BLH Engineering and Construction Pty Ltd v Pro 3 Products Pty Ltd [2015] FCA 833

Procedural Posture

Application Under S 128 of the Patents Act 1990 (cth) for Relief for Unjustified Threats of Patent Infringement Proceedings, With Related Australian Consumer Law Claims and Patent Validity and Infringement Issues / Final Judgment After Hearing; Cross Claim Discontinued by Leave on 20 April 2015

Legal Issues

1. 1 ['Whether Australian Innovation Patent No 2011100489 was invalid and liable to be revoked for lack of novelty or absence of an innovative step in light of United States patent No 5,297,890.' 'Whether the BLH Stop Drop Barricading System, including the BLH clip and barbed pin, infringed Claim 1 of Australian Innovation Patent No 2011100489.' 'Whether communications sent on behalf of the respondent amounted to threats to take infringement proceedings within the meaning of s 128 of the Patents Act 1990 (Cth).' 'Whether any threats were unjustifiable.' "Whether the respondent's communications amounted to false or misleading representations in trade or commerce under ss 18 and 29(1)(m) of the Australian Consumer Law." 'Whether declarations, an injunction, damages and a certificate under s 19(1) of the Patents Act 1990 (Cth) should be granted.']

Ratio Decidendi

The applicants failed to establish that Claim 1 of the Patent lacked novelty or an innovative step: the US Patent did not disclose a bracket that, in an open configuration, allowed clipping onto and retention around the post, nor did it disclose a bracket for mounting a guard panel as claimed. However, the respondent failed to prove infringement because the BLH clip did not have the two distinct open and closed configurations required by Claim 1 and any clamping effect from inserting the barbed pin was only incidental and insignificant, not the clamping required by the claim. The letters dated 2 September 2011 and 27 January 2012 threatened infringement proceedings within s 128 and,...

Court Disposition

Declarations and an injunction granted under s 128 of the Patents Act 1990 (Cth); otherwise the Originating Application dismissed; no damages awarded; certificate given that validity of Claim 1 was questioned.

Orders

• ["By the letter dated 2 September 2011 from the respondent's patent and trade mark attorneys to the first applicant, the respondent threatened the first applicant with proceedings for the infringement of Australian Innovation Patent No 2011100489." 'The threat referred to in Declaration 1 above was unjustifiable.'...