The parties' submissions
38 It was common ground that the claims are to be construed in the context of the specification as a whole: Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; 222 ALR 155 at [67]. See also Sachtler GMBH and Co KG v RE Miller Pty Ltd [2005] FCA 788; 221 ALR 373 at [41]-[42].
39 The applicant submitted claim 1 and each claim relied upon was a product claim, not a method claim. This was also common ground.
40 The applicant submitted that claim 1 was the widest independent claim to a fence plinth and it provided that the plinth should be "formed from sheet material ... being profiled to incorporate stiffening formations that extend along the sheet". It submitted the claim was broad and was agnostic as to how the profile was introduced into the sheet, being the "profiled metal sheet" from which the plinth was formed. In this respect the applicant referred to Figure 2 (reproduced at [11] above) and to a reference in the body of the specification to that figure illustrating an embodiment of the invention in which a plinth is "formed from a profiled metal sheet".
41 As to the plain meaning of the claim, the applicant referred to definitions from the Oxford English Dictionary (OED) of the words "Form", "Being" and "Profiled". In respect of the word "formed" and the definition of "Form" the applicant submitted that, contrary to the respondent's submission that this meant "shaped", the more appropriate definition having regard to the entire phrase "formed from sheet material" was: "To construct, frame; to make, bring into existence, produced. Const. From, of, out of (the material ...)". To give the word "formed" the meaning "shaped" was inconsistent with the use of the word "formed" in the body of the specification where it was clearly used simply to mean "made" ("from … material"). Thus it was stated, in the body, that in "traditional fence construction, the plinth 28 is formed from timber. However, in the embodiment shown, and as best illustrated in Figs 2 and 3, the plinth 28 is formed from a profiled metal sheet" (applicant's emphasis).
42 Consistently with this interpretation, the applicant submitted, there were a large number of references in the body of the specification to the material as a "sheet" even after a profile had been introduced.
43 The applicant submitted that the respondent's interpretation read into claim 1 a requirement that some action was required to form a profile from a flat sheet of material. This was to interpret the claim as a method claim or at least a claim by result. However, the claim was a product claim and the integers describe the physical features of the plinth.
44 The applicant emphasised that its interpretation did not exclude from the scope of claim 1 starting with a flat sheet of metal, profiling it (by bending it, for example using a roll forming process) and then using that "profiled metal sheet" to make a plinth. Clearly such a product would infringe the claim. But the claim was not limited to that method and the claim language was wider and included plinths "formed from sheet material" that had profiles introduced by other methods.
45 The word "profiled", the applicant submitted, was clearly an adjective and not a verb, used in the sense (from OED) of "shaped to a particular profile". The word "being", was used in this sense (from OED): "With adjective, noun, or adjectival phrase, acting as simple copula: stating of what sort or what something is." In other words "being" in the claim meant no more than "that is".
46 The respondent's interpretation, the applicant submitted, ignored the third phrase and in particular the words "that extend along the sheet". In other words, on the wording of the claim itself, even being profiled and having stiffening formations, these extend along the "sheet". It followed from that language, the applicant submitted, that the sheet of the claim was not flat; it was profiled and it incorporated stiffening formations.
47 The applicant submitted the body of the specification included a number of indications that the sheet or sheet material, from which the plinth was formed, did not have to be flat (although it could be) and included a "profiled sheet". The applicant accepted that, in the body, one optional embodiment involved introducing a profile into the metal sheet, which profiled sheet would then be used to form the plinth in accordance with claim 1, by bending sheet or strip into that profile using, for example ("typically"), roll forming. But the applicant submitted that did not mean that the claim was limited to one in which a profile was introduced by that one preferred method. On the contrary, the claim was clearly wider and included any plinth "formed from sheet material" that was profiled by any method (including, for example, using a brake press or by extruding the metal sheet with the desired profile (as in the infringing product).
