Boyle v Neofoil Pty Ltd ACN 007 155 973

Alleged infringement 2 The applicant alleges that the first respondent has manufactured sealing strips comprising bitumen-impregnated foam material, with a bitumen content greater than 120 kg/m3. He alleges that it has infringed the patent by supplying or selling such sealing strips and/or offering them for sale; and/or authorizing, inducing or procuring distributors to sell or supply them. The applicant relies upon s 117 of the Patents Act 1990 (Cth) (the "Act"). The applicant also alleges that the second, third, fourth and fifth respondents authorized, induced, counselled, procured, aided or abetted such infringement and/or entered into a common design with the first respondent to infringe the patent.

The motion 3 The respondents seek summary dismissal of these proceedings pursuant to O 20 r 2 of the Rules of Court which provides: '(1) Where in any proceeding it appears to the Court that in relation to the proceeding generally or in relation to any claim for relief in the proceeding - (a) no reasonable cause of action is disclosed; (b) the proceeding is frivolous or vexatious; or (c) the proceeding is an abuse of the process of the Court, the Court may order that the proceeding be stayed or dismissed generally or in relation to any claim for relief in the proceeding. (2) The Court may receive evidence on the hearing of an application for an order under sub-rule (1).' 4 In Fancourt & Anor v Mercantile Credits Ltd (1983) 154 CLR 87 at 99, the High Court observed: 'The power to order summary or final judgment is one that should be exercised with great care and should never be exercised unless it is clear that there is no real question to be tried… .' 5 In Australian Building Industries Pty Ltd v Stramit Corporation Ltd [1997] FCA 1318, the Full Court (Northrop, Lindgren and Lehane JJ) cited with approval the following passage from the judgment of Danckwerts LJ in Wenlock v Moloney [1965] 1 WLR 1238 (at 1244): '… this summary jurisdiction of the court was never intended to be exercised by a minute and protracted examination of the documents and facts of the case, in order to see whether the plaintiff really has a cause of action. To do that is to usurp the position of the trial judge, and to produce a trial of the case in chambers, on affidavits only, without discovery and without oral evidence tested by cross-examination in the ordinary way. This seems to me to be an abuse of the inherent power of the court and not a proper exercise of that power.'

The invention 6 The integers of claim 1 of the patent are: (i) A method of fixing tiles or formed metal sheeting; (ii) Which overlap one another; (iii) To form a roof; (iv) Said method including inserting a sealing strip into the overlap; (v) Said sealing strip comprising a bitumen-impregnated foam material; (vi) Such bitumen being present in quantities greater than 120 kg/m3. All other claims are dependent upon claim 1.

Evidence of infringement 7 The applicant complains about the first respondent's supply of products known as "Dry Fixing" and "Valley Seal". However it is not entirely clear whether the words "Dry Fixing" comprise a product name or a generic description of the product. The applicant claims that chemical analysis of five samples of the first respondent's product has revealed that four of them contained bitumen in quantities in excess of 120 kg/m3. The applicant was ordered to verify his statement of claim by affidavit and did so. In particular, there are two affidavits by Kenneth John Morrison filed on 17 November and 12 December 2003. It is not entirely clear counsel for the applicant formally read the affidavit of 12 December 2003 but argument proceeded upon the basis it was before me. Mr Morrison is a Bachelor of Engineering Technology and holds an Associate Diploma in Mechanical Engineering. He has been employed as a laboratory technician for many years. He analyzed the five samples and found that they contained the percentages of bitumen set out below, namely: Sample Number Mass of Bitumen per kg/m3 1 113.3 2 120.8 3 163.7 4 122.4 5 143

8 In his first affidavit, Mr Morrison conceded that his test results would have been more reliable had he been able to analyze the foam material used by the first respondent in manufacturing its sealing products before such foam was impregnated with bitumen. Notwithstanding this qualification, Mr Morrison's evidence provides a basis for inferring that the applicant's sealing strips are of the kind described in integers (v) and (vi) of claim 1 of the patent. 9 Attached to the statement of claim are two documents which tend to suggest that the Valley Seal product is suitable for use as a sealant between overlapping roof components. The applicant alleges that those documents were distributed by the first respondent. They are relevant to his reliance upon s 117 of the Act which provides: '(1) If the use of a product by a person would infringe a patent, the supply of that product by one person to another is an infringement of the patent by the supplier unless the supplier is the patentee or licensee of the patent. (2) A reference in subsection (1) to the use of a product by a person is a reference to: (a) if the product is capable of only one reasonable use, having regard to its nature or design - that use; or (b) if the product is not a staple commercial product - any use of the product, if the supplier had reason to believe that the person would put it to that use; or (c) in any case - the use of the product in accordance with any instructions for the use of the product, or any inducement to use the product, given to the person by the supplier or contained in an advertisement published by or with the authority of the supplier.'

The defence 10 The respondents submit that the applicant must fail at trial because:

® the first respondent's product does not contain bitumen at a level in excess of 120 kg/m3; and

® the patent is concerned only with fixing, as opposed to sealing tiles.

