Lynx Engineering Consultants Pty Ltd v The Pilbara Infrastructure Pty Ltd

Federal Court of Australia (Full Court)|2016-03-03|Before: Mr J, Edelman JJ

Number of paragraphs: 96

Counsel for the Appellants in NSD1392/2015 and NSD1393/2015: Mr R Cobden SC with Mr C Dimitriadis SC

Solicitor for the Appellants in NSD1392/2015 and NSD1393/2015: Bird & Bird

Counsel for the Respondents in NSD1392/2015: Mr D K Catterns QC with Mr J S Cooke

Solicitor for the Respondents in NSD1392/2015: Davies Collison Cave

Counsel for the Respondents in NSD1393/2015: Mr S C G Burley SC with Mr A D B Fox

Solicitor for the Respondents in NSD1393/2015: Griffith Hack Lawyers

BETWEEN: LYNX ENGINEERING CONSULTANTS PTY LTD ACN 059 949 469 Appellant

JUDGE: BESANKO, JAGOT AND EDELMAN jJ DATE OF ORDER: 3 March 2016

The appeal be dismissed.
The appellant pay the costs of the first and second respondents, to be taxed if not agreed. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

BETWEEN: LYNX ENGINEERING CONSULTANTS PTY LTD ACN 059 949 469 Appellant

JUDGE: BESANKO, JAGOT AND EDELMAN jJ DATE OF ORDER: 3 MARCH 2016

The appeal be dismissed.
The appellant pay the costs of the first and second respondents, to be taxed if not agreed. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

THE COURT: Introduction [1] The Patent [3] The Specification [5] The Claims [18] The preliminary questions [19] The essential question: "integrally formed within said side wall" [21] The primary judge's decision [25] The issues on this appeal [36] (1) The possibility of plastic containers: ground (2)(d) [38] (2) The side wall as a composite of pieces: ground 2(f), 2(g), 2(i) [45] (3) The use of "integrally" and "within": ground 2(e) [48] (4) The internal ridge as an in-built longitudinal structural stiffener: ground 2(h) [54] (5) The contrast with claims 19 and 20 and the use of "integrally formed" in claim 20 [57] (6) The amendment history: ground 3 [61] (7) The purpose of the invention: ground 2(b) [66] Conclusion on the construction issue [76] TPI's and Bradken's ground of contention: a letter on the Patent Office file [77] Bradken's second ground of contention: a "first wall portion" [90] Conclusion [92]

Introduction 1 The appellant, Lynx, is the patentee of an invention involving bulk transport containers, and in particular containers used in road and rail transportation. These two appeals concern preliminary questions decided by the primary judge in litigation between Lynx and the respondents, TPI and Bradken. The litigation raises questions including invalidity of Lynx's patent but the preliminary questions concern only whether claim 1 of the patent was infringed. Lynx says that claim 1 was infringed by "Ore Wagons" which were allegedly authorised for manufacture by TPI and Bradken. 2 The essential issue before the primary judge, and the primary issue on this appeal, was whether, as Lynx alleged, the Ore Wagons "include at least one internal ridge which is integrally formed within said side wall". For the reasons which follow, the primary judge was correct in his conclusion that the answer to this preliminary question was "no". That conclusion is supported by the words of claim 1, particularly when the words are read in their context including the Specification, and the amendment history. However, matters contained in a letter from Lynx's patent attorneys to the Commissioner of Patents are irrelevant to the issues of construction and the notice of contention on this point should be dismissed.

The Patent 3 Lynx's Patent is described in detail below. There was some dispute between the parties concerning whether the priority date of the Patent was 30 March 1998 or 30 March 1999. No submissions were made on this point and, as senior counsel for Lynx accepted, there was no difference between the relevant common general knowledge at either of those dates. 4 The Patent has also had a lengthy history. There were oppositions to the Patent, followed by two conjoined appeals: Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd [2012] FCA 944; (2012) 97 IPR 424. The Patent was sealed on 28 March 2013.

