INFRINGEMENT
42 It is now possible to consider the applicants' case under s 128 of the Act in the context of the Patent being valid. By s 129A(3), it is for the respondent to satisfy the court that the acts about which the threats were made infringed, or would have infringed, a claim in the Patent. The respondent's case in this area focussed upon Claim 1.
43 It is here that I must lay out the facts of the case, and particularly the details of the applicants' product which, it is said, gave rise to an infringement of Claim 1.
44 Before the events which have become controversial in this proceeding, BLHEC provided skilled labour to the mining, construction, oil and gas sectors throughout Australia. In recent years, it has diversified into the design, fabrication, manufacture and installation of equipment for those sectors. The BLH system is an example of that diversification. That system had its genesis in 2009 when BHP Billiton ("BHP"), raised concerns in respect of safety issues presented by the risk of objects falling from elevated walkways, stairways and the like at its Olympic Dam mine site in South Australia, where BLHEC was, at the time, engaged to provide labour. Various expedients were employed to cover, or fence off, the open spaces that gave rise to this risk, but they were unsatisfactory for cost and other reasons. Over the next 12 months or so, the managing director of BLHEC, Shane Gill, and others in his company, undertook some conceptual, design and prototype work for a system that would meet the concerns raised by BHP and be cost effective. When, in October 2010, BHP management learned of this, they encouraged Mr Gill "to accelerate the project", as he put it in his affidavit sworn on 17 December 2013.
45 After experimenting with metal prototypes, Mr Gill and his team at BLHEC settled on using a plastic polymer for their guarding system. While it was a mesh panel that would perform the function of preventing objects falling from the walkways etc to which it would be attached, what has become important in the present proceeding is the means of attachment as such. The means which Mr Gill ultimately adopted involved clips to be attached to the rails and stanchions of which handrail systems are commonly comprised, and a means for the attachment of the mesh panel to such clips.
46 Represented below is a sample of a clip made by BLHEC in April 2011.
The uppermost portion of the object in this photograph - the part which has the appearance of a mushroom-top sitting on a disc - is what Mr Gill described as an "eccentric pin joiner and mesh clip". It has the purpose of facilitating the joining of the clip to square-section mesh without the need for a precise alignment as between the pin and some special point of anchorage in the mesh.
47 An exploded perspective view of the clip shown in the above photograph, as included in an innovation patent application lodged in the name of Mr Gill and BLHEC on 9 May 2011, follows below:
The eccentric pin joiner and mesh clip are the part marked with a question mark and the part numbered 3. The clip itself is the part marked numbered 1. Part numbered 4 is a pin, made from the same polymer plastic material as the clip, with barbs, or teeth, on the distal end as shown. In use, this pin is inserted through the holes in the two arms of the open end of the clip, in general alignment with which it is shown above.
48 Parts numbered 1 and 4 are of direct interest in the present proceeding. Henceforth, I shall refer to the former as the BLH clip, or simply as the clip, and to the latter as the barbed pin.
49 As mentioned above, on 9 May 2011 Mr Gill and BLHEC applied for an innovation patent in relation to the BLH system. This application was given the number 2011100520. It was granted on 13 July 2011, but not examined. I shall refer to the granted patent as "the BLH Patent".
50 On 25 July 2011, BLHSS was incorporated. BLHEC licensed BLHSS to manufacture the BLH system, and to market that system in Australia and overseas. Since that date, BLHSS has manufactured and marketed the BLH system, and has offered that system for sale throughout Australia and overseas. If the BLH system comes within the terms of Claim 1 of the Patent, on any view the activities of BLHSS would amount to an exploitation of the invention there claimed, and thus to an infringement of the Patent.
51 As described in the evidence, the way the clip aspect of the BLH system works is as follows. The open end of the clip is placed against, and then pressed over, the rail, for example, to which it is to be attached. As it is passing over the rail, the two arms of the clip will move apart, making use of the elasticity of the material from which the clip is constructed. At the point where the clip has been moved completely on to the rail, the rail will be received into the circular section of the clip, and the two arms of the clip will move back to something approaching their original orientation. In the result, the clip will be clipped around, and thus attached to, the rail. From what was demonstrated in the evidence, this procedure resulted in the clip being firmly attached to the rail.
52 A photograph showing a BLH clip attached to a rail, after the procedure followed above, follows below.
53 The barbed pin is then inserted, from side to side, through the holes in the arms of the clip. It is designed to be fully inserted, that is to say, until the head of the pin makes contact with the arm through which it was first inserted. At this point, the barbs on the distal end of the pin will have moved, partly or wholly, through the hole in the other arm. The barbing function is intended to cause the pin to be held firm in these two holes, or at least to make it impossible or very difficult to remove by being drawn back in the direction from which it was inserted. At least from the applicants' point of view, it is immaterial whether the barbs pass wholly, or only partly, through the second hole. BLHSS appears to have manufactured some barbed pins with fewer barbs, such that, by the time the head of the pin makes contact with the first arm of the clip into which the pin was inserted, all the barbs have passed completely through the second hole, thereby producing the result that there are no barbs in communication with that hole and that the pin is not, at that point, a tight fit. I shall return to this point in due course below.
