On 15 February 2022, the Federal Court of Australia found that Body Fit Training Pty Ltd (BFT) had not infringed two of F45 Training Pty Ltd (F45)'s Australian innovation patents by implementing its own software-integrated system for operating group fitness classes. Rather, in a double blow to F45, Justice Nicholas found that the two patents, covering a computer-implemented scheme, were invalid for lack of patentable subject matter, and that even if the patents were valid, BFT's actions would not have constituted infringement.  As a result of the invalidity findings, Justice Nicholas ordered that both innovation patents be revoked.

F45 Training Pty Ltd v Body Fit Training Company Pty Ltd (No 2)  [2022] FCA 96 serves as a reminder that the mere computerisation of a scheme using generic computer technology does not make a claimed invention patentable – rather, some ingenuity is required in the way in which the computer is utilised before the subject may be considered patentable.

Background

For the uninitiated, F45 is an operator of group fitness centres, first launched in Paddington, Sydney in 2011.1 Its core offering consists of 45-minute functional group fitness classes in which participants rotate through several exercise stations. TV screens are positioned around the room to guide participants through the workout, which display short video demonstrations of each exercise, countdowns to the next rest/exercise period, and instructions regarding where and when to switch stations. In its decade of operation, F45 has seen remarkable success, selling thousands of franchises across the globe and causing one of its founders to amass a net worth of approximately AU $500 million.2

BFT was founded in Australia in 2017 and offers 50-minute cardio and strength-based group fitness classes in which participants similarly rotate through several exercise stations with TV displays guiding them through the workout3 The company has grown rapidly since its inception, taking a bite out of F45's market share and prompting F45 to commence patent infringement action against BFT in several jurisdictions globally, including in the US and Australia.4

The patents & F45's allegations

In 2019, F45 commenced proceedings in the Federal Court of Australia alleging that BFT had infringed two of its Australian innovation patents (2015101604 and 2016101429) (collectively, the Patents), which the parties accepted were, for practical purposes, identical.

In particular, F45 alleged that BFT had infringed claim 1 (reproduced below) and claim 5 (a product claim in related terms).

Claim 1: A computer implemented method for configuring and operating one or more fitness studios each comprising a plurality of exercise stations in an open studio environment at which users perform associated exercise routines, each exercise station having an associated display, the method comprising the steps of:

periodically retrieving, by a server from a database, a studio information program file for a particular studio for a specified period, from a pre-prepared multi-period fitness library comprising a succession of studio information program files; wherein the studio information program file that is retrieved for a current period is different from a studio information program file that was retrieved for a previous period, thereby providing periodic variation of exercise programs;

communicating, by the server to a studio computer associated with the particular studio, the retrieved studio information program file over a communications network;

receiving, by the studio computer, the communicated studio information program file;

configuring the exercise stations dependent upon the received studio information program file; and

communicating, by the studio computer to the exercise station displays, dependent upon the received studio information program file, station directions to users exercising at the stations for performing an exercise.

Justice Nicholas summarised the inventive concept as follows:

"[t]he substance of the invention disclosed and claimed resides in the computer implemented scheme which enables  [the] configuration  [of physical exercise stations] to occur on a periodic basis in accordance with the content of the studio information program files",5

where a 'studio information program file' is:

"a single file for a particular studio which contains the relevant information used to configure exercise stations within the studio".6

Validity: manner of manufacture

BFT denied any infringement and lodged a cross-claim, alleging that the Patents were invalid and should be revoked on the basis that they did not disclose any patentable subject matter.

