spirit and scope that the invention broadly appearing before described. Thus, for example, it will be appreciated that features from different examples above may be used interchangeably where appropriate.

3.4    The claims

73    The Patent has two independent claims. Independent claim 1 provides (with the integers identified for convenience):

1.1    An apparatus for use in assessing strength of at least one knee flexor muscle of a subject, the apparatus including:

1.2    two securing members;

1.3    each securing member being configured to secure a respective lower leg of the subject in a position that, in use, is substantially fixed relative to a support when the subject lowers the subject’s upper body from a kneeling position to perform an eccentric contraction of the at least one knee flexor muscle of the subject; and

1.4    at least one sensor coupled to at least one of the securing members;

1.5    to sense a force applied to the at least one securing member by the subject’s knee flexor muscle acting in eccentric contraction while the subject lowers the subject’s upper body, the force being indicative of the strength of the at least one knee flexor muscle acting in eccentric contraction.

74    Independent claim 18 provides (with the integers identified for convenience):

18.1    A method of assessing strength of at least one knee flexor muscle of a subject using an apparatus including:

18.2    two securing members; and

18.3    at least one sensor coupled to at least one of the two securing members;

18.4    the method including securing the lower legs of the subject, using the respective securing members, in a position that is substantially fixed relative to the support when the subject lowers the subject’s upper body from a kneeling position to perform an eccentric contraction; and

18.5    sensing, with the, or each, sensor a force applied to at least one of the securing members by the at least one knee flexor muscle acting in eccentric contraction while the subject lowers the subject’s upper body from the kneeling position to perform an eccentric contraction of the at least one knee flexor muscle while the subject’s lower legs are secured to the respective securing members, which force is indicative of the strength of the at least one knee flexor muscle.

75    The claims which are dependent on claim 1 are as follows:

(1)    Claim 2: The apparatus according to claim 1, wherein the at least one sensor is coupled to the at least one of the two securing members;

(2)    Claim 3: The apparatus according to claim 1 or 2, wherein the at least one sensor includes two sensors, each sensor being coupled to a respective securing member to sense the force indicative of the strength of the at least one knee flexor muscle in each leg of the subject;

(3)    Claim 4: The apparatus according to any one of the preceding claims, wherein the securing members are movably mounted to the support;

(4)    Claim 5: The apparatus according to any one of the preceding claims, wherein the securing members include any one of a strap, a cuff and a tie;

(5)    Claim 6: The apparatus according to any one of the preceding claims, which includes at least one knee support that, in use, supports at least one knee of the subject;

(6)    Claim 7: The apparatus according to any one of the preceding claims, wherein the sensors are configured to sense the force indicative of the strength of the at least one knee flexor muscle in each leg of the subject simultaneously;

(7)    Claim 8: The apparatus according to any one of claims 1 to 6, wherein the sensors are configured to sense the force indicative of the strength of the at least one knee flexor muscle in each leg of the subject at different times;

(8)    Claim 9: The apparatus according to any one of the preceding claims, wherein the apparatus includes an electronic processing device for monitoring signals from the at least one sensor and generating, at least in part using the signals, an indicator indicative of a strength of the at least one knee flexor muscle of the subject;

(9)    Claim 10: The apparatus according to claim 9, wherein the indicator is indicative of at least one of an instantaneous force, a rate of force development, an average force, a peak force, an impulse, work, an instantaneous torque, a rate of torque development, an average torque, changes in force over time, changes in torque over time, and a peak torque;

(10)    Claim 11: The apparatus according to claim 9 or 10, wherein the electronic processing device is configured to compare the signals, at least in part, and reference data, and to generate the indicator in accordance with the results of the comparison;

(11)    Claim 12: The apparatus according to claim 11, wherein the reference data includes at least one of a tolerance determined from a normal population, a predetermined range, a predetermined reference, a previously generated indicator and an indicator generated for another leg;

(12)    Claim 13: The apparatus according to claim 11 or 12, wherein the indicator is indicative of the signals, at least in part, and the reference data, and a difference between the signals, at least in part, and the reference data;

(13)    Claim 14: The apparatus according to any one of claims 9 to 13, wherein the apparatus includes an output for presenting at least the indicator to the user;

(14)    Claim 15: The apparatus according to any one of the preceding claims, wherein the apparatus includes an input, thereby allowing a user to input data;

(15)    Claim 16: The apparatus according to any one of the preceding claims, wherein the support is elongated and wherein the securing members are provided at a first end of the support and a second end of the support is configured to support a weight of the subject;

(16)    Claim 17: The apparatus according to any one of the preceding claims, wherein the sensor includes any one of a load cell, a force plate, a piezoresistive force sensor, a strain gauge and a hydraulic pressure gauge, the sensor being configured to sense any one of compression and tension.

76    Claim 19 is dependent on claim 18. It states:

The method according to claim 18, which includes monitoring signals from the at least one sensor and generating, at least in part using the signals, an indicator indicative of the strength of the at least one knee flexor muscle.

77    Claim 20 is also dependent on claim 18. It states:

The method according to claim 19, the method including comparing the signals, at least in part, and reference data, and generating the indicator in accordance with the results of the comparison.

4.    PERSON SKILLED IN THE ART

78    The person skilled in the art is the hypothetical person to whom the patent specification is addressed and who, generally speaking, works in the art or science with which the invention is connected: see, e.g., Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 49 IPR 225; [2000] FCA 980 at [70]–[71] (Finkelstein J). It is not a reference to a specific person but is a legal construct or notional person who may have an interest in using the products or methods of the invention, making the products of the invention, or making products used to carry out the methods of the invention either alone or in collaboration with others having such an interest: Aristocrat Technologies Australia Pty Ltd v Konami Australia Pty Ltd (2015) 114 IPR 28; [2015] FCA 735 at [26] (Nicholas J); Hanwha Solutions Corporation v REC Solar Pte Ltd [2023] FCA 1017 at [86] (Burley J).

79    Based on the subject matter of the Patent, the person skilled in the art has skills (at least) in sports medicine, being a person with knowledge of and familiarity with exercise and training apparatus (for example, as a physiotherapist or sports scientist). There was no dispute in this case that both experts had such expertise.

5.    CONSTRUCTION OF THE PATENT

80    The focus of the construction debate concerned claim 1 of the Patent. To the extent that there was a dispute concerning other claims (namely 4 and 16), that debate will be addressed as part of the reasons relating to infringement.

5.1    Legal principles

81    The principles of claim construction are not relevantly in dispute and are conveniently set out in Jupiters Ltd v Neurizon Pty Ltd (2005) 65 IPR 86; [2005] FCAFC 90 at [67] (Hill, Finn and Gyles JJ) as follows:

(i)    the proper construction of a specification is a matter of law: Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400;

(ii)    a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Company v Beltreco Ltd (2000) 49 IPR 331; [2000] FCA 890 at [81] (Flexible Steel Lacing); and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1; 177 ALR 460; 50 IPR 513; [2001] HCA 8 at [24];

(iii)    the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corporation Pty Ltd at 391;

(iv)    while the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 4 All ER 221 at 224–5; (1938) 56 RPC 23 at 39;

(v)    experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485–6 (Sartas No 1 Pty Ltd); the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberley-Clark v Arico at [24]); and

(vi)    it is for the Court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd at 485–6.

82    As point (iv) in the summary in Jupiters makes clear, the claims are to be read in the context of the specification as a whole. However, balanced against that is the requirement that the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another different subject matter. Put another way, the correct approach to construction is to read the document in its context, including the claims: see Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 67 IPR 230; [2005] FCAFC 220 at [44], [94] (Wilcox, Branson and Bennett JJ).

83    It is for the Court to determine the meaning of the language of the claims, aided by the evidence of experts to assist in understanding unfamiliar terms and the technical context of the subject matter. Expert opinion does not supplant the judicial role: see Airco Fasteners Pty Ltd v Illinois Tool Works Inc (2023) 170 IPR 225; [2023] FCAFC 7 at [59] (Rares, Moshinsky and Burley JJ).

5.2    Whether claims require assessment of strength in reliable and accurate way

84    The first issue concerns whether the claims require the assessment of the strength of a knee flexor muscle in a reliable and accurate way to provide clinically relevant information (KangaTech’s characterisation of the issue) or whether the claims require perfect or even near perfect accuracy or reliability in assessing such strength (Vald’s characterisation of the issue). However, the latter characterisation overstates KangaTech’s position on this issue.

85    By its opening submissions on infringement, KangaTech did not refer to perfection, instead submitting that:

…the disclosure of the invention, including the apparatus, is always conditioned by reference to its use in effectively and reliably assessing the strength of at least one knee flexor muscle by the user performing an NHE.

86    Although complaint was made by Vald that this construction issue was not raised by KangaTech through its pleadings, it was opened by KangaTech both orally (for example, at T44/10–45) and in writing as set out above, and without objection by Vald. As addressed in more detail below, the experts addressed issues relating to reliability and accuracy, including in the JER. Further, Vald sought a finding that the force measurement from unilateral Nordic curls is sufficiently reliable. Finally, Vald addressed this construction issue in its closing submissions, both orally in and writing. Specifically, by reference to its characterisation of the issue above, Vald submits that:

(1)    The claims do not specifically refer to reliability or accuracy, let alone quantitative thresholds thereof. See also e.g., Lovell T301.19-37 and cf T69.17-20.

(2)    Neither the claim nor the specification requires any specific duration of descent. See also e.g., Lovell T300.39-301.19.

(3)    The Patent is aimed at something that is “a bit more functional” than an ISD; i.e., “easier to test multiple athletes, but not quite as controlled”: Lovell T293.46-3.

87    Although the claims do not refer to reliability or accuracy expressly, integer 1.1 describes the apparatus as one “for use in assessing strength of at least one knee flexor muscle of a subject”. Integer 1.5 describes a force being sensed which is “indicative of the strength” of at least one knee flexor muscle acting in eccentric contraction.