The Specification 5 The Specification explains that the invention is related to "bulk transport containers, and in particular to containers used in road and rail transportation". 6 The Specification then discusses the prior art. It explains (as at 1998 when it was written) that the present designs used by Australian and international transportation companies are at least twenty years old. The Specification provides that an object of the invention is "to provide a container for bulk product transportation that is more efficient and cost effective than existing containers". It then contains the following consistory statement: With the above object in mind the present invention provides a container for transporting bulk material including two side walls, two end walls and a base, wherein at least one said side wall includes at least one ridge running along said at least one side wall between said end walls, and wherein said ridge is integrally formed within said at least one side wall and the distance from which said ridge projects from said side wall is greater than the thickness of said side wall. Another form of the present invention provides a container for transporting bulk material and for rotary or side tip unloading, the container including two side walls, two end walls and a base, wherein at least one said side wall includes at least one internal ridge running along said at least one side wall between said end walls, the at least one internal ridge including a first wall portion and the material flows across the at least one ridge when unloading the container, and wherein said at least one ridge is integrally formed within said at least one side wall and said internal ridge has a depth greater than the thickness of said side wall. 7 The Specification then describes a number of the preferred features of the invention. These include the following: • Preferably, there will be at least one internal ridge between each of the reinforcing members; • Preferably, there will be at least one internal ridge between an end wall and a first reinforcing means; • In some instances, extra reinforcing members might be required to satisfy the structural strength of any or all panels on the side wall and/or floor and/or end wall; • Ideally, the internal ridge includes a first wall portion angled from the wall towards the interior of the container, and a second wall portion rejoining the first wall portion to the wall. The angle of the first wall portion is in the direction of flow during unloading of the material to be transported. Alternatively, the internal ridge includes a first wall portion deflected inwardly a progressively increased degree relative to the intersection of the side wall and the base, and a second wall portion extending from the first wall portion and being deflected outwardly a progressively decreased degree relative to the intersection of the side wall and the base; • The angle of the first wall portion may be determined by subtracting the natural angle of repose of the transported product, from the angle the container is rotated during unloading. Whilst the first and second wall portions may be symmetrical, they may also be of uneven length; • In further embodiments, the internal ridge may also include a third wall portion between the first wall portion and the second wall portion. This third wall portion may be flat or concave. Any such flat third wall portion may additionally be parallel to the side wall; • In some applications, a partial internal ridge may extend along the top edge or rim of the side walls. Such a partial internal ridge may consist of the first wall portion of the internal ridge. In this case, an additional strengthening member along the edge or rim of the side wall would be included; and • In a preferred embodiment, the base of the container also includes at least one internal ridge extending substantially along the length of the base. 8 The Specification then provides for another form of the invention. It says: A further form of the present invention provides a container for transporting bulk material and for rotary tor tipping unloading, the container including two side walls, two end walls, and a base; said side walls including a plurality of vertical reinforcing members spaced along the length of each said side wall, wherein a section of said side wall between at least one adjacent pair of said reinforcing members includes at least one internal ridge running therebetween, the said at least one internal ridge including a first wall portion angled towards an interior of the container, wherein the angle is in the direction of flow of the material during the rotary or tipping unloading, and wherein said at least one internal ridge is integrally formed within said side wall and said at least one internal ridge has a depth greater than the thickness of said side wall. It will be convenient to further describe the invention by reference to the accompanying drawings which illustrate possible embodiments of the invention and improvements over the prior art. Other embodiments of the invention are possible and consequently the particularity of the accompanying drawings is not to be understood as superseding the generality of the preceding description of the present invention. 9 The Specification then refers to the Figures which are used in the Specification to illustrate the preferred embodiment of the invention. Those Figures are annexures to these reasons with the same descriptions as they contain in the Specification. 10 The Specification explains the constraints upon conventional containers. The basic container includes two side walls, a base, and two end walls. Neither the height nor the width of the container can exceed pre-defined dimensions. Those dimensions are determined by rail and road standards and also the practical limitations of loading and unloading facilities. This means that it is not possible to increase the size of the containers without decreasing their strength. 11 The Specification explains that when bulk product is transported in the containers, it places extreme stress on the walls of the containers. This requires a number of support or reinforcing members to strengthen the walls. The walls of the containers therefore do not extend to the maximum possible dimensions. The support or reinforcing members conveniently takes the form of a number of "ribs" which extend around the body of the container. The ribs cause the container to be much heavier and they decrease the aerodynamics of the container with both fill and cost implications on its profitability. Further, structural maintenance and repairs to the containers are both frequent and expensive and they do not guarantee that the operational life of the container will be significantly increased. Larger containers also require more ribs or reinforcing members. 12 The Specification then continues, explaining that the invention reduces the number of ribs that are required when compared with a conventional container of equal size. The Specification refers to the preferred embodiment of the invention which although containing two side walls (5), two end walls (7), and a base (6), differs from conventional containers because it also includes at least one internal ridge (8). Each of these features can be seen in Figures (2), (3), and (4b) with the numbers in brackets indicating each of those features. The Specification provides that the "main element of this internal ridge" (8) is "a first portion (8a)" which the specification describes as extending "from the wall at an angle towards the interior of the container". A second portion (8b) "can be adapted to complete the internal ridge (8), by rejoining the wall (5), to the end of the first portion (8a)". 13 The Specification then provides that in some circumstances the internal ridge could be supplemented by extra reinforcing elements to add structural strength. It explains that the extra reinforcement "may be added to the internal ridge between each strengthening rib" or could be added to the internal ridge in at least one of the wall sections. The extra reinforcement could be shaped similarly to the shape of the internal ridge. 14 The Specification then provides for some detail about the angle at which the first portion of the internal ridge extends from the wall towards the interior of the container. It provides that the dimensions of the internal ridge are also determined as a function of the structural strength required and the natural angle of repose of the material that is to be transported. 15 The Specification provides that for a "bottom dumping container" the internal ridge "can be configured to extend away from the interior of the container". It provides that such an arrangement "will not provide the same increased payload as a ridge which extends towards the interior of the container" (our emphasis). The Specification says that even where the internal ridge extends towards the interior of the container it will provide substantial gains in cost reduction of fabrication from conventional containers which merely provide an additional strengthening member along the exterior of a standard container. 16 The Specification provides detail concerning the length and shape of the internal ridge as follows: The length and shape of the internal ridge 8, will depend on the structural requirements of the side walls 5 and the base 6. It will also depend on the spacing between supporting frame members 9, and the natural angle of repose of the material. As the distance or spacing between the supporting frame members 9 increases, it will be necessary to increase the depth 16 of the internal ridge 8, to ensure the necessary structural strength. Accordingly, it is possible to design a container specifically for a certain type of material to be transported, by considering the mass of the material and the pressure the material will place on the walls of the container. A container constructed with an internal ridge of the present invention provides a container that is able to transport bulk product. Furthermore, the internal ridge acts as an in-built longitudinal structural stiffener. This internal ridge, then ensures that the structural requirements, such as strength, fatigue, resistance, and buckling capacity, are met, while ensuring that more product can be loaded into a container that has the same exterior dimensions as a conventionally designed container. This difference in carrying capacity can be seen in Figure 5, where the shape of a new container of the present invention is superimposed over a conventional container. 17 Towards the end of the specification there is a description of the benefit of the internal ridge as follows: By the addition of at least one internal ridge in the wall of the container, the present invention results in a container that is lighter than conventional containers as the side wall containing the internal ridge does not require as many structural reinforcements as conventional containers, since the internal ridge itself adds to the structural strength of the wall. Again this can be seen by comparison of Figures 1 and 2, whereby the number of ribs or strengthening elements is less than in the original design. The decrease in the number of ribs 9 also leads to a cheaper container. The decrease in the number of vertical elements, and protruding parts generally improves the aerodynamic shape of the container, thereby making a more efficient and economical container. Further, because fewer welds are required the design ensures that there are fewer areas of stress concentration, thereby making the improved container more fatigue resistant.

