Beadcrete Pty Ltd v Fei Yu (t/as Jewels 4 Pools) (No 2) - [2013] FCA 187

FEDERAL COURT OF AUSTRALIA
Beadcrete Pty Ltd v Fei Yu trading as Jewels 4 Pools (No 3) [2013] FCA 187

Citation: Beadcrete Pty Ltd v Fei Yu trading as Jewels 4 Pools (No 3) [2013] FCA 187

Parties: BEADCRETE PTY LTD (ACN 071 743 961), DESIGNER CONCRETE COATINGS PTY LTD (ACN 102 760 234), BUYRITE STEEL SUPPLIES PTY LTD (ACN 053 173 041) and DESIGNERITE PTY LTD (ACN 146 670 706) v FEI YU TRADING AS JEWELS 4 POOLS, JEFFREY STUART MCALISTER, PEBBLE MASTERS PTY LTD (ACN 087 540 734), TWIN COAST POOLS PTY LTD (ACN 104 149 484), MELKEN DEVELOPMENTS PTY LTD TRADING AS BAYSIDE POOLS & PAVING (ACN 052 945 169) and GRIN DISTRIBUTIONS PTY LTD (ACN 133 541 563)

File number(s): NSD 111 of 2011

Judge: JAGOT J

Date of judgment: 8 March 2013

Catchwords: PATENTS – validity – priority date – clarity – inventive step – manner of manufacture – infringement – supply of glass beads in size ranges referable to patent claims

Legislation: Patents Act 1990 (Cth)
Patents Regulations 1991 (Cth)

Cases cited:
Apotex Pty Ltd v Sanofi-Aventis (2008) 78 IPR 485; [2008] FCA 1194
Australian Securities and Investments Commission v Hellicar (2012) 286 ALR 501; [2012] HCA 17
Blatch v Archer (1774) 1 Cowp 63
British American Tobacco (Investments) Ltd v Philip Morris Ltd (1999) 47 IPR 351; [1999] FCA 1203
Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254; [2006] FCA 261
Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160
Elconnex Pty Limited v Gerard Industries Pty Limited (1991) 32 FCR 491
Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331; [2000] FCA 890
Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 224 ALR 168; [2005] FCAFC 220
Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442; [2004] FCA 323
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121
H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151; [2009] FCAFC 70
Hill v Evans (1862) 31 LJ Ch 457
Hill Pty Ltd v Great Western Corp Pty Ltd (2002) 55 IPR 257; [2002] FCAFC 183
ICI Chemicals v Lubrizol Corporation (2000) 106 FCR 214; [2000] FCA 1349
Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20; [2008] FCAFC 139
Jones v Dunkel (1959) 101 CLR 298
Jupiters Limited v Neurizon Pty Limited (2005) 65 IPR 86; [2005] FCAFC 90
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2007) 235 CLR 173; [2007] HCA 21
Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 25
Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330
Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990 91 ALR 513
Old Digger v Azuko Pty Ltd (2000) 51 IPR 43; [2000] FCA 676
Olin Corporation v Super Cartridge Co. Pty Ltd (1977) 180 CLR 236 at 246
Quantel Ltd v Spaceward Microsystems Ltd [1990] RPC 83
Radiation Limited v Galliers and Klaerr Pty Ltd (1938) 60 CLR 36
Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239; [1999] FCA 898]
Re ICI Chemicals & Polymers Ltd and Lubrizol Corp Inc (1999) 45 IPR 577; [1999] FCA 345
Rodi & Wienenberger AG v Henry Showell Ltd [1969] RPC 367
Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 177 ALR 231; [2000] FCA 980
Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577
Tye-Sil Corporation Ltd v Diversified Products Corp (1991) 20 IPR 574
Windsurfing International Inc v Petit [1984] 2 NSWLR 196

Oxford English Dictionary Online

Date of hearing: 2 - 10 October 2012

Place: Sydney

Division: GENERAL DIVISION

Category: Catchwords

Number of paragraphs: 147

Counsel for the Applicants: Mr A J Bannon SC with Ms P Arcus

Solicitor for the Applicants: Creagh & Creagh

Counsel for the Respondents: Ms S J Goddard SC with Mr H P T Bevan

Solicitor for the Respondents: Conditsis Lawyers

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 111 of 2011

BETWEEN:
BEADCRETE PTY LTD (ACN 071 743 961)
First Applicant

DESIGNER CONCRETE COATINGS PTY LTD (ACN 102 760 234)
Second Applicant

BUYRITE STEEL SUPPLIES PTY LTD (ACN 053 173 041)
Third Applicant

DESIGNERITE PTY LTD (ACN 146 670 706)
Fourth Applicant

AND:
FEI YU TRADING AS JEWELS 4 POOLS
First Respondent

JEFFREY STUART MCALISTER
Second Respondent

PEBBLE MASTERS PTY LTD (ACN 087 540 734)
Third Respondent

TWIN COAST POOLS PTY LTD (ACN 104 149 484)
Fourth Respondent

MELKEN DEVELOPMENTS PTY LTD TRADING AS BAYSIDE POOLS & PAVING (ACN 052 945 169)
Fifth Respondent

GRIN DISTRIBUTIONS PTY LTD (ACN 133 541 563)
Sixth Respondent

JUDGE:

JAGOT J

DATE OF ORDER:

8 March 2013

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:
1.The parties are to confer and notify the court within 7 days of mutually convenient dates for further hearing on the form of the orders to be made and costs and are also to file within 7 days an agreed timetable for the filing and service of outlines of submissions and proposed orders.

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

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 111 of 2011

BETWEEN:
BEADCRETE PTY LTD (ACN 071 743 961)
First Applicant

DESIGNER CONCRETE COATINGS PTY LTD (ACN 102 760 234)
Second Applicant

BUYRITE STEEL SUPPLIES PTY LTD (ACN 053 173 041)
Third Applicant

DESIGNERITE PTY LTD (ACN 146 670 706)
Fourth Applicant

AND:
FEI YU TRADING AS JEWELS 4 POOLS
First Respondent

JEFFREY STUART MCALISTER
Second Respondent

PEBBLE MASTERS PTY LTD (ACN 087 540 734)
Third Respondent

TWIN COAST POOLS PTY LTD (ACN 104 149 484)
Fourth Respondent

MELKEN DEVELOPMENTS PTY LTD TRADING AS BAYSIDE POOLS & PAVING (ACN 052 945 169)
Fifth Respondent

GRIN DISTRIBUTIONS PTY LTD (ACN 133 541 563)
Sixth Respondent

JUDGE:

JAGOT J

DATE:

8 March 2013

PLACE:

SYDNEY

REASONS FOR JUDGMENT
1. THE PROCEEDING

This proceeding concerns a claim for infringement of Australian Patent No 733668 (the patent). The first applicant, Beadcrete Pty Ltd, is the patentee of the patent, the second applicant is the manufacturer of a product known as “Beadcrete” under exclusive licence from the first applicant, and the third and fourth applicants are the distributors of that product. The respondents supply a product known as “Jewels 4 Pools” the use of which is alleged to infringe the patent. The respondents deny infringement and contend also that the claims of the patent said to be infringed are invalid on various grounds.
2. THE PATENT
2.1 Background
The patent is a divisional of Patent No 18009/95 filed on 16 February 1995 (the parent application) and, pursuant to the provisions of the Patents Act 1990 (Cth) (the Act) and Patents Regulations 1991 (Cth) (the Regulations), claims priority from the filing of Provisional Patent Application No PM 3887 filed on 16 February 1994 (the provisional application).
The priority date of the patent is relevant only to resolution of a question of invalidity by reason of prior use. The respondents contend that the parent application and the provisional application are irrelevant to the priority date as neither application discloses the invention as claimed in the patent. Accordingly, the priority date of the patent is the date on which the application for the patent was filed, being 22 July 1999. The respondents contend by that date and in fact by no later than 1995, the claimed invention had been exploited by the first applicant and its predecessor in title in a manner which destroyed the novelty of the invention. The applicants contend that the invention is fairly disclosed in the provisional and parent applications but that, in any event, there was no relevant prior use of the invention as claimed before 22 July 1999 so the priority date issue is immaterial.
2.2 The patent specification
The specification contains numerous typographical errors. Where the error is clear, I have corrected it in the quotes below for convenience. The field of the invention is said in the specification to relate to:
surface finishes for pathways, walls; swimming pools and other structures and more particularly relates to a surface finish which is of a cementitious nature and which includes least one aggregate type comprising glass beads.
In a section entitled “Background of the Invention” the specification states:
In the building industry there has been prolific use of aggregate surfaces for paving footpaths, surfacing of prefabricated building panels and slabs to provide attractive and functional facades and in and around swimming pools and the like. The known aggregate mixes have invariably utilized aggregate materials which include stones, pebbles and the like mixed in a matrix of cementitious material-selected from cement or resin.
The selection of pebbles and stones as the aggregate material usually dictates the appearance of the finish particularly with respect to its color and texture. When resins are used, the aggregate provides the final surface coloration as the cementitious resins are generally clear. An alternative surface coating may be formed by using colored mortar with pebbles and stones.
Despite the use of a wide range of aggregates to produce a variety of surface finishes successfully preparing a cementitious surface matrix using as the aggregate material glass beads either alone or with another aggregate materials selected from precious or semi precious stones, sands, quartz, marble, granites and the like has been difficult to achieve.
It was previously thought to be unsatisfactory to attempt to use other than conventional aggregates in hard-wearing surface finishes as the bonding achieved was inferior compared with conventional aggregates. In the building industry it has been considered unwise to use materials such as glass beads as aggregates as the glass is generally considered to be insufficiently porous or tough enough to establish an effective bond. The bond is also compromised by alkalinity bleeding out from the glass beads.
A number of approaches have been followed in the use of glass beads and cement formulations to provide surfaces having good light reflectivity. U.S. Patent No. 4,218,260 to Metzler discloses reflective concrete bodies in the form of slabs which can be used on road surfaces. The concrete slabs incorporate crystal balls of a uniform particle size within the range of about 0.2-0.6 millimeters. The glass balls in the reflective slabs are configured so that they are arranged in even horizontal rows through the vertical distribution of the slab. After the slabs are formed and the concrete matrix allowed to harden for a suitable period of time, for example, 29-30 days, the surface is etched with a phosphoric acidsolution to expose at least 50% of the top layer of glass balls. As an alternative to the use of glass beads of a uniform size, EP 518,854 discloses a cement formulation incorporating glass beads in which a particular particle size distribution of small and large beads is employed to ensure good reflectivity and compaction of the beads so that they are firmly incorporated into the cement matrix through the use of an adhesive agent. In EP 518,854, two particle size distributions are employed. The larger particle size component is in the range of 1.5-7 millimeters; the smaller particle size component is within the range of 1.2-1.5 millimeters. The components are employed in relative concentrations in which the smaller size component is present in a greater amount than the larger size component, preferably in a proportion of the smaller component to the larger component of about 2: 1.
Yet, another cement formulation employing glass spheres of relatively smaller particle sizes is disclosed in British Patent No. 1,397,737. Here, glass spheres approximately 0.25mm to 1.75mm in diameter, which are coated with a water-repellent material such as a silicone, are employed to form a reflectorized concrete screed laid down at a thickness of at least 1/2-inch and preferably from 1/4-inch to about 2 1/2 inches. The concrete screed can be formed from a blend of white portland cement, calcined flint particles, a titanium oxide pigment, and a binding agent which is designed to assist in preventing the reflective spheres from loosening under wear.
Under the heading “Summary of the Invention” the specification continues:
The present invention comprises a surface finish for application to a vertical, horizontal, or sloping surface/s of a structure or object which provides a substrate for said surface finish, the surface finish comprising a matrix formed from a combination of at least a cementitious material, water, and glass beads. The surface finish comprises a blended matrix of cementitious mortar, an aggregate of glass beads used alone or in conjunction with other aggregates selected from precious stones, semiprecious stones, or raw stones, and liquid adhesive which comprise a combination of a siliconiser and polymeriserer for enhancing the bond between the cementitious mortar and glass beads. The finish may be applied to the surface of a structure, such as a building facade as a paving surface, or to other suitable objects formed from a material capable of forming a bond with the finish.
…
The cementitious material preferably is washed away such that 30-60% of the surface area of a substantial number of the glass beads on the surface of the matrix is exposed. Preferably, no more than 40% of the bead surface area is exposed at the surface of the matrix.
More specifically, in accordance with the present invention, there is provided a process for the application of a reflective surface finish to a substrate structure. In carrying out the process, there is provided a reflective cementitious composition comprising portland cement, glass beads, and a barrier-forming material selected from the group consisting of a polymerizer and a siliconizer and mixtures thereof. Preferably, the barrier forming material comprises a latex polymer. The portland cement is employed in an amount within the range of 113-213 of the total weight of the formulation. The glass beads have particle sizes within the range of 1-5 millimeters and a weight average particle size within the range of 1.5-4.5 millimeters. The beads are employed in a particle-size distribution defining a major component within a relatively large incremental size range and a minor component within a smaller incremental size range. The weight of the beads within the large incremental size range is greater than the weight within the smaller incremental size range. Preferably, this weight ratio is in the range of 2-3 and more preferably within the range of about 2-2.6. The latex polymer is present in an amount within the range of at least 2 wt% of the glass beads but less than 8 wt% of the total amount of cement and glass beads in the formulation. The cement formulation is hydrated with water in an amount to provide a water/cement ratio within the range of about 1/3-2/3 to provide a cementitious paste which is then applied to the surface of the substrate structure. Normally, the water content is near the upper end of this range to provide a water content of 65 wt.% of the cement. The paste preferably is applied to a thickness within the range of about 14-1/2-inch and, after any trowelling or other surface treatment to provide a smooth surface, is allowed to set for a time to form an initial set. Thereafter, the surface is washed with an aqueous medium to remove a small amount of cementitious material from the surface layer of the beads to form partially-exposed areas of the beads.
The “Detailed Description of the Invention” states that:
The present invention involves a cementitious composition comprising a mixture of glass beads in a portland cement composition together with a barrier-forming material which functions once the cementitious composition is hydrated and allowed to set to protect the glass beads from the surrounding matrix environment. While the glass beads employed in the present invention can be similar to those described previously, the present invention proceeds in a fashion directly contrary to the prior art in its distribution of glass beads along a particle size distribution which results in a relatively large bead component and a relatively small bead component which functions to provide a strong surface reflective material which is not only highly reflective but also provides good integrity. Thus, rather than using a more or less uniform particle size of beads, as in the aforementioned patent to Metzler, or a particle size distribution in which relatively small beads are employed as a major component together with somewhat larger beads, in the present invention the larger size beads provide the major bead component. The surface finish of the present invention comprises a matrix of cement, water, an adhesive, and glass beads defining an aggregate material. The adhesive can be introduced into the mix with the water to facilitate bonding between the glass beads and the mortar. As described below, known adhesives may be used such as Xycrylic polymerizer mixed with a siliconiser to provide a mechanical locking, and thus binding between the beads and the mortar. In utilizing the surface finish of the present invention, many variations of aggregate mix can be achieved to provide different aesthetic, bonding, and structural effects. The blend proportions and constituents over and above the essential constituents are primarily determined by the particular application of the surface coating and, more particularly, whether it would be used on a horizontal, vertical, or sloping substrate surface. The nature and quality of the substrate material is also a determinant of the mix.
…
The polymerizer used in the present invention may be of any suitable type which is compatible with the cement, preferably while portland cement as stated above and which functions to act as a seal or barrier between the glass beads and the cement during hydration to enable good mechanical locking of the beads in place after the formulation has finally set. Polymers which are compatible with portland cement and used in special purpose concrete applications are incorporated into products commonly referred to as polymer-modified concrete (PMC) or polymer-portland cement concrete (PPCC). Such polymers can take the form of latex-type polymers which are sometimes used in so-called latex-modified concrete (LMC). Typical of such polymers are styrene butadiene rubber-type polymers, polyvinyl acetate ethylene co-polyrnerp, and polyacrylate homopolymers, including polymers of acrylic acid, methylacrylic acid, niethyl methacrylate, and butylacrylate. A particularly preferred polymerizer for use in the present invention is an acrylic hemopolymer available from Rohm & Haas Company under the designation “DRYCRYL DP-2903”.
…
The polymerizer functions, upon addition of water to the mixture, to coat the glass beads and protect them from attack by cement components, such sodium or potassium-based alkalies which can lead to frosting of the glass beads thus retarding their reflectability in the final product and ultimately degrading the beads. The latex polymer provides a barrier material which is interposed between the surfaces of the bead and the encapsulating matrix material. This boundary layer will not harden so long as the adjacent cementitious mixture is hydrated. Thus, the boundary layer begins to harden after the cement achieves an initial set and begins to harden. The matrix material is partially removed from the surface to expose the beads as described below.
…
The siliconizer which can be employed as a optional component in the present invention includes materials which will include silicon-containing materials which are miscible with or emulsifiable in water and which functions to etch the surface area of glass beads exposed to the cement to facilitate bonding within the matrix. Suitable siliconizors include alkali metal, silicates such as potassium, silicate or sodium silicate (water glass) or other water-soluble sodium silicates such as sodium sesquisilicate, sodium orthosilicate, anhydrous metasilicate sodium, and sodium metasilicate pentahydrate. An especially suitable siliconizer for use in the present invention is sodium silicate available from Xypex, Australia, under the designation QUICKSET. This product which is conventionally used as a set accelerant for portland cement functions similarly here, but the accelerating effect of the siliconizer is offset by the polymerizer which provides a counterbalancing set-retarding effect.
The size distribution of the glass beads is important in providing relatively large beads to provide a good reflective surface area in the matrix while providing smaller beads which are interspersed within the larger beads so that they can be effectively interspersed between the relatively large beads. As described in greater detail below, the beads can be characterized as falling within two particle size distributions with the larger particle size being the predominant component. Overall the average particle size of the beads preferably will be within the range of 1.5-4.5 millimeters and more preferably within the range of about 2-3 millimeters. Although a differential particle size distribution is important in carrying out the present invention, the upper limit of the particle size distribution normally should be no more than three times the magnitude of the lower limit. While a few beads may be outside of this range, preferably at least 90% of the glass beads will fall within the designated particle size distribution. The major and minor components of the beads can he characterized in terms of average particle size values, the larger component having a average particle size greater than the midpoint of the upper and lower particle size distribution ranges and the minor component having an average particle size below this midpoint. The weight of the beads in the larger size range, as noted previously, is greater than the weight of the beads in the smaller incremental size range. Again considering the overall particle size distribution of the beads, preferably the upper value is from 2-3 times greater than the lower value and preferably no more than 2 1/2 times greater than the lower value.
The glass beads used in the present invention preferably have a size distribution within relatively narrow confines in which a major component of the beads is within a relatively large size range, termed the “large increment”, and a minor component of the beads in a somewhat smaller size range, termed the “small increment”. A particularly preferred particle size, distribution for the glass beads is one in which the major component of the glass beads is within a size range of about 2.5-3.5 millimeters in diameter and a minor component is within a small increment of 1.5-2.5 millimeters. The glass beads within the large increment size range are the predominant component, and preferably the weight ratio of beads within the large increment size range to those within the minor increment size range will be within the is range of about 2-3 and more preferably within the range of about 2.0 to 2.6. As described in greater detail below, where the formulation is designed for use as a “neat” cement (without the addition of aggregate), the ratio of the large increment portion of the beads to the small increment portion will be near the upper end of the range. Where it is designed for use in which it is to be mixed with an aggregate, such as sand, to form a concrete mixture, it will normally be near the lower end of this range.
…
Other bead distributions which have been found to be useful in carrying out the invention are as follows: 10 wt% at 1.4 mm; 20 wt% at 1.7 mm, and 70 wt% at 2.0 mm; 10 wt% at 2.36 mm, 20 wt% at 2.0-2.8 mm, and 70 wt% at 2.36-3.35 mm; 10 wt% at 2.8 mm, 20 wt% at 2.36-3.35 mm, and 70 wt% at 2.85-4.0 mm; 10 wt.% at 2.36-3.35 mm. 20 wt% at 2.85-4.0 mm, and 70 wt% at 5.0 mm; and 10 wt% at 2-2.8 mm, 20 wt% at 2.36-3.35 mm, and 70 wt% at 2.85-4.0 mm.
…
The average particle size of the glass beads employed in the present invention, ie, the average size taking into account both the small beads and the large beads, is preferably within the range of 2-4 millimeters and more preferably within the range of 2-3 millimeters. The average particle size, as referred to here, is the weight average particle size of the beads based upon the distribution of beads in the mixture. Thus, for example, for the second formulation described above and assuming an even distribution of beads across the major increment of 2.5-3.3 mm and the minor increment across the range of 1.5-2.5 mm the average particle size would be about 2.6 mm.
By providing the preferred particle size distribution in accordance with the present invention, a substantial proportion of the small beads as well as the larger beads are set within the cement matrix at the surface of the applied formulation so that the beads are mechanically locked in place by the encapsulating cement mortar. If substantial quantities of small beads, that is, those below the desired lower limit, are present in the formulation when the surface is washed to remove mortar from the beads, the removal of a substantial amount of mortar from the large beads would leave a substantially smaller bead exposed above the matrix surface throughout most of its surface area, thus exposing the small bead to removal from the matrix surface.
…
The polymers used in the present invention can include those polymers which are conventionally used in polymer concrete mixtures. Typically, such polymers as used in conventional polymer-modified concrete or mortar are used to effect the final properties affecting concrete structure such as increases in flexural strength and increased resistance to degradation due to freezing and thawing cycles and to reduce the permeability of the concrete structures. Such polymers, as are used in polymer-modified concrete can be used in carrying out the present invention, although, because of the different purpose to which the polymeric additives are put in the present invention, they are used in substantially lower concentrations than used in their conventional application. The amount of polymer in the glass bead cement formulation can be characterized in terms of its concentration relative to the glass beads and its concentration relative to the portland cement component. Normally, the latex polymer will be present in an amount of less than g wt% [sic – agreed to be 8] and usually in an amount of less than 5 wt% of the total amount of the cement and glass beads in the formulation. Considering the bead content alone, the polymer preferably will be used in an amount of at least 2 wt%, usually in an amount within the range of about 4-6 wt% of the glass beads, depending upon the presence of aggregate materials such as relatively fine aggregate as described below. In terms of the amount of polymerizer relative to the portland cement component, usually it will be preferred to add the polymerizer in an amount of 3-5 wt% of the cement component.
2.3 The claims of the patent

