Gram Engineering Pty Ltd v Oxworks Pty Ltd

The Patent 8 Claim 1 is as follows, with all the other claims alleged to be infringed incorporating the features of that claim and therefore the disputed expression "formed from sheet material": 1. A fence plinth formed from sheet material having spaced apart end edge margins and being profiled to incorporate stiffening formations that extend along the sheet between the end edge margins. 9 The other claims alleged to be infringed are the plinth claims 2, 4 and 6-13 and the fence claims (15-19). Those claims, which incorporate the features of claim 1, are as follows: 2. A fence plinth as claimed in claim 1, wherein the sheet is sheet metal. … 4. A fence plinth as claimed in any preceding claim, wherein the stiffening formations are 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 plane of the sheet. … 6. A fence plinth as claimed in any preceding claim, wherein at least some of the stiffening formations are disposed inboard of opposite side edges of the plinth. 7. A fence plinth as claimed in any preceding claim, wherein the depth of the stiffening formations from a centre plane of the sheet is greater than 20mm. 8. A fence plinth as claimed in any one of claims 1 to 3, wherein the plinth is profiled to form a structural section such as a z-section to provide the stiffening formations. 9. A fence plinth as claimed in any preceding claim, wherein the sheet material has opposite side edge margin that interconnect the end edge margins, the side edge margins being configured to allow lapping of one side margin with the other side margin of another said plinth to form a plinth assembly with the overlapping region forming a region of increased stiffness in the plinth assembly. 10. A fence plinth as claimed in claim 9, wherein the one side margin nests within the other side margin at the overlapping region. 11. A fence plinth as claimed in any preceding claim, wherein the sheet is profiled to allow stacking of the plinth with another plinth where the plinths overlap with one plinth nesting within the other plinth. 12. A fence plinth as claimed in any preceding claim, wherein the sheet material is profiled so that the major surfaces of the plinth allow free drainage of water across those surfaces when the plinth is disposed in its in-use orientation. 13. A fence plinth as claimed in any preceding claim, wherein the ratio of the height of the plinth, measured between the opposite side edges of the plinth, to the length of the plinth, measured between the end edges of the plinth, is in the range of 0.03 to 0.10. … 15. A fence comprising spaced apart fence posts, each including a channel with the channel of one post facing the channel of the other post, a barrier panel extending between the posts and a plinth according to any preceding claim located below the barrier panel and extending between the posts with the end edge margins of the plinth located within respective ones of the fence post channels. 16. A fence as claimed in claim 15, wherein the sheet from which the plinth is formed is profiled to extend laterally out of a notional centre plane so that the end edge margins of the plinth locate snugly within the fence post channels. 17. A fence as claimed in claim 16, wherein the end edge margins are securely located within the channels by the fit between the end edge margins and the channels of the respective posts. 18. A fence as claimed in any one of the claims 15 to 17, further comprising a plurality of said plinths located one above the other and having their end edge margins located in respective ones of the fence post channels, each of the plinths being arranged in partial overlapping relationship to form a plinth assembly with the or each overlapping region forming a region of increased stiffness in the plinth assembly that extends between the fence posts. 19. A fence as claimed in claim 18, wherein one side margin of a said plinth nests within the other side margin of an adjacent plinth at the or each overlapping region. 10 Relevant figures from the Patent are:

Figure 1 - a schematic perspective view of a fence, the plinth being numbered 28:

Figure 2 - a perspective view of a plinth used in the fence of Figure 1:

