Kutti Bay Investments Pty Ltd v Rattlejack Innovations Pty Ltd [2026] FCA 422

1. Subject to further order, the applicant is to pay the respondents' costs of and incidental to the Abuse Applications, to be taxed in absence of an agreement.
2. The matter be listed for a further case management hearing on a date to be fixed.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

1. Kutti Bay Investments Pty Ltd, previously known as Jusand Nominees Pty Ltd, is the registered owner of the following three standard patents:

· Australian Patent No. 2015255248 entitled "Safety System and Method for Protecting Against a Hazard of Drill Rod Failure in a Drilled Rock Bore" (the 248 Patent);

· Australian Patent No. 2021200376 entitled "Safety System and Method for Protecting Against a Hazard of Drill Rod Failure in a Drilled Rock Bore" (the 376 Patent); and

· Australian Patent No. 2021215238 entitled "Safety System and Method for Protecting Against a Hazard of Drill Rod Failure in a Drilled Rock Bore" (the 238 Patent),

1. Kutti Bay applied to amend the Patents pursuant to s 105(1) of the Patents Act 1990 (Cth) (the Amendment Application), inter alia, to correct what it considers to be obvious mistakes in the specifications of the Patents.
2. Kutti Bay asserts the Patents against Rattlejack Innovations Pty Ltd, Pan Australis Pty Ltd, Murray Engineering Pty Ltd and Leigh Maurice Sutton (together, the Respondents), alleging that the Respondents' Safety Spear product infringes certain of the claims of the Patents. Rattlejack Innovations, Pan Australis and Mr Sutton are commonly represented and have appeared jointly in this proceeding. For ease of reference, those parties shall be referred to collectively as Rattlejack.
3. The Respondents successfully defended earlier infringement proceedings brought by Jusand in relation to three innovation patents (the Innovation Patents) claiming priority from the same priority document as the Patents (the Jusand Proceedings). These reasons assume a familiarity with my decision in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540 (the Trial Decision or TJ) and the decision of the Full Court of this Court in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (the Appeal Decision or AJ), in which the Trial Decision was upheld. On 11 April 2024, Jusand was unsuccessful in its application for special leave to the High Court of Australia to appeal the Appeal Decision: Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd & Ors [2024] HCASL 105.
4. Although the present proceeding was commenced on 13 December 2024, it remains at an early stage. While Rattlejack and Murray have both indicated that they will file defences denying the alleged infringement, they have not yet done so, nor has any cross claim been filed. As such, the matter currently finds itself at a juncture where pleadings are still open and issues in dispute have not crystalised.
5. Kutti Bay notes that if the Amendment Application is refused in whole, it will only assert in this proceeding the unamended claims of the 376 Patent and 238 Patent and will not assert the unamended claims of the 248 Patent.
6. Rattlejack and Murray have each filed an interlocutory application (Applications) in largely the same terms. The thrust of those Applications is that they seek declarations that the Amendment Application and the expert evidence intended to be relied on for the purpose of that application, and the case more generally, give rise to an abuse of process, issue estoppel and non-admissibility of evidence.
7. At the instigation of the Respondents, the Court ordered that the Applications should be heard and determined before the Amendment Application and set it down for a two-day hearing on 9 and 10 February 2026.
8. At the outset of the hearing, the Respondents announced that they no longer pressed the issue estoppel aspect of their case, however they sought to reserve their rights to raise issue estoppel in any appeal. After the luncheon adjournment on the second day of the hearing, the Respondents further announced that they no longer pressed their Anshun estoppel case (arising from a doctrine which takes its name from Port of Melbourne Authority v Anshun Pty Ltd [1981] HCA 45; (1981) 147 CLR 589). That left only the abuse of process contention. For the balance of these reasons, I will refer to the Respondents' respective Applications as the "Abuse Application".
9. For the reasons that follow, I will uphold the Abuse Application in part and make a declaration in the following terms:

The applicant's interlocutory application dated 25 April 2026 which seeks to amend the patents in suit, insofar as it seeks to "overcome" the Court's findings in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540 and Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178, is an abuse of process.

1. It is convenient to set out, in some detail, the key aspects of the Jusand Proceedings, as well as the findings made at first instance and on appeal.

1. The Innovation Patents in issue in those proceedings, together with the Patents in suit in the present matter, each claim priority from the 248 Patent. Of the Innovation Patents (as defined at TJ [1]):

(a) the 556 Patent is a divisional child of the 248 Patent;

(b) the 163 Patent is a divisional grandchild of the 248 Patent; and

(c) the 956 is a divisional grandchild of the 248 Patent.

1. Both the 376 and 238 Patents are divisional children of the 248 Patent.
2. The Jusand Proceedings were conducted on an expedited basis. The infringement proceedings were issued on 9 June 2021, and the hearing took place over 27, 28 and 30 September 2021. Rattlejack and Murray each brought cross-claims seeking revocation of the Innovation Patents. At trial, the 556 Patent was used as the exemplar patent, given the similarities between the Innovation Patents: TJ [38].
3. The parties presented expert evidence in support of their respective cases. Jusand relied on Mr Davison, a mining engineer (TJ [20]-[26]), and the Respondents relied on Dr Peter Fuller, a geotechnical engineer with a PhD in Materials Engineering (TJ [27]-[32]). Their respective experience and qualifications are set out in the Trial Decision. Dr Fuller and Mr Davison prepared a joint report and gave evidence concurrently, so that each was able to comment directly on the evidence of the other.
4. Dr Fuller and Mr Davison each reviewed the Innovation Patents and gave extensive evidence about the common general knowledge, what they considered was disclosed in the specifications and the nature of the invention claimed. Notably, neither expert gave evidence of any inconsistency, ambiguity, error or mistake that they identified in those specifications.
5. It was common ground that none of the Patents had been granted prior to the completion of the trial in the Jusand Proceeding.
6. On 13 August 2021, Rattlejack Innovations filed a Notice of Opposition to the grant of an application that ultimately became the 248 Patent. That opposition was subsequently withdrawn on 14 October 2021, and the 248 Patent was granted shortly thereafter, on 21 October 2021.
7. On 26 November 2021, Kutti Bay filed Australian Patent Application No. 2021273654 (the 654 Application), being a divisional child of the 248 Patent. As originally filed, the 654 Application included at [0032] a statement concerning the common general knowledge of the skilled person in relation to suitable materials for the invention. That statement is, in substance, the same as that now sought to be introduced into the Patents by way of the proposed amendments (the CGK statement).
8. The 376 Patent was granted on 12 May 2022, and the 238 Patent on 15 June 2023. The 654 Application was accepted on 6 September 2024, however, following a re-examination requested by FB Rice (the patent attorneys for Rattlejack Innovations) on 16 October 2024, was refused by the Commissioner of Patents on 13 May 2025. The 654 Application does not form part of the present proceeding.