The Claims 18 The Patent has 26 claims. The claims which are relevant to these reasons are claims 1-6 and 17-20. We have set them out in full below. 1. A container for transporting bulk material and for rotary or tipping unloading, the container including two side walls, two end walls, and a base; said side walls including a plurality of vertical reinforcing members spaced along the length of each said side wall, wherein a section of said side wall between at least one adjacent pair of said reinforcing members includes at least one internal ridge running therebetween, the said at least one internal ridge including a first wall portion angled towards an interior of said container, wherein the angle is in the direction of flow of the material during said rotary or tipping unloading, and wherein said at least one internal ridge is integrally formed within said side wall and said at least one internal ridge has a depth greater than the thickness of said side wall. 2. A container as claimed in claim 1 further including at least one said at least one internal ridge between each of said reinforcing members. 3. A container as claimed in claim 1 or 2 including additional reinforcement aligned along said at least one internal ridge between each of said reinforcing members. 4. A container as claimed in any one of claims 1 to 3, further including at least one said internal ridge between one said end wall and a first reinforcing member. 5. A container as claimed in any preceding claim including a second wall portion rejoining said first wall portion to said wall. 6. A container as claimed in any one of claims 1 to 5, wherein at least one said internal ridge includes said first wall portion deflected inwardly a progressively increased degree relative to the intersection of said side wall and said base, and a second wall portion extending from said first wall portion and being deflected outwardly a progressively decreased degree relative to the intersection of said side wall and said base. … 17. A container as claimed in any one of claims 1 to 16, wherein at least one said side wall further includes a partial ridge along the top or rim of said at least one side wall, said partial ridge being formed by a fourth wall portion, said fourth wall portion being equivalent to said first wall portion. 18. A container as claimed in claim 17, wherein said fourth wall portion is of equal length to said first wall portion. 19. A container as claimed in claim 17 or 18 wherein said partial ridge further includes a strengthening member along the periphery of said fourth wall portion, said strengthening member forming the rim of said container. 20. A container as claimed in claim 19, wherein said strengthening member is integrally formed within said at least one side wall.

The preliminary questions 19 The preliminary questions in each of the matters before the primary judge raised the same issue. The preliminary questions in each matter were as follows: Does the [TPI Wagon/ Bradken Wagons considered individually] include at least one internal ridge which: (a) includes a "first wall portion"; (b) is "integrally formed within said side wall"; and (c) is "running therebetween" at least one adjacent pair of vertical reinforcing members; within the meaning of claim 1 of the Patent? 20 The argument before the primary judge proceeded on the basis that if the requirements for (b) were met then the requirements for (a) and (c) would also be met. On this appeal, TPI again took that approach. But Bradken filed a notice of contention which included the contention that the Bradken Wagon also does not "include a first wall portion" within (a).

The essential question: "integrally formed within said side wall" 21 The essence of the difference in construction of "integrally formed within said side wall" between Lynx, on the one hand, and TPI and Bradken, on the other, was simple. It was essentially a contrast between whether "formed" bore its ordinary meaning or its technical meaning. The parties called numerous experts. The experts were Mr Grove and Mr Wolfkamp (mechanical engineers called by Lynx), Mr Butcher (a mechanical engineer called by Bradken), Mr Winton (an engineer called by TPI), and Mr Fry (a welder called by Bradken). 22 Lynx submitted that the word "formed" had its ordinary meaning of "something that has been given shape or appearance in any number of ways, including by joining together a number of different parts". This was the description of the ordinary meaning given by the primary judge although his Honour construed the word in its technical sense. There was no dispute on this appeal that this is the ordinary meaning of the word "formed". It is consistent with the definition of "form" as a verb and "formed" as a past participle in the Macquarie Dictionary and the Oxford English Dictionary: Butler S (ed) Macquarie Dictionary (5th ed, Macquarie Dictionary Publishers Pty Ltd, 2009) 653 ("form", definition 40); Simpson J and Weiner E (eds) Oxford English Dictionary (2nd ed, Oxford University Press, 1989) Vol VI 81 ("form", definition 1) 86 ("formed", definition 1). 23 In contrast, TPI and Bradken submitted, relying upon expert evidence, and the primary judge found, that "formed" bore a narrower, and technical, meaning. That technical meaning was "a single piece of metal that has been bent, pressed, or moulded into shape". There was no challenge to the finding that this was the technical meaning of the word "formed". 24 The essential question, therefore, is whether the primary judge was correct in his conclusion that the word "formed" in claim 1 of the Patent bore its technical meaning. In Kimberly-Clark Australia Pty Limited v Multigate Medical Products Pty Limited [2011] FCAFC 86; (2011) 92 IPR 21, 30 [39], Greenwood and Nicholas JJ said that ordinary words which are used in a patent claim should be given their ordinary meaning unless the skilled addressee would give them a different meaning. There are words used in patent claims that have no ordinary meaning apart from their technical or scientific meaning. There are also words used in patent claims that have a technical or scientific meaning as well as an ordinary meaning. In the latter situation the words may have been intended to be used in accordance with their technical or scientific meaning or in accordance with their ordinary meaning. Expert evidence may be received to assist in determining which of these meanings was intended.