88    Similarly, integer 18.1 describes the method as one of “assessing strength of at least one knee flexor muscle of a subject using an apparatus”. Integer 18.5 describes a force being sensed which is “indicative of the strength” of at least one knee flexor muscle acting in eccentric contraction.

89    The Patent discloses that the result which is achieved by the assessments of strength conducted by the disclosed apparatus and method are accurate and reliable in that:

(1)    the apparatus overcomes disadvantages of existing techniques which were known as at the priority date, which are said to have “questionable reliability and repeatability of measurements of between limb strength imbalances” and the apparatus “appears to provide enhanced sensitivity and reliability for the assessment of between limb strength imbalances compared to existing techniques”: [0012], [0079];

(2)    the apparatus “displays acceptable levels of test-retest reliability when measuring peak or average peak knee flexor force during a bilateral NHE”: [0179];

(3)    the apparatus displays acceptable reliability for “the measurement of between limb strength differences” when the NHE was “completed bilaterally, and peak force was average across six contractions”: [0179];

(4)    “a bilateral NHE performed with multiple repetitions across a number of sets to determine average eccentric peak knee flexor force produces optimal reliability”: [0179];

(5)    “the apparatus 100 is capable of effectively assessing the hamstring strength of a subject S, and in particular displays acceptable levels of test-retest reliability and correlation with gold standard, i.e. isokinetic dynamometry, assessments”: [0189].

90    In circumstances where the person skilled in the art has skills in sports medicine, the purposive, common-sense construction of the claims is that they describe an apparatus (claim 1 and its dependent claims) and a method (claim 18 and its dependent claims) which can be used to assess strength of at least one knee flexor muscle of a subject in a reliable and accurate way in order to provide clinically relevant information.

91    In other words, in construing the claims in the context of the specification as a whole (as addressed above), a person skilled in the art would understand the reference to an apparatus for use in assessing strength of at least one knee flexor muscle of a subject in integer 1.1, or to a method of assessing strength of at least one knee flexor muscle of a subject using an apparatus in integer 18.1, as only being capable of achieving that result if that assessment is a reliable and accurate one.

92    Dr Lovell’s commentary around what the claims and the specification do, or do not, contain (as highlighted in Vald’s closing submissions) does not detract from this conclusion.

5.3    Whether claim 1 requires both legs to be secured

93    A central issue in this case is whether claim 1 requires that both legs be secured in the securing members (KangaTech’s construction) or whether claim 1 requires that either one or both legs be so secured (Vald’s construction).

94    Claim 1 refers to two securing members, each securing member being configured to secure a respective lower leg of the subject in a position that, in use, is substantially fixed relative to a support when the subject lowers the subject’s upper body from a kneeling position to perform an eccentric contraction of the at least one knee flexor muscle of the subject (integers 1.2 and 1.3).

95    In support of its construction, Vald submits, and I accept, that the word “configured” in claim 1 is not a word which has a technical meaning and nor is it a word to which the specification ascribes a special meaning. The ordinary meaning of the word “configured” means “designed or adapted to form a desired configuration”.

96    Vald also contrasts the words of claim 1 to that of claim 18, which is a method claim and which it submits requires a performative action, that is, “securing the lower legs of the subject, using the respective securing members” (emphasis added).

97    Finally, Vald cites s 116 of the Patents Act and observes that the reference to “securing” was contained in the original version of claim 1 but that this was amended as follows (with the mark up showing the amendments):

two securing members, each securing member securing being configured to secure a respective lower leg of the subject in a position that, in use, is substantially fixed relative to the support when the subject lowers the subject’s upper body from a kneeling position to perform an eccentric contraction of the at least one knee flexor muscle of the subject.

98    However, notwithstanding these matters, the proper construction of claim 1, when read in the context of the specification as a whole (rather than selected parts of it), is that both legs must be secured in the securing members.

99    That is for the following reasons.

100    The “Background of the Invention” describes the invention as being an apparatus for use in assessing the strength of at least one knee flexor muscle of a subject. The reference to at least one knee flexor muscle being tested, even if that muscle is only tested in one but not both legs, does not have the consequence that only one leg is secured for the purpose of testing that knee flexor muscle. That is made plain by, for example, [0038] and [0039] of the specification.

101    The “Background of the Invention” then states to the effect that, in one example, the invention relates to an apparatus for use in assessing at least the hamstring strength in at least one leg of the subject while the subject performs an eccentric knee flexor contraction. While the superficial impression of these words is that only one leg is secured (the hamstring strength of which is being tested), it will be seen that the Patent contemplates the testing of only one leg using one sensor, with the other leg being secured but not tested.

102    As observed above, the specification refers to existing devices, including the “gold standard” isokinetic dynamometer, which device assesses the strength in each leg independently (one leg at a time), with the specification stating that this requires “significant time”: [0005].

103    At [0012], the specification reiterates that a disadvantage of existing devices is “significant assessment times” and further states that, “previous methods and apparatus have failed to provide simultaneous assessment of hamstring strength in both legs, independently, during a bilateral exercise, or a combined assessment of hamstring strength in both legs during a bilateral exercise” (emphasis added). No mention is made of deficiencies in existing devices by reference to unilateral exercises.

104    Further, taking into account the emphasis in [0005] and [0012] upon the undue length of assessment times where each leg is tested one at a time (particularly through use of the isokinetic dynamometer), the solution which is proffered by the Patent is an apparatus which permits the hamstring strength in both legs to be tested at the same time, either independently or on a combined basis, thereby reducing the assessment time. If the apparatus was one which tested the hamstring strength of one leg at a time (which would be the case if only one leg was secured), this would not reduce the assessment time, and would not be regarded as overcoming the perceived disadvantage of existing devices.

105    In the “Summary of the Present Invention”, the specification reveals that the invention seeks to ameliorate “one or more” of the abovementioned problems. It goes on to describe the invention in three broad forms at [0014], [0040] and [0041]. Each of these broad forms or consistory clauses contains wording which indicates that both legs are secured by the securing members, namely:

(1)    “two securing members, each securing member securing a respective lower leg of the subject…”: [0014];

(2)    “two securing members, each securing member constraining movement of a respective lower leg of the subject…”: [0040];

(3)    “securing two lower legs of a subject using the respective securing members…”: [0041].

106    There is nothing in the part of the specification described as the “Summary of the Present Invention” which contemplates that only one leg is secured by a securing member. If this was contemplated, one would expect to see at least some reference to it here.

107    Each of the consistory clauses also refers to the apparatus having “at least one sensor” which is then described as, in effect, sensing a force indicative of the strength of at least one knee flexor muscle in at least one leg. However, the reference to and use of only one sensor does not mean that only one leg is secured; it simply means that a knee flexor muscle of one of the two secured legs is being assessed by that one sensor when the bilateral Nordic curl is performed using the apparatus.

108    This construction is supported by [0015] (for example), where reference is made to at least one sensor being coupled to at least one of the two securing members. It is also supported by the words used in the consistory clauses such as [0014] which provides:

at least one sensor, which in use senses a force indicative of the strength of the at least one knee flexor muscle in at least one leg of the subject while the subject performs an eccentric contraction of the at least one knee flexor muscle.

109    Further support for this construction is found at (for example) [0044] which provides that: “Typically the method includes sensing the force indicative of the hamstring strength in at least one leg of the subject while the subject performs a Nordic hamstring exercise”. This paragraph is connected with the third broad form which is in turn the consistory clause of claim 18 (the method claim) which Vald accepts requires both legs to be secured. Yet [0044] refers to sensing the force indicative of the hamstring strength in at least one leg of the subject. Although only one leg is referred to in [0044] as being tested, both legs are secured using the method described in [0041].

110    An example of the invention is then described with reference to the drawings. Figures 1D, 1E and 1F are shown above. At [0050], these drawings are described as schematic drawings of a first example of a subject performing an eccentric contraction of at least a knee flexor using the apparatus.

111    The Detailed Description of the Preferred Embodiments provides an example of the apparatus by reference to Figures 1A to 1F.

112    As already identified above, the specification then states:

[0072] In this example, the apparatus 100 includes a support 110, and two securing members 121, 122, that in use secure a respective lower leg of the subject S in a position that is substantially fixed relative to the support 110.

[0073] The apparatus 100 further includes two sensors 130.1, 130.2 that, in use, sense a force indicative of the strength of at least one knee flexor muscle in one or both legs of the subject S while the subject S performs an eccentric contraction of the at least one knee flexor muscle.

113    Pausing there, although the words refer to an eccentric contraction of the at least one knee flexor muscle, the description refers to an example shown in drawings which depict the apparatus being used with both legs secured by the securing members.

114    At [0075], it is stated that:

Figures 1D to 1F show a subject S performing an eccentric contraction of at least a hamstring using the apparatus 100. In this respect, Figure 1D shows the subject S in an initial kneeling position prior to commencing the contraction, in which the subject's lower legs are secured using the respective securing members 121, 122 in a position that in use is substantially fixed relative to the support. The subject S subsequently proceeds to lower their upper body toward the support 110 in a controlled manner, while substantially maintaining alignment of the upper legs or thighs and torso, as shown in Figure 1E. Figure 1F shows a final position, with the subject S laying substantially prone on the support 110. It will be appreciated that the abovementioned eccentric contraction is typically called the 'Nordic hamstring exercise', 'Nordic curl', or the like.

(Emphasis added.)

115    There is no drawing which depicts, and nor does the specification identify, how the subject S lowers their upper body toward the support 110 in a controlled manner, while substantially maintaining alignment of the upper legs or thighs and torso, if only one leg is secured in a securing member.