48 The applicant noted that the first consistory clause, under "Summary of the Invention", repeated the words of claim 1, including that the sheet is profiled ("being profiled") and incorporated stiffening formations extending "along the sheet". The specification stated that "In one form, the stiffening formations may be corrugations or ribs such that a cross-sectional profile of the plinth displays a regular wave form with crests and troughs displaced from a notional centre line of the sheet" (applicant's emphasis). Thus, the applicant submitted, even where there were stiffening ribs or corrugations (such as a zigzag profile) with crests and troughs, this was still a "sheet". Even where there was a reference to profiling the sheet, the applicant submitted it was clear that it remained a sheet after profiling - for example, the specification states "it is preferable that the radius of the curvature in the bends in the sheet is at least 5 mm, and preferably at least 7 mm" (applicant's emphasis). Importantly, the applicant submitted, the plinth depicted in Figure 2 was expressly stated in the specification to be "formed from a profiled metal sheet". The applicant relied on other examples of language in the specification to similar effect.
49 Properly construed, the applicant submitted, when claim 1, read as a whole and in the context of the body of the specification, used the phrase "formed from sheet material" it was claiming a plinth formed from sheet material that is (ie, being) profiled.
50 The respondent submitted that the Oxworks Plinth did not infringe any claim of the Patent because it was not formed from sheet material. Rather, the respondent submitted, it was formed in an aluminium extrusion process in which an aluminium billet was forced through a die and extruded in the final form of the plinth, which had a zig-zag cross-section.
51 The respondent submitted it is impermissible for a court or a witness to approach the issues of construction with any regard to the alleged infringing articles. As Heerey J said in Welcome Real-Time SA v Catuity Inc [2001] FCA 445; 113 FCR 110 at [21]: "a patent must, as the saying goes, be construed as if the infringer had never been born".
52 As to the construction of claim 1, the respondent submitted that, in the integer "formed from sheet material", "formed" was the past participle of the verb "form", meaning "to shape", and "from" was a preposition indicating a starting point. Thus "formed from" meant "shaped from a starting point of" sheet material. The respondent's submission, contrary to the applicant's, was that this was consistent with the specification's reference to a plinth "formed from timber"; a plinth may be shaped from a starting point of timber, by cutting it to the desired shape.
53 The respondent submitted a "sheet" of material was broad and thin - ie substantially planar or flat. Examples included a bed sheet, a sheet of paper or a sheet of glass. All were flat. Thus this integer described a plinth that was shaped from the starting point of a substantially flat material.
54 This was reinforced, the respondent submitted, by the claim describing the sheet material "being profiled to incorporate stiffening formations". Here "incorporate" meant to "to put one thing into the body of another", such that this integer described introducing into the sheet a shape (formation) that will stiffen sheet.
55 Significantly, the respondent submitted, the OED the definition of "profiled" included: "To provide (an object) with a profile of a specified nature … (Engineering) to shape (an object) by means of a profile machine." The respondent submitted that this was the sense in which "profiled" was used in claim 1 of the Patent.
56 Thus, the respondent submitted, claim 1 claimed a fence plinth that had been shaped from a flat piece of material, by introducing stiffening formations (and thus a non-flat profile) into the flat material.
57 The respondent submitted that the words that the applicant pointed to did not demonstrate that the claim extended to forming a plinth from material that had never been flat. The language of the claim clearly excluded that possibility.
58 The respondent submitted that the construction that it contended for was the ordinary meaning of claim 1.
59 The respondent submitted that regardless of which construction of claim 1 was adopted, the Oxworks plinth did not infringe claim 1 because it was not formed from a flat sheet or a profiled sheet. At no time during the manufacture of the Oxworks Plinth, the respondent submitted, was anything resembling "sheet material" used or produced.
60 The respondent submitted it may be accepted that some corrugated materials could be described as sheets, even though they were not completely flat - ie, corrugated roofing panels. But panels of that nature were broad in two dimensions and substantially planar, despite the corrugations. That was a very different shape to the Oxworks Plinth. Panels, and sheets, were broad in two dimensions. The Oxworks Plinth was not. There was no evidence of aluminium extrusion ever being referred to as a "sheet".