1. On 16 May 2022, I delivered reasons in the Jusand Proceedings, in which I found that the asserted claims of the Innovation Patents were invalid for lack of clear and complete disclosure and lack of support, and that the Respondents' safety spear products did not infringe those claims. As stated at [4] above, this decision was upheld by the Full Court on 13 November 2023 in the Appeal Decision.
2. In the Trial Decision, I construed the integers in dispute, commencing with "anchor member": at TJ [92]. The experts agreed that the term did not have a technical or special meaning. I construed the integers in the context of the whole specification, viewed through the lens of the person skilled in the art, clothed with evidence from the two expert witnesses.
3. At PJ [121], I found "...that the skilled addressee would understand "anchor member" in the claim to mean a component of the safety system that once fixed in the bore hole, acts as an anchor to stop the movement of the safety system relative to the rock when impacted by a falling broken drill rod section". I went on further to hold "...that the claims encompassed a de minimis movement of the anchor member in the order of a few millimetres (1-5mm)...", and, contrary to Jusand's contention, did not encompass an anchor member that "...moves substantially (centimetres rather than millimetres) down the bore hole before coming to a stop": see also TJ [120]-[150].
4. Further, I held at TJ [122] that "[a] construction of "anchor" which contemplates no movement, other than de minimis movement, [was] consistent with the description of the invention in the specification of the Patents": see also TJ [125]-[131]. Moreover, this construction was also consistent with the evidence of both experts (see TJ [132]-[144], and in particular at TJ [138]-[141] which focusses on the evidence of Jusand's expert) and the Macquarie Dictionary definition of "anchor" (see TJ [145]).
5. The next integer in issue was "proximal end region of the bore adjacent to a rock-face".
6. At TJ [178], I observed that:

Figure 3 of the Patent shows the installation of an embodiment of the safety system with its base at the rock-face. I agree with Rattlejack that the safety system of the invention as illustrated in Figure 3 is installed "flush" with the rock-face. I also agree that the safety system of the invention must work in the installed position illustrated in Figure 3. However, the claims are not limited to the embodiments and the specification describes friable rock at the bore entry point and the need to insert the safety system into more competent rock. In that situation the base of the safety system will not be, and nor do the claims require it to be, flush or substantially flush with the rock-face.

1. I therefore declined to limit the construction of the claim as requiring the lower edge of the safety spear be "flush" or substantially flush with the rock-face. Rather, "I consider[ed] that the skilled reader would understand the totality of the phrase to mean that the anchor member is configured to be fixed at the collar end of the bore, at or near the rock-face": TJ [181]. On that construction, I further explained at TJ [181] that:

...The safety system would be located entirely within the rock part of the bore, with no part extending out into the shotcrete or mine chamber. This would encompass the anchor member being placed a short distance into the bore to be situated beyond the friable rock (if any) so as to be fixed in the competent rock.

1. As to the disclosure requirement in s 40(2)(a) of the Patents Act, I found at TJ [451]:

...that the claims of the Patents are to a product, a safety system (or use of a safety system) that comprises an anchor member and an impact reduction member for stopping broken drill bits falling out of a bore. The claims of the Patents (other than claim 5 of the 556 Patent) are not limited to the safety system being made of any particular material. Claim 5 of the 556 Patent requires the impact reduction member to be made of an "impact dampening material". With that exception, the claims of the Patents encompass a safety system made out of any material.

However, the Patents provide no guidance to the person skilled in the art seeking to perform the invention by making a safety system out of a material other than steel. In order to make a safety system out of plastic (or another material other than steel) the skilled person would need to undertake a process of prolonged research, enquiry and experiment. It would not be the work of a non-inventive skilled person, requiring an exercise of inventive skill or ingenuity or undue effort.

1. In the context of finding that the claim support requirement of s 40(3) was not satisfied, I found at TJ [505]-[506] that:

The claims of the Patents are not limited to any particular material. The broad scope of the claims covers a safety system with an anchor member and impact reduction member made from any material. Neither the Patents, nor the common general knowledge provide guidance as to how to make the safety system of the invention out of a material other than steel, such as plastic.

The evidence does not support the existence of a general principle to support the broad scope of the claims of the Patents. The evidence, as discussed above, establishes that the person skilled in the art, armed with the disclosure in the Patents and the common general knowledge, is not able to make, for example, an embodiment of the claimed safety system entirely out plastic without undue burden or the application of inventive skill or ingenuity. The claims of the Patents extend far beyond the technical contribution of the Patents and are not supported by the disclosure in the specifications.

The claimed invention exceeds the technical contribution the Patents make to the art, which is (at best) a safety system made out of steel, alternatively with the impact reduction member made out of an unspecified polymer foam. The Patents simply give no support for the invention as claimed without limit as to materials.