116    At [0076], it is stated that:

Accordingly, the above-described arrangement provides apparatus 100 for use in assessing hamstring strength of a subject S, in which the force exerted at the lower leg of the subject S while they perform an eccentric contraction of at least the hamstring is indicative of hamstring strength. …

117    Again, the advantage of the apparatus over the existing methods is emphasised at [0079] by reference to the fact that each leg may be tested at the same time, as follows:

It will also be appreciated that the apparatus 100 including two sensors 130.1, 130.2 allows the assessment of the hamstring strength of both hamstrings of a subject S, at the same time. Accordingly the sensors 130.1, 130.2 may sense the force indicative of at least the hamstring strength in each leg of the subject S simultaneously. In this regard, the assessment may be performed in significantly less time than existing methods, for example isokinetic dynamometry, which is limited to assessing hamstrings of opposing legs at different times. …

118    At [0083], it is stated that a number of further features will now be described. At [0084] and [0085], the following is then stated:

[0084] In another example, each sensor 130.1, 130.2 is coupled to a respective securing member 121, 122 that secures the ankles of a subject S relative to the support 110 and accordingly the force sensed at the ankles is indicative of hamstring strength. However, this feature is not essential and it will be appreciated that the sensors 130.1, 130.2 may sense a force exerted at any part of the lower leg, for example under the knees of the subject S.

[0085] Furthermore, the assessment of hamstring strength may occur during a unilateral or bilateral contraction/s of the hamstring/s. For example, during a bilateral contraction, two sensors 130.1, 130.2 may be used to sense the force in each leg of the subject simultaneously or at different times, or alternatively a single sensor 130.1, 130.2 may be used to sense the force in either or both legs. During a unilateral contraction, the apparatus may include one sensor 130.1, 130.2 which is interchangeable between the lower legs of the subject, by repositioning the sensor 130.1, 130.2 and/or the securing members 121, 122 and/or the subject S relative to the support 110, such that the hamstring strength in both legs can be assessed sequentially. However, this feature is not essential.

(Emphasis added.)

119    Dr Pizzari’s evidence (both affidavit and oral evidence) concerning the construction of the Patent (which favoured Vald) was centred upon [0085] of the specification in particular.

120    In reliance upon Dr Pizzari’s evidence, Vald points to the emphasised words in [0085] to contend that claim 1 should not be construed as requiring both legs to be secured by the securing members on the basis that a person skilled in the art as at the priority date would know that, in order to perform a unilateral contraction of the hamstring, one leg must be unsecured.

121    However, I do not accept this submission having regard to my finding as to the common general knowledge as at the priority date.

122    My view as to the proper construction of claim 1 aligns with that of Dr Lovell, whose evidence I prefer to that of Dr Pizzari for the reasons already stated. Dr Lovell gave the following evidence in his first affidavit (which evidence I accept):

111.    In my opinion, none of the claims of the Patent encompass a subject performing an NHE with only one lower leg secured. While there are references to testing ‘at least one knee flexor’, I read this as meaning the force generated by only a single leg may be measured but that both the subject’s lower legs are both secured in their respective securing members.

112.    My understanding of the apparatus described and claimed in the Patent is that it encompasses:

•    an apparatus where the subject has both their legs secured (i.e., fixed relative to the support (platform);

•    An NHE is performed to cause an eccentric contraction of at least one hamstring (knee flexor) – that eccentric contraction being necessary to resist the subject’s upper body falling forward; and

•    The force which the subject leaning forward – and the resultant eccentric contraction generates – being measured in one or both legs – via a sensor (or sensors) connected to the securing member(s).

…

114.    While there is no specific reference to the contralateral leg (being the leg for which force is not being measured) being secured, in my opinion that leg must also be secured for stability purposes.

115.    In my opinion, the stability required to perform an NHE in a way which would produce any useful form of measurement in one leg, would require that the other ‘contralateral’ lower limb – being the leg for which no force measurement was being taken – was supported and/or restrained or otherwise stabilised by some form of support, platform or restraint.

…

121.    While, at paragraph 173, the Patent refers to the performance of “unilateral contractions” and NHEs being performed “unilaterally”, it is unclear to me whether this is referring to unilateral measurements (i.e. measuring the force exerted in one leg whilst the other leg remains secured) or that it contemplates a one-legged Nordic curl being performed. To the extent that it is the latter, the Patent does not explain how this is done and the drawings do not depict this activity. Accordingly, while the Patent refers to both bilateral and unilateral NHE’s, it does not explain how a unilateral NHE is performed and measured in any meaningful way.

122.    …Furthermore, any force results obtained in carrying out [a one-legged NHE] would, in my view be of very limited value.

(Emphasis original.)

123    An additional reason in support of my construction rests upon my finding that claim 1 requires the apparatus to assess strength in a reliable and accurate way to provide clinically relevant information. That is because, based upon Dr Lovell’s evidence as follows (which evidence I accept), such an assessment is not achieved when a unilateral NHE is performed on the apparatus disclosed in claim 1. Dr Lovell explained in his first affidavit that:

[P]erforming an NHE in the way outlined above, with one leg restrained and the other stabilised, supported or held in a different manner, would compromise the accuracy of the assessment as the contralateral limb (i.e., the limb not restrained in the same way) would inevitably be absorbing a proportion of the force generated in performing an NHE but that force would not be measured in any way.

124    Returning then to the Patent itself, there are many strong indicators within it that Vald’s construction is not the correct one. Some of these have already been addressed above. Others will now be considered.

125    Use of the apparatus with only one leg secured by a securing member is not depicted in any of the drawings, and [0085] does not state in express terms that only one ankle or one leg of the subject is secured (unlike other paragraphs in the specification which refer expressly to the ankles or legs of the subject being secured, such as [0075], [0081] and [0084]). Nor does the specification (whether through any drawing or otherwise) describe where the unsecured leg is to be placed (for example) or, as already observed, how the subject S lowers their upper body toward the support 110 in a controlled manner, while substantially maintaining alignment of the upper legs or thighs and torso, if only one leg is secured in a securing member.

126    The specification is detailed in its description of the different means of using the apparatus with both legs secured, including by reference to numerous drawings, but is silent as to how this is to be achieved with only one leg secured. These matters tell against a construction of claim 1 which does not require both legs to be secured. If it was a simple matter of informing the person skilled in the art to perform a bilateral Nordic curl on the apparatus and leaving it to them to understand how to undertake that process, these details and drawings would not be required. Having regard to the evidence of Dr Lovell, a unilateral Nordic curl is more difficult for a person to perform, and there are impediments to obtaining a reliable force measurement from such an exercise without the use of a support. This makes it more, not less, likely that there would be an explanation in the specification about the manner of performing a strength assessment on the apparatus with only one leg secured if claim 1 encompassed that.

127    This is especially as one of the advantages which the Patent holds the apparatus out as having is better reliability and repeatability of measurements of between limb strength imbalances. It is to the issue of reliability that I now turn.

128    At [0012] of the specification, after addressing existing methods and devices for testing hamstring strength, the specification identifies that existing techniques have questionable reliability and repeatability of measurements of between limb strength imbalances.

129    In the Detailed Description of the Preferred Embodiments at [0079], it is stated that the apparatus also appears to provide enhanced sensitivity and reliability for the assessment of between limb strength imbalances compared to existing techniques.

130    At [0170], it is stated that, “A number of experiments were performed in order to demonstrate the effectiveness of the abovementioned apparatus 100…”.

131    The section which follows is entitled “Reliability and Validity Experiments” and appears at [0171]–[0182] of the specification.

132    These experiments involved 30 subjects (initially 31, but one was excluded). One session involved the determination of eccentric knee flexor strength via isokinetic dynamometry and the apparatus, and another session involved the assessment of eccentric knee flexor force via the apparatus only, to allow for test-retest reliability to be determined. Participants were asked to perform two sets of “three maximal NHEs bilaterally (with both legs) and unilaterally (using only one leg)”.

133    The specification identified at [0177] that:

(1)    on the whole absolute force measurements taken during bilateral contractions were more reliable than the unilateral contractions;

(2)    with respect to between limb imbalances in force, only the bilateral average peak force condition displayed acceptable reliability.

134    The specification then continued as follows:

[0179] From the data presented, the apparatus 100 displays acceptable levels of test-retest reliability when measuring peak or average peak knee flexor force during a bilateral NHE and approaches an acceptable level of reliability for average peak force during unilateral contractions. For the measurement of between limb strength differences, only when the NHE was completed bilaterally, and peak force was average across six contractions, did the measure display acceptable reliability. Hence, the findings from the current study suggests that the single most reliable method to acquire eccentric knee flexor force and between limb force ratios from the apparatus 100 is via a bilateral NHE with peak force averaged across six contractions. There is also the capability to assess eccentric knee flexor strength during a bilateral contraction but using a single peak measure instead of an average of peak forces, or during unilateral contraction, however the between limb strength comparisons, and in some cases the absolute force measures, do not appear to be reliable for these methods. Therefore, it appears that a bilateral NHE performed with multiple repetitions across a number of sets to determine average eccentric peak knee flexor force produces optimal reliability. For the purposes of maximal strength assessment it is important to minimise the number of repetitions per set to reduce the impact of fatigue throughout a set because this will have a significant impact on average peak force. In the current study two sets of three repetitions were performed, but similar set and repetition formats (i.e. three sets of two repetitions) are also feasible. It is also recommend [sic] that measures of eccentric knee flexor strength and between limb strength imbalances be used to compare within but not between athletes. This is due to the varying factors which influence the performance of the NHE, such as lever lengths and upper body mass that would differ markedly between athletes, but would be expected to remain mostly similar within an athlete.

…

[0181] It might also be expected that the difference in laterality between the bilateral NHE and the unilateral dynamometry testing would contribute to some of the variability, however on the whole, the unilateral NHE displayed weaker correlations than the bilateral contractions. This may be due in part to the difficulty participants experienced in becoming comfortable with the unilateral condition, as exemplified by the greater amount of familiarisation time that was required to be devoted to the unilateral contractions.

[0182] Aside from the bilateral NHE condition displaying the highest level of test-retest reliability, the ability to assess unilateral eccentric knee flexor strength during bilateral contractions may have additional benefits. It is well known that there are complexities in the neural control of bilateral and unilateral contractions, with the bilateral deficit a primary example of such a phenomenon. It would appear feasible that under bilateral conditions, in a task with a known but ever increasing load such as the NHE, the nervous system may elect to protect a weaker or more vulnerable muscle/limb and consequently chose to ‘load’ the more capable muscle or limb more aggressively. As such bilateral testing may be better able to detect between limb strength imbalances, if they exist, compared with unilateral strength assessments which have already shown some predictive ability. This is particularly pertinent for the monitoring of HSI risk in athletes, given between limb strength difference have been reported to increase the risk of injury in athletes. Indeed, unpublished observations show that in elite athletes with a previous unilateral HSI history, the apparatus 100 has been able to better predict the previously injured limb compared to the isokinetic dynamometer, based on between limb eccentric strength deficits.