The evidence 11 The parties read the following affidavits. 12 The applicant read the affidavit of Mr Christopher Berkeley affirmed 21 December 2018. He annexed to his affidavit pages of the Gram website at various dates. I admitted also one part of a correcting affidavit by Mr Berkeley dated 21 March 2019. I rejected the balance as being served too late, some five or six days before the trial. 13 The applicant read an affidavit by Mr Wing Yuen (Albert) Kwan, the information technology manager at Gram, affirmed 24 January 2019. 14 The applicant also read an affidavit by Ms Suzi Susic, the marketing manager at Gram, affirmed 21 February 2019. Some paragraphs were admitted subject to relevance, noting that it was not said by the applicant that before March 2007 there were records in relation to Oxworks. Paragraphs 5 to 13 and 16 and the corresponding annexures, SS-1 and SS-2, related to time when there was no evidence the Oxworks was a customer of Gram. 15 The applicant tendered an expert report by Mr William Samuel Hunter dated 18 April 2018, exhibited to Mr Hunter's affidavit dated 26 April 2018. The applicant also tendered a further report by Mr Hunter, dated 21 February 2019, exhibited to Mr Hunter's affidavit of 22 February 2019. 16 The respondent read only the affidavit affirmed by Dr Hugh Lithgow Stark affirmed 1 March 2019, constituting his expert report. 17 The experts produced a joint report dated 12 March 2019 and gave concurrent oral evidence. 18 The respondent did not read an affidavit affirmed by Mr Glenn Andrew Hosking dated 23 February 2018 which had been filed. 19 Mr Benjamin George Thornton was the director of Rising Star. He affirmed an affidavit dated 14 December 2018, certain paragraphs of which were read by the applicant. He was not cross-examined. 20 His evidence, which I accept, was that in December 2015 the director of Oxworks, Mr Hosking, emailed to him a web link for a product he wanted Rising Star to manufacture and supply (which product would later be known as "ColourSmart Plinths" or "ColourSmart Aluminium Sleepers"). The link (www.gram.com.au/steelplinth/steelplinth) was to a steel plinth on a page on the Gram website. 21 After Mr Thornton received the web link, he went to the Gram website and looked through the steel plinth web page and looked at the designs/specifications. Between 18 December 2015 and 7 January 2016 Mr Thornton emailed the Gram website link to Rising Star's purchasing team and found out from them that their selected Chinese manufacturers could only manufacture the product with a heavier wall thickness due to the product being extruded from aluminium and not roll formed from aluminium, steel or metal. He responded requesting that the product be drawn up at that thickness for approval by Oxworks. 22 Mr Thornton discussed with Mr Hosking on a number of occasions between December 2015 and August 2016 Oxworks proposed plinths and the design and specifications (specifications) of those plinths. Numerous variations were made to the specifications at the request of both the Chinese manufacturers and Oxworks. The final specifications were approved and signed in September 2016 to be sent to China. Once the specifications were finalised, Oxworks sent Rising Star a purchase order for the plinths. This occurred in October and November 2016. 23 Between about October 2016 and July 2018, Mr Thornton's evidence was that Rising Star: (a) engaged Chinese manufacturers to manufacture the plinths in accordance with the specifications; (b) imported the plinths into Australia and delivered them directly to Oxworks Trading; (c) sold the plinths on a wholesale basis only to Oxworks Trading. 24 Rising Star ceased ordering or importing or selling the plinths after receiving legal advice in relation to a letter from the former lawyers for Gram dated 11 July 2018.

