Quaker Chemical (Australasia) Pty Ltd v Fuchs Lubricants

Introduction 1 These proceedings concern two Patents, the Standard Patent, Australian Patent No. 2012304245, entitled Method for Detecting Fluid Injection in a Patient, with a priority date of 2 September 2011, and the Innovation Patent, Australian Patent No. 2013100458 which in part is in similar terms. The Innovation Patent is a divisional of the Standard Patent claiming the same priority date, and was certified on 25 July 2013. 2 The Patents relate generally to a method for detecting high pressure fluid injection (HPFI or HPI) injuries. These injuries can occur where fluid is kept under high pressure in machinery, such as hydraulic machinery used in mines. For example, longwall systems are used to extract coal resources from underground. They utilise many very large hydraulic roof supports which operate under extremely high pressures, often 5000 psi and above, and require very large amounts of hydraulic fluid given their size, length of hosing and pressure requirements. 3 Fluid may escape from the machinery, for example, through a small crack in a tube carrying the fluid. When it escapes, it can emerge under high velocity, as a fine stream of liquid, which is capable of injecting itself into the body of a person. Injuries of that type can be difficult to detect, but can lead to severe health consequences. 4 As explained under the heading "Preferred Embodiment of the Invention", Figure 1 in each of the Patents shows a view of a fluid injection according to the invention: … Tubing 100 has pressurised fluid such as hydraulic fluid 100a flowing through it. The hydraulic fluid 100a has fluorescence 100b added to it. Tubing 100 includes a leak 101 that has resulted in a high pressure leak 102. In this instance a patient's hand 103 is in the way of the stream and the hand 103 receives a fluid injection through injection point 104. 5 The Patents are directed to a method for detecting fluid injection in a patient, having certain specified steps. In broad outline, the method involves the inclusion in the machine fluid, such as the hydraulic fluid, of an additive, which is a dye that fluoresces. That dye will fluoresce in the presence of ultraviolet light, and the method involves the use of that property to detect fluid injection in a patient. 6 The parties appeared to be at one in saying that the nature of the invention was easily conveyed in a single sentence. "It is simply a method where fluorescent dye is added to the fluid in a hydraulic system and, if it is suspected that fluorescently-dyed fluid has been accidentally injected into a person, then a UV/blue light is shone on the site of the suspected injection, with fluorescence in or under the skin said to assist in indicating where the injection has occurred." 7 The inventor recorded in the Patents is Mr Wayne Thompson. The original applicants for the Patents were two companies, Thommo's Training and Assessment Systems Pty Ltd (TTAAS) and T&T Global Solutions Pty Ltd (T&T), of which Mr Thompson was a director. 8 Quaker Chemical (Australasia) Pty Ltd (Quaker) acquired the Patents from those companies in late 2014. 9 Fuchs Lubricants (Australasia) Pty Ltd (Fuchs), the respondent/cross-claimant, was a supplier of fluid products capable of being used in the claimed method. In particular, Fuchs supplied hydraulic fluid. 10 Two categories of hydraulic fluid supplied by Fuchs were water-based fluids, used in longwall machinery, and mineral oils, used in other hydraulic machinery. 11 Fuchs supplied water-based longwall fluids and concentrates under the "Solcenic" brand and mineral oil products under the "Renolin" brand. 12 TTAAS, and later Quaker, offered two "Oil-Glo" fluorescent dye additive products: Oil-Glo WB (water-based) (also called WD 802 or Oil-Glo 802) for use in longwall fluids, and Oil-Glo OB (oil-based) (also called Oil-Glo 33) in mineral oil systems. These two products were later renamed FluidSafe WB and FluidSafe OB. Quaker had earlier offered a water-based fluorescent dye additive product called "Quinto Glow". 13 The essence of the case brought by Quaker was that Fuchs had infringed the Patents by supplying, or offering to supply, to certain of its customers, Solcenic and Renolin containing fluorescent dye, in circumstances where the dye or product was not acquired from the patentee. That is, the infringement case was concerned with the supply of Solcenic or Renolin products with a different dye included in particular cases that was not Oil-Glo or FluidSafe. The contention was that Fuchs had infringed the Patents by supplying products in circumstances where the use of those products by the persons to whom they were supplied would infringe the claimed method. 14 Quaker did not complain that the supply by Fuchs of Solcenic or Renolin products which included, or was later mixed by the customer with, Oil-Glo or FluidSafe sourced from the patentee was an infringement. It was accepted that the Oil-Glo or FluidSafe dye was supplied by TTAAS or Quaker on the basis that it could be used for that purpose, and that there was therefore an implied licence, or an authorisation, for that use. As I have said, Quaker contended that subsequently Fuchs sought to, and did, include in its products fluorescent dye additives not sourced from the patentee. It was that conduct that gave rise to the infringement claim. In particular, Quaker claimed, it was the supply by Fuchs to three customers, in specific instances, that involved an infringement by supply. Those customers were: first, from 2016 onwards, BHP Billiton Mitsubishi Alliance (BMA), which was the operator of a mine site at Broadmeadow; second, from 2015 onwards, Glencore, which was the operator of various mine sites, relevantly including Oaky North, Bulga, Ulan No. 3 and Ulan West; and third, from 2015 onwards, Yancoal, the operator of, relevantly, Moolarben and Ashton mine sites. 15 In terms of the legal principles, there were three ways in which the case for Quaker was put. The first relied on s 117 of the Patents Act 1990 (Cth). The second relied on the concept of authorisation under s 13 of the Act: infringement by authorising the act of another. The third relied on the law of joint tortfeasance in a similar way. 16 Fuchs cross-claimed against Quaker, and alleged that both Patents were invalid and liable to be revoked on the grounds of lack of clarity, insufficiency and failure to disclose best method, lack of utility, lack of novelty and secret use. It also alleged that the Standard Patent and Innovation Patent were invalid and liable to be revoked on the ground of lack of fair basis and lack of support, respectively. 17 2 September 2011 was the date of filing of the provisional specification. One significant date, besides the priority date of 2 September 2011, was 2 September 2010, being the date 12 months before the earliest priority date of the claims of the Standard Patent and the Innovation Patent. 2 September 2010 is relevant in considering the publication or use of the invention for the purpose of reasonable trial or experiment. 18 2 February 2012 was the date of filing of the complete specification for the Standard Patent. 2 February 2011 is therefore the date which is 12 months before the filing date of the complete specification for the Standard Patent. That date is relevant because there is an additional grace period provided under the Act and the Patents Regulations 1991 (Cth). In short, information made publicly available by publication or use of the invention by or with the consent of the inventor after that date is to be disregarded. 19 10 April 2013 was the date of filing of the complete specification for the innovation patent. 20 On 21 April 2017, Jagot J ordered that the issue of the quantum of any pecuniary relief be determined separately from, and subsequent to, the determination of all other issues in the proceeding. That leaves for determination the question of liability for additional damages, not the quantification of them, as part of the first hearing.