(Emphasis added.)

135    The specification next addresses the results of what is described as an “Intervention Experiment” which was performed using the apparatus, with the participants’ eccentric knee flexor strength measured using the apparatus by performing two sets of two bilateral NHEs on the apparatus both prior to and following the completion of the intervention. At [0185], it is stated that the apparatus can reliably detect improvements in hamstring strength over a period of training.

136    The specification then addresses what are described as “Injured Cross-sectional Experiments” which involved participants with clinically diagnosed unilateral hamstring strain injury. The participants performed two sets of two bilateral NHEs on the apparatus to determine eccentric knee flexor strength for both the injured and uninjured limb, and then further tests were performed. At [0187], the results are stated as being that the previously injured limb was significantly weaker than the uninjured limb.

137    At [0189], it is stated that, in view of these experiments, it will be appreciated that the apparatus is capable of effectively assessing the hamstring strength of a subject, and in particular displays acceptable levels of test-retest reliability and correlation with gold standard, i.e. isokinetic dynamometry assessments. It also states that the apparatus displays promising results in intervention and cross-sectional injury investigations.

138    Having regard to the earlier sections of the specification which precede the conclusions at [0189], as set out above, these conclusions relate only to the performance of bilateral NHEs on the apparatus. As it was common ground between the experts that a unilateral NHE could not be performed on the apparatus if both legs were secured by the securing members, which evidence I accept, it follows that these conclusions are directed to use of the apparatus in which both legs are secured by the securing members.

139    There are no similar conclusions which are referable to the performance of unilateral NHEs on the apparatus (being with only one leg secured). Rather, the results of the testing demonstrate that either the performance of unilateral NHEs on the apparatus did not display acceptable reliability with respect to limb imbalances in average peak force condition ([0177]), only approached (but I interpret, did not achieve) an acceptable level of test-retest reliability for average peak force ([0179]) and displayed weaker correlations with isokinetic dynamometry assessments ([0181]).

140    The conclusions at [0189] are an echo of the identified issues with the prior art at [0012] being “questionable reliability and repeatability of measurements of between limb strength imbalances”. Having commenced with identification of the problems with existing devices and methods, the specification then seeks to demonstrate that the performance of bilateral NHEs on the apparatus has overcome these problems through the experiments conducted on the apparatus.

141    At [0190], the specification again highlights the decreased assessment times as compared to the isokinetic dynamometer, being something which is achieved by assessing the hamstring strength of each leg simultaneously (through a bilateral Nordic curl), rather than one leg at a time such as occurs when using the isokinetic dynamometer.

142    For these reasons, the Patent teaches away from unilateral Nordic curls being performed on the apparatus, being the use of the apparatus with only one leg secured by a securing member.

5.4    Whether claim 1 is a product or method claim

143    A further issue of construction related to the proper characterisation of claim 1, being whether it is a product claim limited by result (as contended by Vald) or whether it is, as KangaTech contended, “not a true product claim” and thus, in effect, a “disguised” method or process claim.

5.4.1    The contentions by the parties

144    In summary, Vald submits that:

(1)    in a product claim, the claimed product “is defined only by features describing the product itself, e.g. by reference to its properties, capabilities, materials, parts and their interrelationship, etc”: Foxtel Management Pty Ltd v Advanced Technology Group Pty Ltd (2021) 166 IPR 632; [2021] APO 36 at [37], cited with approval in Bodkin C, Patent Law in Australia (Thomson, Westlaw) at [41100];

(2)    in contrast, a claim referring to a product is a method claim where the product is required in the actual performance of an action (as distinct from the “mere capability of the product to perform the action”): Foxtel at [37].

145    Vald submits that claim 1 does not require the actual performance of an action (which would be the subject of a method claim). Vald further submits that it is permissible for a product claim to “define the physical characteristics of the article by a suitable reference to the results which it is to achieve”: Mullard Radio Valve Co Ltd v British Belmont Radio Ltd (1939) 56 RPC 1 at 10 (Greene MR), quoted with approval in Axent Holdings Pty Ltd v Compusign Australia Pty Ltd (2020) 154 IPR 431; [2020] FCA 1373 at [264] (Kenny J). It submits that doing so does not convert a product claim into a method claim, relying on Axent at [265], [269], [270] and [275].

146    In summary, KangaTech submits that:

(1)    following “the introductory chapeau to claim 1”, the apparatus, in use, is further defined in claim 1 by the integers which do not define structural or functional limitations of an apparatus but rather the actions that the user must take in relation to the apparatus to assess the strength of at least one knee flexor muscle of a subject. The use is also defined by the functional requirement that the force generated by the actions is indicative of the strength of at least one of the knee flexor muscles (emphasis in submissions);

(2)    central to Vald’s construction of claim 1 (and its dependencies) is an assertion that only the structural features of claim 1 should be given meaning and that Vald “seeks to construe claim 1 to remove any of the integers conditioning the use of the apparatus”;

(3)    the practical consequence of Vald’s construction is that claim 1 would encompass any apparatus that had two securing members fixed to a support, and at least one sensor coupled to a securing member, irrespective of how such an apparatus may be used;

(4)    the wording of claim 1 should be given meaning, which wording conditions the suitability for use of the apparatus to assess the strength of at least one knee flexor muscle;

(5)    claim 1 includes a definition of a product; however, it is further limited by particular actions to be performed and the forces measured as a result of those actions;

(6)    Vald’s construction is entirely inconsistent with the disclosure of the invention in the Patent. The disclosure of the invention, including the apparatus, is always conditioned by reference to its use in accurately and reliably assessing the strength of at least one knee flexor muscle by the user performing an NHE. The Patent does not characterise the inventive concept as attaching sensors to an apparatus. It is apparent from the evidence that that was well known at the priority date.

5.4.2    Consideration

147    In D’Arcy v Myriad Genetics Inc (2015) 258 CLR 334; [2015] HCA 35 at [145], Gageler J (as his Honour then was) and Nettle J observed that:

…More generally, an “invention is to be understood as a matter of substance and not merely as a matter of form”. If a claim drafted as a product claim is in truth a “disguised” process claim, it will be treated as such.

(Citations omitted.)

148    In Axent, Kenny J observed at [262] and [263] that:

…the authorities draw a distinction between a product claim containing a limitation by result (or functionality limitation) and a method (or process) claim. In Blanco White’s Patents for Inventions and the Protection of Industrial Designs (5th ed, 1983) (Blanco White) at 4–413, the author stated:

To amount to a limitation by result, what is in the claim must at least be a limitation: something that draws a line between two classes of things that would otherwise fall within the claim: with the implication that conditions of the manufacture can be adjusted, by the reader of the specification, to secure the specified result. It is, of course, a matter of construction to determine whether words in the claim effect a limitation or merely assert that complying with the claim will secure a certain result, and this like other questions of construction affecting validity is likely in present-day conditions to be decided in favour of an otherwise meritorious patentee.

A claim will be construed as a method or process claim if it employs a method of definition appropriate only to a method or process claim: see Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205; 25 IPR 119 at 126, citing Mullard Radio Valve Co Ltd v British Belmont Radio Ltd (1938) 56 RPC 1, at 10–11.

(Emphasis omitted.)

149    In Mullard at page 10, Sir Wilfrid Greene, M.R. (as his Lordship then was) stated:

Unlike Claim 1, which is a process claim, the amended Claim 2 is, as was the original Claim 2, an apparatus claim and it must stand or fall as such. In such a claim it is permissible in a proper case to define the physical characteristics of the article by a suitable reference to the results which it is to achieve. It is no objection to such a method of definition in cases where it is appropriate that experiment may be required in order that a worker in the art may know whether an article which he has made does or does not infringe the patent. A permissible reference to results is in truth as much a description of the physical characteristics of the article as a reference to its size or strength or chemical composition would be, and in many cases such a reference is the only practical method of describing the article or some characteristic which it possesses. On the other hand, it is not permissible to import into an apparatus claim a method of definition which is appropriate only to a process claim. Thus an article which is not in itself patentable cannot be made the subject of a good apparatus claim merely by pointing out that, if it is used in a particular way or in a particular collocation, it will produce novel and useful results. This does not, of course, mean that there may not be a patentable piece of apparatus in which such an article forms one element, for the combination of the article with other elements may be novel and useful and may require an exercise of the inventive faculty to produce it. Nor does it mean that there cannot be a good claim for a process in which user of the article in a particular way or in a particular collocation may produce or help to produce a novel and useful result...

150    In Interlego A.G. v Toltoys Pty Ltd (1973) 130 CLR 461 at 480, Barwick CJ and Mason J observed that it is permissible to limit a claim by reference to result, so long as, in the case of an article, the limitation is “sufficient to characterize the construction of the article claimed” (quoting Mullard at page 16): see also GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Apotex Pty Ltd (2016) 119 IPR 1; [2016] FCA 608 at [700] (Beach J).

151    I turn then to consider claim 1.

152    Claim 1 commences with language indicative of a product claim. Integer 1.1 states, “An apparatus for use in assessing strength of at least one knee flexor muscle of a subject, the apparatus including” and this is followed by the other integers of claim 1. There is no dispute between the parties that the words “for use” in integer 1.1 means “suitable for use” in, or “capable of”, assessing strength of at least one knee flexor muscle of a subject, and I agree with that construction.