1. These findings were upheld on appeal, in particular in relation to "anchor member" (at AJ [17]-[79]), and "proximal end region of the bore" (at AJ [80]-[91]). I shall refer to these findings as the "Key Findings".
2. Although three Innovation Patents were in dispute at trial, by the time of the appeal, the debate had narrowed to one patent - the 556 Patent - and, in particular, claim 1 of that patent.
3. It is illustrative to set out the following excerpts from the Appeal Decision, which were given by Perram J (and with whom the other members of the Full Court agreed):

The Appellant accepts that the anchor member depicted in Figures 2 and 3 does not move by more than a de minimis amount when struck by the falling drill rod section. However, it submits that this is not so in case of the invention depicted in Figure 4...

It is not in dispute that on and shortly after impact, the anchor member in the embodiments depicted in Figures 2 and 3 would move by no more than a few millimetres...

...However, neither Mr Davison's nor Dr Fuller's evidence to this effect is evidence that the anchor member in Claim 1 is intended to retard the motion of the falling drill bit by travelling down the bore hole.

The highest one can put the Appellant's case is its submission that the patent contains no express direction that the anchor member cannot move. However, as the trial judge was astute to observe, it just as equally lacks any suggestion that the anchor member should move: J [125]. And, in relation to the Figure 4 embodiment, the references to the 'friction fit or interference fit' of the anchor member are slim pickings indeed for a contention that the anchor member was intended to operate by travelling down the bore hole.

Thus there is nothing in the Appellant's submission that the person skilled in the art would understand that the anchor member described in the Figure 4 embodiment would decelerate a falling drill rod section as the anchor member moved downwardly against the frictional resistance of the bore wall. It follows that the Appellant is not correct to submit that the Figure 4 embodiment taught powerfully that the anchor member could travel down the bore. To the contrary, as the Respondents correctly submitted, this is precisely what it does not show.

Based on those findings of fact, the trial judge concluded that the patent was invalid due to want of sufficiency and support. Her Honour reasoned that the Safety System, as claimed, related to an anchor member and impact reduction member made from a range of materials which the skilled addressee would understand included steel and other materials including plastics whereas the only working versions of the invention disclosed in the specification were for the embodiment in Figures 2 and 3 and the Figure 4 embodiment which could both be made from steel. The selection of an appropriate plastic and then the design of the Safety System once that plastic was selected would involve inventiveness and undue burden.

However, the inventive and burdensome task of using other, possibly superior, materials lies in the inventive future. The Appellant is not entitled to prevent others from using its insight to create inventions from materials other than steel when the only invention it has actually disclosed is one made from steel. If the selection and design of the Safety System in these other materials did not require inventive skill or undue burden, the answer would be different. However the short of the matter is that these endeavours do involve inventive skill and undue burden. In effect, therefore, this case is indistinguishable from Regeneron.

1. The Patents in suit in the present proceedings are in substantially the same terms as each other. The unamended Patents are also in materially the same terms as the Innovation Patents of the earlier proceeding. In fact, the 248 Patent is the priority document for the Innovation Patents.
2. By way of illustration, it is convenient to use claim 1 of the 248 Patent in its unamended form as an exemplar, with mark-ups to indicate the differences between it and claim 1 of the 556 Patent (which was treated as the exemplar patent in the Jusand Proceedings):

A safety system for protecting against a hazard of a drill rod failure in a drilled rock bore above horizontal, and especially a hazard posed by a broken drill rod section within the bore, comprising:

an anchor member configured to be fixed in a proximal end region of the bore adjacent to a rock-face; and

an impact reduction member for reducing an impact of the broken drill rod section striking the anchor member in the proximal end region of the bore, wherein the impact reduction member is configured to be located in the proximal end region of the drilled bore and to extend within the bore above the anchor member to be impacted or struck directly by the broken drill rod section falling within the bore.

1. The schedule to Kutti Bay's amended written submissions on the Abuse Applications dated 17 December 2025 sets out a mark-up of claim 1 of the 238 Patent (unamended) and claim 1 of the 556 Patent and claim 1 of the 376 Patent (unamended) and claim 1 of the 556 Patent. Both claims as unamended include an "anchor member configured to be fixed in a proximal end region of the bore", which is proposed to be amended as follows:

(a) in the case of the 238 Patent, the proposed amendment is:

...an anchor member configured to be fixed in a proximal end region of the bore adjacent to a rock-face to at least partially block or obscure the drilled bore...

(b) and, in the case of the 376 Patent, the proposed amendment is:

...an anchor member configured to enable the safety system to be fixed in a within the proximal end region of the bore adjacent to a rock-face; and below the drill rod section...

1. On 19 November 2024, IP Australia undertook a re-examination of all the patents in the same patent family as the Innovation Patents under s 97(2) of the Patents Act, including the Patents. The examiner considered that each of the claims lacked disclosure/support, for the same reasons as those identified in the Trial Decision and the Appeal Decision. Relevantly, the examiner observed that the conclusions in the Trial Decision were "...equally applicable to the present claims" and therefore the requirements of ss 40(2)(a) and (3) of the Patents Act were not satisfied.
2. Following receipt of the adverse report, Kutti Bay considered that it was "required to take action" to prevent revocation of the Patents and approximately 20 days later, it commenced the present proceedings. Kutti Bay submitted that the amendment process under s 105 was more streamlined and efficient than seeking to amend in the Australian Patent Office pursuant to s 104. Its rationale was that any s 104 application was likely to be opposed and the decision was likely to result is an appeal to this Court.
3. On 25 April 2025, Kutti Bay filed the Amendment Application, supported by evidence from three new experts, which I will elaborate upon further below.
4. I will now turn to the Amendment Application, which is the subject of the Abuse Applications.