The primary judge's decision 25 The primary judge began his reasons concerning construction by setting out the legal principles concerning patent construction. None of those principles was in dispute before his Honour. None was in dispute on this appeal. As the primary judge explained, six of those principles were summarised by the Full Court in Jupiters Ltd v Neurizon Pty Ltd [2005] FCAFC 90; (2005) 222 ALR 155; 65 IPR 86 where Hill, Finn and Gyles JJ said at [67]: (i) the proper construction of a specification is a matter of law: Décor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385 at 400; (ii) a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331; [2000] FCA 890 at [81] (Flexible Steel Lacing); and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1; 177 ALR 460; 50 IPR 513; [2001] HCA 8 at [24]; (iii) the words used in a specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification: Décor Corporation Pty Ltd at 391; (iv) while 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, although terms in the claim which are unclear may be defined by reference to the body of the specification: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 4 All ER 221 at 224-5; (1938) 56 RPC 23 at 39; (v) experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd (1994) 30 IPR 479 at 485-6 (Sartas No 1 Pty Ltd); the court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberley-Clark v Arico at [24]); and (vi) it is for the court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd at 485-6. 26 The primary judge also extracted the principles summarised by Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46; (2004) 64 IPR 444 [33] including that "[t]here is no presumption about the width of the claims" and "[a] patent may, for one reason or another, claim less than it teaches or enables". Lord Hoffmann then continued: "Purposive construction" does not mean that one is extending or going beyond the definition of the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee's own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often. 27 The primary judge then applied these principles to reach the conclusion that "formed" was used in its technical sense in the phrase "integrally formed within said side wall". The primary judge gave six reasons for his conclusion. 28 First, the prior art bulk material containers referred to in the Patent (which are admitted common general knowledge) were invariably constructed of metal; the Patent did not suggest any other material to be used in the construction. This would be well known to the skilled addressee. Hence, the skilled addressee would naturally and sensibly assume that a bulk container made in accordance with the Patent would be made from metal. 29 Secondly, the Figures included in the Specification (and annexed to these reasons) support the technical use of "formed". In particular, section AA in Figure 2b (annexure 3 to these reasons) demonstrates an internal ridge which has been formed within the technical sense of bent or pressed into a single piece of material: it is formed from the same piece of metal sheet that makes up the side wall compared with the welding or riveting evident in the cross-hatched component to the left of section AA (which is described in the Specification as an extra reinforcing element to provide additional strength). 30 The primary judge recognised that the Figures were only examples of a preferred embodiment of the invention and that they were also only general drawings rather than schematics or mechanical or engineering drawings. His Honour explained that it was not legitimate to import a limitation upon a claim based upon a feature of a preferred embodiment. However, the primary judge also said that this is a different matter from using a preferred embodiment as part of the process of reading the Specification as a whole to try to construe what a claim means. 31 Thirdly, the primary judge concluded that the other words that make up the relevant phrase "integrally formed within said side wall" emphasise that what is being referred to by the reference to "formed" is the forming of a single piece of material rather than including the possibility of two or more pieces of material being joined together. In particular, his Honour said that the word "integrally" was not redundant. Instead, "integrally" made it reasonably clear that the internal ridge is made from the same piece of material from which the side wall is constructed. Further, his Honour relied on the word "within" as suggesting that the ridge is formed from (as opposed to added onto) the side wall. His Honour rejected the construction of "within" as locating the ridge on the interior of the side wall because that location had occurred by the use of the word "internal". 32 Fourthly, the primary judge relied on the description of the internal ridge at page 6 of the Specification. That description is quoted above (at [16]). In particular, his Honour relied on its function as "an in-built longitudinal structural stiffener." His Honour considered that the in built nature of the ridge, to enhance the strength and fatigue resistance of the container, was not apt to describe a ridge that has been joined to the side wall by (for example) welding or riveting. His Honour explained that this description did not relate solely to the preferred embodiment in the Figures. The Specification was describing a characteristic of "the present invention" and improvements and advantages it provides compared with the prior art. 33 Fifthly, the primary judge relied upon the use of "forming" in claim 19 quoted above. Claim 19 refers to "a strengthening member" along the periphery of the "fourth wall portion ... forming the rim of the ... container". In the drawings of the preferred embodiment the rim can be seen in Figure 4b (annexure 6 to these reasons). In Figure 4b, the strengthening member (11) "forms" the rim of the bulk container. His Honour relied upon the difference between the language of (i) claim 19 which refers to the use of a strengthening member "forming" a rim, and (ii) claim 20 which refers to the strengthening member being "integrally formed within" at least one side wall. The contrast is between the mere reference to "form" in claim 19 (which is neutral as to how the strengthening member and the side wall are connected) and claim 20 (which by the use of "integrally formed" within the side wall requires that the strengthening member must have been made from the same piece of material as the side wall). 34 Sixthly, the primary judge relied upon the amendment history of the PCT application. The primary judge concluded that an amendment to claim 1 was intended to narrow the claim. The insertion of the words in the amendment "integrally formed within" strongly suggested the addition of something more than that the ridge must be integral in the sense of being a permanent, or permanently attached, part of the side wall. 35 For these six reasons, the primary judge therefore concluded that the word "formed" in claim 1 referred to the technical meaning.

The issues on this appeal 36 The succinct nature of the preliminary issue before the primary judge and on this appeal had the necessary effect that the grounds of appeal and many of the submissions either (i) reiterated or elaborated upon the primary judge's reasoning, or (ii) repeated submissions before the primary judge concerning why each of the six matters above should not be accepted. The grounds of appeal, which were identical in each matter, are set out below: (1) The primary judge erred in finding that the Respondents' iron ore railway wagons did not include an internal ridge as claimed in claim 1 of the Appellant's Australian Patent No. 749848 (the Patent), and accordingly erred in holding that the preliminary question in order 1 made on 23 April 2014 should be answered "no". (2) In making the finding referred to in paragraph 1 above, the primary judge erred in: (a) construing the words "formed" and "integrally formed" in claim 1 of the Patent as having a narrow technical meaning referring to a single piece of metal that has been bent, pressed or moulded into shape, as opposed to the ordinary meaning of those words which is apt to refer to something that has been given shape or appearance in any number of ways, including by joining together a number of different parts (at [65], [67]); (b) failing to construe the words "formed" and "integrally formed" in claim 1 of the Patent in the context of the nature and purpose of the invention, which involved incorporation of an internal ridge into the side wall of the claimed bulk container such as to allow for an increased payload due to the side wall sheet being positioned outside the vertical reinforcing members while enabling the free flow of discharge of bulk material without hangup; (c) finding that a skilled addressee would assume that the inventive bulk containers described in the Patent would necessarily be made from metal and relying on that assumption to support the narrow technical meaning of the words "formed" and "integrally formed", in circumstances where the Patent did not specify what materials were to be used to make the bulk container and it was inapt to use those words in their narrow technical sense in relation to bulk containers not made from metal (at [68], [69], [78]); (d) ascribing a narrow technical meaning to the word "formed" in claim 1 which was the equivalent of the meaning of the words "metal formed", in circumstances where the technical meaning of the word "formed" alone in the context of metal work was considerably wider (at [35], [67]); (e) putting aside or failing to have sufficient regard to the fact that all of the experts who were called to give evidence concurred that the words "integrally formed" had no technical meaning in the art; (f) construing the words "side wall" in claim 1 of the Patent as referring to a single piece of material, as opposed to the entire side wall assembly with all of its constituent parts including the vertical stiffening members referred to in the claim (at [74]-[75]); (g) limiting the scope of claim 1 of the Patent by reference to the description of the preferred embodiment in the Patent, having correctly accepted that it was not legitimate to import into the claim a limitation or qualification based upon a feature of a preferred embodiment that was not otherwise found within the claim properly construed (at [70]-[73], [75]-[77]); (h) failing to construe the words "in-built longitudinal structural stiffener" as used in the description in the Patent as having their natural and ordinary meaning, which is apt to describe an internal ridge that has been incorporated into the side wall by being joined to the side wall sheet (at [73]); and (i) failing to find or take into account that, even in the description of the preferred embodiment in the Patent, the internal ridge and the side wall are not bent, pressed or moulded into shape from the one piece of metal, because the side wall is made up of multiple pieces of metal joined together. (3) The primary judge erred in finding that the amendment history of the Patent confirmed that, properly construed, claim 1 required that the internal ridge and the side wall be "integrally formed" in the sense that they must be bent, pressed or moulded into shape from the one piece of metal (at [84]). (4) In the premises, the primary judge ought to have found that the words "formed" and "integrally formed" in claim 1 of the Patent should be given their natural and ordinary meaning, such that the Respondent's iron ore railway wagons did include an internal ridge as claimed in claim 1 and accordingly ought to have held the preliminary question should be answered "yes". 37 Since these grounds overlap in some respects, and in others involve matters of submission, it is convenient to consider the submissions in the context of each of the six matters upon which the primary judge relied, before turning to a seventh matter raised on this appeal.