153    The remaining integers of claim 1 (which are repeated for convenience) are:

1.2    two securing members;

1.3    each securing member being configured to secure a respective lower leg of the subject in a position that, in use, is substantially fixed relative to a support when the subject lowers the subject’s upper body from a kneeling position to perform an eccentric contraction of the at least one knee flexor muscle of the subject; and

1.4    at least one sensor coupled to at least one of the securing members;

1.5    to sense a force applied to the at least one securing member by the subject’s knee flexor muscle acting in eccentric contraction while the subject lowers the subject’s upper body, the force being indicative of the strength of the at least one knee flexor muscle acting in eccentric contraction.

154    These integers identify physical features of the disclosed apparatus (such as two securing members) as well as functional limitations being that, when the apparatus is in use:

(1)    each securing member is substantially fixed relative to a support when the subject lowers their upper body from a kneeling position to perform an eccentric contraction of at least one knee flexor muscle. Thus, each securing member of the apparatus will fall within the meaning of integer 1.3 if, when the subject lowers their body in the way described in that integer, it is substantially fixed relative to a support; and

(2)    there is at least one sensor coupled to one of the securing members which senses a force applied to that securing member when the subject lowers their upper body in performance of the said eccentric contraction, the force being indicative of the strength of the at least one knee flexor muscle acting in eccentric contraction. Thus, the apparatus will fall within claim 1 if there is at least one sensor coupled to one of the securing members, which sensor will fall within the meaning of integer 1.5 if, when the subject lowers their body in the way described in that integer, it senses a force applied to that securing member, the force being indicative of the strength of the at least one knee flexor muscle acting in eccentric contraction.

155    The result is that by means of an apparatus as claimed, an assessment of the strength of at least one knee flexor muscle of a subject can be undertaken in a reliable and accurate way in order to provide clinically relevant information. An apparatus which does not achieve this result is not claimed.

156    I am satisfied that the functional limitations or limitations by result which are disclosed in claim 1 are sufficient to characterise the construction of the apparatus claimed such that “a worker in the art may know whether an article which he has made does or does not infringe the patent” (Mullard at page 10) or “conditions of their manufacture can be adjusted by the reader of the specification, to secure the specified result” (Axent at [275]).

157    Further, this is not a claim of the kind described in Foxtel at [37] (upon which KangaTech relied) in which the product described in the claim is actually required to perform an action.

158    For these reasons, I construe claim 1 as a product claim limited by result.

159    By accepting that claim 1 is a product claim limited by result, I do not agree that Vald “seeks to construe claim 1 to remove any of the integers conditioning the use of the apparatus” as submitted by KangaTech. That is because the functional limitations referred to above are integers conditioning the use of the apparatus and so have not been “removed”. For the same reasons, I do not accept KangaTech’s submission that the practical consequence of this construction is that claim 1 would capture “any apparatus that had [two] securing members fixed to a support, and at least one sensor coupled to a securing member, irrespective of how such an apparatus may be used”.

6.    VALIDITY

160    By its cross-claim, KangaTech alleges that each of the claims of the Patent are invalid for lack of sufficiency (also called lack of disclosure) and lack of support, as well as for lack of inventive step. This case was only pressed if it was found that claim 1 encompassed a situation where only one leg was secured by the securing member.

161    Although such a finding was not made, the allegations concerning validity will be addressed in any event and on the hypothesis that claim 1 does not require both legs to be secured in the securing members (which is contrary to my construction).

6.1    Lack of disclosure and lack of support

6.1.1    Legal principles

162    In Jusand Nominees Pty Ltd v Rattlejack Inventions Pty Ltd [2023] FCAFC 178, Perram J, with whom Nicholas and McElwaine JJ agreed, stated the following in relation to these grounds of invalidity at [154]–[155]:

Amongst the various grounds on which a patent may be found invalid are two which concern the relationship between the claims of the patent and its specification. This relationship is regulated by ss 40(2)(a) and (3) of the Act which provide:

(2)    A complete specification must:

(a)    disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and

…

(3)    The claim or claims must be clear and succinct and supported by matter disclosed in the specification.

The requirement in s 40(2)(a) is often referred to as the sufficiency obligation whilst the requirement in s 40(3) is referred to as the support requirement. The sufficiency requirement requires that the patentee should sufficiently disclose in the specification how to perform the invention. The support requirement requires that the claims defining the patent should themselves be supported by what appears in the specification. In many cases these obligations may tend to be the same since they are describing the same relationship although viewed from the differing perspectives of the claims and the specification. As Burley J has observed in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1 (‘Merck Sharp’) at [543], they may often be viewed as two sides of the same coin. But they may nevertheless sometimes differ as Birss J (as his Lordship then was) explained in Illumina Cambridge Ltd v Latvia MGI Tech SIA [2021] EWHC 57 (Pat); RPC 12 (‘Illumina’) at [255].

6.1.2    The contention

163    KangaTech relies upon the same particulars for lack of disclosure and lack of support.

6.1.3    Consideration: particular (i)

164    The first particular of invalidity is as follows:

To the extent that the claims of the Patent extend beyond the use of an apparatus where the subject has both their legs secured (i.e., fixed relative to the support (platform) in order to perform an eccentric contraction of at least one hamstring (knee flexor) there is no support for such a claim.

165    While the use of the product is not ordinarily relevant to an inquiry into disclosure or support for a product claim, where that claim is for a product limited by result (as I have found), and the words “for use” appear in the claim, the disclosure of the configuration of the product such that it can be used to achieve that result is required.

166    Vald submits that the specification explains how a unilateral Nordic curl would be performed at [0085] of the specification, and that “Patent specifications need not set out every detail necessary for performance but can leave the skilled man to use his skill to perform the invention”, citing Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) (2020) 155 IPR 1; [2020] FCA 1477 at [524] (Burley J). It also disputes that undue experimentation or modification would be needed to allow the performance of a unilateral Nordic curl.

167    The experts agreed that a unilateral Nordic curl could be performed on the apparatus if one leg was left unsecured. However, the experts disagreed on whether the Patent provides sufficient information on how to perform a unilateral Nordic curl using the apparatus.

168    Dr Lovell’s opinion is that the apparatus is not suitable for the performance of a unilateral Nordic curl without modification. His opinion is that performing a unilateral Nordic curl on the apparatus as depicted in the Patent could not be performed in a controlled manner by most subjects, and as such, would not be properly described as them having performed a Nordic curl and would be a measure of limited utility in a clinical sense. Given that the claims require the assessment of strength of a knee flexor muscle in a reliable and accurate way to provide clinically relevant information, Dr Lovell’s expressed concerns that use of the disclosed apparatus to perform unilateral Nordic curls would not lead to an accurate measure of force or a clinically relevant assessment of strength provides a strong indication that there is not an enabling disclosure of all of the things falling within the scope of the claims.

169    Dr Lovell expressed the opinion in the JER that, for the apparatus to be suitable, the subject’s contralateral leg ought to be secured and that a support structure for the subject’s body weight ought to be added. The Patent does not refer to either of these features. Further, the Patent does not provide any detail on where the contralateral leg is to be positioned, whether secured or not, and Dr Lovell considers that the manner in which that leg was to be positioned would not be known by the skilled addressee as at the priority date.

170    Dr Pizzari refers to [0085] and [0173] of the specification as providing suitable information for a unilateral Nordic curl to be performed. It will be recalled that [0085] of the specification states as follows:

Furthermore, the assessment of hamstring strength may occur during a unilateral or bilateral contraction/s of the hamstring/s. For example, during a bilateral contraction, two sensors 130.1, 130.2 may be used to sense the force in each leg of the subject simultaneously or at different times, or alternatively a single sensor 130.1, 130.2 may be used to sense the force in either or both legs. During a unilateral contraction, the apparatus may include one sensor 130.1, 130.2 which is interchangeable between the lower legs of the subject, by repositioning the sensor 130.1, 130.2 and/or the securing members 121, 122 and/or the subject S relative to the support 110, such that the hamstring strength in both legs can be assessed sequentially. However, this feature is not essential.

(Emphasis added.)

171    However, the above description does not provide any information about the configuration of the sensor, securing members, or the subject. Rather, by [0085], the Patent itself contemplates that the apparatus requires some modification, even if only of the repositioning of its constituent parts, for a unilateral Nordic curl to be performed.

172    Further, [0173] of the specification (which refers to exercises performed during the Reliability and Validity Experiments) does not provide any further guidance on how the apparatus is to be configured for the performance of a unilateral Nordic curl.

173    The content of [0085] and [0173] stands in stark contrast to the level of detail contained in the lengthy specification (including multiple drawings) concerning the performance of a bilateral Nordic curl on the disclosed apparatus.

174    Further, I have found that the performance of a unilateral or one-legged Nordic curl for the purposes of obtaining a reliable force measurement, or the manner in which such an exercise would be done, was not common general knowledge as at the priority date.

175    Having regard to this finding and to the evidence of Dr Lovell (which I prefer to that of Dr Pizzari for the reasons explained above), the disclosure in the Patent does not enable the person skilled in the art to work the product in such a way as for it to be suitable for the performance of a unilateral Nordic curl without inventive skill or undue burden: see Merck at [525].

176    For these reasons, if Vald’s construction of claim 1 had been the correct one such that it encompassed only one leg being secured by a securing member, I would have found that particular (i) is made out, and that claim 1 and its dependent claims would be invalid for lack of disclosure.

177    In ToolGen Incorporated v Fisher (No 2) [2023] FCA 794 at [410], Nicholas J observed that “it is difficult to see how a claim to an invention for which there was no enabling disclosure could meet the support requirement”.

178    In this case, the inquiry for lack of support is the same as that set out above for lack of disclosure. This has the consequence that, if Vald’s construction of claim 1 had been the correct one such that it encompassed only one leg being secured by a securing member, I would have found that particular (i) is made out, and that claim 1 and its dependent claims would be invalid for lack of support.

6.1.4    Consideration: particular (ii)

179    The second particular of invalidity is as follows:

To the extent that the claims of the Patent extend beyond the use of an apparatus where (at least one of) the securing members is attached via the sensor(s) to the support (platform) there is no support for such a claim.

180    KangaTech’s submissions on this aspect of its case are as follows:

To the extent that the claims of the Patent extend beyond the use of an apparatus where (at least one of) the securing members is attached via the sensor(s) to the support there is no support… for such a claim.