61 In reply, the applicant submitted the claim was a broad claim to any plinth that was formed from a sheet material that had a profile in it for the purpose described in the claim, which was to introduce stiffening formations along the length of the sheet. That did not exclude sheet material that was made from a flat piece of material as a starting point. It clearly included sheet material made by a process such as roll forming where the starting point was a flat sheet and one introduced a profile into that flat sheet and then one used that profiled sheet material to form a plinth. But the claim was not limited to sheet material made by that process. It would also apply to a profiled sheet which was manufactured by roll forming a metal strip, or other profiling means such as a press, and it could also have been a profiled sheet which was manufactured by moulding or extrusion of the metal, plastic, fibreglass or other material. The patentee, as the patentee was entitled to do, has claimed the broader concept of having a plinth formed from sheet material that was profiled, which could be manufactured in any number of ways, and had not limited the claim to the particular method given in the preferred embodiment of profiling the sheet.
62 It was not permissible, the applicant submitted, to narrow the claim by importing into the claim glosses from the specification. And in particular, the applicant submitted, it had been often said that a claim should not be limited by reference to exemplifications of preferred embodiments. The respondent, the applicant submitted, sought to narrow the claim to a claim in which the product was made by the preferred embodiment of bending or profiling a flat sheet of material.
63 As to additional damages, the applicant claimed an entitlement to additional damages under s 122(1A). That provision reads:
122 Relief for infringement of patent
…
(1A) A court may include an additional amount in an assessment of damages for an infringement of a patent, if the court considers it appropriate to do so having regard to:
(a) the flagrancy of the infringement; and
(b) the need to deter similar infringements of patents; and
(c) the conduct of the party that infringed the patent that occurred:
(i) after the act constituting the infringement; or
(ii) after that party was informed that it had allegedly infringed the patent; and
(d) any benefit shown to have accrued to that party because of the infringement; and
(e) all other relevant matters.
…
64 The applicant referred to Zetco Pty Ltd v Austworld Commodities Pty Ltd (No 2) [2011] FCA 848 at [263]-[268]; Industrial Galvanizers Corporation Pty Ltd v Safe Direction Pty Ltd [2018] FCA 1192; 135 IPR 220 at [128]-[132]; and to Pacific Enterprises (Aust) Pty Ltd v Bernen Pty Ltd [2014] FCA 1372; 321 ALR 715 at [13]-[14].
65 The applicant submitted the Court should make a finding that the respondent was liable for additional damages in light of the following:
a. There was no dispute about the validity of the Patent and there was no subsisting cross-claim for revocation.
b. Accordingly, this matter was clearly distinguishable from Zetco. In that case (at [267]-[268]) there was a cross-claim for revocation. The respondent/cross claimant had also earlier sought re-examination of the Patent. In the present case, no witness from the respondent had given evidence that, for example, he or she took advice on infringement or formed the view that there was no infringement and that the respondent could legitimately make the Oxworks Plinth.
c. The controlling mind of the respondent was Mr Hosking as the CEO. He was present and available to give evidence but did not.
d. For a significant period (from about 2006 until early 2017) the respondent purchased the applicant's Gram steel plinth and other fencing products in considerable quantities.
e. The respondent was twice provided with advertising material including the plinth brochure.
f. Prior to engaging Rising Star, in December 2015, to look into the manufacture of aluminium plinths on its behalf, the respondent clearly had access to the applicant's website. Indeed, Mr Hosking sent an email to Mr Thornton of Rising Star including a link to webpages in the applicant's website. At the relevant time the applicant's website referred to the Patent in respect of the plinth product. The applicant's brochure referring to the plinth and the fact that it was patented (and giving the patent number) was also on the website at the relevant time.
g. Mr Hosking was not called to give evidence that he was not aware of the Patent or that he did not read the physical brochures or the statements on the website referring to the Patent (including the brochure uploaded to the website). An adverse inference should be should be made against the respondent because of the failure to give such evidence.
h. The respondent's copying of the Gram plinth was slavish. The respondent suggested that there was no "copying" because the plinth was made by an extrusion process and not by the method described in the body of the specification. That may be, but the product was almost exactly copied in its shape and dimensions, which were obtained from the specification pages in the applicant's website. Indeed, Mr Hosking sent to Rising Star a link to a page on the applicant's website depicting and describing the Gram plinth and asked Rising Star to make the product in aluminium.
i. Mr Hosking approved each stage of the development of the respondent's aluminium plinth.
j. The respondent received a cease and desist letter referring to the Patent and their infringement of it in on 9 May 2017.
k. The respondent continued to sell the infringing plinth even after that letter.