(1) The possibility of plastic containers: ground (2)(d) 38 Lynx submitted that one reason why the technical meaning of "formed" was inapposite in the context of claim 1 of the Patent was because a container might not be made of metal. Lynx submitted that if a container were made from plastic (including fibreglass and Kevlar) then it would be nonsensical to speak of "a single piece of metal that has been bent, pressed, or moulded into shape". 39 The primary judge found, and Lynx accepted on appeal, that at the date of the Patent application all previous containers had been made of metal (ts 5). However, Lynx relied upon the evidence of Mr Groves and Mr Butcher, who were experts who were called before the primary judge, in support of its submission that at the time of the PRS application in 1998, it was envisaged that containers might be made from other materials such as plastic. 40 As for Mr Butcher, the pages from the transcript relied upon by Lynx do not support its submission. Mr Butcher was asked (at ts 213) whether the Patent placed any limitation upon the type of material from which a container could be made. Mr Butcher answered: If claim 1 is viewed in isolation, that will be the case. However, there are a number of references elsewhere, and - including in claims - that definitely suggest that the container is intended to be made from metal, and those include things you've already mentioned to do with welding. 41 Mr Butcher gave examples including comparisons with existing wagons that were made of steel and references to welding. He explained that to date (in 2015) "and certainly in 1999 - there was no successful application of anything other than steel". Even an attempt he had made to fabricate a container from aluminium had not been successful. 42 As for Lynx's reliance upon Mr Groves, he referred to two examples from texts in his affidavit evidence. The first was an example of a refrigerated container made with plastic insulated walls. The second was an example of a text which referred to fibreglass sheet being used to manufacture wagons. However, in cross-examination Mr Groves accepted that (i) the first example was not a container for rotary or tipping unloading, and (ii) the second example was a "theoretical imagination". 43 Perhaps more fundamentally, even assuming that fibreglass containers were conceived as a theoretical possibility at the time of the Patent application, Mr Groves accepted that there was an analogous use of "forming", in its technical sense, in relation to plastics. Mr Groves agreed that the currently used processing techniques for plastics have been derived from the sheet metal forming industry. The effect of his evidence is therefore that if, hypothetically, a side wall were one day constructed from moulded fibreglass, then the technical meaning of "formed" would be capable of extending to include an internal ridge of fibreglass "integrally formed within said side wall". 44 The speculative possibility in 1999 that a container might one day in the future be made of a material other than metal does not detract from Lynx's case that the use of "formed" in claim 1 involves a reference to the technical use of that word in metal formwork. Rather, the context in which the word "formed" was used in 1999, involving containers invariably made from metal, tends to support a construction that involves the technical meaning involving forming of metal. This is simply a matter of context. It is not an implication of a requirement that "formed" means "metal formed" nor is it creating a gloss on the words of the claim by other parts of the specification: Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588, 610 (the Court).

(2) The side wall as a composite of pieces: ground 2(f), 2(g), 2(i) 45 Lynx submitted that the primary judge erred when he had regard to the Figures in the Specification because "the impression gained from his Honour's reasons is that the 'side wall' is made from a single piece of metal with no joins and welds". 46 It was common ground, and indeed quite plain from Figures 1, 2a, 2b, 3a, and 3b (annexures 1 to 4 to these reasons), that the side wall contemplated by the Specification would not be made from a single piece of metal. This was also confirmed by expert evidence (see for example the cross-examination of Mr Winton (ts 184-185)). It was recognised by the primary judge (at [70]) when he referred to "fewer welds". But the point being made by the primary judge was not that the side wall was a single piece of metal. It may be that the point his Honour was making was that the Figures showed that the ridge was formed within the side wall (however comprised) and was not a separate subject matter from the side wall. The side wall therefore falls to be considered for this issue as a unity, irrespective of the number of components with which it was constructed. It is this sense of a "single" (but composite) side wall which contrasts with the separate ridge to which the primary judge was referring at [74] when his Honour said at [74] that "what is being referred to is a single piece of material [i.e. the single composite side wall] as opposed to two or more pieces of material joined together [i.e. the side wall with the ridge welded to it]". 47 Even if this were not the point being made by the primary judge, it is a point that favours the construction of TPI and Bradken. The preferred embodiment demonstrated in the Figures in the Specification shows a single (composite) side wall which includes an internal ridge that is not a separate part from the composite side wall (as a unity). It does not show a side wall with a separate internal ridge. This point should not be overemphasised. The preferred embodiment is not the only embodiment of the invention. Nevertheless, it is part of the context from which the words of the Specification are to be construed, particularly in circumstances in which the Specification refers to, and relies upon, the preferred embodiment. It cannot be ignored.