The facts as to the manufacture of the Oxworks Plinth 25 I find that the Oxworks Plinth is manufactured in the following way. These facts were not in contention. 26 It is produced from cylindrical aluminium billets. Each billet has a diameter of between approximately 200mm and 250mm, and a length of between approximately 600mm and 1000mm. 27 The billet is first heated to between approximately 800 to 925˚ F (426 to 496˚ C). After the billet reaches the desired temperature, it is transferred to a loader. While on the loader, a thin film of smut or lubricant is added to the billet and to the ram. A ram is a steel rod (with a tight fitting steel block attached to the ram's stem) that is used to apply pressure to the billet and push it through the die. 28 The billet or log is transferred to the cradle to support the cylindrical log as it enters the press container. 29 The billet is then pushed (using the steel rod and block) into the press container that has a die opening at the opposite end. Under pressure, the billet is crushed against the die. As a result of pressure being added to the billet, the billet squeezes through the die, taking the shape of the die opening. 30 This extrusion process forces the billet into the shape of the Oxworks Plinth, which is a zig-zag shape in cross-section. During the extrusion process, the billet or log is between approximately 200mm and 250mm in diameter and between approximately 500mm and 1000mm in length. 31 When the extrusion reaches a length of approximately between 18 metres and 30 metres, the extrusion is cut with a profile saw or shear. 32 The extrusion is then transferred to a cooling area, and then a stretcher. Stretching straightens the extrusion and performs "work hardening" (molecular realignment which gives the aluminium increased hardness and improved strength). Stretching does not alter the shape of the extrusion other than to ensure straightness. After the stretching process, the extrusion is between approximately 18 metres and 30 metres long, between approximately 153.88mm and 156.12mm wide and between approximately 1.35mm and 1.65mm thick. 33 After stretching has been completed, the extrusion is transferred to a saw table and cut to specific lengths. After the cutting process, the extrusion is between approximately 5500mm and 8000mm long, between approximately 153.88mm and 156.12mm wide and between approximately 1.35mm and 1.65mm thick. 34 After the cutting process, the extrusion is transferred to an aging oven. The aluminium extrusion is then transferred to the powder coating plant to add the colour. The extrusion is hung on a conveyor line and sprayed with chemicals to ensure a clean etched surface. Hexavalent Chromate is then applied to protect the extrusion against oxidisation. 35 The extrusion then passes through a powder coating application booth where the coloured polyester powder is sprayed onto the extrusion, then cured in an oven at 200˚ C. 36 When the powder coating process is complete, the extrusion is cut to the desired length and packaged for transportation. The final dimensions of the aluminium extrusion are: length - between approximately 2300mm and 6500mm; width - between approximately 153.88mm and 156.12mm; thickness - between approximately 1.35mm and 1.65mm.

Contention 37 The respondent contends in its amended defence that the Oxworks Plinth is not "formed from sheet material" on the basis that the "aluminium used in the plinth is not in sheet form before, during, or after the extrusion process".

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.