1. The Respondents do not object to the fact of an application to amend the Patents per se. Rather, their objection is directed to the form of the present Amendment Application, which they contend constitutes an abuse of process. The alleged abuse lies in Kutti Bay seeking to "overcome" the Trial and Appeal Decisions.
2. First, it is said that the Amendment Application seeks to re-agitate issues of construction issues determined by the Full Court. Second, it is contended that the Amendment Application seeks to invoke the Court's statutory power in a manner that would undermine its earlier decisions. On that basis, the Respondents submit that permitting the Amendment Application to proceed would bring the administration of justice into disrepute and occasion prejudice to them, including by exposing them to being "twice vexed".
3. More broadly, the Respondents submit that, in substance, the Amendment Application seeks to invoke s 105(1) in a way that would circumvent or erode the Court's earlier conclusions. Properly characterised, the Amendment Application is said to amount to a collateral challenge to the Key Findings. The Respondents further contend that the Amendment Application is an abuse of process because it creates a material risk of inconsistent findings.

1. Kutti Bay applies to make numerous amendments to the Patents. For present purposes, the Respondents' objection focusses on the following proposed amendments that would:

(a) delete the word "end" from the description of the location at which the anchor/plug member is fitted; or replace the word "end" with "region". These are grouped in Kutti Bay's evidence and Amendment Application as the so-called End References;

(b) delete descriptions of the location of the proximal [end] region of the bore as being "at" or "adjacent to" the rock face, "as distinct from the remote or distal region of the bore". These are the so-called Adjacent References; and

(c) substitute Figure 3, which presently depicts a safety system installed at the collar of the borehole, with a depiction of a safety system installed some distance into the borehole.

1. Kutti Bay also seeks to insert into each specification the CGK Statement pursuant to s 102(2), and to make minor corrections to spelling and labelling pursuant to s 102(3). The Respondents do not object to the amendments to correct spelling errors.
2. However, the Respondents do object to the insertion of the CGK Statement to the Patents. They say that if the amendment is broadening (on the assumed premise that the CGK Statement is an attempt to assist Kutti Bay in relation to enablement), it is impermissible under s 102(2). Alternatively, if it is truly non broadening, it serves no substantive utility and would therefore be futile.
3. Claim 1 of the 248 Patent, if amended, would read:

A safety system for protecting against a hazard of a drill rod failure in a drilled rock bore above horizontal, and especially a hazard posed by a broken drill rod section within the bore, comprising:

an anchor member configured to be fixed in a friction fit or interference fit in a proximal end region of the bore adjacent to a rock-face; and

an impact reduction member for reducing an impact of the drill rod section striking the anchor member in the proximal end region of the bore, wherein the impact reduction member is configured to be located in the proximal end region of the drilled bore and to extend within the bore above the anchor member.

1. The Respondents submit that the proposed amendments seek to alter the construction of the "anchor member" so as to circumvent the finding in the Trial Decision. They explain that this is because if the anchor member did not need be fixed in the proximal end region of the bore "adjacent to a rock face" (for example, as depicted in unamended Figure 3), then the anchor member would, according to Kutti Bay, be permitted to move a non-de minimis distance down the bore hole following impact by a drill rod.

1. In order to understand the Respondents' abuse case, it is necessary to have an appreciation of how Kutti Bay puts its application to amend pursuant to s 102(3) of the Patents Act on the basis of correcting the said "obvious mistakes".
2. Kutti Bay relies on the evidence from three new expert witnesses, none of whom gave evidence in the Jusand Proceedings. The first of Kutti Bay's new experts, Ernesto Villaescusa, is a Professor in the Rock Mechanics Group within the Faculty of Science and Engineering at Curtin University, WA School of Mines; the second is Dr David Tawfik, a materials and forensic engineer; and the third is Mr John Tucker, a geologist.
3. Each expert began their affidavit by setting out their understanding of the common general knowledge and terms widely used in the field of geotechnical engineering relating to underground mining, including sub-level stoping which routinely uses long-bore drilling, the use of reinforcement elements, systems and schemes, and dynamic testing of ground support (which they each define as "the Field"). The Field is different to the Field of the Invention described in the Patents (and the Innovation Patents (see TJ [39])), which states the following:

The present invention relates to a safety system for protecting against a hazard of drill rod failure in a drilled rock bore extending above horizontal, and especially a hazard posed by a broken drill rod section lodged within a drilled rock bore...

1. As the experts are then instructed differently, I will deal with the evidence of each expert in turn, starting with Professor Villaescusa.
2. Professor Villaescusa was asked to read the Patents and explain what he understood to be the invention disclosed and claimed in each of the Patents, "...having regard to what is disclosed in the Patents and the 'common general knowledge' in the Field as at the Priority Date". It is notable that despite small changes between the specifications and claims of the Patents, Professor Villaescusa considers that all three Patents disclose and claim the same invention.
3. Professor Villaescusa was provided with a list of assumptions by Kutti Bay's lawyers which took the form of a table of setting out "[e]nergy calculation assumptions". Armed with the list of assumptions, Professor Villaescusa engaged in an extensive discussion including "calculations of potential energy", velocity, and "dynamic force calculations". Ultimately, Professor Villaescusa states his expectation that the safety system claimed in the Patents will displace "some distance" within the bore hole. Based on Professor Villaecusa's calculations, "some distance" was said to be "100mm - 200mm". That is quite different to the de minimis (1-5mm) movement of the Key Findings, upheld by the Full Court.
4. The Respondents submit that Professor Villaescusa's evidence that the safety system as described in Figures 2 and 3 can move some distance is directly contrary to Jusand's concession on appeal that the anchor member in the embodiment depicted in Figures 2 and 3 would move by no more than a few millimetres (see [34(b)] above), and the construction adopted by the Court.
5. Next, Professor Villaescusa was instructed to assume the following:
   1. the references, in the Patents, to an anchor member or plug member being introduced, located or fixed in the "proximal end" or "proximal end region" of the bore ("End" References);
   2. the references, in the Patents, to an anchor member or plug member being introduced, located or fixed "desirably adjacent the rock face F in a friction fit", "at the rock face", "adjacent or close to the rock face F of the cavity C at which the drilling takes place", "adjacent the rock face", "adjacent or near an outer rock face", in "the end region of the bore proximate or adjacent the rock face at which drilling takes place, as distinct from the remote or distal end region of the bore", "adjacent or proximate a rock face F", "adjacent to or in the vicinity of a rock face" or "adjacent or near a rock face" ("Adjacent" References); and
   3. the drawing, in Figure 3, of a schematic partial perspective view of the safety system of Figure 2 shown in an installed state in a proximal end region of a bore (Figure 3);