The infringement and revocation contentions involve claims 1, 2, 3, 9, 10, 11, 12, 13, 20, 21, 23, 24, 25 and 26 of the patent.
Those claims are as follows:
1In a structure having a reflective Surface finish, the combination comprising:
(a)a substrate material having an interface surface;
(b)a reflective material disposed on the interface surface of said substrate and comprising a plurality of glass beads and a cementitious material providing a matrix for said glass beads, at least a portion of said glass beads at the surface of said matrix projecting out of the exposed surface of said matrix providing an exposed surface area of said glass beads and being at least partially encapsulated within said matrix to provide an encapsulated surface area of said glass beads; and
(c)at least a portion of said glass beads having a boundary layer of a barrier material interposed between the head surfaces encapsulated within said matrix and being free of said boundary material on bead surfaces projecting upwardly from said matrix, said beads having an average Particle size within the range of 1.5-4.5 millimeters and a particle size distribution defining, major component of said beads within a relatively large incremental size range and a minor component of said beads within a smaller incremental size range wherein the weight of beads in the large incremental size range is greater than the weight of beads within the small incremental size range.
2.The combination of claim 1 wherein the weight ratio of beads within the large incremental size range to beads within the small incremental size range is within the range of 2-3.
3.The combination of claim 1 wherein the weight ratio of beads within the large incremental size range to the small incremental size range is within the range of about of 2-2.6.
…
9.The combination of claim 1 wherein no more, than about 40% of the surface area of the beads at the surface of said matrix is exposed.
10.The combination of claim 1 wherein said glass beads glass beads having a particle size distribution ranging from a lower value to an upper value having a magnitude no more than three times the magnitude of said lower value, said particle size distribution defining a major component of said beads within a relatively large incremental size range having an average value greater than the midpoint of said upper and lower values and a minor component of said beads within a smaller incremental size range having an average size below said midpoint wherein the weight of beads in the large incremental size range is greater than the weight of beads within the smaller incremental size range.
11.The combination of claim 10 wherein said upper value is from 2 to 3 times greater than said lower value.
12.The combination of claim 10 wherein said upper value is no more than 2 1/2 times greater than said lower value.
13.In a dry cement formulation adapted to be hydrated and applied to a substrate surface to provide a reflective surface, the composition comprising:
(a)portland cement in an amount within the range of 1/3-2/3 of the total weight of said formulation;
(b)glass beads having particle sizes between lower and upper values within the range of 1-5 millimeters and a weight average particle size within the range of 1.5-4,5 millimeters, said beads having a particle size distribution defusing a major component of said beads within a relatively large incremental size range having a an average value greater than the midpoint of said upper and lower values and a minor component of said beads within a smaller incremental size range having an average value below said midpoint wherein the weight of beads in the large incremental size range is greater than the weight of beads within the small incremental size range; and
(c)a latex polymer present in an amount within the range of at least 2 wt.% of the glass beads in said formulation but less than 8 wt.% of the total amount of cement and glass beads in said formulation.
…
20.In a dry cement formulation adapted to be hydrated and applied to a substrate surface to provide a reflective surface, the composition comprising:
(a)portland cement in an amount within the range of 1/3-2/3 of the total weight of said formulation;
(b)glass beads having a particle size distribution ranging from a lower value to an upper value having a magnitude no more than three times the magnitude of said lower value, said particle size distribution defining a moor [sic- agreed to be major] component of said beads within a relatively large incremental size range having an average value greater than the midpoint of said upper and lower values and a minor component of said beads within a smaller incremental size range having an average size range below said midpoint wherein the weight of beads in the large incremental size range is greater than the weight of beads within the smaller incremental size range.
(c)a barrier-forming material selected from the group consisting of a polymerizer and a siliconizer and mix ̴ thereof present in an amount within the range of at least 2 wt.% of the glass beads in said formulation but less than 8 wt.% of the total amount of cement and glass beads in said formulation, said barrier-forming material being effective upon hydration of said formulation for forming a boundary layer interposed between the surface of said beads and surrounding cementitious material.
21.The formulation of claim 20 wherein said upper value is from two to three times greater than said lower value.
…
23.In the application of a reflective surface finish to a substrate structure, the method comprising:
(a)providing a reflective cementitious composition comprising:
(i)portland cement in an amount within the range of 1/3-2/3 of the total weight of said formulation;
(ii)glass beads having particle sizes within the range of 1-5 millimetres and a weight average particle size within the range of 1.5-4.5 millimeters, said beads having a particle size distribution defining a major component of said beads within a relatively large incremental size range and a minor component of said beads within a smaller incremental size range wherein the weight of beads in the large incremental size range is greater than the weight of beads within the small incremental size range; and
(iii)a latex polymer present in an amount within the range of at least 2 wt.% of the glass beads in said formulation but less than 8 wt.% of the total amount of cement and glass beads in said formulation
(b)hydrating said formulation with water in an amount within the range of wt.% of said portland cement to provide a cementitious paste; and
(c)applying said paste to the surface of said substrate structure: and
(d)allowing said paste to form an initial set and thereafter washing the surface of said mortar with an aqueous medium to remove said cenientitious material from a surface layer of said beads to form partially-exposed areas of said beads in said surface layer to provide a reflective surface
24.The method of claim 23 wherein the surface of said mortar is washed with said aqueous medium prior to the said cement forming a final set.
25.The method of claim 24 further comprising carrying out a second washing step with an acidic solution subsequent to the formation of final set of said cementitious material.
26.The method of claim 25 further comprising the step of brushing the surface of said material during the application of said acid medium.
3. CONSTRUCTION OF CLAIMS
3.1 Principles
The principles relevant to the construction of claims were not in dispute.
The applicants referred to Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 224 ALR 168; [2005] FCAFC 220 at [39], [44], [52] and [91] (Fresenius), Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254; [2006] FCA 261 (Clorox) at [20]-[22], Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 177 ALR 231; [2000] FCA 980 at [40] and [46] and Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442; [2004] FCA 323 at [349] in support of the following propositions:
(1)The construction of claims takes place in the context of the specification as a whole and reference may be made to the body of the specification in order to understand the context in which words have been used.
(2)Claims are to be read in the context of the specification, not merely when ambiguity exists in the claim, although integers not present in the claims cannot thereby be added.
(3)The specification is to be read in the light of common general knowledge before the priority date and the essential features of the invention are to be determined in the context of the then existing knowledge, as the patent is addressed to those skilled in the art. Further, the terms of the specification must be understood in a practical, commonsense manner.
(4)The claims are to be given the meaning the hypothetical skilled addressee would give to them in the context of both the common general knowledge and the specification. Expert evidence may be relevant but is not determinative, construction being a matter for the court.
In addition, as the respondents noted, the claims are not to be construed in light of the particular infringement alleged. Consistent with the general principles applying to the construction of any document, the task is undertaken on an objective basis recognising that a “patent is a public instrument which grants the right to protection of a defined monopoly, for the consideration of the disclosure of the invention to the general knowledge base of society” (Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331; [2000] FCA 890 at [70] and see also Clorox at [13] and [15]).
The applicants also referred to Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 at 582-585 (Stanway Oyster), Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 at 274, Elconnex Pty Limited v Gerard Industries Pty Limited (1991) 32 FCR 491 at 512-513, Tye-Sil Corporation Ltd v Diversified Products Corp (1991) 20 IPR 574 at 585, Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 at 95, Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 at 338 and in support of these propositions:
(1)It is permissible for an invention to be described in a way that involves matters of degree and necessitates an exercise of judgment. Hence, the lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use.
(2)In ascertaining from the language used the true meaning of the claims the relevant issue is whether the words of the claims can bear any reasonable meaning and the court would not lightly conclude that claims are so vague or ambiguous as invalidate them. Accordingly, where reasonable, the court will try to give effect to the construction which affords the patentee protection for the invention and will not defeat the right of a patentee on the basis of mere technicalities.
(3)Because a claim is “a description of an invention which it is intended to be put to practical use and which is addressed to non-inventive readers who are nevertheless skilled in the relevant art. It will therefore be proper and necessary to read down the wide and unqualified words of a claim, if they would otherwise encompass methods or products or devices that cannot be regarded as practical and commonsense embodiments or results of the claimed invention” (Stanway Oyster at 582-583).
3.2 Construction of the claims in question
3.2.1Cementitious
The specification discloses that the patent concerns a surface finish of a cementitious nature which includes at least one aggregate comprising glass beads. There is a dispute between the parties about the meaning of “cementitious” which appears in the claims and throughout the specification. The dispute arises because the specification refers to “a matrix of cementitious material selected from cement or resin” and deals with examples of “when resins are used…”, as well as “cementitious resins”. The respondents contend that where the claims use the words “a cementitious material” they encompass a material comprising cements and resins. The applicants contend that those words refer to cements only.
The suffix “icious”, in the word “cementitious”, means “of the nature of” (Oxford English Dictionary Online, viewed 10 October 2012). A more common way of conveying the same meaning, in my view, would be “cement-like”, which is not a technical term but takes its ordinary meaning. Once this is recognised it becomes apparent that the claims are not confined to “cement” (strictly, “a strong mortar, produced by the calcination of a natural or artificial mixture of calcareous and argillaceous matter”, Oxford English Dictionary Online, viewed 10 October 2012) but extend to materials that are like cement in terms of form and function (that is, the broader meaning of “cement”, “[a] substance used to bind the stones or bricks of a building firmly together, to cover floors, to form walls, terraces, etc., which being applied in a soft and pasty state, afterwards hardens into a stony consistency”, Oxford English Dictionary Online, viewed 10 October 2012). If the claims had been intended to be confined to “cement” then there would have been no reason for the matrix to have been described as involving a “cementitious material”. The word “cementitious”, where used, was used to extend the scope of the claims beyond “cement” to “cement-like” materials which are materials capable of forming a “cement-like” matrix. As the specification discloses, resin is such a material.
Although the word “cementitious” is sufficient to reach this conclusion, it is confirmed by the specification which refers to resins as a potential cementitious material. The contrary indication in the specification on which the applicants relied, that the problem of alkalinity bleeding out from the glass beads relates only to cement and not to resins, is insufficient to support a narrower meaning of “cementitious”. The specification identified alkalinity as one problem experienced in the building industry. The fact that the problem existed for cement but not for resins (which is clear from the evidence in the case) does not indicate that where the claims use the words “cementitious material” they should be construed as referring only to cement in the strict sense of a mortar involving a mix of calcareous (that is, lime) and argillaceous (that is, clay) matter.
The claims of the patent which require a matrix of a cementitious material, accordingly, concern a cement-like matrix which may include a matrix formed by a resin.
3.2.2Aggregate
The surface finish of a cementitious nature, according to the specification, must include one “aggregate” comprising glass beads. “Aggregate” is also an ordinary English word and not a term of art. In the context of the patent, an “aggregate” takes its ordinary geological meaning of “[a] rock or other deposit composed of distinct minerals closely adhering or combined together” (Oxford English Dictionary Online, viewed 10 October 2012). Glass beads are an aggregate in this sense.
The specification contends that the preparation of a cementitious matrix which includes glass beads as an aggregate has been difficult to achieve because the glass beads exhibited inferior bonding compared to conventional aggregates such as pebbles and stones due to the glass beads being insufficiently porous and not tough enough to establish an effective bond, another problem being alkalinity bleeding out from the glass beads (a problem associated only with cement matrixes not, I note, resin matrixes). The specification discloses prior art consisting of U.S. Patent No 4,218,260 (the US patent) and the European Patent No 518,854 (the European patent). The US patent involved the use of glass beads of uniform particle size. The European patent involved the use of glass beads of a larger and smaller size range in which the smaller size component is greater than the larger size component. Another patent is identified (British patent No 1,397,737) in which glass beads are coated with a water repellent material such as silicone.
3.2.3Average particle size
The invention described in the specification is a surface finish comprised of a matrix formed from a cementitious material, water and glass beads and a liquid adhesive comprising a combination of a siliconiser and polymeriser for enhancing the bond between the cementitious mortar and glass beads. The glass beads are said to have particle sizes within the range of 1-5mm and a weight average particle size within the range of 1.5-4.5mm. The beads are also said to be employed in a particle size distribution in which the major component is within a relatively large incremental size range and a minor component within a smaller incremental size range, with the weight of the beads within the large incremental size range being greater than the weight within the smaller incremental size range. The specification provides preferred embodiments of the invention specifying different weight ratios of smaller to larger beads and different weights of polymer. The specification also provides information about the particle size distribution in which the larger particle size is to be the predominant component.
Claims 1 to 9 and 23 to 26 all involve an integer of beads “having an average particle size within” a specified range and a “particle size distribution” where the major component of the beads is within a relatively large incremental size range and a minor component of the beads is within a smaller incremental size range wherein the weight of the beads in the large incremental size range is greater than the weight of the beads in the small incremental size range.
Claims 1 to 9 and 23 to 26 may be contrasted with claims 10, 11, 12, 13, 14, 20 and 21 which involves a combination of claim 1 where, amongst other things, the particle size distribution defining the major component of the beads with a relatively large incremental size range has an average value greater than the midpoint of the specified upper and lower values and a minor component of the beads within a smaller incremental size range has an average size below that midpoint and wherein the weight of the beads in the large incremental size range is greater than the weight of the beads in the small incremental size range.
The respondents submitted that the claims lacking any specified midpoint, claims 1 to 9 and 23 to 26, were thereby unintelligible and thus incapable of infringement (and invalid). In any group of beads there may be large and smaller beads resulting from an arbitrary definition of where the boundary between the two groups is to be drawn.
The applicants submitted that the respondents’ approach gave no meaning to the phrase “average particle size” as it appears within the claims. The applicants identified four possible meanings of the phrase having regard to the ordinary meaning of “average” (which includes the “distribution of the aggregate inequalities…of a series of things among all the members of the series, so as to equalize them, and ascertain their common or mean quantity…” or “the determination or statement of an arithmetical mean” (Oxford English Dictionary). According to the applicants an “average particle size” can be ascertained by one of four methods as follows:
(a)identify the particle size of every single particle represented, total all those values and divide that total by the number of particles;
(b)identify every different particle size represented, total the value of all those different particle sizes and divide that total by the number of particle sizes represented;
(c)identity the largest and the smallest particle size represented, total those values and divide by two; or
(d)identify the weighted average particle size based on the weight distribution of different sizes of particles (a weighted average, unlike an average, takes into account the frequency at which each size is represented).