Bitumen content 11 The respondents have tendered evidence from Mr R M Wilkie who analyzed a number of samples of the first respondent's products. Some of the samples so examined were of products sold under names other than Valley Seal. In any event the bitumen content of each was in the range of 62.1 to 97 kg/m3, well below the minimum level specified in claim 1. There is also evidence from which, I might, if it were uncontradicted at trial, infer that these samples were typical of the products offered in the marketplace by the first respondent. In addition, there is evidence that a sealing strip having a bitumen content above 120 kg/m3 would be "commercially unattractive" for the purpose of sealing as it would be "too hard and inflexible". The samples tested by Mr Wilkie were not the same samples as were tested by Mr Morrison. 12 Messrs Morrison and Wilkie adopted different methods of analysis and have offered some criticism of each other's testing regime. Of course there has been no cross-examination of either witness. It would not have been appropriate to allow such cross-examination on a motion of this kind. However it would also be inappropriate to deny either party an opportunity to cross-examine the other's witnesses before finally resolving the matters in dispute, or to deprive either party of the benefit of discovery. These considerations strongly suggest that the present motion is mis-conceived, at least to the extent that the respondents urge me to reject Mr Morrison's evidence. They have made much of the qualification placed by Mr Morrison upon his testing. However I do not understand him to concede that the outcome of his testing was other than reasonably accurate for present purposes. Further issues for consideration at trial may be the provenance of the samples analysed by Messrs Morrison and Wilkie and whether those samples were typical of the first respondent's products in the form in which they were generally available. 13 It may be thought that I have been somewhat superficial in my examination of the presently available evidence. However the cases demonstrate that an application for summary dismissal can only succeed in the clearest case. Unless this is such a case, it would be undesirable if I were to express any firm view about the evidence, given that I am to be the trial judge. 14 As Dixon J observed in Dey v Victorian Railways Commissioners (1949) 78 CLR 62 at 91: '… once it appears that there is a real question to be determined whether of fact or law and that the rights of the parties depend upon it, then it is not competent for the court to dismiss the action …'. 15 It would not be appropriate, at this stage, to dispose of the case by rejecting Mr Morrison's evidence and accepting Mr Wilkie's.

Construction of the patent 16 The respondents submit that claim 1 relates to a "method of fixing tiles" or other roof segments rather than to any question of sealing. Although that is true as far as it goes, the "method" includes the use of sealing strips between overlapping roof components. The applicant pleads in par 9 of the statement of claim that the first respondent's foam strips are '… capable of only one reasonable use, namely to fix tiles or formed metal sheeting which overlap one another to form a roof.' Alternatively, he pleads in par 10 that the strips are supplied with instructions for such use. These two paragraphs pick up the wording of pars (a) and (c) of subs 117(2). Clearly, the applicant, relying upon s 117, asserts that the sale of the first respondent's sealing strips infringe the patent because such strips are suitable for use solely in the fixing of roof components and/or are supplied with instructions for such use. 17 At trial the applicant may have to address the conflict between the views of Black CJ and Lehane J as expressed in Bristol-Myers Squibb Co v F H Faulding & Co Ltd (2000) 97 FCR 524 at [85] et seq and those expressed by Gummow J in Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 111 ALR 205 at 241-244 and Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd & Anor (1994) 30 IPR 479 at 494-5. On appeal in Rescare, his Honour's view was apparently adopted by the majority (Lockhart and Wilcox JJ). See Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1 at 24. This matter was not addressed before me. 18 The claim speaks of 'A method of fixing tiles ... which overlap one another ... said method including inserting in said overlap a sealing strip ...'. As a matter of construction the patent contemplates a method of fixing which includes the use of a sealing strip. The reference to fixing in par 9 of the statement of claim and the implied adoption of that usage in par 10 probably refer to a method of fixing of which sealing is a part rather than to sealing as something distinct from fixing. If this is the correct interpretation of the claim and of those paragraphs, then there would seem to be nothing in the respondents' point. It is not clear whether they seek to justify the distinction upon which they rely by reference to common usage of the terms "fix" and "seal" or to some technical meaning in the relevant trade. If the former, then it is not clear to me that there is such a clear distinction as to justify summary judgment. If the latter, then there is no evidence of such trade usage. Further, the documents attached to the statement of claim suggest a contrary usage, or at least as much is arguable. As I may have to determine this matter in due course, it is not appropriate that I say too much about it at this stage. It is sufficient to point out that document A, issued under the name of a company "Roof Fixing Supplies Pty Ltd", states: 'Roof Fixing Supplies are stockist of roof tile fixing accessories ...'. 19 It is true that the list of products immediately following the statement does not expressly refer to "Dry Fixing" or "Valley Seal", but in a table lower on the same page, the product "Valley Seal" appears opposite the heading "Dry Fixing". On p 1 of a two-page attachment it is said that: 'Roof Fixing Supplies product "Dry Fixing" is a non flammable polyurethane water based bitumen impregnated foam, designed to seal all the ridge and perimeter of Australian tile and steel roofs. Dry Fixing has inbuilt adhesion qualities, and holds the roof down to all surfaces.' 20 In document B it is said that Roof Fixing Supplies offers 'Dry Fixing Perimeter Solutions for: ® Eave protection ® Bird blocks ® Dry barges ® Flyaway gables ® Concealed gutters ® Change of pitch ® Roof penetrations ® Mansard roofs'. 21 A reading of the following detailed descriptions of these functions makes it clear that the sealing function is part of the roof fixing function, or at least that as much is fairly arguable. These are said to be the first respondent's documents. The construction question was not addressed in detail at the hearing of the motion. The aspect should also go to trial.

Orders 22 The motion should be dismissed. I will hear submissions as to costs. I will also hear submissions as to further directions designed to prepare the matter for trial. I certify that the preceding twenty-two (22) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Dowsett.

Associate: Dated: 6 February 2004 Counsel for the Applicant: S Burley

Solicitor for the Applicant: Bennett & Philp Solicitors

Solicitor for the Respondents Davies Collison Cave Solicitors

Date of Hearing: 6 June 2003 28 July 2003 15 December 2003