should be treated as teaching and disclosing that the anchor member or plug member of the invention (as claimed in each of the Patents):

1. was not intended, when struck by a falling drill rod section, to travel down the borehole, but rather, was intended to remain fixed in place;

2. cannot move by more than a de minimis amount of between 1mm - 5mm; and

3. had to be at or near the rock face and could be located a short distance into the bore,

(collectively, the Assumptions)...

1. In effect, the Assumptions are how the Court construed the claims on the basis of the specification as a whole.
2. Professor Villaescusa was then instructed to indicate his response to the "End" References, "Adjacent" References and Figure 3, on the basis that they should be treated as teaching and disclosing the Assumptions. When he read the Patents, Professor Villaescusa's response was that he did not understand the "End" References, "Adjacent" References and Figure 3 to mean that the anchor member or plug member of the invention could not move more than 1-5mm. Rather, his understanding "...was that the safety system described in the Patents (including the anchor member or plug member) would likely displace (probably between 100mm to 200mm)".
3. Professor Villaescusa states that:

...if I am required to make the Assumptions, my immediate reaction is that the "End" References, "Adjacent" References and Figure 3 are incorrect.

Based on the calculations that I have undertaken (and using reasonable assumptions), itis unlikely that there would be a scenario where the safety system as a whole, including the anchor member or plug member, does not move down the borehole.

1. It is clear from Professor Villaescusa's evidence that he does not read the Patents to describe and claim the same invention that the Court found to be disclosed and claimed in the Innovation Patents. A significant difference being that in Professor Villaescusa's opinion, the safety spear would likely be displaced far more than a de minimis amount. The scenario where the safety system did not move down the bore hole (i.e., de minimis amount of movement) was unlikely.
2. Professor Villaescusa was then asked to indicate whether it was apparent to him, having regard only to what is disclosed in the Patents and the "common general knowledge" in the Field - I interpolate that this is the enlarged common general knowledge as identified by him earlier in his affidavit, and not as found by the Court in the Jusand Proceedings - as at the Priority Date, what corrections might be needed to address what he had identified as "errors". He responded with the following:

In order to correct the "End" References, I would amend the Patents to delete the word "end" from the phrase "proximal end region" in both the specification and claims of the Patents.

Similarly, in order to correct the "Adjacent" References, I would correct the Patents to delete the "Adjacent" References in both the specification and claims of the Patents.

In relation to Figure 3, I would correct the drawing to show the safety system installed some distance into the borehole, rather than at the rock face F. In this way, the installed safety system in Figure 3 would encompass displacement, such that the safety system would not fall out the end of the borehole.

1. Finally, Professor Villaescusa annexed an amended Figure 3, corrected to overcome the error that he perceived existed in the original Figure 3.
2. Next, I turn to Dr Tawfik who was asked in reviewing each of the Patents to:

(a) identify any material/s that are disclosed in the Patents as being suitable for use in the safety system claimed in the Patents;

(b) explain the process he, and a person skilled in the art (being the materials engineer member of the team of subject matter experts which makes up the skilled person), would have followed to select materials for use in the safety system at the Priority Date; and

(c) using provided assumptions, give his opinion as to materials he would consider suitable for use in the safety system claimed in the Patents.

1. The assumptions provided to Dr Tawfik were set out across five pages in exhibit DT-1 to his affidavit, and included a table entitled "[e]nergy calculation assumptions" (as given to Professor Villaescusa) and four pages of "[e]nergy, velocity and capacity assumptions".
2. In describing what he considered to be the invention claimed, Dr Tawfik did not distinguish between the Patents and considered the same invention to be described and claimed in the Patents.
3. On the basis of the assumptions, Dr Tawfik opined as to materials he would consider suitable for use in the safety system claimed in the Patents. For the purposes of his material selection, Dr Tawfik was also asked to assume that "...the safety system will displace 100mm within the borehole upon being struck by the falling drill rod or drill string". It may not surprise the reader to learn that Dr Tawfik suggested a range of potential materials, concluding that any material selected will need to undergo further analysis, testing and verification to confirm its suitability, as well as potential further refinement, all of which is part of the routine process of material selection.
4. As the Respondents observe, Dr Tawfik's conclusion as to the routine nature of material selection is at odds with the findings in the Jusand Proceedings, which were based on the expert evidence of Dr Fuller and Mr Davison. Dr Tawfik's conclusion is only available on the footing of an enlarged body of common general knowledge beyond what was found to exist on the evidence at trial during the Jusand Proceedings.
5. Finally, I turn to Mr Tucker, who was also asked review the Patents and to give his understanding of the "End" References, "Adjacent" References and Figure 3. After giving his response, Mr Tucker was provided with a copy of Professor Villaescusa's affidavit, and he agreed with the common general knowledge of the person skilled in the art in the Field set out therein. Mr Tucker was then given the Assumptions, and he agreed with Professor Villaescusa's opinions as to the Assumptions and his suggested corrections to the Patents.
6. Kutti Bay's senior counsel repeatedly emphasised that Kutti Bay does not seek to challenge the correctness of any aspect of the findings Trial Decision or, for that matter, the Appeal Decision and purports to embrace those decisions. Rather, it is said that Kutti Bay seeks "to eliminate the inconsistency" between the teaching, on the one hand, of the "End" References, "Adjacent" References and Figure 3 (in its unamended form), and, on the other hand, the description of the invention throughout the balance of the Patents, read through the eyes of the person skilled in the art. Far from challenging the findings by the Court, Kutti Bay submits that it instead applies those decisions as disclosing obvious errors, and, seeks to utilise the beneficial provisions of s 105, to correct the obvious errors disclosed.