The applicants contended that the phrase “average particle size” in claim 1 of the patent (and all other claims dependent on claim 1) means the weighted average particle size based on the weight distribution of different sizes of particles. As explained below, I agree with this construction.
The respondents emphasised that this construction had not been suggested by any expert and, indeed, was inconsistent with the approach to the claims taken by Edward Bennett, a civil and structural engineer, who gave evidence for the applicants. Mr Bennett treated the phrase “average particle size” in claim 1 as an outcome which should be determined by the method in (c) above (that is, identity the largest and the smallest particle size represented, total those values and divide by two). The respondents also noted that this construction was inconsistent with the particulars of construction and infringement which the applicants served on the respondents. These particulars said that “average particle size” was to be mathematically determined by taking the size of the largest and the smallest beads in the sample and determining from those sizes the mean particle size.
Both aspects of the respondents’ submissions may be accepted. However, they are not ultimately material to the issue of construction for three reasons.
First, it seems to me that the hypothetical addressee of the patent is the non-inventive person with skills in the art of mixing and forming surface finishes of a cementitious nature. Mr Bennett is an engineer who specialises in the construction of swimming pools. He has extensive experience in the use and application of cement in mixes for pool surface finishes. It was not apparent from Mr Bennett’s evidence that he has similar expertise and experience in respect of the methods of mixing and forming surface finishes whether of swimming pools or otherwise. This is not to say Mr Bennett’s evidence was irrelevant. But I am not persuaded that insofar as he gave evidence which assumed a particular meaning of “average particle size” it should also be assumed that Mr Bennett represents the hypothetical skilled addressee of this patent.
Second, as to the particulars of construction and infringement, the applicants’ letter notifying the respondents of the particulars said that “claim construction is a matter for the Court” and that expert evidence might be relevant to claim construction insofar as it concerned terms of art or the common general knowledge. The particulars of construction provided were subject to these observations. The observations are correct. Accordingly, the applicants were not bound by the construction proposed in the particulars and the respondents could not reasonably have understood otherwise.
Third, the respondents had proper opportunity to deal with the construction proposed by the applicants and its consequences for infringement, including by way of leave to file further submissions after the conclusion of the hearing. Accordingly, there was no unfairness arising from the way in which the applicants conducted the case.
For these reasons the issues of construction fall for determination on their merits and in accordance with the conventional principles set out above.
This is the background against which the claims must be construed including that part of claim 1 which refers to the glass beads “having an average Particle size within the range of 1.5-4.5 millimeters [sic] and a particle size distribution defining, major component of said beads within a relatively large incremental size range and a minor component of said beads within a smaller incremental size range wherein the weight of beads in the large incremental size range is greater than the weight of beads within the small incremental size range”. The background is that the invention claimed is a surface finish in which there is a plurality of glass beads in a cementitious matrix. The description of the invention in claim 1 (the reference to the plurality of glass beads, the requirement for a portion of the glass beads to be projecting out of the matrix, and otherwise to be subject to a boundary layer of a barrier material) indicates that for any surface on which the surface finish is likely to be placed will involve a substantial number of glass beads. This is not an invention in which any defined number of glass beads is required. Nor is it an invention in which the glass beads might be few in number.
In this context, “average particle size” (the use of the capital “P” for particle in the claim having no significance and appearing to be nothing more than one of the many typographical errors in this patent) has to be construed in a practical and common sense manner from the point of view of the hypothetical skilled addressee having regard to both the common general knowledge and the specification. “Average particle size” is not a technical term. Contrary to the respondents’ submissions, expert evidence about the meaning of the individual words and of the phrase as a whole was not necessary, could never have been determinative, and may well have been inadmissible. It is basic arithmetic that there is more than one way in which an average might be calculated and that the purpose of the calculation might best determine the method used. Mean, median and mode are all well-known ways of expressing forms of averages which might be relevant for different purposes. The hypothetical skilled addressee of the patent in this case would read “average particle size” having regard to the purpose of the phrase in defining the scope of the invention claimed.
On this basis it would be apparent to the hypothetical skilled addressee that the patent pre-supposed the existence of a convenient method to determine both the size and weight distributions of the glass beads to be mixed into the cementitious matrix. As the evidence in this case discloses there is and was such a method at the earliest claimed priority date, being the use of test sieves. Australian Standard AS 1152-1993 Specification for Test Sieves (AS 1152) was approved and published in 1992 and superseded an earlier standard relating to the same subject matter published in 1973. AS 1152 specifies the requirements for test sieves. Australian Standard AS 1141.11.1 – 2009 Methods for Sampling and Testing Aggregates (AS 1141) was approved and published in 2009 but an earlier version of this standard was first published in 1974. Australian Standard AS 2009-1991 Glass Beads for Road-Marking Materials (AS 2009) was published in 1991. AS 2009 specified test sieves as the method for sampling and testing various types of glass beads for use in road marking.
Accordingly, as at the earliest claimed priority date for the patent of 16 February 1994, the date of the provisional specification, it was common general knowledge that the appropriate method for determining the size and weight distributions of the glass beads to be used in surface finishes was test sieves. It also would have been common general knowledge at that time that test sieves functioned by the selection of appropriate sizes of sieves which were then required to be assembled in a particular way (most basically, so that they descended in a decreasing size from the largest sieve at the top to the smallest sieve at the bottom). Testing protocols covered the selection of the sample, the sieving of the sample and the reporting of results. The basic information obtained by the use of test sieves was the percentage of the total sample passing through each sieve used by weight. In other words, and unsurprisingly, nothing in the protocols about the use of test sieves apparent from AS 1152, AS 1141 and AS 2009 suggested that the exercise contemplated counting individual glass beads or identifying the size of the largest and smallest single glass beads in the sample. To do that would involve some form of visual inspection and measurement of individual beads which finds no mention in those standards. This is unsurprising because it is difficult to conceive of any surface finish for a structure which would not involve a plurality (to use the language of claim 1 of the patent) of glass beads. It would have been inconceivable to those skilled in the art of mixing an aggregate into a cementitious matrix to form a surface finish that they would concern themselves with the absolute number of glass beads or the absolute size of any particular glass bead, be it the largest or smallest, in any given matrix.
These considerations demonstrate why the proper meaning of “average particle size” cannot be meanings (a) or (c) above.
Meaning (a) requires the size of every single particle in the sample to be tested, the sizes added up and the sum of the total sizes to be divided by the sum of the total particles. While this would yield an average particle size it is nonsensical to consider that the reference in claim 1 to “average particle size” had this in mind.
Meaning (c), which might appear rational, is no less nonsensical as the evidence in this case disclosed. Meaning (c) requires the largest and the smallest sized particles to be found in the sample, for their sizes to be added up and then divided by two. Put to one side the availability of test sieves and it becomes obvious that there is no way to find the largest and the smallest sized particles without measuring the size of every particle in the sample which is required by meaning (a). Test sieves do not solve this problem, however. The reason for this is that any set of test sieves will have to be based on a selection of sizes. If more than one particle is captured by the first sieve all such particles are the same as or larger than that first sieve size but without measuring the size of each particle captured by that sieve, or any subsequent sieve if none are captured by the first sieve, the largest particle size cannot be identified. A similar problem afflicts the smallest sieve. If any particle passes through the smallest sieve it will necessarily be smaller than that sieve size but without measuring each particle that passes through the smallest particle size can never be known. The same issue, moreover, affects every sieve size used in any sieve test. All that being captured by a sieve discloses is that the captured particle is larger than that particular sieve and the same size or smaller than the preceding sieve. In other words, sieve testing does not yield any absolute particle size and this the skilled addressee would have known. Because of this the skilled addressee would never have construed “average particle size” as involving some endeavour to identify the largest and smallest particle sizes in any sample, adding them up and dividing by two.
The same difficulty besets meaning (b). Meaning (b) also requires each particle size to be identified, for those sizes to be summed up and that total to be divided by the number of different particle sizes irrespective of the frequency of the occurrence of the different sizes in the sample. This too would yield a form of average particle size but not one that could practically be ascertained in respect of the invention claimed.
Given that: - (i) claims are to be given the meaning the hypothetical skilled addressee would give to them in the context of both the common general knowledge and the specification, (ii) the terms of the specification must be understood in a practical, commonsense manner, and (iii) well before the earliest possible priority date those skilled in the art of mixing and forming surface finishes of a cementitious nature would have known that the composition of an aggregate, including an aggregate such as a glass bead, ordinarily would be determined by a process of sieving, it is apparent that the hypothetical skilled addressee would not have understood “average particle size”, as it appears in the claims of the patent, to mean a particle size determined in accordance with methods (a), (b) or (c). No method other than that in (d) has been identified as available but that does not mean it should be accepted by default.
However, there are other indicators in the specification which support the applicants’ proposition that where the claims use the phrase “average particle size” they mean a particle size of the surface finish as described determined in accordance with the steps in (d).
First, and to give more detail about protocols for the analysis of aggregates as mentioned above, the evidence in this matter (AS 1141, AS 1152 and AS 2009, as well as test results issued by Boral Construction Materials, Materials Technical Services, referred to below as Boral), discloses the standard methods for analysing aggregate including the particle size distribution of the aggregate. Those methods include:
(1)Selecting a representative sample of the aggregate which is achieved by subjecting the aggregate to a process of repeated riffling using a riffle box.
(2)Ensuring the sample selected is the appropriate weight having regard to the test sieves proposed to be used.
(3)Ensuring the test sieves are nested in decreasing size of opening from top to bottom.
(4)Placing the appropriate weight of sample in the top sieve and agitating the sieve by hand or mechanically but without forcing materials through any sieve by hand pressure.
(5)Determining the mass (in grams) of each increment retained on each sieve and that this mass does not exceed certain specified parameters.
(6)Calculating the percentage mass of material passing through each sieve on the basis of the total mass of the sample. Accordingly, the full results of the sieving include:
(a)the initial mass of the representative sample (in grams);
(b)the mass (in grams) retained on each sieve;
(c)the mass (in grams) passing through each sieve; and
(d)the percentage of the total initial mass passing through each sieve.
I infer that these standard methods for analysing the particle size distribution of aggregates were well known to those skilled in the art of mixing and forming surface finishes of a cementitious nature before the earliest possible priority date of the patent. The patent would have been read and understood by the hypothetical skilled addressee at the earliest possible priority date knowing these methods and their relevance to the determination of the particle size distribution of an aggregate. None of the methods involve counting particles or attempting to identify the largest and smallest particle in the aggregate.
Second, the terms of the specification confirm this background of common general knowledge. It is true, as the respondents noted, that the specification does not mention the use of test sieves. However, the subject-matter of the specification is an aggregate mix of a cementitious nature including glass beads. The specification refers to the prior art including such mixes and the concepts of a “larger particle size component” and a “smaller particle size component”. These concepts concern the particle size distribution of the aggregate. The specification describes the prior art as involving the use of glass beads in the smaller particle size component in a greater amount than the glass beads in the larger particle size component (in other words, more smaller beads than larger beads). The invention described in the specification involves the use of glass beads in the larger particle size component in a greater amount than the glass beads in the smaller particle size component (in other words, more larger beads than smaller beads). The specification defines this aspect of the invention using the concept of “particle size distribution” and requires the weight of the beads in the relatively large size range to be greater than the weight of the beads in the smaller size range. The specification identifies the size distribution of the glass beads as important to providing a good reflective surface and interspersion of smaller with larger beads. The references to the size ranges of the beads, moreover, are in connection with the requirement of differential particle size distribution as important to the invention.
The specification also provides examples which confirm the nature of the invention as one in which there will be a plurality of glass beads in which the weight distribution of the beads is material. One formulation is described as involving 50 lb bags containing 25 lbs glass beads, 24 lbs cement and 1 lb polymeriser with the large increment of beads in the range 2.5-3.3 mm in an amount of 18 lbs and the smaller increment of beads in the range 1.5-2.5 mm in an amount of 7 lbs. Numerous other examples are provided in the specification using the same descriptions with the distribution of beads described in % weight terms.
The specification, after providing these numerous examples, contains the following further indication of the meaning to be given to the average particle size of the glass beads. The specification provides:
The average particle size of the glass beads employed in the present invention, ie, the average size taking into account both the small beads and the large beads, is preferably within the range of 2-4 millimeters and more preferably within the range of 2-3 millimeters. The average particle size, as referred to here, is the weight average particle size of the beads based upon the distribution of beads in the mixture. Thus, for example, for the second formulation described above and assuming an even distribution of beads across the major increment of 2.5-3.3 mm and the minor increment across the range of 1.5-2.5 mm the average particle size would be about 2.6 mm.
The second formulation to which reference is being made is a formulation in which there is a 50 lb bag containing 16.5 lbs of glass beads, 32.5 lbs of cement and 1 lb of polymer, with 1l lbs of beads in the 2.5-3.3 mm size range and 5.5 lbs of beads in the 1.5-2.5 mm size range.
The weight average particle size of the beads in this formulation can be calculated, assuming (as instructed by the specification) an even distribution of beads across the major and minor increments, by finding the average of each increment (2.9 and 2 respectively), multiplying the average of the larger increment by two to take into account the fact that the larger increment is double the size of the smaller increment (11 lbs compared to 5.5 lbs), which gives 5.8, adding that figure to the average of the smaller increment (the 2) and dividing the total (that is, 7.8) by three (as there are two parts of the larger increment and one part of the smaller increment). The calculation can be expressed as:
I acknowledge that claim 1 of the patent (and the claims which depend on claim 1) refers to “average particle size” whereas claim 13 (and the claims that depend on claim 13) refers to “weight average particle size”. This might be considered to lead to the conclusion that the reference to “average particle size” in claim 1 is intended to convey a different meaning from the meaning of “weight average particle size”. This approach to construction is an example of a form of reasoning often said to require caution. The reasoning assumes the difference in drafting is the result of some express intention of the draftsperson rather than mere oversight or failure to foresee that the terms used might be read differently. In the context of this patent as discussed above, and given that each claim functions separately, the different references provide an insufficiently persuasive basis to construe “average particle size” as meaning something other than weighted average particle size, to be calculated using the approach instructed to be used by the specification, which is a standard method of analysing the average particle size of an aggregate and would have been known to be such by the hypothetical skilled addressee at all relevant times.