Both experts agree that, in the context of the claims, the “support” means the base of the device where the subjects [sic] knees rest and that the intention of the “support” is to support the subject’s body weight during an exercise. This construction is consistent with numerous passages in the Patent.

The Patent does not describe a securing member attached to the support other than directly via the sensor (to which it is coupled), where that sensor is attached directly to the support. In particular, it does not describe a securing member indirectly mounted to the support by being mounted on a separate part of the apparatus.

(Footnotes omitted.)

181    However, this claimed ground of invalidity is rejected because the invention described in the specification does not require the securing members to be attached via the sensor(s) to the support.

182    In various examples of the apparatus depicted in the specification, the securing members 121 or 122 are not attached to the support 110 via the sensor 130, namely:

(1)    in Figure 3H, the securing member 121 is coupled to the sensor 130 by a movable coupling 310 through an aperture 311 in the support 110: see, e.g., [0104]. As such, neither the securing member nor the sensor is attached directly to the support;

(2)    in Figures 4A and 4B, the sensors 130 are attached to a movable coupling 310, which itself is coupled to the support 110: see, e.g., [0106];

(3)    in Figures 4C and 4D, the securing members 121, 122 are movably mounted to the support 110 via movable portions 453, 454 using guiding members such as guide rails, pins and pin holes: see, e.g., [0110]–[0111].

183    Further, in the example for Figures 4A to 4H (commencing at [0105]), it is made clear that it is “not essential” for the securing members to be coupled to the support: see [0109] which states:

In this example, it will be appreciated that additionally, the one or more securing members 121, 122 may be coupled to the support 110. However, this feature is not essential.

184    Finally, the three broad forms of the invention do not require the securing members to be attached via the sensor(s) to the support.

185    As such, I do not agree that there is a lack of disclosure or lack of support as contended by KangaTech, with the consequence that the ground of invalidity as set out in particular (ii) is not established.

6.1.5    Conclusion

186    For these reasons, had Vald’s construction of claim 1 been the correct one such that claim 1 encompassed only one leg being secured by a securing member (which it is not), particular (i) would be made out with the consequence that claim 1 and its dependent claims are invalid for lack of disclosure and support.

187    However, irrespective of the construction of claim 1, the ground of invalidity as set out in particular (ii) fails.

6.2    Lack of inventive step

6.2.1    Legal principles

188    Section 7(2) of the Patents Act provides that:

For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, whether that knowledge is considered separately or together with the information mentioned in subsection (3).

189    Section 7(3) of the Patents Act provides that:

The information for the purposes of subsection (2) is:

(a)    any single piece of prior art information; or

(b)    a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined.

190    Section 7(2) of the Patents Act is a deeming provision and will defeat a claim of lack of inventive step unless the party challenging validity discharges its onus of establishing that the claim is obvious: AstraZeneca AB v Apotex Pty Ltd (2015) 257 CLR 356; [2015] HCA 30 at [18] (French CJ).

191    In Hanwha, Burley J observed at [414]–[415]:

The law concerning the requirement for an inventive step reflects a balance of policy considerations in patent law of encouraging and rewarding inventors without impeding advances and improvements by skilled, non-inventive persons: Lockwood No 2 at [48] (Gummow, Hayne, Callinan, Heydon and Crennan JJ). The cases over the years have made a number of statements as to what is required to answer the “jury question” of whether or not an invention is obvious. It is a question of fact. The question is not what is obvious to a court, but depends on analysis of the invention as claimed having regard to the state of the common general knowledge, any information relied upon for the purpose of s 7(3), and the approach taken to it by the person skilled in the art: Lockwood No 2 at [51].

As a basic premise, the question is always “is the step taken over the prior art an ‘obvious step’ or an ‘inventive step’?” This is often an issue borne out by the evidence of the experts: Lockwood No 2 [52]. Whilst the question remains one for the courts to determine, the courts do so by reference to the available evidence, including that of persons who might be representative of the skilled person in the art: AstraZeneca (HC) at [70] (Kiefel J, as her Honour then was).

192    Contrary to the submissions of KangaTech, it is not enough to ask whether the person skilled in the art would have arrived at the invention from the s 7(3) prior art by “taking merely routine steps” – that shorthand terminology does not reflect the nature of that inquiry. Rather, the “routine steps” inquiry is whether the steps from the prior art to the invention were “of a routine character” and would have been taken by the person skilled in the art “as a matter of course”, with the implicit expectation that such steps might well succeed: see for example, Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft (2014) 222 FCR 336; [2014] FCAFC 73 at [71] (Besanko, Middleton and Nicholas JJ); Aktiebolaget Hässle v Alphapharm Pty Limited (2002) 212 CLR 411; [2002] HCA 59 at [50]–[52] (Gleeson CJ, Gaudron, Gummow and Hayne JJ).

193    In Aktiebolaget Hässle at [53], it was observed that the routine steps approach outlined above has an affinity with the reformulation of the “Cripps question” by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [1970] RPC 157. The High Court accepted the reformulated Cripps question as a test for obviousness (re-affirmed in AstraZeneca at [15]). Graham J’s reformulation involves asking whether the person skilled in the art would, at the relevant date and in all the circumstances, be directly led as a matter of course to try the claimed invention in the expectation that it might well produce a useful or better alternative. The expectation is a reasonable expectation of success: see Technological Resources Pty Ltd v Tettman (2019) 147 IPR 423; [2019] FCA 1889 at [226] (Jagot J), citing Ranbaxy Laboratories Ltd v AstraZeneca AB (2013) 101 IPR 11; [2013] FCA 368 at [209] (Middleton J).

194    The question does not require, as a criterion of obviousness, that the inventive step would be perceived by the person skilled in the art as “worthwhile to try” or “obvious to try”: AstraZeneca at [15]; see also Technological Resources at [226].

195    This Court has regularly adopted the reformulated Cripps question across varied areas of technology, including in the context of “apparatus for” claims: see, for example, Root Quality at [91]–[93] (container suitable for growing plants); Technological Resources at [226], [287]–‍[288] (apparatus for upgrading ore); JMVB Enterprises Pty Ltd v Camoflag Pty Ltd (2005) 67 IPR 68; [2005] FCA 1474 at [88], [127] (Crennan J) (collapsible campervans); Bitech Engineering v Garth Living Pty Ltd (2009) 84 IPR 78; [2009] FCA 1393 at [137] (Foster J) (apparatus for simulating flames); Davies v Lazer Safe Pty Ltd (2018) 132 IPR 202; [2018] FCA 702 at [361], [385], [402], [404] (McKerracher J) (safety system for use with machinery having moving parts); Nichia Corp v Arrow Electronics Australia Pty Ltd (2019) 175 IPR 187; [2019] FCAFC 2 at [67], [113] (Jagot J, with whom Besanko and Nicholas JJ agreed) (white light emitting device).

196    An invention will not be obvious “where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful” or “where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it”: Aktiebolaget Hässle at [76] quoting Judge Rich in In re O’Farrell (1988) 853 F 2d 894 at 903.

6.2.2    The contention

197    KangaTech relies on:

(1)    articles described as Nadler 1 and Nadler 2 (together, the Nadler Articles) (being articles published by Scott Nadler and others in the Archives of Physical and Medical Rehabilitation, Volume 81 (August 2000) at page 1072 and in Volume 85 (April 2004) at page 598. The second Nadler paper is a continuation of the work described in the first paper); and

(2)    United States Patent 6,149,550, described as the Shteingold Patent which was filed on 30 September 1999 and dated 21 November 2000,

considered in the context of the common general knowledge as at the priority date.

198    There was no dispute that Nadler 1, Nadler 2 and the Shteingold Patent were prior art which fell within s 7(3) of the Patents Act.

6.2.3    Common general knowledge

199    There was no dispute that the following matters were common general knowledge as at the priority date:

(1)    HSIs are relatively common in athletes at virtually all levels of sport and represent the most prevalent injury in athletics and various team sports, such as soccer, rugby and AFL;

(2)    sports medicine specialists, physiotherapists and sport scientists have focused on ways in which HSIs can be prevented and treated for many years. One specific exercise known to minimise the risk of HSI is the Nordic curl or NHE;

(3)    sports medicine specialists, physiotherapists and sport scientists have, for many years, performed muscle strength testing. This is done to evaluate muscle strength, identify imbalances or weakness that may be potential risk factors for muscle injury, evaluate the efficacy of a training intervention, and for the purpose of prescribing exercises for strength development and as part of injury recovery;

(4)    the commonly used methods for measuring muscle strength were the use of isokinetic dynamometers, hand-held devices (dynamometers) and manual testing;

(5)    isokinetic dynamometers are electromechanical accommodating resistance equipment which automatically adjusts to provide a counterforce to variations in force generated by the muscle group being assessed through its range in motion. They are expensive, require experienced operators, have limited portability and require significant time to assess each leg of a subject independently;

(6)    hand-held devices (dynamometers) are muscle force measuring devices that are small enough to be held in the assessor’s hand. They were known to have limitations, including as to the degree of expertise required from the tester to ensure results are accurate and reliable. For example, the tester needs to ensure that the resistance force (against which the person’s muscle force was to be measured) was the same on each occasion.

6.2.4    Nadler 1 and 2

200    Nadler 1 is entitled: “Portable Dynamometer Anchoring Station for Measuring Strength of the Hip Extensors and Abductors”. Nadler 2 is entitled: “The Intra- and Interrater Reliability of Hip Muscle Strength Assessments Using a Handheld Versus a Portable Dynamometer Anchoring Station.”

201    Both articles discuss the testing of subjects in order to assess the reliability of a dynamometer anchoring station or DAS. The DAS is comprised of a commercial dynamometer attached to a specially designed portable and adjustable mechanical platform, which is then affixed to an examination table. The dynamometer contains a force plate on a pressure transducer, which interfaces with a control pad.