1. In Australian Mud Company Pty Ltd v Coretell Pty Ltd (No 2) [2018] FCA 1109; (2018) 134 IPR 359, Besanko J helpfully set out the relevant principles pertaining to applications for abuse of process. At [54], his Honour began summarising the principles by reference to the High Court's decision in Walton v Gardiner (1993) 177 CLR 378, in which Mason CJ, Deane and Dawson JJ described the inherent jurisdiction of a superior court to prevent an abuse of its processes in the following terms at 392-3:

The inherent jurisdiction of a superior court to stay its proceedings on grounds of abuse of process extends to all those categories of cases in which the processes and procedures of the court, which exist to administer justice with fairness and impartiality, may be converted into instruments of injustice or unfairness. Thus, it has long been established that, regardless of the propriety of the purpose of the person responsible for their institution and maintenance, proceedings will constitute an abuse of process if they can be clearly seen to be foredoomed to fail. Again, proceedings within the jurisdiction of a court will be unjustifiably oppressive and vexatious of an objecting defendant, and will constitute an abuse of process, if that court is, in all the circumstances of the particular case, a clearly inappropriate forum to entertain them. Yet again, proceedings before a court should be stayed as an abuse of process if, notwithstanding that the circumstances do not give rise to an estoppel, their continuance would be unjustifiably vexatious and oppressive for the reason that it is sought to litigate anew a case which has already been disposed of by earlier proceedings. The jurisdiction of a superior court in such a case was correctly described by Lord Diplock in Hunter v. Chief Constable of the West Midlands Police as "the inherent power which any court of justice must possess to prevent misuse of its procedure in a way which, although not inconsistent with the literal application of its procedural rules, would nevertheless be manifestly unfair to a party to litigation before it, or would otherwise bring the administration of justice into disrepute among right-thinking people".

(Citations omitted.)

1. By reference to the above passage, Besanko J explained at [54] that their Honours "...identif[ied] a class of case where a proceeding is unjustifiably vexatious and oppressive because, although not giving rise to an estoppel, the plaintiff or applicant seeks to litigate anew a case which has already been disposed of by an earlier proceeding". His Honour further observed at [57] that the doctrine of abuse of process is not restricted to defined and closed categories.
2. In Rogers v The Queen [1994] HCA 42; (1994) 181 CLR 251 at 286, McHugh J similarly noted that although the categories of abuse of process are not closed, abuses of procedure usually fall into one of three categories, which his Honour identified as follows:

... (1) the court's procedures are invoked for an illegitimate purpose; (2) the use of the court's procedures is unjustifiably oppressive to one of the parties; or (3) the use of the court's procedures would bring the administration of justice into disrepute...

1. The Respondents submit that the abuse wrought by the Amendment Application falls into categories (2) and (3).

1. Kutti Bay submits that the proposed amendments are to correct an "obvious mistake" in the specification of the Patents within the meaning of s 103(a) of the Patents Act. What constitutes an obvious mistake was considered by Mr Blanco White QC in Patents for Inventions (5th ed, Stevens & Sons, 1983), where the learned author explains at [6-008] that:

For there to be an "obvious mistake" it must be apparent, on the face of specification when read by an instructed reader, not only that "something has gone wrong" but also what the mistake is and what is the correction needed. By "mistake" here is meant, it would seem, a failure to express the real intention of the writer of the specification. The correction does not cease to be "obvious" because there is more than one way of expressing it. But if extraneous evidence, beyond what is required to put the court in the position of an instructed reader, is needed to show the mistake, it is not an "obvious" one.

(Citations omitted.)

1. An amendment for the purpose of correcting an "obvious mistake" is the one exception to the prohibition on broadening amendments which enlarge the scope of the invention claimed. In Toolgen Inc v Fisher (No 3) (2024) 184 IPR 301, Nicholas J explained at [21] that "[t]he need for both the error itself and the necessary correction to be obvious to the instructed reader (which is merely another way of describing the person skilled in the art) is aimed at ensuring that relevant members of the public are not misled as to the scope of the monopoly". For if the mistake was obvious, it cannot have misled. In Holtite Ltd v Jost (Great Britain) Ltd [1979] RPC 81, Lord Diplock (with who the remainder of the House of Lords agreed) observed at 91 that:

...the natural meaning of the expression "obvious mistake" is that: what must be obvious is not simply that there has been some mistake but also what the mistake is and what is the correction needed. But the correction needed does not fail to be obvious merely because, as a matter of drafting, there is more than one way of expressing it without affecting its meaning. Furthermore, having regard to the function of the specification as a warning to the public of the limits of the monopoly claimed, the mistake must be apparent on the face of the specification itself to an instructed reader versed in the particular art to which the invention relates. If beyond such evidence of the relevant art as may be needed to equip the court with the knowledge that would be possessed by the instructed reader, some other evidence extraneous to the specification is required to show that there has been a mistake in expressing the real intention of the inventor, the mistake is not an "obvious mistake" within the meaning of the section. The words of the section are clear and simple without the need for judicial exegisis...