More specifically, BFT submitted (inter alia) that:

  • the Patents disclosed a mere scheme or business method, which is not, per se, patentable subject matter, as it is not a 'manner of manufacture';7
  • although a computerised business method or scheme can be patentable, this is only true where the invention lies in its computerisation – i.e. it requires some ingenuity in the way in which the computer is utilised;
  • conversely, where a business method or scheme is implemented by using computers to perform their ordinary functions, the claimed invention "is still to the business method itself" and therefore unpatentable;8
  • the requisite ingenuity was not present here: the invention was not directed to solving a technical problem in the field of computer technology nor did it result in an improvement of the functioning of the computer; and
  • rather, the Patents disclosed the use of generic technology, whereby the computer was merely an intermediary to deliver exercise content; accordingly, the subject matter was not a manner of manufacture and therefore not patentable subject matter.9

F45 submitted that the Patents did disclose a 'manner of manufacture', as they gave rise to an 'artificially created state of affairs' in satisfaction of the test in NRDC.10 Specifically, F45 pointed to the fact that its invention required that the exercise stations be physically configured based on the information contained in certain 'studio information program files' and that the physical configuration had to be performed by a human being rather than a computer.11

Justice Nicholas was not persuaded by this submission, finding that the substance of the invention lay not in the physical arrangement of the exercise stations, but rather in the computer implemented scheme that enabled those physical arrangements to be made.>12 Noting that physical effects alone are not sufficient to satisfy the NRDC test for an 'artificially created state of affairs',13 his Honour found that the physical configurations contemplated by F45's Patents failed to meet this test.14

His Honour also considered that the Patents did not provide a solution to any technological problem, did not represent any advance in computer technology, and did not involve any unusual technical effect due to the way in which the computer technology was utilised.15

Ultimately, Justice Nicholas found that, as the Patents related to a mere computer implemented scheme implemented using generic computing technology, they did not disclose a manner of manufacture. Accordingly, his Honour found the Patents invalid and made orders for their revocation.

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

Though it was unnecessary given his Honour's findings on validity, Justice Nicholas made findings on infringement, determining that BFT's conduct would not have infringed the Patents if valid.

Broadly, as per claim 1 set out above, each of the Patents related to a computer implemented system for configuring and operating fitness studios. In summary, claim 1 required:

  • a server;
  • to retrieve;
  • from a database comprising a pre-prepared library of such files;
  • a single 'studio information program file' (containing the information used to configure exercise stations within the studio); and
  • to communicate the file;
  • over a communications network;
  • to a 'studio computer' (associated with a particular fitness studio).

His Honour found that BFT's system did not possess the claimed features, including because:

  • BFT's supposedly analogous 'server(s)' did not store nor communicate any 'studio information program files' to its 'studio computers'; rather, the relevant BFT files were created on a separate PC and sent by email (or in some instances, transferred by USB) to a BFT 'studio computer';16
  • even if the email server were to be deemed the relevant 'server', infringement would not have occurred as the email server could not be said to 'retrieve' BFT files from a database;17
  • the only communication which occurred between BFT's server and its equivalent 'studio computers' was for the purpose of authenticating a login, which did not fall within the scope of the claims;18
  • BFT's system did not involve the retrieval or communication of any single 'studio program information file' within the meaning of claim 1 — rather, it involved the transfer of 'timetable file(s)', which set out a calendar with suggested daily classes, and were not considered analogous to 'studio information program files';19 and
  • His Honour construed the Patent claimed a system involving one single 'studio computer', associated with a particular studio, whereas BFT's system could be said to contain several such computers in any given studio.20

Lessons

This judgment follows a series of recent Full Court decisions regarding the patentability of computer implemented inventions. Together with Repipe Pty Ltd v Commissioner of Patents  [2021] FCAFC 223 and Commissioner of Patents v Aristocrat Technologies Australia Pty Ltd  [2021] FCAFC 202 (see also our corresponding articles here and here), these decisions confirm that mere generic computerisation of an otherwise unpatentable scheme does not, of itself, make a claimed invention patentable under Australian law.