Further, the relatively large incremental size range and the smaller incremental size range are to be identified by reference to the weighted average particle size. No other means of identification is reasonably practicable having regard to the claims as they would be read by the skilled addressee. On this basis, it is clear that beads larger than the size of the average are in the relatively large range and beads smaller than the average are in the smaller size range. However, a question remains – how are beads which are of the average size (or must be assumed to be so having regard to the onus of proof for infringement) to be treated? This can only be answered recognising that the controlling elements of the integer in question are the average particle size and the relatively large range and the smaller range. It is essential that these size and size ranges be able to be identified by the same method for every example. What is apparent is that, as a matter of construction, claims 1 to 3 and dependent claim 9 do not specify how beads which are of the average size (or must be assumed to be so having regard to the onus of proof for infringement) are to be treated. The answer to this question may or may not matter depending on the available evidence.
3.2.4Claim 13 issues
There are other issues of construction arising from the claims. There are three issues concerning claim 13 and the claims dependent on claim 13. The first is whether the opening words of the claim “[in] a dry cement formulation…” qualify each of the succeeding sub-paragraphs so that the latex polymer referred to in (c) must also be a dry formulation. The second is whether the reference to “a latex polymer” means commercial products sold as a latex polymer product or the amount of actual latex polymer within any particular latex polymer product. The third is whether the reference in (c) to “a latex polymer present in an amount within the range of at least 2 wt.% of the glass beads in said formulation but less than 8 wt.% of the total amount of cement and glass beads in said formulation” means that there must be at least 2% by weight of a latex polymer in the overall dry cement formulation or in the range of 2% by weight of a latex polymer in the overall dry cement formulation so that, in the latter case, a weight percentage below 2% may nevertheless be considered to be within the range of 2% whereas in the former case the 2% functions as a minimum percentage.
Dry cement formulation: the applicants submitted that the claim extended to a latex polymer supplied in liquid form because this involves the supply of a “kit that infringes” citing Windsurfing International Inc v Petit [1984] 2 NSWLR 196 at 207 (Windsurfing International) and Grove Hill Pty Ltd v Great Western Corp Pty Ltd (2002) 55 IPR 257; [2002] FCAFC 183 (Grove Hill) at [334]-[335].
In Windsurfing International Waddell J described the evidence that “sailboards are ordinarily sold in an unassembled form as a matter of convenience and…the user assembles the board in order to use it and takes it apart after use for the purpose of transport or storage” and asked whether “in these circumstances, sale in kit form of a complete set of parts which, when assembled, will come within any of the claims of the patent is an infringement of the exclusive right given by” the patent. Waddell J held that that there was an infringement having regard to the ordinary course in which the alleged infringing product was supplied. In Grove Hill Gyles J (with whom French and Dowsett JJ agreed) said:
[334] In any event, there is no reason to doubt the correctness of the conclusion of the primary judge at para [30] and para [31] of the judgment below, based upon the authorities to which she refers or the application of those findings to infringement of claims 4, 10, 11 and 13. Indeed, the discussion by the Full Court in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239 [[1999] FCA 898] at [27]-[30] supports the decision of Waddell J in [Windsurfing International], at least in circumstances where the whole of the relevant assembly is sold at the one time, albeit in parts. As Gummow J pointed out in his interlocutory decision in Martin Engineering Co v Trison Holdings Pty Ltd (1988) 81 ALR 543 at 551, infringement by the sale of one integer of a combination (in that case, as a spare part) would require an extension of the principles applied in the cases to which the primary judge referred. No submission was made on this appeal that the ordinary position went so far. It should be clear that no case of participation by the appellant in infringement by others was pleaded or argued.
[335] The substance of the finding by the primary judge, understood in the light of the evidence, was that the normal method of sale of the Versasweep assembly was as a kit containing separately both the forward and rear components. That was a finding well open to her on the evidence, and, although there was some criticism of it in the written and oral submissions of counsel for the appellant, I do not think that there is any substantial basis upon which that finding should be disturbed. The fact that the appellant, by and large, supplies dealers rather than end users is of no relevance in relation to this kind of infringement. It follows that there was direct infringement of claims 4, 10 and 11. Although there is no express finding about it, the case for the appellant was that the row cultivator and attachments was usually provided in kit or disassembled form, rather than as a complete assembly, even when ordered as a whole. Nonetheless, it would follow that, applying the principle to which I have referred, this would constitute an infringement of claim 13.
The principles on which the applicants relied concern infringement not construction. As a matter of construction the terms of claim 13 are clear. The latex polymer is part of a dry cement formulation adapted to be hydrated. Claim 13 and the claims which depend on it concerns an invention said to be a dry formulation in which each of the three components (cement, beads and latex) are also dry, all adapted to be hydrated.
A latex polymer: the applicants submitted that this must be read as a reference to a latex polymer product rather than the amount of latex polymer actually present in any such product. If it were otherwise, in order to determine the percentage by weight of the latex polymer to the glass beads and cement it would first be necessary to perform gravimetric tests to determine the amount of latex present in the latex polymer product. The applicants submitted that the specification supported this construction by referring to a commercially available latex polymer as preferred (“DRYCRYL DP-2903”).
The applicants’ concern about this issue is generated in part by its position on the requirement that the formulation in claim 13 be a dry cement formulation. The concern is that as the evidence shows the respondents supply their polymer in liquid and not dry form, and the polymer present in the respondent’s polymer product is a small proportion of the product, any construction of claim 13 requiring a comparison of the proportions of the actual polymer with the glass beads and cement will ensure that no infringement can be established. As discussed, construction and infringement are separate issues. Once it is accepted that claim 13 is dealing with a dry cement formulation comprising three dry components (glass beads, cement and latex polymer) all adapted to be hydrated, the potentially distorting effect of the applicants’ concern may be put to one side. The consequence is that the applicants’ construction is correct in the sense that “a latex polymer” in claim 13 means the whole of any product which is a latex polymer. Accordingly, and for example, DRYCRYL DP-2903 is identified by the specification as a preferred latex polymer. Claim 13 is concerned with the amount of the latex polymer compared to the amounts of glass beads and cement. Claim 13 does not contemplate that the latex polymer must itself be analysed to exclude all compounds other than the polymer itself (fillers or the like) so that the amount of actual polymer may be compared to the amounts of the glass beads and cement. Nothing in the language of claim 13, the specification or the common general knowledge of which there is evidence in this matter would support such a construction. As the applicants submitted, such a construction would be impractical and thus does not commend itself.
Within the range of at least 2 wt.%: the applicants submitted that the range cannot be the range of between 2% by weight of the glass beads and 8% by weight of the total because the comparison is not between like and like. Accordingly, the words “within the range of at least 2 wt.%” mean within the range of the figure of 2% by weight.
It is true that if the intended range is 2% by weight to 8% by weight one end of the range is referring to one proportional relationship (a latex polymer of at least 2% by weight of the glass beads) and the other end of the range is referring to another proportional relationship (a latex polymer of less than 8% by weight of the total of glass beads and cement). The concept of a “range”, it may be accepted, is not particularly apt to describe such proportional relationships. The inaptness, however, is not limited to the use of the concept of a range alone. On the applicants’ construction the words “within the range of” mean something akin to “about” or “nearly” and qualify each of the 2% and the 8% figures. Accordingly, as the applicants would have it sub-paragraph (c) of claim 13 requires that there be present a latex polymer in the amount of about 2% by weight of the glass beads and about 8% by weight of the total of the glass beads and cement. If that meaning were intended it is difficult to understand the presence of language which speaks against the imprecision for which the applicants contend, being the words “at least” in connection with the 2% and “less than” in connection with the 8%. In the context of sub-paragraph (c), leaving aside the concept of “within the range of”, at least 2% by weight would mean 2% by weight or more and less than 8% by weight would mean 7.9% by weight and below. The words would not permit a construction of “about” 2% or 8% by weight in the sense of a bit more or less than 2% or 8% by weight. The entire meaning of “at least” and “less than”, on this construction, would be lost.
The more natural reading of sub-paragraph (c) is that for which the respondents contend. The intended “range” is a range with different criteria for its starting and end points. The expression might be infelicitous but it gives all components of the phrase their ordinary meaning. The range is the range of at least 2% by weight as defined and of less than 8% by weight as defined. At least 2% by weight as defined and less than 8% by weight as defined mean what they say. Anything less than 2% by weight as defined is outside the range. Anything that is 8% or above by weight as defined is also outside the range.
4. UNCONTENTIOUS FINDINGS
4.1 Admissions
The respondents, by their pleadings and answers to a notice to admit facts, made certain admissions about their supply of the “Jewels 4 Pools” products. The applicants summarised these admissions in the following terms which I accept.
The First and Second Respondents admit that they make, sell and use the Jewels4Pools Product for use in pool linings, have used the Jewels4Pools Products (and from time to time with the Jewels4Pools geopolymer) to line pools, and that they authorised the Third, Fourth and Sixth Respondents to use the Jewels4Pools Product to line pools in Australia.
The Third, Fourth and Sixth Respondents admit that they have promoted, advertised, sold and offer for sale the Jewels4Pools Product, and offered for sale and sold the Jewels4Pools geopolymer additive. The Third and Fourth Respondent admit to having used the Jewels4Pools Product and geopolymer additive to line pools in Australia.
Kenneth Pickersgill is a director of the Fifth Respondent and he is the owner of the registered business name “Jewels 4 Pools Victoria” which operates from the premises 14 Whyte Street Brighton, Victoria. A business of swimming pool construction and renovations is carried on from that address by the Fifth Respondent pursuant to the name “Bayside Pools & Paving”, the registration for which was transferred to the Fifth Respondent on 10 October 2003 by Kenneth Pickersgill. The Jewels 4 Pools website identifies “Ken” as the contact for “Jewels4Pools Victoria” with a telephone number “xx xxxx95”. The “Bayside Pools & Paving” website identifies that number as its contact number and that the business is run by Kenneth Pickersgill.
The Jewels 4 Pools website operates for the benefit of each of the Respondents and it instructs the use of the Jewels4 Pools geopolymer with the Jewels4Pools Product (glass beads) in the installation of pool linings and give instructions and use 500ml of the polymer for every 20kg of cement.
The Respondents admit that the Jewels4Pools Product comprises glass beads and is mixed with portland cement for use in lining pools. The Respondents recommend and use two parts of the Jewels4Pools Product (glass beads) to one part of cement.
When the instructions with respect to the use of the Jewels4Pools Product in pool linings given by the First and Second Respondents are followed, including with respect to the use of the Jewels4Pools geopolymer, cement accounts for between 1/3 and 2/3 of the total weight of the composition of cement, the Jewels4Pools Product and Jewels4Pools geopolymer prior to the addition of water.
4.2 Jewels 4 Pools product fact sheet
A document entitled Jewels 4 Pools product fact sheet sets out “important facts you need to know about glass pool linings”. The facts specified include the following:
Glass aggregate is the future of pool interiors
Glass aggregate has a very high percentage of amorphous silica. So what you say? Well, this reacts with the alkali hydroxides in cement. A reaction called alkali silica reactin (A.S.R).
Glass and high silica aggregates will produce A.S.R. in cement based products and is a major drawback for its use in cementious formulations. Tests have proven that the incorporation of glass aggregates in unmodified mortars will reduce the mechanical and flexural strength’s significantly.
A.S.R. can be eliminated
Basic steps for mitigation would be:
1.        to reduce the water cement ratio.
2.glass aggregates must be clean without clay coatings or any other fine materials that could alter the hydration and bond of cement pastes.
3.carefully selected and graded pozzilans to reduce microscopic pore size and mobility of the alkali.
4.        aggregate particle size smaller than 1mm to further reduce the reaction.
5.        polymerisation to help with adhesion and reduce pore liquid.
What have we done
Given we have had 30 years experience with pool renders and render formulations we have developed our products with these setbacks in mind. In addition to this our products have been tested for 8 years to ensure proper mitigation against this reaction.
Jewels 4 Pools is not premixed with other aggregates, clays or hydration altering powders prior to use.
Jewels 4 Pools is the only glass aggregate available specifically graded to further reduce A.S.R.
Jewels 4 Pools secret formulation is a highly modified Polymer additive only available through us.
Jewels 4 Pools Geo Polymer Additive
Is the only product available today specifically formulated to alleviate A.S.R. with glass/quartz aggregates in cement based pool renders. Beware of imitations.
Jewels 4 Pools geopolymer additive will:
1.        reduce water cement ratio
2.        increase mechanical and flexural strength
3.        increase adhesion
4.        increase workability
5.        reduce permeability
6.        eliminate A.S.R.
4.3             Jewels 4 Pools website
The Jewels 4 Pools website recommends the use of the Jewels 4 Pools Geo Polymer product. The website identifies that the glass beads are sold in 20 kg bags. For the product to be applied as a render the website instructs that as a “general rule” the crystal (that is, the glass beads) is to be mixed with cement at a ratio of 2 parts aggregate (that is, glass beads) to 1 part cement and Geo Polymer is “added at 500 mls per 20 kg of cement”. The Geo Polymer is available in 20 litre pales. The glass beads are described as “100’s of colours and combinations to choose from”.
4.4 Boral test results
There is no dispute that the applicants obtained four 20 kg bags of glass beads marked as Jewels 4 Pools and two pales of the Geo Polymer. The bags of glass beads were identified on the outside of the bag as: - (i) Jewels 4 Pools Clear 1 mm-3 mm, (ii) Jewels 4 Pools Green 1 mm-3 mm, (iii) Jewels 4 Pools Ice Blue 1 mm-3 mm, and (iv) Jewels 4 Pools Cobalt Blue 1 mm-3 mm.
The applicants arranged for each of the four bags to be tested by Boral, a NATA (National Association of Testing Authorities, Australia) accredited laboratory. Boral carried out two tests and presented to the applicants test results as follows:
TEST REPORT
CLIENT: Creagh & Creagh Solicitors FILE NO: 482/11
PROJECT: Quality Control – Testing of various Jewels 4 Pools samples REQUEST NO: 45348
TEST PROCEDURE: AS1141 – Methods for Sampling and Testing Aggregates