Construing the Patent 75 As the Full Court recently restated in Davies v Lazer Safe Pty Ltd [2019] FCAFC 65 at [42]-[45], although the claims are to be construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification. While it is legitimate to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses taken from other parts of the specification. The Full Court referred to Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; 106 CLR 588 at 610. 76 The importance of the actual language used in the claim to define the invention was emphasised by another Full Court in Fresenius Medical Care Australia Pty Limited v Gambro Pty Limited [2005] FCAFC 220; 224 ALR 168 at [94]: The whole of the specification must be read in order to construe the claim. So much is not in dispute. However, that does not mean that the words of the claim are to be ignored. Nor can it be ignored that the patentee has chosen not to include in a claim matters, integers or aspects of the invention that have been referred to in the body of the specification. This accords with the well-accepted principle enunciated in Welch Perrin at 610 that glosses drawn from the body of the specification cannot be used to narrow or expand the boundaries of the monopoly as fixed by the words of a claim. 77 Neither the parties nor the experts suggested that the words had technical, scientific or special meanings. I find that the words did not have such meanings. With respect, I found the evidence of the experts, Mr Hunter and Dr Stark, otherwise of little assistance in construing the claims in the Patent: see however [82] below. 78 The subject matter of the invention, which provides the general context, is fence elements known as plinths. 79 The question of construction of the relevant claims is the meaning, in context, of "sheet material" when used in claim 1. 80 It seems to me to be clear that the word "sheet", of itself, refers to certain dimensions of material, being broad and relatively thin. The word does not necessarily convey that the material is flat. It may have corrugations or profiles. The word "sheet" should be taken to mean the same in claim 1 each time it is used. It is used twice in that claim. The second time the word "sheet" is used in claim 1, in the phrase "being profiled to incorporate stiffening formations that extend along the sheet", on any view the product meant by the word is not flat but has a profile. 81 My conclusion as to the ordinary meaning of the word in context coincides with the expert evidence that the word "sheet" in the building industry may be used to refer to profiled material, such as corrugated sheeting. I do not accept the evidence of Dr Stark to the effect that it is ordinary usage, or the common usage in the industry, to refer to a plinth "formed from a profiled metal sheet", or what is depicted in Figure 2 of the specification (reproduced at [11] above), as a "beam". This usage by Dr Stark, in my opinion, was idiosyncratic as the product was not necessarily used to bear a load and, further, the word "beam" is not used in the Patent. Dr Stark did not explain why the product he described as a "beam", which description he accepted involved consideration of the product's function, could not also be described as "sheet material" or a "sheet", which in my opinion are descriptions of a product's physical characteristics. 82 The word "sheet", in its ordinary meaning, does not convey the material of which it is made. Similarly, "sheet material" may or may not be metal. 83 Turning to the context, claim 1 is a description of a product being a fence plinth. This is an element of a fence. The claim next states what physical characteristics the claimed product has. The product, a fence plinth, is formed from, which in my opinion is to say made from, a certain description of sheet material. In my opinion, that description is that the sheet material has "spaced apart and edged margins" and is "profiled to incorporate stiffening formations that extend along the sheet between the end edge margins." 84 A point of significance is that claim 1 is a description of a product rather than the specification of a process or the description of an activity such as profiling or shaping. 85 I do not accept, therefore, that claim 1 requires that the fence plinth start as a flat sheet. I do not accept the respondent's submission to the contrary. 86 The remaining claims do not shed any further light on the meaning of the relevant terms as used in claim 1. 87 Fence plinths are specifically claimed by dependent claims 2-14. 88 Claims 2 and 3, claim a fence plinth as in claim 1 wherein the sheet is sheet metal (claim 2) or pre-painted galvanized sheet metal (claim 3), takes the matter no further as it means only, for each claim, that the sheet is a particular material. They tend to confirm that, consistently with the ordinary meanings of "sheet" and "sheet material", see [83] above, those terms do not necessarily convey that the material of which they are made is metal. 89 Claim 4 relates only to the stiffening formations and in particular to the cross-sectional profile of the plinth. 90 Claims 5, 6 and 7 again relate only to the stiffening formations. 91 Claim 8 describes the profile to the plinth. Although it uses the expression "wherein the plinth is profiled" I do not construe that to mean the activity of profiling but, as I have said, a description of the profile of the plinth. 92 Claims 9 and 10 describe the sheet material and in particular the edge margins. 93 Claims 11 and 12 again describe the profile of the sheet. Although these claims use the expression "wherein the sheet is profiled" or "wherein the sheet material is profiled", again I do not construe that to mean the activity of profiling but the description of the profile of the sheet. 94 Claim 13 concerns the ratio of the height of the plinth to the length of the plinth and the range of that ratio. It takes the matter no further. 95 Claim 14 concerns a sheet that is bent to form the stiffening formations with the curvature to have a particular radius. In my opinion "bent" in this claim is used adjectivally to mean "not flat", such that the phrase "sheet that is bent" describes a sheet which is not flat rather than a sheet which, having been flat, has been subsequently bent. In any event, I would not read down claim 1 by reference to a claim dependent on it which describes but one embodiment of the claimed invention. 96 I turn to the fence claims, claims 15-21. 97 Claim 15 describes a fence and, relevantly, the location and reach of "a plinth according to any preceding claim". It takes the present issue no further. 98 Claim 16 claims, in relation to a fence as claimed in claim 15, a description of the sheet from which the plinth is formed. Although it refers to "the sheet … is profiled", as before, I do not construe that to mean the activity of profiling but that the sheet has a profile of a particular description. 99 Claim 17 claims, in relation to a fence as claimed in claim 16, the secure location of the end edge margins. It takes the present issue no further. 100 Claim 18 claims, in relation to a fence as claimed in any one of the claims 15 to 17, a fence where it comprises a plurality of the plinths and the overlapping relationship of those plinths. It takes the present issue no further. 101 Claim 19, in relation to a fence as claimed in claim 18, describes one side margin of a plinth nesting with the other side margin of an adjacent plinth at an overlapping region. It takes the present issue no further. 102 Claim 20 describes a fence including, relevantly, a plinth located in a particular place, it "being formed form sheet material having" particular characteristics and "being profiled" in a particular way for a particular purpose. Claim 20 does not depend on claim 1, however I would read the phrases "being profiled" in the same manner as I have indicated in relation to claim 1 and, in particular, do not consider that it bears some other meaning which may affect the proper construction of claim 1. 103 Claims 21 describes a fence as claimed in claim 21, wherein the sheet material is "profiled" in a particular way. I would again construe this as describing the profile of the sheet material. 104 Claim 22, unlike claims 1-21, claims a method of "forming fence plinths". Consistently with it claiming a method and not a product it unambiguously uses the verbs "forming" and "form", in contrast to the term "formed" in claim 1. 105 It follows that I do not accept the following contentions of the respondent concerning the proper construction of the claims. 106 I do not accept the respondent's contention that the sheet must be initially flat and thereafter bent or folded to form the stiffening formations. I do not accept the respondent's contention that "formed from" in claim 1 means "shaped from a starting point of" sheet material nor the related contention that this integer described a plinth that was shaped from the starting point of a substantially flat material. 107 I do not accept the respondent's contention that its construction of claim 1 is reinforced by the claim describing the sheet material "being profiled to incorporate stiffening formations" on the basis that that this integer described introducing into the sheet a shape (formation) that will stiffen the sheet. As I have said, the word "sheet" should mean the same both times it occurs in claim 1.

