Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd [2019] FCAFC 240

Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd [2019] FCAFC 240

Claim 1 was properly construed as a product claim for a fence plinth made from sheet material having the stated characteristics, not as requiring a plinth shaped from an initially flat sheet. The word "sheet" could include profiled material and, on the evidence, the Oxworks plinth satisfied that description and infringed. However, the discretion to award additional damages miscarried because the primary judge failed to consider that Oxworks had a reasonably arguable non-infringement position based on the "formed from sheet material" integer; when that factor was considered, additional damages under s 122(1A) were not warranted.

Jurisdiction
Australia
Judgment Date
23 December 2019
Procedural Posture
Appeal in Patent Infringement Proceedings / Appeal From Gram Engineering Pty Ltd V Oxworks Pty Ltd [2019] FCA 689 Concerning Construction, Infringement and Additional Damages
Outcome
Appeal allowed in part on additional damages; construction and infringement grounds dismissed; otherwise appeal dismissed subject to any submissions on consequential orders.
Legal Topics
['patent Claim Construction' 'patent Infringement' 'additional Damages Under S 122(1 A) of the Patents Act 1990 (cth)' 'construction of "formed From Sheet Material"' 'reasonably Arguable Non Infringement Defence']
['intellectual Property' 'patents'] ['patent Claim Construction' 'patent Infringement' 'additional Damages Under S 122(1 A) of the Patents Act 1990 (cth)' 'construction of "formed From Sheet Material"' 'reasonably Arguable Non Infringement Defence']

Case Brief

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Procedural Posture

Appeal in Patent Infringement Proceedings / Appeal From Gram Engineering Pty Ltd V Oxworks Pty Ltd [2019] FCA 689 Concerning Construction, Infringement and Additional Damages

Legal Issues

  1. 1 ['Whether claim 1 of Australian Patent No. AU2004291566 required a fence plinth to be shaped from a starting point of flat sheet material or extended to a plinth made from profiled sheet material.' 'Whether the Oxworks ColourSmart Plinth was formed from sheet material and infringed the asserted claims.' 'Whether the primary judge erred in awarding additional damages under s 122(1A) of the Patents Act 1990 (Cth).' 'Whether a reasonably arguable defence to infringement was relevant to flagrancy and the discretion to award additional damages.']

Ratio Decidendi

Claim 1 was properly construed as a product claim for a fence plinth made from sheet material having the stated characteristics, not as requiring a plinth shaped from an initially flat sheet. The word "sheet" could include profiled material and, on the evidence, the Oxworks plinth satisfied that description and infringed. However, the discretion to award additional damages miscarried because the primary judge failed to consider that Oxworks had a reasonably arguable non-infringement position based on the "formed from sheet material" integer; when that factor was considered, additional damages under s 122(1A) were not warranted.

Court Disposition

Appeal allowed in part on additional damages; construction and infringement grounds dismissed; otherwise appeal dismissed subject to any submissions on consequential orders.

Orders

  • ['Any party wishing to contend for different or other orders consequent upon these reasons to those set out in Order 2 must file and serve by no later than 31 January 2020 a written submission of no more than 5 pages, with any responsive submission of no more than 5 pages to be filed and served within 7 days...