Laboratory Sample No: 122040 122041 122042 122043

Date Received: 8.9.11

Sample Description:
Jewels 4

Pools Clear

1mm-3mm

Jewels 4

Pools Green
1mm-3mm

Jewels 4

Pools Ice

Blue

1mm-3mm

Jewels 4
Pools Cobalt

Blue
1mm-3mm

Test Method Test Results

AS1141.11.1
%Passing A.S.Sieve

4.75mm
2.36mm
1.18mm
600 micron
425 micron
300 micron
150 micron

75 micron

100
91
2
Nil
Nil
Nil
Nil
Nil

100
69
10
1
Nil
Nil
Nil
Nil

100
73
23
1

Nil
Nil
Nil

Nil

100
78
21

Nil
Nil
Nil

Nil
Nil

Samples submitted by client.
TEST REPORT
CLIENT: Creagh & Creagh Solicitors FILE NO: 482/11
PROJECT: Quality Control – Testing of various Jewels 4 Pools samples REQUEST NO: 45420
TEST PROCEDURE: AS1141 – Methods for Sampling and Testing Aggregates

Laboratory Sample No: 122040 122041 122042 122043

Date Received: 8.9.11

Sample Description:
Jewels 4

Pools Clear

1mm-3mm

Jewels 4

Pools Green
1mm-3mm

Jewels 4

Pools Ice

Blue

1mm-3mm

Jewels 4
Pools Cobalt

Blue
1mm-3mm

Test Method Test Results

AS1141.11.1
%Passing A.S.Sieve

4.75mm
3.35mm
2.80mm
2.36mm
2.00mm
1.70mm
1.40mm
1.18mm
1.00mm

850 micron
75 micron

100
99
92
63
33
5
2
1
1
Nil

100
99
92
72
42
28
16
10
6
4
Nil

100
99
86
74

58
47
32

23
14
9
Nil

100
91
78
63

50
34
22

11
5
Nil

Samples submitted by client.