The respondent's alternative submission 108 I turn then to consider the respondent's alternative submission 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. 109 In my opinion, contrary to the respondent's submission, this contention is not truly an alternative. This is because it relies on the phrase "formed from" as describing something done to "sheet material" to produce the fence plinth. However, I have rejected that meaning as a matter of construction by my findings that in claim 1 "sheet material" does not mean that the material is required to be flat and "being profiled" is a description and not something required to be done to a flat sheet. As I have said at [84] above, "formed from", in that context, merely describes what the plinth is made out of. 110 I therefore conclude that the Oxworks Plinth is relevantly formed from, in the sense of made out of, sheet material. The dimensions of the aluminium extrusion out of which the Oxworks plinth is made, at least after it is cut as described at [37] above, do not mean that that extrusion does not fall within the ordinary meaning of "sheet material" as used in claim 1. I place no weight on the evidence of Dr Stark to the effect that he had not heard of the product coming off an extrusion press being described as a sheet or as anything other than an extrusion. He did not explain why an extrusion, if it had the right physical characteristics, could not be also accurately described as a sheet. To the contrary, his later answer was to the effect that if what was extruded was a long, flat and very thin piece of aluminium then that perhaps could be called a sheet in that particular case, although he said it would be termed a flat. I accept the evidence of Mr Hunter who described the material coming out of the extrusion dye as a sheet or profiled metal sheet. I find that the extrusion, at least as cut, does fall within the ordinary meaning of "sheet material".

Infringement 111 In my opinion, it follows from my conclusions as to the construction of the Patent and my rejection of the respondent's alternative submission that the Oxworks plinth did infringe the Patent. It is a fence plinth formed from sheet material having spaced apart and edged margins and being profiled to incorporate stiffening formations that extend along the sheet between the end edge margins. That was described by the respondent in submissions as the "key issue" and there was no contention on the part of the respondent that if it failed on its construction arguments and on its alternative submission nevertheless its product did not infringe the Patent.