(3) The use of "integrally" and "within": ground 2(e) 48 A textual indicator that "formed" bears its technical meaning is the use of "integrally" or "within" in the phrase "integrally formed within said side wall". As we have explained, the primary judge said that the word "integrally" would be redundant if "formed" were used in its ordinary sense. 49 Lynx submitted that "integrally" could be given meaning if "formed" were used in its ordinary sense by adopting a meaning of integrally which imposed a further restriction upon the claim. Borrowing from the Macquarie Dictionary definition of "integrally" as "of or relating to a whole; belonging as a part of the whole", Lynx submitted that that further restriction was that "integrally" would require that the internal ridge: Must be an integral, essential or permanent part of the "side wall", and not, for example, a component that can be disassembled or removed by non-destructive methods. 50 We do not accept this submission for two reasons. First, Lynx's definition is not the meaning of the word "integral", even from the dictionary it quotes. The ordinary meaning of integral does not require permanence or disassembly only by destruction. Secondly, to the extent that this definition of "integrally" was based upon expert evidence, it was rejected by Messrs Grove (ts 94), Winton ([293]-[295]), Butcher ([141]-[144]) and Fry ([42]). 51 However, the word "integral" does not particularly assist the construction of TPI or Bradken either. If a ridge is "formed within" the side wall then it will necessarily be "integrally formed". Lynx put this point in a different way. Lynx submitted that the primary judge failed to have sufficient regard to the expert evidence that "integrally formed" was not a term of art. But the primary judge was plainly aware that the term of art was the past participle "formed" and not the phrase "integrally formed". The point is that the technical approach to "formed" when considered with "within" means that the word "integrally" does not add anything of significance to the construction of TPI and Bradken either. Nevertheless, it is not unusual for abundant caution to be taken in the drafting of claims. 52 More important is the use of "within". The expert evidence included evidence from Mr Wolfkamp that where a bracket had been added to a roller door by welding, it was not apt to describe the welded component as integrally formed within the roller door. The welding meant that the component had been "joined" or "added" but not within the roller door (ts 141-142). Similarly, Mr Grove said that a ridge which had been added to the inside of a side wall had not been "formed within the side wall" (ts 92). This is the ordinary use of the word "within". This significantly militates against Lynx's construction that a ridge which is formed from welding an additional component is formed "within" the side wall. 53 Lynx submitted that the word "within" could be read as locating the ridge on the interior of the side wall so that welded components added to the interior of the side wall would still be within the side wall. We do not accept this submission. The words "within the side wall" are inapt to convey a meaning being "attached to the interior of the side wall".

(4) The internal ridge as an in-built longitudinal structural stiffener: ground 2(h) 54 As we have explained, the primary judge relied upon the description of the internal ridge at page 6 of the Specification which described the internal ridge as "an in-built longitudinal structural stiffener" (emphasis added). The primary judge relied upon the reference to "in built" as directing attention to the internal ridge being formed (in the technical sense) from the side wall. 55 On this appeal Lynx submitted that the reference to "an in-built longitudinal structural stiffener" suggested that the internal ridge would be incorporated into the side wall by being joined to the side wall sheet. Lynx submitted that "in built" meant the same thing as "built in" which involved something that had "become a permanent part of the side wall". We do not accept this submission. It is not a legitimate approach to interpretation to define one phrase ("in built") by reference to different words ("built in") and then to give it the meaning of those different words. The Macquarie Dictionary defines "in-built" as "inherent": Butler S (ed) Macquarie Dictionary (5th ed, Macquarie Dictionary Publishers Pty Ltd, 2009) 844. A ridge which is welded to the side wall is not "inherent" in the side wall. 56 A related point was made by senior counsel for Bradken, Mr Burley. He submitted (at ts 58) that the closing words of claim 1 reinforced the need for the internal ridge to be part of the side wall rather than affixed to it. Those words import a requirement that at least one "internal ridge has a depth greater than the thickness of said side wall". The concepts of depth and thickness reinforce the concern of claim 1 with an internal ridge that is part of a three dimensional side wall rather than an addition to it.

(5) The contrast with claims 19 and 20 and the use of "integrally formed" in claim 20 57 Lynx submitted that the primary judge's reliance upon the word "forming" in claim 19 was misplaced. Lynx referred to the words of claim 19 that refer to the "strengthening member forming the rim of said container". Lynx submitted that the word "forming" used in claim 19 was used in a different sense from claim 1. It was used in the sense of "making up" or "creating the rim" of the container. On the other hand, Lynx said, the references in claims 1 and 20 to "integrally formed within" were describing something different. 58 We accept this submission. The "partial ridge" in claim 19 is referring to the partial ridge along the top or rim of the side wall (see claim 17). Claim 19 does not confine "forming the rim" to being "integrally formed within" the container or any part of it. That partial ridge along the rim of the container can be seen in Figure 2a (annexure 2 to these reasons) and 4b (annexure 6 to these reasons) where the partial ridge is numbered 11. As senior counsel for TPI, Mr Catterns, conceded that this partial ridge could be welded on to the container (ts 52-53). 59 However, claim 20 provides an alternative to claim 19 by narrowing claim 19 and focusing upon a container "as claimed in claim 19, wherein said strengthening member is integrally formed within said at least one side wall". The reference in claim 20 to "integrally formed within" narrows claim 19. Claim 20 is not redundant because, unlike claim 19, it requires the rim or strengthening member to be formed in the technical sense conveyed by the use of "formed" in the phrase "integrally formed within". The only alternative construction suggested by Lynx was that this reference in claim 20 was to a removable strengthening member (or rim) such as a welded frame dropped over the whole of the top of the container (ts 82). It stretches the words "integrally formed within" beyond breaking point to be a reference to a removable rim. 60 There was some dispute about whether this point about claim 20 was what the primary judge meant in his reasoning on this. But it is, in any event, another factor which supports the technical meaning of the word "formed" in "integrally formed within" in claim 1.

(6) The amendment history: ground 3 61 Lynx submitted that the primary judge erred by relying upon the amendment history of claim 1. 62 The PCT application had been amended, by an amendment request dated 13 December 1999 including the following changes to the claims: 1. A container for transporting bulk material including two side walls, two end walls and a base, wherein at least one said side wall includes at least one ridge running along the length of said at least one side wall between said end walls, and wherein said ridge is integrally formed within said at least one side wall. 2. A container for transporting bulk material including two side walls, two end walls, and a base; said side walls including a plurality of vertical reinforcing members spaced along the length of said side wall, wherein said side wall between at least one adjacent pair of said reinforcing members includes at least one internal ridge running therebetween, wherein said ridge is integrally formed within said side wall. 63 Section 116 of the Patents Act 1990 (Cth) provides that the "Commissioner or a court may, in interpreting a complete specification as amended, refer to the specification without amendment". 64 The difficulty that this amendment presents for the construction urged by Lynx is that if "formed" is given its ordinary meaning then the amendment would have been redundant. It is well established that limitations upon a claim, which are not otherwise explicable, might be introduced in order to avoid arguments about prior art: Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKPC 6; (2004) 64 IPR 444 [35] (Lord Hoffmann); Rodi & Wienenberger AG v Henry Showell Ltd [1969] RPC 367, 392 (Lord Upjohn); Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd [2011] FCAFC 86; (2011) 92 IPR 21, 31 [45] (Greenwood and Nicholas JJ). 65 If the ordinary meaning of "formed" were applied then the amendments would have had no effect. The primary judge, with respect, correctly concluded that the amendment was intended to introduce a limitation. This is another significant factor which supports the word "formed" being given its technical meaning.