4.5 Dr John Scheirs

Dr Schiers, chemical engineer, analysed two samples, one of which is relevant, being a sample of “Jewels for Pools” polymer which I am satisfied on the evidence is the Geo Polymer product that the respondents supply. Dr Schiers’ analysis discloses that this product is 62% water, 26% polymer and 12% ash. The polymer is an acrylic polymer in the form of a latex emulsion (being an aqueous suspension of an emulsion polymer). According to Dr Scheirs the Geo Polymer product will act as a barrier material as referred to in claim 1 of the patent. I accept Dr Schiers’ evidence.
4.6 Other findings
I will deal with the balance of the evidence and other findings in the context of the specific issues to which they relate.
5. VALIDITY OF THE PATENT
5.1 Priority date
As noted, the patent is a divisional of the parent application and claims priority from the filing of the provisional application on 16 February 1994. To take a priority date earlier than the date of filing of 22 July 1999 the claims of the patent must be fairly based on matter disclosed in the specification of the earlier applications (s 43(2) of the Act and reg 3.12(1)(c) of the Regulations).

The applicants contend that each of ss 117(2)(a)-(c) is satisfied on the facts of this case in respect of the alleged infringements, being infringements of claims 1 to 3, 9 to 13, 20, 21, and 23 to 26.
6.2 Discussion
A number of contentions on behalf of the applicants and the respondents can be dismissed with relative ease.
As to the applicants, claims 13, 20, 21 and 23 to 26 all require the presence of a latex polymer “in an amount within the range of at least 2 wt.% of the glass beads in said formulation but less than 8 wt.% of the total amount of cement and glass beads in said formulation”. According to the applicants this integer is present in the product supplied because:
·the respondents instruct users of their product that for every 500 ml of the Geo Polymer, 20 kg of Portland cement and 40 kg of glass beads are to be used;
·according to the evidence, the specific gravity of the Geo Polymer is 1: 2 to water so that 500 ml of Geo Polymer equates to 0.6 kg of polymer;
·0.6 kg of polymer divided by 40 kg of glass beads equals 1.5% by weight of polymer to glass beads.
The applicants submitted that 1.5% by weight of polymer to glass beads satisfies the integer in circumstances where: - (i) the products are used in large quantities for swimming pool linings so that only approximate quantities are involved in any event, and (ii) the product information sheets indicate that the 500 ml is a guide only and as the Geo Polymer is the key means to prevent the alkalinity bleeding out from the glass beads, it is likely that more rather than less than 500 ml would be used.
I do not accept these submissions. For the reasons given in respect of the construction of the claims, I am satisfied that the integer in question requires there to be there must be at least 2% by weight of a latex polymer in the overall dry cement formulation. Even on the best view of the facts from the applicants’ perspective, there is only 1.5% latex polymer in the formulation supplied by the respondents. Recourse to speculation that more than 500 ml of Geo Polymer might be used given the large quantities involved in the on-site mixing process is unpersuasive. The respondents supply glass beads and a polymer (in a liquid form) and instruct the proportions of each to be used. The fact that the proportions are a guide leaves open the mere possibility that a person to whom a supply is made might use more polymer than recommended. But this falls far short of establishing proof of infringement based on s 117(2)(a) – (c) of the Act.
In addition, and also as discussed, claim 13 and its dependent claims concern an invention said to be a dry formulation in which each of the three components (cement, beads and latex) are also dry, all adapted to be hydrated. The respondents do not supply a dry polymer. They supply a liquid polymer. The notion that the integer contemplates the calculation of the specific gravity of a liquid polymer to obtain a weight ratio to glass beads is unpersuasive. The contention of infringement must also fail for this reason.
This leaves for resolution the allegations of infringement of claims 1 to 3 and 9 to 11.
As to the respondents, the evidence referred to above establishes that each is responsible for the supply of the Jewels4Pools glass beads and Geo Polymer and the instructions to customers for its use as a surface finish for pools by mixing with Portland cement. It is true that there is no evidence that any particular person has used their product (the glass beads and Geo Polymer) in lining a swimming pool with only one colour of the glass beads. Nevertheless it may and should be inferred that people have used the products supplied by the respondents in accordance with the instructions. It is also true that the evidence establishes that the colours of glass beads which the applicants subjected to testing by Boral are but four colours available from a range of hundreds of colours which, to the respondents’ knowledge, have been previously used in combination with other colours and not in isolation. Contrary to the applicants’ contentions I accept that these facts are relevant to proof of infringement under s 117(2)(a) and (b) of the Act.
In terms of s 117(2)(b) I do not accept that the alleged infringing products, the glass beads and Geo Polymer, are capable of only one reasonable use. Although sold by the respondents primarily for use in constructing linings for swimming pools and spa pools, the evidence indicates that these products would be suitable for other uses in common with the invention claimed by the applicant which is said to be suitable as a surface finish on a variety of surfaces. The evidence indicates that the product supplied by the respondents would be able to be used as a surface finish in a wide range of applications not just swimming pools and spa pools. For example, a website description says the product has “100’s of applications, pools, gardens, ponds and many more”. Hence, s 117(2)(a) is inapplicable.
In terms of s 117(2)(b), the evidence is that customers have not to date requested supply of only one colour of glass beads. Accordingly, it is difficult to accept that the respondents have had, or would have, reason to believe that any one of the four colours of glass beads which the applicants arranged for Boral to test would be used in isolation from other colours. The relevant point, however, is that the evidence from the respondents’ own documents is that its glass beads are “selectively graded for pool linings in grades of 1-3 mm and 3-5 mm”. This must be inferred to apply to all colours offered for sale. It follows that the four colours selected for testing must be inferred to be representative of the respondents’ product in the 1-3 mm grade. When this is taken with the evidence referred to in the context of s 117(2)(c) below, I consider that the respondents do have reason to believe that a person would put their product to use by selecting a single colour of glass beads. Hence, if one of the four colours tested by the applicants infringes the patent, infringement is established under s 117(2)(b).
In terms of s 117(2)(c) I do not accept the respondents’ characterisations of their instructions to use the product. The respondents said that people are instructed to use the glass beads in different colour combinations. In fact, the instructions are to the effect that there are “hundreds of colours and combinations”, “a magnificent range of colours and combinations”, there being “100’s of colours and combinations to choose from and a person may select “any combination of colours you wish to choose”, there being “freedom of choice with colour”. In other words, the respondents instruct that the product may be used as the customer sees fit, either with a single colour or any combination of colours from those available. This satisfies the requirement for instructions to use the product in both these ways; that is, by use of a single colour or a combination of colours. It follows that if one of the four colours tested by the applicants infringes the patent, infringement is established under s 117(2)(c).
I also do not accept the respondents’ case that the applicants could only prove infringement by locating a pool in which the respondents’ product has been used and testing the product as used in that application. That is one way the applicants might have proved infringement. But ss 117(1) and (2) do not require proof of that kind. It is clear that the respondents supply a product comprising glass beads and Geo Polymer instructed for use and which the respondents believe will be used, and in fact has been used by many people, in swimming and spa pool linings. As noted, if the applicants can prove any colour of glass beads as tested, when used as instructed with the Geo Polymer, would infringe the patent, then infringement is established by operation of ss 117(2)(b) and (c).
The fact that the respondents supply only the glass beads and Geo Polymer is not to the point. The respondents direct the use of those products with cement, which is a “cementitious material” within the meaning of the claims of the patent. It is also clear from the evidence that at least a portion of the glass beads will project out of the cementitious matrix. Based on Mr Bennett’s experience it should also be inferred that it is likely that no more than 40% of the glass beads will be exposed. Given their own experience in lining swimming pools I infer that the respondents have reason to believe that their product would be used in this way.
The real issue between the parties is the construction of the claims and the evidence of infringement of the particle size distribution requirement. I have resolved the construction issues above in favour of the applicants in this regard. The remaining question is whether the evidence establishes infringement.
In respect of the weight that can or should be given to the Boral test results, I do not accept the thrust of the respondents’ case. The respondents made much of the fact that the applicants obtained one set of test results from Boral which used one set of sieve sizes and another set of test results from Boral which used a different set of sieve sizes. There is no question that the second test was obtained by the applicants on instructions from Mr Carden and using additional sieves which Mr Carden purchased and asked Boral to use. The respondents’ submission is that the second test results must be disregarded for these reasons and also because the test sieves used on the second occasion are not sizes in accordance with AS 1141.
I disagree with these submissions. There was nothing improper about the conduct of the applicants, including Mr Carden. The fact that Mr Carden was not called to give evidence is immaterial. It is obvious that the test seizes initially used by Boral, in accordance with AS 1141, could provide little if anything meaningful about the issue to which the tests were intended to relate, being possible infringement of the claims of the patent. It is the parameters set by the claims of the patent which dictate, or should dictate, the relevant sieve sizes used. Provided the sieves are standard sieves properly calibrated (and in this case the evidence is that they were) it was open to the parties to perform tests using any sieve size they liked. The question would then be whether such a test provides anything meaningful to the integers of the claims in issue. Given that the integer in issue involves an average particle size within the range of 1.5-4.5 mm and a particle size distribution where the major component of the beads is within a relatively large incremental size range and a minor component of the beads is within a smaller incremental size range and the weight of beads in the large incremental size range is greater than the weight of beads within the small incremental size range, testing the respondents’ product using sieves of 75, 150, 300, 425, and 600 microns and 1.18 mm, 2.36 mm and 4.75 mm was always unlikely to produce any meaningful result. The sieve size of 4.75 mm is larger than the largest size in the integer and unsurprisingly 100% of the beads passed through that sieve. Ninety one per cent passed the 2.36 mm sieve and 2% passed the 1.18 mm sieve. The sieve sizes are unsuitable for providing meaningful information about the possible infringement of the claims.
The second test, however, involves the use of standard sieves suited to analysis of the issue of potential infringement of the claims. It uses sieve sizes of 75 and 850 microns and 1, 1.18, 1.40, 1.70, 2.00, 2.36, 2.80, 3.35 and 4.75 mm. The fact that these sizes do not accord with AS 1141 is immaterial. The product in this case is a form of aggregate of a particular kind. It is being tested for the purpose of these proceedings and not otherwise. The sieves used are proper standard sieves in accordance with AS 1152 and testing was properly carried out by Boral. Accordingly, the results of the second test should be seen as reliable and properly able to be used in resolving the question of infringement.
I have already explained that I consider that the particle size distribution integer must be construed as requiring identification of the weighted average particle size based on the weight distribution of different sizes of particles assuming (as instructed by the specification) an even distribution of beads across the major and minor increments.
It can be seen from the second Boral test results that the percentage by weight of each sample of the respondents’ products (four products as described) which passed through and were retained on the test sieves were as set out in the following table, as provided by the applicants:

Lab Sample 122040 122040 122041 122041

AS1141.11.1 Sieve Jewels 4
Pools Clear
1-3mm Jewels 4
Pools Clear
1-3mm Jewels 4
Pools Green
1-3mm Jewels 4
Pools Green
1-3mm