202    The testing which was performed using the DAS and discussed in Nadler 1 was of the hip abductors (with the subject lying on their side and pushing their top leg against the force plate) and the hip extensor muscles (with the subject lying on their stomach and raising one leg to push against the force plate). The conclusion reached in Nadler 1 was that:

The dynamometer anchoring station has been specially designed to allow highly reliable measures of hip girdle muscle strength. The platform, which stabilizes the dynamometer, allows measures to be collected without support from the examiner and maintains results unaffected by the examiner’s strength and ability. Strength of the proximal hip musculature can now be reliably and rapidly obtained for use in large-scale screenings. This may be used to accurately assess the role of hip strength and/or side-to-side muscle balance on injury occurrence or postinjury treatment outcome.

203    The testing which was performed using the DAS and discussed in Nadler 2 was of strength measurements of hip flexors, abductors and extensors which were collected bilaterally. The same two types of tests were performed as had been reported in Nadler 1 to test hip extensors and hip abductors, but a third test was performed which was of the hip flexors. To test hip flexors, the subject was seated at the end of the examination table with their hips and knees at a 90° angle, with their lower legs hanging off the table. The force plate was lowered to just above the subject’s distal anterior femur, and the subject pressed their leg against it with as much force as necessary to maintain the dynamometer in a static position. The conclusions reached in Nadler 2 were as follows:

Fair to good interrater reliability was shown for the DAS in the measurement of hip flexion and abduction, whereas measurement of hip extension may be less reliable. Low interrater ICC values were most likely because of testing of multiple muscles on numerous occasions with subject fatigue and motivation to exert a maximal contraction as a potential factor. The DAS was more reliable than the HHD in the assessment of hip flexion and abduction, whereas the HHD was more reliable for hip extension. This may reflect the limited visualization of the transducer while the subject was prone in the DAS testing. Overall, the DAS was easy to secure to a table, easy to adjust, and minimized tester influence during assessments. The HHD may be difficult to stabilize in a tester with less physical strength, especially when testing the powerful hip girdle musculature. Future testing may include assessment of individual muscle groups, so that the chance of mental or physical fatigue is minimized.

204    After summarising the content of the articles, KangaTech’s closing submissions on inventive step were as follows:

While the DAS was developed for measuring the force exerted by hip extensors and abductors, the DAS could be used – either as it is or with minor modifications – to measure the strength of a knee flexor during performance of an NHE.

To the extent that any modifications to the DAS were required to enable the performance of an NHE, it would be a simple matter to use material that were structurally suited for the purpose and ensuring that: (a) the clamps supporting the DAS were securely fixed to the examination table (or any other flat surface) which is forming the ‘support’; and (b) the cross-bar to which the dynamometer is fixed (which on the DAS is wooden) was sturdy enough to resist the upward force of the subjects ankles.

Furthermore, adding another dynamometer to the DAS so that both legs could be tested simultaneously would be a routine matter as it would only involve duplicating the sensor that was already present on the force plate of the DAS apparatus disclosed in Nadler 1.

205    The thrust of KangaTech’s submissions is that modifications could be made to the DAS to enable the performance of an NHE, which KangaTech describes as “minor”, “a simple matter” and “a routine matter” without referencing these descriptions to any expert evidence.

206    However, as already observed, the question is not whether the person skilled in the art could have taken steps to “modify” the prior art so that it has features of the claimed invention. Rather, the question is whether the person skilled in the art would, as at the priority date, have been directly led from the Nadler Articles to the claimed invention with a reasonable expectation of success or, otherwise, whether such steps as were necessary to go from the Nadler Articles to the claimed invention were “of a routine character” and would have been taken by the person skill in the art “as a matter of course” with the implicit expectation that such steps would succeed.

207    KangaTech’s closing written submissions as to modifications appear to have been based on the evidence of Dr Lovell. Having first been given the Patent and commenting on it in detail, he was then given the Nadler Articles (and the Shteingold Patent).

208    Dr Lovell then opined that the devices disclosed in the prior art could be used to enable a subject to perform a Nordic curl, including with particular modifications to those devices. When he expressed that opinion, he was already familiar with the patented apparatus, its features and the solution which it provides. In that context, he was “thinking about… what steps [he] would make” so that an eccentric Nordic curl could be done on the DAS.

209    Although Dr Lovell’s evidence may be taken to establish that a person skilled in the art could have arrived at the claimed invention by modifying prior art, namely the DAS disclosed in the Nadler articles, Dr Lovell’s evidence does not establish that he would have made these modifications as a matter of course.

210    In any event, the weight to be given to this evidence is diminished by Dr Lovell having been given the Patent, and thus being aware of the solution in it, before commenting on the prior art.

211    In Minnesota Mining & Manufacturing Co v Tyco Electronics Pty Ltd (2002) 56 IPR 248; [2002] FCAFC 315 at [45]–[46] (Heerey, Emmett and Dowsett JJ), the Full Court observed that where, as here, an expert witness is first provided with a copy of the patent, this is:

…hardly calculated to result in objective evidence as to what the hypothetical uninventive but skilled worker would have done. To give the patent to a prospective witness is tantamount to leading the witness… where evidence is obtained in circumstances such as just described, the evidence is not likely to be helpful at all.

212    In PAC Mining Pty Ltd v Esco Corporation (2009) 80 IPR 1; [2009] FCAFC 18 at [80] (Sundberg, Jessup and Middleton JJ), the Full Court found that the primary judge was correct to hold that an expert witness’ evidence about what would have been done was “compromised” because he was “exposed” to the solution in the patents before he explained how a piece of prior art could be “adjusted” to fall within the claims of those patents.

213    In addition, KangaTech’s submissions did not grapple with the expert evidence especially where that evidence either did not support or contradicted the submissions.

214    In the JER, the experts agreed that, as at the priority date, the DAS presented in the Nadler articles would have been understood to be an externally fixed dynamometer capable of measuring isometric hip abduction, hip extension and (in the case of Nadler 2 only) hip flexion strength. They agreed that there is no reference in the Nadler articles to use of the DAS for performing a NHE.

215    Further, both experts agreed that performing a Nordic curl on the DAS “may be unsafe”. Dr Lovell considered that the DAS would not have been stable enough, especially for heavier and stronger clients within the potential client base. The experts agreed that the DAS would require modifications to make it sufficiently stable to accept the weight of a Nordic curl, including that it should be connected to support closer to the ground and, in Dr Lovell’s view, the device would need to be constructed from a stronger substance than wood in order to be used for heavier/stronger clients. Contrary to KangaTech’s submissions, the DAS therefore could not be used “as it is” to measure the strength of a knee flexor during performance of a Nordic curl.

216    The differences between the DAS and the claims are substantial. As set out in the JER, the experts agree that the Nadler Articles do not, or otherwise cannot be said to, disclose independent claim features: 1.1, 1.2, 1.3, 1.5, 18.2 and 18.4 and dependent claims features: 2.2, 3.2, 3.3, 4.2, 5.2, 6.2, 8.2, 11.2, 12.1, 12.2, 13.1, 13.2, 15.2, 16.2, 16.3, 16.4 and 20.2. Dr Pizzari’s unchallenged evidence was that dependent claim features 7.2, 9.3 and 19.2 are also not disclosed. With that in mind, KangaTech does not explain how it can be said that only minor modifications would be required to the DAS.

217    Further, the evidence does not support KangaTech’s assertions that the so-called “modifications” from the DAS disclosed in the Nadler Articles to the claimed invention were “routine”. Even if they had wanted to modify the DAS to have the features of claim 1 of the Patent, “plenty of… practitioners and clinicians” would have looked at the DAS at the priority date and been unable to do so, according to Dr Lovell. For example:

(1)    the DAS “would essentially have needed to be rebuilt”: for instance, an additional force plate transducer and dynamometer would be required as well as an additional arcuate member, but (at least in Dr Pizzari’s view) the DAS does not have enough space to fit this;

(2)    it would take significant modification, and be difficult, to extend the crossbar so as to fit two securing members, given the clamps’ positioning;

(3)    the addition of securing members would have required force plates to be identified that were compatible with the CSD-500 force transducer. However, the force plate pictured in the Nadler articles appears to be the standard force plate provided with the dynamometer, rather than one which features greater curvature to improve the ability to secure the subject’s leg(s). It is unknown if alternative compatible securing members were available;

(4)    as the experts agreed, the DAS does not have a support. According to Dr Pizzari, its width limits the nature of any support to be added. Further, attaching a support would make it less portable, in circumstances where (according to Dr Lovell) portability was a significant feature of the DAS.

218    Importantly, the expert evidence established that the person skilled in the art would not have been directly led to modify the DAS to make it suitable for the performance of an NHE. For example:

(1)    Dr Lovell agreed that the steps he proposed to modify the DAS would not have been taken as a matter of course;

(2)    Dr Pizzari explained that most people in sports medicine at the priority date would not have looked at the DAS and thought it would be appropriate to utilise for a Nordic curl.

6.2.5    Shteingold Patent

219    The Abstract of the Shteingold Patent describes the apparatus as follows:

A muscle strength testing and measuring apparatus contains a bar-like strength testing mechanism slidably placed over a pair of upright posts for adjustment of vertical position and allowing a variety of muscle groups to be tested by the user without any specialized knowledge. The apparatus can be used for physical training before and after exercise as well as for rehabilitation purposes. The position adjustment mechanism includes a jamming cylinder controlled by a link plate, which in turn can be activated by simple lifting or lowering the bar-like mechanism. Piezo-electric tensile sensors are placed in the middle portion of the mechanism to indicate the muscle force which signal is then transmitted to a display unit. Additional pull force strength testing units are placed over the same posts allowing also for adjustment of height position. A great number of configurations are described that can be achieved by easily switching the apparatus from one position to the next.

220    Below the Abstract, and also depicted as Figure 1, is the following drawing:

221    The Summary of the Invention (columns 2 and 3) states as follows:

Accordingly, it is an object of the present invention to overcome these and other drawbacks of the prior art by providing a novel muscle strength testing and displaying apparatus designed to indicate the strength of a wide variety if not most major groups of muscles of a human being with easy and fast changes of apparatus configurations.