Additional damages 112 This present question deals with entitlement to additional damages rather than with their calculation. It is in the context that damages for infringement have not been assessed. 113 In H Lundbeck A/S v Sandoz Pty Ltd [2018] FCA 1797; 137 IPR 408 at [353]-[355], Jagot J summarised, non-exhaustively, nine principles applicable to additional damages. They included that "flagrant conduct includes that which is deliberate and calculated in disregard of the injured party's rights, or a cynical pursuit of benefit…". Her Honour distinguished between an infringement which was calculated as opposed to an infringement which was flagrant. 114 In Zetco, at [267], Bennett J said that more than copying was required to enliven s 122(1A), although deliberate copying may be relevant to a decision whether to award additional damages. 115 A review of the facts in the present matter shows, and I find, that the respondent was twice provided with advertising material, including the plinth brochure. I refer in this respect to the evidence of Ms Susic, who was not cross-examined. I find it is probable that the respondent was aware of the contents of the brochure. The brochure expressly referred to the applicant's Patent, by number, in juxtaposition to the applicant's plinth. 116 The applicant's website as at 25 February 2017 expressly referred to the Patent in juxtaposition to the applicant's plinth. The position was the same for the applicant's website as at 1 March 2017. 117 I also find it probable that Mr Hosking had looked at the respondent's website, including the references to the Patent, and on that basis I find it probable that Mr Hosking knew about the Patent. At the time Mr Hosking sent to Rising Star a link to the applicant's website in December 2015, the applicant's website referred to the Patent in respect of the plinth product, albeit on what appears to be a different page to the page to which the link was addressed. I find that the applicant's brochure referring to the plinth and the fact that it was patented (giving the patent number) was also on the website at the relevant time. I am satisfied that Mr Hosking knew of at least one of those sources of information on the applicant's website that referred to the Patent. 118 I do not give any weight to that part of Mr Hosking's 29 May 2017 email in which he said that he was not made aware that Oxworks held a patent in relation to the fence plinth. 119 Mr Hosking did not give evidence, although he was in a position to do so, to displace or qualify the inference I draw from what was apparent from the Oxworks website and my finding that he had looked at a relevant part of that website. 120 The respondent purchased considerable quantities of the plinths in question and other fencing products from the applicant during the period from 2006 until early 2017. As at 29 May 2017, the date of Mr Hosking's email to the solicitors for the applicant, Oxworks held inventory of the Gram's plinth. 121 I find and take into account that the respondent did copy the applicant's product the subject of the Patent. I find that it constituted copying even though the product was not of the same thickness and was made of aluminium and by an extrusion process. The respondent's product was copied in its shape and dimensions, which were obtained from the specification pages in the applicant's website which were sent by Mr Hosking to Rising Star as a link when he also asked Rising Star to make the product in aluminium. I find that the copying was deliberate. I find that Mr Hosking, or another employee or officer of the respondent, approved each stage of the development of the respondent's plinth. 122 I also find and take into account that the respondent received a cease and desist letter referring to the Patent and its infringement of it on 9 May 2017 but that the respondent continued to sell the infringing plinth even after that letter. This continued until July 2018, on the evidence of Mr Thornton. There is no evidence that the respondent obtained legal advice as to whether or not it was infringing the applicant's Patent. 123 These circumstances taken in combination, in my opinion, entitle the applicant to additional damages under s 122(1A). There is an additional element to the infringing conduct to warrant additional damages. In answering the separate questions, I do not see it is appropriate to go further by reference to the separate paragraphs of that provision.

Unjustified threats 124 In light of my finding that the respondent has infringed the Patent, the applicant has not made unjustified threats.

Conclusion and orders 125 I shall direct the parties to bring in an agreed form of order giving effect to these reasons for further conduct of the matter. This should be done within 14 days of the date of these reasons. If no agreement is reached, within 28 days of the date of these reasons the parties are to file and serve the orders for which they contend, any evidence, and short written submissions. I certify that the preceding one hundred and twenty-six (126) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Robertson.