54 A photograph showing a BLH clip attached to a rail, with the barbed pin inserted, follows below.
55 With the support of Mr Hunter, the respondent submitted that the clip/barbed pin arrangement in the BLH system embodied all of the integers of Claim 1 in the Patent. Mr Hunter identified the first integer as "a bracket for use in mounting a guard panel to a post having a predefined profile". Dr Sincock accepted that the BLH clip was such a bracket.
56 Mr Hunter identified the second integer as "a post engaging portion wherein the post engaging portion has an open configuration to allow the bracket to be removably clipped onto and retained around the post whilst in the open configuration". He said that the BLH clip had a post engaging portion, namely, the generally circular part of the clip that, when the clip was in place, made firm contact with the post. He said that, "prior to use, the bracket appears to be in an open configuration in which the bracket would be able to be clipped around the post". By pushing the clip on to rail assemblies provided for the purpose, Mr Hunter made use, he said, of the open configuration to enable him to clip the clip on to the post. Dr Sincock did not accept this, but, before coming to his view of the subject, it is convenient to proceed to the third integer identified by Mr Hunter.
57 Mr Hunter identified that integer as "a closed configuration to allow clamping of the post engaging portion to the post". He said that the closed configuration was "that in which the post engaging portion is tightly fixed or held fast around the post". He said that he had tested this by inserting an 11-barb pin into the BLH clip as mounted on a post, and found that "the arms … of the [clip] … moved inwardly … and were held in a clamped configuration". That is to say, Mr Hunter would regard the BLH clip after being placed on to the post as still being in an open configuration, and that the closed configuration was achieved by the insertion of the barbed pin. By reference to measurements which he and Dr Sincock carried out, Mr Hunter noted that, after the insertion of the 11-barb pin, the arms of the clip were very slightly closer together than they had been before insertion of the pin. On the other hand, before the pin was inserted the clip was only "removably" on the post: in his oral evidence, Mr Hunter said that he had been able to remove the clip at this stage, albeit with difficulty.
58 By reference to the application for the BLH Patent, Dr Sincock expressed the view that the BLH clip, as such, did not have "distinct open and closed configurations ..., other than the elastic deformation resulting from clipping the … [clip] onto the guardrail …." I accept that evidence, and would apply it also to the BLH clip itself, as in evidence in the case. Looking only at the clip itself, Mr Hunter would accept, of course, that it had only one configuration: for him, the "closed" configuration was constituted by the clip with the barbed pin in place. As I shall mention in a moment, it was the insertion of the pin that provided both the closed configuration of the bracket and the clamping action described in the Patent, on Mr Hunter's approach. For the moment, I am concerned to accept Dr Sincock's view that, at least before the pin was inserted, there were not two identifiably separate configurations of the BLH clip. Indeed, as pointed out by counsel for the applicants, because tightness of fit of the bracket itself to the post was a characteristic engineered into the BLH clip, if anything that clip would be very slightly more "open" once it had been placed on to the post than before that operation.
59 The fourth, fifth and sixth integers of Claim 1 of the Patent, as identified by Mr Hunter, may be taken together. They were a clamping portion (fourth integer) including a first clamping portion (fifth integer) and a second clamping portion (sixth integer). Mr Hunter said that the two arms of the BLH clip constituted the first and second clamping portions - either arm could be either portion - and that the two of them together were the clamping portion required in the fourth integer. Although, apparently, required for the action of clamping, the barbed pin was not treated as part of the clamping portion referred to in the Patent. Save to note that this represents Mr Hunter's alignment of the BLH clip with these integers of Claim 1 of the Patent, nothing further needs to be said about these aspects of the analysis at this stage.
60 Mr Hunter identified the seventh integer as, "in the closed configuration the second clamping portion [being] brought towards the first clamping portion to clamp the bracket to the post". He said that, after insertion of the barbed pin, the arms of the BLH clip were slightly closer to each other than they had been after the clip was placed on to the post. That is to say, it was the action, and the result, of the insertion of the pin that caused one of the arms, considered as "the second clamping portion" to be brought towards the other arm, considered as "the first clamping portion". I shall comment further upon that approach to the relationship between the BLH clip and this integer in Claim 1 of the Patent presently, but it is first convenient to move directly to what Mr Hunter said about the eighth integer.
61 He identified the eighth integer as the first and second clamping portions being "fastened in the closed configuration by a first set of one or more fasteners passing through apertures" in those clamping portions. He noted that, because of the action of the barbs on the barbed pin, once fully inserted, the pin could not be withdrawn. That met his interpretation of "fastened".
62 Mr Hunter identified the ninth integer as "a mounting portion including a mounting plate to allow mounting of the guard panel to the bracket with a second set of one or more fasteners". The end of the BLH clip with which the eccentric pin joiner and mesh clip communicated was, according to Mr Hunter, a mounting portion and plate within the terms of this integer. Dr Sincock did not take issue with that conclusion.