(7) The purpose of the invention: ground 2(b) 66 The final matter upon which Lynx relied, but which was not one of the matters relied upon by the primary judge, was that the nature and purpose of the invention supported a broader interpretation of "formed" (according to its natural meaning). 67 The nature and purpose of the invention, as described above in the Specification, included the following, in summary: (1) increased payload due to the increase in container volume; (2) efficient unloading; (3) reduction in weight of approximately 18% due to the reduced number of vertical reinforcing members; (4) decreased fabrication costs due to the reduced number of vertical reinforcing members; (5) better aerodynamics by reducing the drag coefficient on the side walls by 19%; (6) fatigue resistance because fewer welds means fewer areas of stress concentration. 68 Lynx submitted that these advantages were largely indifferent to whether the internal ridge is created by welding or by metalwork forming (ts 32). Hence, Lynx submitted, a purposive approach to the words of the claim would not construe the words narrowly to exclude an internal ridge which is created by welding. 69 We do not accept this submission for several reasons. 70 First, the crucial words in dispute were introduced after amendment. Prior to the amendment all of the advantages to which Lynx referred already existed. 71 Secondly, a number of the advantages had nothing to do with the internal ridge. For instance, the first two advantages (increased payload and efficient unloading) are concerned with design generally, not with the internal ridge. 72 Thirdly, other advantages concerned matters where metalwork forming was a greater advantage than addition of the ridge by welding. The fourth and sixth advantages would be greater for metalwork forming than welding. There was expert evidence that it is a matter of common general knowledge that welding causes increased cost and increased fatigue: see, for instance the evidence of Mr Wolfkamp (ts 117-118, 121) and Mr Winton ([116]-[120] esp [119]). 73 In any event, as senior counsel for Lynx properly accepted, the nature and purpose of the invention provides purposive context for the construction of the words in claim 1 but the starting point, and the end point, is the words themselves (albeit construed in that context). 74 A related submission from Lynx was that a technical approach to "formed" would lead to "curious" results inconsistent with these purposes of the invention. Lynx referred to the expert evidence of Mr Winton in relation to Figure 4b (annexure 6 to these reasons). Lynx submitted that on the technical meaning of "formed": (1) claim 1 would not permit an internal ridge which was affixed by either (i) a weld between 8b and 8c, (ii) a weld between 8c and 8a, or (iii) welds between 5 and 8b, and 5 and 8a; but (2) claim 1 would permit an internal ridge with one weld at 5, or one weld at 8a. 75 We do not accept that these results are curious or surprising. The different effects simply reflect whether the weld has added an internal ridge to the side wall or whether the side wall (including welded parts) has had an internal ridge formed within it.

Conclusion on the construction issue 76 For these reasons, the primary judge was correct to conclude that the word "formed" in claim 1 is used in its technical sense. Each of the grounds of appeal to which we have referred must be dismissed. The overarching grounds 1 and 2(a), and 4 must also be dismissed.

TPI's and Bradken's ground of contention: a letter on the Patent Office file 77 In the course of prosecuting Lynx's patent application, its patent attorneys, Watermark wrote to the Commissioner of Patents and sought to distinguish the invention from the prior art, saying the following: The container of the present invention, unlike the prior art, uses a reinforcing ridge or ridges that are formed from the flat plate that makes up the side walls. One plate only is required, and the ridge or ridges are achieved through bending and not through welding or any other connections or fasteners. This techniques [sic] allows much longer spans between the side reinforcing members, and thinner material can be used. This results in a lighter container… (emphasis added) 78 TPI and Bradken relied upon this letter in a notice of contention as follows: 1. The Judgment should be affirmed on the ground that the finding in respect of claim construction at Judgment [67] ought also to have been made by the primary judge in light of: (a) the content of the Letter. Particulars (i) The primary judge erred at Judgment [86] by finding that the Letter was inadmissible evidence as to the proper construction of claim 1. (ii) The primary judge ought to have admitted the Letter into evidence and then ought to have found, contrary to Judgment [87]-[90], that the Appellant's construction of claim 1 was not supportable to the extent it was contrary to that set out in the Letter. 79 In light of our conclusion on the appeal it is not strictly necessary to address this issue in the notice of contention. However, as this issue is potentially relevant to the questions of construction in the appeal and in circumstances in which the point is a short one and counsel for Bradken and Lynx made full submissions on it, we explain below why we would dismiss it. 80 In Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2004] UKHL 46; (2004) 64 IPR 444 [35], Lord Hoffmann explained that the courts of the UK, the Netherlands and Germany discourage or prohibit the use of the patent office file in aid of construction. Lord Hoffmann explained that one good reason for this is that "the meaning of the patent should not change according to whether or not the person skilled in the art has access to the file and in any case life is too short for the limited assistance which it can provide". 81 The same is true in Australia. Simply because the patent office file wrapper can be obtained by a freedom of information search does not make its contents relevant or admissible. The words of a patent are construed objectively by reference to the meaning which the normal person skilled in the art would attach to them. The patent file will generally provide only a partial insight into irrelevant subjective intentions, opinions, purposes, or actions of the patentee: see Sartas v Kokoura (1994) 30 IVR 479, 486 (Gummow J). Earlier, in Prestige Group (Australia) Pty Ltd v Dart Industries Inc [1990] FCA 406; (1990) 26 FCR 197, his Honour said (with the concurrence of Northrop and Lockhart JJ) that it is not for a third party … to be put to inquiry as to the carriage of the application before the specification took its final form. The authorities in this country have eschewed recourse to extrinsic materials of this kind, and it is not even permissible to resort as of course to the body of the specification to vary or qualify the meaning of the terms in the claims. 82 Bradken sought to navigate these significant obstacles by submitting that the letter was admissible on two statutory bases. The first was under s 79(1) of the Evidence Act 1995 (Cth) as evidence from a person with "specialised knowledge based on the person's training, study or experience" involving "an opinion of that person that is wholly or substantially based on that knowledge". Bradken submitted that Watermark fell within s 79(1), as an agent of the expert patentee inventors, Mr Killian and Mr Mazure, who were principals of Lynx Engineering Consultants. Bradken submitted that a reasonable inference could be drawn under s 183 of the Evidence Act, that the letter had been written on the instructions of the patentees. Bradken submitted that the letter was a statement against interest which would not require the opinion giver to be called, relying upon Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641, 657. 83 The second basis upon which Bradken relied upon the letter as being admissible was as a business record which was sent by the agent of Lynx with Lynx's authority and approval. Bradken asserted that it was admissible under the business record exception to the hearsay rule in s 69 of the Evidence Act. 84 Neither of these bases for admission can withstand any scrutiny. 85 First, the requirement in s 79 of the Evidence Act of an opinion is not satisfied in this case. The inference can be drawn that the letter was written on instructions from the patentee. But the letter is not a statement of opinion from the patentee but a submission by the patent attorney authors with the assistance of their instructions. The letter begins with the words "We submit that the amended claims more clearly distinguish the present invention from the citations". It submits, with summary reasons, why the prior art can be distinguished. The letter also does not express any opinion about the relevant words in any of the claims or the Specification. And in the relevant passage, quoted above, the letter incorrectly asserts that when the reinforcing ridge is formed from the flat plate that makes up the side walls, one plate only is required. As we have explained, this is wrong. The side wall is a composite wall. 86 Bradken's reliance upon Australian Woollen Mills Ltd v F S Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 is also misplaced. In that decision the High Court was concerned with a claim for passing off and trademark infringement. The claims for infringement of trademark and passing off relied, respectively, upon deliberate and fraudulent intention (646) and fraudulent intention to cause confusion (647). In the passage upon which Bradken relied, Dixon and McTiernan JJ said that "when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive" (657). The evidence of the subjective opinion of the trader in that case was relevant both directly (to his intention) and indirectly (to whether his conduct was likely to deceive, as intended). There was no suggestion by their Honours that the trader's conduct was relevant to questions of objective construction of words. 87 Secondly, the requirement in s 79 of specialised knowledge, based on training and experience is not satisfied. Even if the letter were an opinion, it would be an opinion of the patent attorneys, presumably upon instructions from Lynx. But the patent attorneys are not persons who have specialised knowledge in matters such as metal formwork. Nor is there any evidence that Lynx (which provided the instructions to the patent attorneys), as opposed to some of the individuals within that corporation, has such expertise. Even if the corporate entity, Lynx, were somehow to be deconstructed into the two inventors, which of the two inventors' opinions would the letter represent? 88 Thirdly, assuming that the letter is a business record, and an exception to the hearsay rule under s 69 of the Evidence Act, this does not make the letter admissible opinion evidence. As French CJ, Heydon and Bell JJ said in Lithgow City Council v Jackson [2011] HCA 36; (2011) 244 CLR 352, 362-363 [19], s 69(2) "does not provide that the evidence is admissible. It is only admissible if no other exclusionary rule applies". As their Honours explained, s 76 excludes "[e]vidence of an opinion" not "evidence by a witness of an opinion". 89 For these reasons, we would dismiss this first ground of the notice of contention.