66 In summary, the applicant submitted that there was a compelling case that the infringement had been flagrant. On the probabilities, the respondent knew of the Patent at all material times. It had access to the Gram website which referred to the Patent and Factory Direct Fencing Pty Ltd (as Oxworks Trading was then known) was provided with advertising material in relation to the Gram plinth. It had previously purchased plinths from Gram. It then deliberately copied the Gram plinth.
67 The respondent submitted there were no factors relevant to additional damages present. Although the applicant adduced evidence to show that certain pages of its website that concerned the plinth also had a reference to the Patent at various times, the respondent submitted that there was no evidence that any representative of the respondent ever saw those pages.
68 On 17 December 2015, Mr Hosking emailed a link to the applicant's website to Mr Thornton of Rising Star, which arranged for the manufacture of the Oxworks Plinth and imported it to Australia. Mr Thornton followed that link and looked at pages of the applicant's website concerning its plinth, including the "Product Details", "Specification", "Data Sheet" and "Installation Data" tabs. None of those pages, the respondent submitted, made any reference to the Patent. Mr Thornton's evidence demonstrated that it was perfectly possible to find a lot of information about the applicant's plinth without being put on notice that it was the subject of a patent.
69 The respondent submitted that it had not "copied" the Gram plinth as the applicant had submitted. Rather it submitted the evidence showed that the respondent asked Rising Star to produce a plinth via an extrusion process that otherwise had a similar shape to the Gram plinth.
70 In any event, the respondent submitted, copying was not, in itself, sufficient to justify an award of additional damages. Where, as here, the alleged infringer maintained an arguable case that the product did not infringe, additional damages would not be awarded simply because it did not cease selling the allegedly infringing product: Zetco at [267]-[269] per Bennett J; Industrial Galvanizers Corporation Pty at [132]-[133] per Burley J.
71 When Mr Hosking received a letter of demand in relation to the Oxworks Plinth, dated 9 May 2017, he replied in an email dated 29 May 2017, from which it was clear that the respondent had always been of the view that the Oxworks Plinth did not infringe the Patent. The respondent submitted that view had been, and was, reasonably held. In those circumstances, the respondent submitted there could be no flagrant infringement.
72 Finally, the respondent submitted that, to the extent that it was said to be relevant that the respondent was previously a customer of the applicant and ceased purchasing plinths from the applicant in about February 2017, the relevant emails showed that Oxworks had subsequently tried to purchase plinths from the applicant, but had been rebuffed.
73 As to unjustified threats, the respondent submitted that if it were found not to have infringed the Patent, the letters sent on behalf of the applicant dated 9 May 2017, 22 June 2017 and 20 November 2017 were unjustified threats. Where a letter demanded undertakings and reserved the right to take legal action if they were not forthcoming, it would constitute an unjustified threat if infringement was not proved. The letter of 22 June 2017, in particular, answered that description. It was not deprived of that character simply because it refers to the Civil Dispute Resolution Act 2011 (Cth): see CQMS Pty Ltd v Bradken Resources Pty Ltd [2016] FCA 847; 120 IPR 44 at [183] per Dowsett J. The real nature of this was a letter of demand for final relief, effectively, and for that reason it was an unjustified threat, unless infringement was proved.
74 The applicant submitted that because there was infringement the unjustified threats cross-claim was irrelevant. Also, if there was authority for the proposition that a cease and desist letter can be an unjustified threat, no consequences flowed from it. There was clear authority that a finding of non-infringement alone was not a basis for a finding of unjustified threats: Damorgold Pty Ltd v Blindware Pty Ltd [2017] FCA 1552; 354 ALR 1.