63 While I do not criticise the experts for their identification of the integers of Claim 1 of the Patent in the way that they did, it must be said that this process of analysis tended to emphasise the internal textual components of the claim, at the risk of losing sight of the invention as a whole and understanding what was being claimed in a practical sense. Standing back, and reading the claim against an understanding of the invention as explained in the specification, I would say that the invention involved a bracket which was accommodated to be fixed to a post in three stages. The first was the clipping of the bracket to the post using the post engaging portion. This is reflected in the second integer of the claim as identified by Mr Hunter. Here the bracket was retained around the post, but was removable therefrom. The second was bringing the two clamping portions towards each other. While this part of the operation is reflected specifically in the second integer, the skilled addressee would understand that these are the clamping portions referred to in the fourth, fifth and sixth integers. He or she would also understand that this movement resulted in the post engaging portion changing from the open configuration (the second integer) to the closed configuration (the third and seventh integers). I have parenthetically linked the third and seventh integers because the words of the third, "to allow clamping of the post engaging portion to the post", and the words of the seventh, "to clamp the bracket to the post", are referring to the same thing. The third stage was the fastening of the arrangement as a whole to the post by one or more fasteners passing through the clamping portions. This is reflected in the eighth integer of the claim as identified by Mr Hunter.
64 It is as clear as may be that the invention as claimed in Claim 1 of the Patent has two distinct configurations, an open one and a closed one. This is not simply an observation of what happens, or might happen, when a bracket that was not constructed with two configurations is pressed on to a post with which it has a tight fit. It is an essential feature of the bracket as a product. The claim refers to a bracket which, before being placed anywhere near a post, has two configurations which would be observable to the skilled addressee. Further, the bracket claimed in Claim 1 is intended to be placed on to the post in such a way as to be removably retained there, whilst still in the open configuration. There follows a distinct movement of the clamping portions together, to bring about the closed configuration before the fasteners are passed through the holes in those portions, and presumably then fastened tight.
65 In my view, the BLH clip stands apart from anything that is claimed in Claim 1 in the Patent by a considerable distance. As a bracket, it does not have two configurations. It is a single, moulded plastic, product designed to fit firmly on a post of a known diameter. I accept that the skilled addressee would appreciate that, to achieve that firm fit, there will have been some slight enlargement of the BLH clip in its position on the post compared with its original situation. As I shall relate presently, the experts were agreed that the arms after attachment to the post were slightly further apart, or more outwardly angled, than they had been originally. But it would be quite artificial to regard this circumstance as marking out the difference between two configurations of the bracket itself. I realise that these two states of the BLH clip - before attachment and after attachment - do not correspond with the open and closed configurations identified by Mr Hunter. However, the achievement of an open configuration by the elastic deformation of the clip - a clip which, of itself, does not have two different configurations - during the process of placing it on the post bears no relation to anything in Claim 1 of the Patent. A skilled addressee who had read the specification would understand that the bracket claimed in Claim 1 was in the open configuration before, and not as the result of, being clipped on to the post.
66 The skilled addressee would also understand that Claim 1 claimed a bracket which was to be changed from an open to a closed configuration, thereby bringing the two clamping portions towards each other, as separate from, and anterior to, the operation of passing the fasteners through the apertures in the clamping portions. The claim does not comprehend a situation in which the state of being in a closed configuration is itself achieved by the latter operation. Assuming, for the moment, that the barbed pin in the BLH system may be described as a fastener which holds the arms of the clip in what Mr Hunter would identify as a closed configuration, it is, on the respondent's case, the action of inserting the pin, fully to the point where the barbs are engaged, that, of itself, achieves that configuration. There is no movement of different parts of the clip prior to the insertion of the pin that would correspond with the operation required by the seventh integer in Claim 1.
67 To date in this part of my reasons, I have not considered what came, in the concurrent evidence of the experts, to be a significant aspect of the controversy about the relationship between Claim 1 of the Patent and the BLH clip. That involved the requirement in the claim for a "clamping" to be achieved when the fastener or fasteners was or were passed through the hole or holes in the two clamping portions. In the case of the BLH clip, that requirement was, according to Mr Hunter, satisfied when the barbed pin was passed through the holes in the arms of the clip and pressed home into its intended position. Dr Sincock did not accept that this involved "clamping" as contemplated in the claim. In an attempt to resolve this controversy, the two experts took, in collaboration, some measurements of various dimensions of two of the clips at various stages of a notional operation in which those clips would be fitted to posts to which they were adapted.
68 Dr Sincock and Mr Hunter took their measurements of clips which were sized to fit on the midrail and the stanchion of a conventional handrail system. For the results set out below, their points of reference are as indicated on the following marked-up photograph of a clip:
69 In each case (ie the midrail clip and the stanchion clip) Dr Sincock and Mr Hunter measured the outside diameter of the rail, the inside diameter of the curved part of the clip, the dimensions A and B shown on the photograph above and the included angle AB as there shown. Taking the averages of the measurements which they recorded, those which relate to the midrail clip are as follows:
Rail Clip itself Clip on rail Clip on rail with pin
Outside diameter mm 34.17
Inside diameter mm 33.06
Dimension A mm 23.88 25.33 25.27
Dimension B mm 23.95 25.98 25.60
Angle AB deg 0.24 2.21 1.14