Bradken's second ground of contention: a "first wall portion" 90 Bradken's second ground of contention was as follows: The primary judge ought also to have answered the Preliminary Question 'no' by reason that the Bradken Wagon does not include a "first wall portion" within sub-paragraph (a) of the Preliminary Question. 91 In circumstances in which we have concluded that the appeal must be dismissed because sub-paragraph (b) of the preliminary question should be answered in the negative, it is unnecessary to consider whether it should also be dismissed in the Bradken appeal because sub-paragraph (a) also had not been satisfied. The reasons why it is unnecessary to consider is because this issue was not addressed by the primary judge and may not have been argued in any detail before him, it was only argued briefly on appeal, and it is independent of the issues on appeal.

Conclusion 92 For the reasons we have given, the appeal must be dismissed. 93 The primary judge explained that there was no "real issue" that if the technical meaning of "formed" were adopted then none of the ore wagons of TPI or Bradken would infringe claim 1 ([91]). In particular, it had not been contended before the primary judge, or before this Court, that the welded ridges in the TPI and Bradken wagons were "inessential integers" or, to use the well-known phrase of Lord Cairns LC, outside the "pith and marrow" of the claim (see Clark v Adie (1877) 2 App Cas 315, 320). 94 With one exception, it also appeared to be common ground on this appeal that the TPI and Bradken wagons would not infringe claim 1 if "formed" bore its technical meaning. That exception was a written submission (at [32]) by Lynx that relied upon evidence that metal "forming" (in the technical sense) could be achieved by welding pieces together rather than just "bending", "pressing", or "moulding into shape". To the extent that this submission was not abandoned in reply (see [4]), there are three reasons why this submission should not be accepted. First, it was not a ground of appeal. Secondly, there was expert evidence that supported this definition by the primary judge (see Mr Wolfkamp, ts 121, 123-124). Thirdly, none of the references cited by Lynx supports the assertion that metal can be "formed" by welding pieces together. Those references were as follows: (1) affidavit evidence from Mr Grove (at [11]) where Mr Grove says that there are many "other manufacturing techniques available" to "form" a product out of metal but does not mention welding; (2) oral evidence from Mr Grove (ts 77) where he says that processes of metal forming include the following list (which does not include welding) "rolling, extruding [forcing hot or cold metals or plastics through dyes], drawing, sketching, pressing or deep drawing, coining, hammering, forging, bending and breaking"; and (3) oral evidence from Mr Wolfkamp (ts 124) where he gave examples of forming as including "forging, extrusion, and drawing" but when asked if it included "joining" he replied "Not strictly. No". 95 Apart from this matter, there was no real challenge to the reasoning of the primary judge that there was no infringement of claim 1 if the word "formed" bore its technical meaning. That conclusion is consistent with both the expert evidence and the exhibits which were pictures of the wagons. In those pictures the ridge is respectively illustrated by a highlighted white line and by an arrow with the description "stiffening rib plate" (ignoring the vertical black line). 96 The appeal must be dismissed. I certify that the preceding ninety-six (96) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Besanko, Jagot and Edelman.

Associate: Dated: 3 March 2016 ANNEXURE 1 Figure 1 ANNEXURE 2 Figure 2a ANNEXURE 3 Figure 2b ANNEXURE 4 Figure 3a ANNEXURE 5 Figure 3b ANNEXURE 6 Figures 4a, 4b and 5

Evidence Act 1995(Cth)ss 69, 69(2), 76, 79, 79(1), 183

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