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

  • Software is generally considered to be patentable in Australia, and the requirement for patentable subject matter ("manner of manufacture") is formally separate from the requirements of novelty and an inventive/innovative step.21 However, in recent assessments of patentable subject matter for "software" claims, the Federal Court has ignored selected features from the relevant claims, such as in this case "workings of computers by the storage of information in RAM and [...] its communication over the internet" and "exercise stations [being] physically configured with fitness equipment", if such features are found not to be in the "substance" of the invention.  Accordingly, there now appears to be a requirement to explain how the "substance" of a software patent claim solves a technical problem or provides a new technical effect, which may be a step towards re-introducing the requirement for an inventive step into the requirement for patentable subject matter.
  • Beware of the risk of leading expert evidence "with an eye fixed on the alleged infringement". In this case, F45's expert witness had taken a very broad view of the meaning of the word 'file' as contained in F45's Patents, suggesting that any string of binary information (such as that used in BFT's system) could fall within the scope of the Patents. His Honour found the broad definition unpersuasive, instead considering that it represented an "overreach" commonly seen where patent construction occurs with issues of infringement front of mind. 22
  • When drafting a patent specification, take care when using nouns in the singular. F45's Patent claims continuously referred to "a  server", "the studio computer" and "the studio program information file" – leading Justice Nicholas to construe the claims as being limited to systems involving only one of each those items. If F45's Patents had instead claimed "one or more" of those, F45 may have been able to draw more compelling parallels between its Patents and BFT's system.

Where to next

Although it represents a setback for F45, it remains to be seen whether the decision will cause other fitness studio operators to more readily adopt a similar computer-implemented method of operating group fitness classes. F45 notably still owns several other granted Australian patents which have not been tested in Court – these may continue to act as a deterrent, despite Justice Nicholas's findings that the Patents in this case did not claim patentable subject matter.

Further, F45 and BFT are involved in similar patent proceedings before the courts in the United States, which are yet to reach a final decision. F45 maintains that this Australian decision is not indicative of what's to come in other jurisdictions; however this, too, remains to be seen.23

 Footnotes

1. Rebecca Sullivan, 'F45's cult success story: $42m profit in unique gym business' (news.com.au, 28 October 2018) (URL).
2. Michael Bailey, 'F45 float lifts founder onto the Rich List' (Australian Financial Review, 16 July 2021) (URL).
3. Matt Ogg, 'Body Fit Training to pump up US presence through $60m IP sale to Xponential Fitness' (Business News Australia, 14 October 2021) ( URL).
4. Beth Ewen, 'Body Fit, F45 Fitness Franchises Spar Over Patents" (Franchise Times, 18 September 2020) (URL).
5. F45 Training Pty Ltd v Body Fit Training Company Pty Ltd (No 2) [2022] FCA 96 (F45 v BFT) at [49].
6. F45 v BFT at [84].
7. (within the meaning of section 18(1)(a) of the Patents Act 1900 (Cth) and section 6 of the Statute of Monopolies). F45 v BFT at [39(e)], citing Commissioner of Patents v Rokt Pte Ltd (2020) 277 FCR 267 at [1], Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (2019) 372 ALR 646 at [95] and Commissioner of Patents v RPL Central Pty Ltd (2015) 238 FCR 27 (RPL) at [96].
8. F45 v BFT at [39].
9. F45 v BFT at [37]-[38] citing in particular RPL.
10. National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 (NRDC) at 277.
11. F45 v BFT at [40], [42], [48].
12. F45 v BFT at [49].
13. F45 v BFT at [51]; citing RPL  at [96]-[98].
14. F45 v BFT at [51].
15. F45 v BFT at [47].
16. F45 v BFT at [126]-[127].
17. F45 v BFT at [131]-[133].
18. F45 v BFT at [128].
19. F45 v BFT at [120] and [126].
20.F45 v BFT at [135].
21. see Advanced Building Systems Pty Ltd and Anor v Ramset Fasteners (Aust) Pty Ltd (1998) 152 ALR 604 at 622.
22. F45 v BFT at [83].
23. Matt Ogg, 'F45 patents revoked as Body Fit Training prevails in court' (15 February 2022, Business News Australia (URL).

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