Shining a light on patent pitfalls: Federal Court invalidates mining lighting tower IP

A recent Federal Court decision found an innovation patent for key mobile lighting tower technology, commonly used in mining, to be invalid, and in doing so provides a timely reminder of how easily prior products and even your own marketing materials can destroy novelty and innovative step.

What happened

The case, Southern Cross Industrial Group Pty Ltd v Mickala Mining Maintenance Pty Ltd (Liability Trial) [2025] FCA 1363, concerned an innovation patent held by Southern Cross Industrial Group titled 'lighting tower' (Patent).

Southern Cross claimed that industrial lighting tower company Mickala Group (through its entities Mickala Mining Maintenance Pty Ltd and Mickala Lighting Towers Pty Ltd, and its Director, Damien Englebrecht) breached its Patent.

The Patent described a low voltage lighting tower for night construction or mining operations, which was 'highly efficient' and reduced 'electrocution and ignition risks'. The Patent's priority date was 30 January 2013 and expired on 30 January 2021, prior to the commencement of the trial.

Southern Cross sued Mickala alleging that Mickala's conduct in manufacturing, supplying, or offering to supply certain LED lighting towers infringed claims 1 and 4 of its Patent.

Claim 1:

A lighting tower comprising: an engine; an alternator mechanically connected to the engine; and an LED lighting unit electrically connected to the alternator, the LED lighting unit being mounted on a manoeuvrable mast; wherein the alternator is a low voltage alternator, having a voltage output of less than 50V, connected directly to a shaft of the engine and wherein the LED lighting unit comprises a plurality of arrays of LED elements, at least some of the plurality of arrays being arranged at an angle relative to at least some of the other arrays.

Claim 4:

The lighting tower of any one of the preceding claims, wherein the LED lighting unit comprises at least one capacitor electrically connected in parallel to the alternator.

Mickala cross-claimed that the asserted claims were invalid for lack of novelty and lack of innovative step, meaning invention as claimed in claims 1 and 4 was not a patentable invention.

Mickala relied on the existence of various lighting towers in the market in 2011 and 2012 prior to the Patent, including popular lighting towers known as EcoTower and Exsto Towers. Mickala also relied on articles and advertising material published by Southern Cross which disclosed the patented invention, prior to Southern Cross obtaining the Patent.

Findings by the Court

Justice Downes found in favour of Mickala.

Her Honour found that claim 1 of the Patent lacked novelty because it was anticipated by an article in industry publication Australasian Mine Safety Journal advertising Southern Cross's lighting towers, the EcoTower and the Exsto Towers. Her Honour found that claim 4 lacked novelty because it was anticipated by the Exsto Towers.

Her Honour also found that the alleged invention, insofar as it was claimed in claims 1 and 4 of the Patent, did not involve an innovative step because there were no differences between the invention claimed and the cited prior art.

Accordingly, her Honour found that the invention claimed in claims 1 and 4 was not a patentable invention.

The decision of Downes J was handed down on 11 November 2025 following a trial in Brisbane in June 2025. The case was listed for trial together with another related proceeding, with evidence given in one proceeding to stand as evidence given or tendered in the other. A single Judgment was published.

Thomson Geer Senior Consultant Tony Conaghan and Senior Associate Jade Andrews acted for Mickala.

Authors

 Tony Conaghan | Senior Consultant | +61 7 3338 7502 | tconaghan@tglaw.com.au

 Jade Andrews | Senior Associate | +61 7 3338 7582 | jandrews@tglaw.com.au