1. As the trial judge, I am bound by the decision of the Full Court on the proper construction of the specification and claims of the same patent: see Otto v Steel (1886) 3 RPC 109 at 114 (per Pearson J); Flour Oxidizing Company Ltd v Carr & Company Ltd (1908) 25 RPC 428 at 448 (per Parker J); SmithKline Beecham Plc v Apotex Europe Ltd [2004] FSR 26 at [12] (per Pumfrey J). As these authorities elucidate, the only exception arises where the appellate court has been misled by expert evidence. There is no suggestion by Kutti Bay that the evidence before the Court in the Jusand Proceedings was wrong so as to mislead the Court.
2. The Innovation Patents and the Patents share the same priority date. They also share the same description of the Field of the Invention and the Background of the Invention. No substantive difference has been identified between the specifications of the Innovation Patents and the specifications of the Patents which might justify the new experts' different understanding of the invention disclosed and claimed in the Patents. For the purposes of the Abuse Application, there is no material difference between the specifications of the Innovation Patents and the Patents.
3. The priority dates of the Patents are the same as the Innovation Patents, and materially identical descriptions of the Field of the Invention. There is no reason or basis to depart from the identification of the person skilled in the art as set out at TJ [79], and no reason why the common general knowledge of the skilled person would be any different to that found in the Trial Decision. However, Professor Villaescusa and Dr Tawfik were asked to identify "the types of skilled persons working in the Field" before they were given the Patents to read. As acknowledged at [52] above, the Field as provided to the experts differed from the Field of the Invention set out in the Patents. Both experts then elided their identification of the skilled persons working in the Field into the person skilled in the art before they had read the Patents. Whilst their identification of the person skilled in the art overlaps with that of the Court, it is not the same. Notably, the new expert team includes a materials engineer: cf. TJ [80]. As mentioned above, should the impugned affidavits be allowed, the common general knowledge of the skilled person identified by the new experts is different and enlarged to that found by the Court in the Jusand Proceedings.
4. I noted at the outset that the Respondents take issue with Kutti Bay's references to "overcoming" the findings in Jusand Proceedings, and in particular, Kutti Bay's express intention to do, as included in their solicitors' instructions to the new experts and elsewhere. Amending a patent to overcome the decision of a Court does not itself constitute an abuse. For example, a patentee is entitled to seek to amend its patent to overcome an invalidity finding based on a novelty defeating piece of prior art. As Emmett J observed in Les Laboratories Servier v Apotex Pty Ltd [2010] FCAFC 131; (2010) 89 IPR 219 at [59]:

The underlying purpose of the power conferred by s 105 is to allow a patentee to validate what would otherwise be an invalid or partially invalid patent. It is a power conferred on the court for the benefit of the patentee. However, the exercise of power in favour of the patentee is an indulgence. The rationale underlying the court's discretion to refuse permission to amend is that it is the duty of the court to protect the public from abuse of the monopoly conferred by the grant of a patent...

1. Kutti Bay submits that the correct approach in determining an amendment application is for the Court to first consider the unamended Patents and ask whether the claims in their form as amended would satisfy the requirements of the Patents Act by questioning whether the amendment is allowable pursuant to s 105. If the amendments do indeed satisfy the requirements of the Patents Act, and the Court exercises its discretion pursuant to s 105 to allow them, then it is the claims as amended that the Court proceeds to construes. Kutti Bay contends that the Respondents' Abuse Application impermissibly inverts that process.
2. Kutti Bay submits that if the amendments are allowed then the person skilled in the art would be construing a different specification - one with no "adjacent to the rock face" aspect and a different Figure 3, where the safety system is placed further into the bore hole. In this scenario, the Court is unrestrained by what it has found earlier as the specifications and claims and expert evidence is materially different to that considered in the Jusand Proceedings.
3. Kutti Bay correctly states the analytical process if the amendments were sought pursuant to s 102(1) or (2) of the Patents Act. Section 102(2)(a) requires the Court to ask whether any proposed amended claim would not in substance fall within the scope of the existing claims. This will usually involve asking whether the proposed amendment if allowed would make "anything an infringement that was not an infringement before the amendment": see Bristol-Myers Squibb Co v Apotex Pty Ltd [2010] FCA 814; (2010) 87 IPR 516 at [40] (per Yates J); Fina Research SA v Halliburton Energy Services Inc [2003] FCA 251; (2003) 59 IPR 91 at [29] (per Moore J). If not, then subject to the exercise of the discretion under s 105, the amendment will be made.
4. However, the bulk of the amendments are sought to be made to correct an "obvious mistake" pursuant to s 102(3)(a). Section 102(3) expressly provides that "this section" (i.e., the requirements of s 102(1) and (2)) does not apply to an amendment for the purposes of correcting a clerical error or obvious mistake. The relevant enquiry for s 102(3) is whether there is an obvious mistake. If there is no obvious mistake, the amendment will not be allowed. It is in the mental contortions required for the Court to accept the existence of an obvious mistake in the specification, that the Respondents' abuse allegations come into play.
5. As acknowledged at [79] above, the Patents share the same priority date as the Innovation Patents and both sets of patents describe the same Field of the Invention. There is no doubt that the applicable person skilled in the art for the Patents is the same as for the Innovation Patents. As recognised at TJ [79], the Innovation Patents were held to be addressed to:

...someone with an engineering qualification, preferably in mining or geotechnical engineering, who has experience in underground mining including long-bore drilling, and experience in designing devices to interact with rock masses in underground mining. The skilled person would also have a knowledge of basic mechanical engineering principles relating to impact forces and the redirection of such forces, the absorption of energy from such impact forces, principles relating to deceleration over a distance, the role of frictional resistance and a general understanding of how these forces will be affected by the properties of different materials.

