F45s patents not working out

What you need to know

• The Federal Court has held that a computer-implemented system for configuring and arranging exercise stations within fitness studios was not patentable subject matter.

What you need to do

• Patentees seeking protection for an invention implemented using the generic function of a computer must ensure their invention represents an advance in computer technology, or utilises unconventional technical methods, for the invention to be patentable.

F45 Training Pty Ltd (F45) operates a global franchise of fitness facilities designed for providing high-intensity group workouts. F45 owned Australian Innovation Patent Nos. 2015101604 and 2016101429 (the Patents) which claim a method and system for remote configuration and operation of fitness studios from a central server.

F45 commenced infringement proceedings against Body Fit Training Company Pty Ltd (BFT), a competitor of F45, as well as four BFT franchisees and one BFT director, alleging that BFT infringed the Patents. BFT denied infringement and sought orders, by its cross-claim, revoking the Patents for invalidity.

F45's invention

The invention claimed in the Patents comprised a system consisting of a server which periodically retrieves a studio information program file from a fitness library, and sends this information to a computer located at the fitness studio. Once this information has been received at the studio computer, the exercise stations and associated fitness equipment (if any) are physically distributed throughout the studio. The studio computers then present station directions on various displays situated in the studio, and users perform exercises at each station based on the directions appearing on these displays.

Judgment

The case was conducted on the agreed basis that:

• if claim 1 of Australian Innovation Patent No. 2015101604 was found to be invalid, then all of the other claims in both the Patents would also be invalid; and
• if claim 1 was not infringed by BFT, then none of the other claims in either of the Patents would be infringed.

Invalidity

Justice Nicholas held that the invention was not a manner of manufacture. In doing so, Justice Nicholas applied the following two step approach:

1. Is the invention claimed a computer-implemented invention?
2. If so, can the invention claimed broadly be described as providing a solution to a technological problem, such that it represents an advance in computer technology, or such that it involves any unusual technical effect due to the way in which the computer technology is utilised?

Justice Nicholas answered the first question in the affirmative.

F45 argued that, since the exercise stations needed to be physically configured by a human, beyond the computerised process, the invention was for a manner of manufacture because it satisfied the requirement for an "artificially created state of affairs", as formulated by the High Court of Australia in National Research Development Corporation v Commissioner of Patents [1959] HCA 67 at 277.

Justice Nicholas disagreed, finding that the "physical effect" of the invention does not necessarily, nor sufficiently, equate to an "artificially created state of affairs". Accordingly, the mere physical arrangement of exercise stations and equipment enabled by the computer implemented scheme did not make the invention patentable.

In relation to the second question, Justice Nicholas concluded that the Patents did not provide a solution to a technological problem, nor did they represent an advance in computer technology or involve any unusual technical effect due to the way in which the computer technology was used. Rather, as contended by BFT, the invention is aimed at improving the management and operation of fitness studios, and maintaining the interest and motivation of users in their exercise routines, by the use of generic computer technology.

Infringement

While it was not necessary for Justice Nicholas to consider infringement due to His Honour's finding of invalidity, Justice Nicholas elected to set out his approach to construing the Patents' claims.

Justice Nicholas considered that a purposive construction of the claims does not entail adopting the broadest construction a claim will bear, nor a construction that is necessarily more generous to the interest of the patentee alleging infringement.

Accordingly, Justice Nicholas found that the relationship between the retrieval and communication of information utilised by BFT in its facilities was not the same as the process adopted by F45 in its Patents. Justice Nicholas therefore held that, even if the Patents were valid, BFT did not infringe the Patents.

Costs were consequently ordered against F45.

F45 filed an appeal against the decision on 15 March 2022 and that is pending determination in the Full Federal Court.

Authors: Kellech Smith, Partner and Tal Maman, Lawyer.