It is another object of the present invention to provide a muscle strength testing apparatus capable of easy adaptation to users of various size and physical abilities. It is yet a further object of the present invention to provide a muscle strength testing apparatus for use by a person without any specialized skills.

According to the invention, there is provided a muscle testing apparatus consisting of a horizontal bar-like muscle strength testing mechanism for measuring of applied force. This mechanism is capable of sliding over a couple of vertical posts each containing a position adjustment mechanism between the post and that muscle testing mechanism. Each position adjustment mechanism contains a sliding cylinder designed to jam against the post when tilted by a link plate in turn activated by the movement of the muscle testing mechanism.

The middle portion of the muscle testing mechanism contains a number of tensile sensors such as a piezo-electric sensor. When the user applies force through a clearly marked grip area of the mechanism, the signal from the tensile sensors is transmitted through a computational block to a display unit.

Additionally, pull force testing units are provided on one or preferably both vertical posts that are designed to allow adjustment of their position as well along the posts. Each unit contains a spring-loaded housing and a force displaying gauge activated by pulling on a flexible link such as a cable or a rope. Depressing of a spring via a lever releases the housing and allows repositioning along the post.

For a better understanding of the invention, its operating advantages and the specific objects attained by its uses, reference should be made to the accompanying drawings and descriptive matter in which there is illustrated a preferred embodiment of the present invention.

222    In the above drawing, the “middle portion” is part of item 2 which is also depicted in Figure 2 (not reproduced here). The “grip zones” are labelled 12, and they “indicate to the user the correct position of applying force to the mechanism (1) to insure [sic] accurate measurements”.

223    In the JER, the experts agreed that, at the priority date, the apparatus in the Shteingold Patent “would have been understood to be an externally fixed force measurement device allowing the objective measurement of force during a range of different exercises”.

224    The differences between this apparatus and the claims are substantial. The experts agreed that the apparatus disclosed in the Shteingold Patent does not contain securing members or a support and does not depict that eccentric strength of at least one knee flexor can be measured in an NHE. In the JER, the experts also agreed that the Shteingold Patent does not, or otherwise cannot be said to, disclose independent claim features: 1.2, 1.3, 1.4, 1.5, 18.2, 18.3, 18.4, 18.5 and dependent claim features: 2.2, 3.3, 4.2, 5.2, 6.2, 7.2, 8.2, 15.2, 16.2, 16.3, 16.4.

225    After summarising the apparatus disclosed in the Shteingold Patent, KangaTech submitted as follows:

The primary object and advantage of the apparatus disclosed in the Shteingold Patent is “to indicate the strength of a wide variety if not most major groups of muscles of a human being with easy and fast changes of apparatus configurations.” (see column 2 lines 45-54).

The Shteingold Patent does not explicitly refer to the NHE or depict it being performed. However, consistent with the primary objective of the invention described, the apparatus could be readily configured, and would have the requisite strength, to allow a subject to perform a NHE and to measure the strength of the hamstring muscles while performing an eccentric contraction of the knee flexors.

In particular, the user could vertically adjust the horizontal cross-bar so that it was relatively close to the ground but still high enough to enable the user to place her/his ankles against the clearly marked grip zones - depicted as a cross-hatched area (item 12) in figure 1 - such that the lower legs were ‘secured’. As the user then lowered their upper body slowly to the ground, engaging the hamstring muscles to slow their descent, the user’s ankles would press against the grip zones such that the sensors in the grip zones would measure the force produced by lower legs during the NHE.

Apart from the adjustment of the horizontal bar referred to above, the only other modification necessary to measure the hamstring forces generated during an NHE using the apparatus would involve adding an extra sensor and display unit.

(Emphasis original.)

226    As was the case for the Nadler articles, the question is not whether the person skilled in the art could have taken steps to “modify” the prior art so that it has features of the claimed invention. Rather, the question is whether the person skilled in the art would, as at the priority date, have been directly led from the Shteingold Patent to the claimed invention with a reasonable expectation of success or, otherwise, whether such steps as were necessary to go from the Shteingold Patent to the claimed invention were “of routine character” and would have been taken by the person skilled in the art “as a matter of course” with the implicit expectation that such steps would succeed.

227    As to this, the experts agreed during the concurrent evidence session that a skilled person at the priority date would not look at the Shteingold Patent and be minded to make modifications to it to make an apparatus having the features of claim 1 of the Patent. The experts also agreed that modifying the Shteingold apparatus to have the features of claim 1 of the Patent would not be simple.

228    Further, the Shteingold Patent does not give any guidance as to the use of the apparatus disclosed for the purpose of performing a Nordic curl. Given the (lack of) stability of the entire frame, Dr Pizzari considered that it would not be feasible to do Nordic curls on the apparatus.

229    The experts also agreed in the JER that other modifications would be required to enable the measurement of the force generated by a subject performing an NHE on that apparatus as at the priority date which are not referred to in KangaTech’s submissions. In particular, there would need to be an anchor to support the subject’s lower legs and separate force transducers (to measure force in both legs simultaneously).

230    Finally, applying the same reasoning as set out above in relation to the Nadler Articles, little weight can be given to Dr Lovell’s affidavit evidence about the Shteingold Patent, which evidence formed the basis of KangaTech’s submissions about the required modifications.

6.2.6    Conclusion

231    For these reasons, irrespective of the construction of claim 1, KangaTech failed to rebut the presumption provided by s 7(2) of the Patents Act with the consequence that the invention in the Patent is to be taken to involve an inventive step.

7.    INFRINGEMENT

7.1    Relevant facts

232    KangaTech admits that it has made, sold and supplied, and offered to make, sell and supply (among other acts) in Australia the KangaTech Product and the KT360. In addition to selling it to them, KangaTech has also leased the KT360 to customers.

233    The KangaTech Product comprised a single portable frame which consisted of a base plate, with a mounting socket on each side; two vertical frame members mounted and secured to the base plate; a horizontal crossbar mounted on the vertical frame members which was parallel to and above the base plate; and two JTech dynamometers affixed to the horizontal crossbar or to the vertical members (depending on the particular exercise) to measure and transmit the force data to the software running on a tablet or laptop. The horizontal crossbar, and the position of the dynamometers on the horizontal crossbar and/or upright bar or frame members, were adjustable. As a result, the KangaTech Product had flexibility to test and train over 25 different muscle groups across the foot, ankle, knee, thigh, hip, lumbo-pelvic trunk, shoulder and neck regions. However, the dynamometers had periodic connectivity and battery issues and required time-consuming repositioning on the frame using screw threads to allow all tests to be performed, and the frame and base (while stable) were aesthetically not up to standard.

234    The KT360 is a more sophisticated and complex system involving both hardware and software components. In particular, for the KT360 to work, the user must first select a protocol from the tablet. The selection of this protocol then results in the sensors, appropriate for that exercise, to light up. It also activates those sensors, so that those sensors can measure and record force data.

235    The KT360 hardware is comprised of three main components being: a circular base pad; two vertical supports which are mounted into sockets on either side of the base pad; and a rotatable sensor unit located on a horizontal member mounted on the vertical supports, which is height adjustable and contains seven sensors. The horizontal member can slide up and down on the vertical supports and be readily clamped in position. The seven sensors are mounted at different locations within the sensor unit to reflect the different muscle groups being measured. Those sensors detect a force applied to them by the user and transmit that data via Bluetooth to a tablet or laptop.

236    An image of the KT360 is below:

237    Unlike the KangaTech Product, the design of the KT360 allowed the unit to be rotated in its entirety for different exercise setups without having to move individual force sensors. The KT360 enables an athlete to perform over 35 isometric and eccentric testing and training protocols across the whole body.

238    The KT360 frame has been designed with sufficient stiffness to ensure all forces generated during protocols are captured and not dampened or lost during the testing process. The KT360 hardware utilises grid markings on the base and poles and a gyroscope in the central sensor housing to ensure subjects are in the same posture, joints at the same angles, muscles at the same length and the sensors appropriately positioned at right angles to the test lever arm during all testing. These factors contribute to its ability to provide repeatable and accurate data and results.

239    The KT360 software comprises onboard firmware, contained within the main board located within the sensor unit. The main board controls the seven sensors and communicates via encrypted Bluetooth with the user’s tablet or laptop using a custom communication protocol. However, the user of the KT360 also requires software on the tablet or laptop which provides a User Interface and facilitates communication with the KT360. The firmware (contained in the main board) sends power to (and thus ‘activates’) the sensors which are to be used for a particular muscle measurement required for the session which the user wishes to conduct on the KT360. It also then receives the force measurement data from the activated sensors and transmits that data to the user’s tablet or laptop which will display the force and submit it to KangaTech’s cloud-based software.

240    The tablet enables the user to create and perform various sessions or exercise measurements and is the link between the firmware and the KangaTech software on the server.

241    The software allows monitoring and comparison of an athlete’s data over time, generation of reports and the export of data to a management system.

242    The exercise protocols are set out in the KangaTech User Guide to which all KT360 customers have access via a hyperlink accessible at: http://help.kanga-tech.com/. When a particular exercise protocol is selected by a user, the KT360 designates the particular sensors on the KT360 to be used (out of the seven available sensors) and activates only these sensors. These sensors light up to guide the user. It also provides details of the sensor housing position and angle and general set up to be adopted. Selection of a particular protocol also ensures that all data is stored under the correct test/exercise database enabling reference to previous tests/exercises conducted for that athlete and other athletes.

243    The main board will only activate sensors if it receives the appropriate message over the communication protocol, and if the device has first been unlocked using an encrypted session key. The session key is also used to decrypt the communicated messages between the tablet and the KT360. The session key is generated using the KangaTech master key and a unique session identifier which is generated by the firmware and changes daily. The KangaTech master key is stored only on KangaTech’s servers in the cloud and is not available to the tablet software. A session key is valid for a maximum of 24 hours and an authenticated connection to the server is required to obtain a new session key. KangaTech can ensure that only authorised users can communicate with the KT360, and can revoke access for specific user accounts on its servers, ensuring that new session keys are unable to be obtained.