1. The claims are to be construed in the context of the specification as a whole, through the lens of the hypothetical skilled addressee equipped with the common general knowledge as at the priority date: Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179; (2015) 116 IPR 54 at [35] (per Kenny and Beach JJ). In AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; (2015) 257 CLR 356 at [23], French CJ further supplied that the skilled addressee is not a manifestation of, or an "avatar" for the expert witness whose testimony is accepted by the court. The skilled addressee is an analytical construct, informed by expert witness testimony and other material before the Court.
2. Both Dr Fuller and Mr Davison in the Jusand Proceedings were put forward as being relevantly qualified to give evidence on matters relating to underground mining, and to provide evidence to assist the Court to provide form and content of the person skilled in the art. Both experts gave evidence as to the common general knowledge at the priority date. They also gave evidence as to their understanding of the terms used in the Innovation Patents, and the integers of the claims.
3. On the basis of the evidence before it, the Court in Jusand Proceedings made findings as to the common general knowledge of the person skilled in the art as at the priority date. Equipped with the findings as to the state of the common general knowledge at the priority date and assisted by the experts' evidence as to their understanding of the terms and integers of the claims, the Court construed the integers of the claims. In the case of anchor member integer, those findings are set out at [22] above.
4. Kutti Bay relies on the evidence of the three new person skilled in the art experts. Each of those experts has opined on their view as to the common general knowledge as at the priority date. That common general knowledge is different to that found by the Court in the Jusand Proceedings.
5. The new experts then describe the operation of the invention claimed in the Patents. As described above, Professor Villaescusa considers that the safety system claimed in the Patents will displace some distance (100-200mm) within the bore hole which is a very different displacement to the de minimis movement of the Key Findings.
6. Kutti Bay makes no assertion that the evidence before the Court in Jusand Proceedings was wrong, or that the Court's construction of the relevant integers was wrong. Instead, through the artifice of providing the Court's construction to the new experts as the Assumptions, the only way for the new experts to reconcile their concept of the invention claimed in the Patents with the Court's construction (as per the Assumptions) is to conclude that there is an obvious error in the specification of the Patents.
7. Kutti Bay's "obvious mistake" contention requires the Court to read relevantly the same specification that it construed in the Jusand Proceeding, and in order to allow the amendment, agree with the new person skilled in the art experts that a different invention is actually described and claimed, than the one previously identified and considered by the Court.
8. As the Respondents identify, the vice in Kutti Bay's approach is that in order to accept the existence of an obvious mistake, the Court must accept the evidence of the new experts as to the safety system of the claimed invention. Doing so would necessarily involve adopting a different construction of the claimed invention different from that reached in the Jusand Proceedings.
9. Put another way, the Court's earlier construction and conception of the claimed invention in a materially similar patent does not accord with Kutti Bay's new experts' conception of the invention claimed in the Patents. Rather than accepting that they were wrong in their reading of the Patents, on being shown the Assumptions, the new experts conclude that the only explanation for the Court's construction is an obvious mistake in the Patents. Thus, in their contention, the wrong words were obviously used in drafting the specifications of the Patents such that it led the Court astray. Those erroneous words must now be corrected so that the Court (through the eyes of the altered person skilled in the art) would now construe the invention claimed in the Patents in the same way as the three new experts.
10. Such a result, as is apparent in these reasons would be inconsistent with the findings in the Trial Decision and the Appeal Decision. Accordingly, I find that the Amendment Application as it is currently framed and insofar as it relies on correcting "an obvious mistake" does constitute an abuse of process. The prosecution of such an application would bring the administration of justice into disrepute, as in order to find the existence of an obvious mistake, the Court must accept that the construction of the new experts is correct, and that the Court was led astray in its original construction by the obvious mistake on the face of the specifications.
11. As to the proposed amendments concerning the CGK Statement, the purpose appears to be twofold: to broaden the scope of the common general knowledge to provide support for the invention for the purposes of s 40 and to support the obvious mistake reasoning of the new experts. The former raises questions as to whether such amendments are impermissible under s 102(2) as being broadening, or, if not, then or alternatively futile. In those circumstances, if Kutti Bay continues to seek to insert the CGK Statement in any amendment application there may will be cost consequences.

1. In addition to seeking a declaration that the Amendment Application is an abuse of process, the Respondents also seek to exclude the entirety of the three new experts' evidence from the remainder of the infringement proceeding, on the basis that to allow it to form part of the evidence would itself constitute an abuse.
2. The short answer to this is that the pleadings are not closed. The Respondents have not filed a defence, or cross-claim. The issues on which the parties are in dispute are not yet identified. This hearing is not concerned with the evidence to be led by the parties at the ultimate hearing of the proceeding, particularly in circumstances where Kutti Bay has not indicated what evidence it intends to rely upon at trial.
3. The admissibility and use of expert evidence must be assessed by reference to the issues as they emerge on the pleadings and the manner in which the case is ultimately run. It cannot presently be said that the entirety of the impugned evidence would be irrelevant, inadmissible, or otherwise abusive in all respects.
4. To exclude the evidence at this interlocutory stage would risk pre-empting issues that have not yet arisen, and may never arise, depending on how the proceeding develops. Questions as to the proper scope, admissibility, and weight of that evidence are more appropriately addressed at a later stage, including at or closer to trial, after Kutti Bay indicates any intention to rely on that evidence at trial.
5. It is therefore far too premature to consider that part of the Abuse Application that seeks to constrain Kutti Bay from relying on the affidavits of Professor Villaescusa, Dr Tawfik and Mr Tucker.

1. Accordingly, I will allow the Respondents' Abuse Application in part and declare the Amendment Application insofar as it seeks to overcome the findings in the Trial Decision and the Appeal Decision is an abuse of process. Moreover, Kutti Bay should pay the Respondents' costs of the Abuse Applications.
2. Given that this proceeding remains in early stages and the balance of the Amendment Application remains to be heard and determined, it is appropriate to set the matter down for a further case management hearing on a date to be fixed to progress the conduct of the proceeding.

I certify that the preceding one hundred and four (104) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Rofe.