% Passing % Retained % Passing % Retained

4.75mm 100 0

3.35mm 100 0 99 1

2.80mm 99 1 92 7

2.36mm 92 7 72 20

2.00mm 63 29 42 30

1.70mm 33 30 28 14

1.40mm 5 28 16 12

1.18mm 2 3 10 6

1.00mm 1 1 6 4

.850mm 1 0 4 2

75micron Nil 1 Nil 4

100% 100%

Lab Sample 122042 122042 122043 122043

AS1141.11.1 Sieve Jewels 4
Pools Ice
Blue 1-3mm Jewels 4
Pools Ice
Blue 1-3mm Jewels 4
Pools Cobalt
Blue 1-3mm Jewels 4
Pools Cobalt
Blue 1-3mm

% Passing % Retained % Passing % Retained

4.75mm 100 0

3.35mm 99 1 100 0

2.80mm 86 13 91 9

2.36mm 74 12 78 13

2.00mm 58 16 63 15

1.70mm 47 11 50 13

1.40mm 32 15 34 16

1.18mm 23 9 22 12

1.00mm 14 9 11 11

.850mm 9 5 5 6

75micron Nil 9 Nil 5

100% 100%

The weighted average particle size of each sample is then obtained by multiplying the percentage retained on the sieve by the sieve size, adding up the results of this calculation and dividing by 100. It is true that this method of identifying the weighted average particle size assumes that the beads retained on the sieve are the same as the size of the sieve when, in fact, the beads will be between that sieve size and the next sieve size up. Hence, for the respondents’ clear beads, using the standard rounding that Boral used (as appropriate), none of the beads were retained on the 3.35 mm sieve so all of the beads were less than 3.35 mm in size. One percent was retained on the 2.80 mm sieve so 99% of the sample was less than 2.8 mm in size. Of that 99%, 7% was retained on the 2.36 mm sieve so 7% must be between 2.36 mm and 2.80 mm in size but the distribution of beads within this range (that is, the between sieve sizes range) is unknown. Given that the skilled addressee would know that sieve testing is the only practical way to identify the average particle size of the beads it must be accepted that the calculation of the average size and distribution is to be done on this basis. In the present cases, moreover, there are five sizes of sieve within the range of 1.5 to 4.5 mm, being the relevant integer of the claims of the patent. And as the applicant said, even if it were possible to test within that range at every 1 mm size interval (which it is not) the effect on the available results could not be to reduce the average particle size. The effect could only be to increase the average particle size in circumstances where, in no case on the results, could it be possible for the average particle size to exceed or even come close to the top of the range at 4.5 mm.
On this basis the weighted average particle size is 1.72 mm for the clear beads, 1.84 mm for the green beads, 1.64 mm for the ice blue beads and 1.83 mm for the cobalt blue beads. The calculation for the clear beads is provided as an example, being:
Step 1
1% = 0.01 x 2.80 mm x 100 = 2.8
7% = 0.07 x 2.36 mm x 100 = 16.52
29% = 0.29 x 2.00 mm x 100 = 58
30% = 0.3 x 1.70 mm x 100 = 51
28% = 0.28 x 1.40 mm x 100 = 39.20
3% = 0.03 x 1.18 mm x 100 = 3.54
1% = 0.01 x 1.00 mm x 100 = 1.00
1% = 0.01 x 0.075 mm x 100 = 0.075
Step 2
Add up 2.8 + 16.52 + 58 + 51 + 39.20 + 3.54 + 1.00 + 0.075
Equals 172.135
Step 3
Divide 172.135 by 100 = 1.72 mm.
The same calculation for each sample results in the average particle size of 1.84 mm for the green beads, 1.64 mm for the ice blue beads and 1.83 mm for the cobalt blue beads. Accordingly, all of the respondents’ samples satisfy the integer of an average particle size within the range of 1.5 to 4.5 mm.
As to the particle size distribution, the large incremental size range and the smaller incremental size range in claims 1 to 3 are to be identified, and can only be identified, by reference to the average particle size for each sample. Where, as here, the integer speaks in terms of larger and smaller size ranges the relevant defining point is the average size.
For the clear beads the evidence establishes that of the total sample, 37% by weight of the beads are of 2 mm in size or above, 30% is somewhere in the size range of 1.7 mm to less than 2 mm, and 33% is less than 1.7 mm. The problem, accordingly, is that a material proportion of the beads, 30%, are in the size range of 1.7 mm to less than 2 mm. The sizes within that range are unknown. As the applicants bore the onus of proof it cannot be inferred that any of those beads are greater than 1.72 mm. All of those beads might be 1.7 mm, which is less than the average particle size for the clear beads. If that 30% is allocated to the smaller size range then the integer is not satisfied as the major component of the beads is not within a relatively large incremental size range and the minor component of the beads is within a smaller incremental size range and the weight of beads in the large incremental size range is not greater than the weight of beads within the small incremental size range. It follows that the applicants have not proved any infringement of claims 1 to 3 or any claim dependent on claim 1 by the test results they adduced. In this regard, I do not accept the applicants’ submissions to the contrary that a skilled addressee would not assume that beads retained on the 1.70 mm sieve should be allocated to the smaller size range. This is an issue of proof of infringement. The applicants have not proved that any bead retained on the 1.7 mm sieve in fact exceeds 1.7 mm in size. No rational inference can be drawn to that effect. If all those beads are 1.7 mm in size then there is equally no rational reason to place those beads in the larger as opposed to the small incremental size range.
For the green beads, the average particle size is 1.84 mm. At 2.00 mm and above (by definition, all part of the relatively larger size range) 58% by weight of the beads were retained on the sieves. For the ice blue beads, the average particle size is 1.64 mm. At 1.7 mm and above (by definition, all part of the relatively larger size range) 53% by weight of the beads were retained on the sieves.
For the cobalt blue beads, the average particle size is 1.83 mm. At 2.00 mm and above (by definition, all part of the relatively larger size range) 37% by weight of the beads were retained on the sieves. The amount retained on the 1.7 mm sieve is 13% by weight. This would mean that even if all beads between 1.7 mm and 2.00 mm were assumed to be of at least 1.83 mm in size (an unjustifiable assumption in the applicants’ favour) the percentage by weight of beads would still only be 50% when the integer requires that the weight of the large size beads be greater than the weight of the small size beads.

Accordingly, the applicants have not proved infringement of claims 1 to 3 or 9 in respect of the supply by the respondents of the clear or cobalt blue products. They have proved infringement of claim 1 for the green and ice blue product. As to the claims 2 and 3, which require a weight ratio (2-3 and 2-2.26 respectively), for the green beads the weight ratio is 58% to 42% or 1.6. For the ice blue beads the weight ratio is 53% to 47% or 0.6. It follows that the applicants have not proved any infringement of claims 2 and 3.
Claim 10 remains.
The first problem for the applicants is that claim 10 requires “[t]he combination of claim 1 wherein said glass beads glass beads having a particle size distribution ranging from a lower value to an upper value having a magnitude no more than three times the magnitude of said lower value”. The actual particle size distribution for all products tested exceeds the three times limit. It is not apparent to me why the beads above 2.8 mm are required to be excluded from consideration as the applicants submitted. Even if beads less than 1.00 mm are treated as “dust”, as the applicants said would be appropriate, the distribution exceeds the three times limit for the green and ice blue products but not necessarily for the clear and cobalt blue products. I say not necessarily, because some of those beads may be larger than 3.00 mm given the sieve sizes of 2.8 mm and 3.35 mm. As the applicants bear the onus, this issue would not be assumed in their favour and claim 10 also would not be infringed for these products. In this regard I do not accept that the reference in the specification to preferably at least 90% of the distribution falling within the designated ranges can be read into the claims.
The second problem for the applicants is that the midpoint of the upper and lower values, on this basis, is 1.9 mm for the clear and cobalt blue beads (the lower value being 1 mm and the upper value being 2.8 mm) and 2.175 mm for the green and ice blue beads (the lower value being 1 mm and the upper value being 3.35 mm). On these midpoints, the average values above and below the midpoints do not result in a greater weight of beads in the relatively large as opposed to the smaller size range. The applicants’ approach appears to disregard at least the actual upper value (accepting, for the purposes of this analysis, that anything below 1 mm may be disregarded as “dust”) and to treat the reference to an “average value” as an invitation to an arbitrary allocation to the larger and smaller ranges. However, it seems to me that the ranges come first and whether the average value satisfies the description is then to be assessed. As the respondents noted, the applicants’ approach treats everything retained on the 1.7 mm sieve as in the relatively large size range. However, the sieve sizes straddle the actual midpoints of 1.9 mm and 2.175 mm. The result is to include beads smaller than the midpoints in the relatively large size range.
For these reasons I do not accept that the applicants have established any infringement of claim 10.
7. CONCLUSIONS
The respondents have not established invalidity of the patent. The applicants have established infringement but on a more limited basis than claimed, being infringement of claim 1 by supply for use of the Jewels4Pools 1-3 mm green and ice blue products if those products are used in isolation (or in combination with each other) but have not proved infringement if these products are used in combination with any other Jewels4Pools glass beads. Otherwise the applicants have not proved infringement of any of the claims of the patent by the respondents. It seems to me that orders should reflect the limited extent of the infringements proved. However, I propose to hear the parties further on the form of the orders which should be made and the question of costs. Directions will be made accordingly.

I certify that the preceding One hundred and forty seven (147) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Jagot.
Associate:
Dated: 8 March 2013

Citation:		Beadcrete Pty Ltd v Fei Yu trading as Jewels 4 Pools (No 3) [2013] FCA 187
Parties:		BEADCRETE PTY LTD (ACN 071 743 961), DESIGNER CONCRETE COATINGS PTY LTD (ACN 102 760 234), BUYRITE STEEL SUPPLIES PTY LTD (ACN 053 173 041) and DESIGNERITE PTY LTD (ACN 146 670 706) v FEI YU TRADING AS JEWELS 4 POOLS, JEFFREY STUART MCALISTER, PEBBLE MASTERS PTY LTD (ACN 087 540 734), TWIN COAST POOLS PTY LTD (ACN 104 149 484), MELKEN DEVELOPMENTS PTY LTD TRADING AS BAYSIDE POOLS & PAVING (ACN 052 945 169) and GRIN DISTRIBUTIONS PTY LTD (ACN 133 541 563)
File number(s):		NSD 111 of 2011
Judge:		JAGOT J
Date of judgment:		8 March 2013
Catchwords:		PATENTS – validity – priority date – clarity – inventive step – manner of manufacture – infringement – supply of glass beads in size ranges referable to patent claims
Legislation:		Patents Act 1990 (Cth) Patents Regulations 1991 (Cth)
Cases cited:		Apotex Pty Ltd v Sanofi-Aventis (2008) 78 IPR 485; [2008] FCA 1194 Australian Securities and Investments Commission v Hellicar (2012) 286 ALR 501; [2012] HCA 17 Blatch v Archer (1774) 1 Cowp 63 British American Tobacco (Investments) Ltd v Philip Morris Ltd (1999) 47 IPR 351; [1999] FCA 1203 Clorox Australia Pty Ltd v International Consolidated Business Pty Ltd (2006) 68 IPR 254; [2006] FCA 261 Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 Elconnex Pty Limited v Gerard Industries Pty Limited (1991) 32 FCR 491 Flexible Steel Lacing Co v Beltreco Ltd (2000) 49 IPR 331; [2000] FCA 890 Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 224 ALR 168; [2005] FCAFC 220 Gambro Pty Ltd v Fresenius Medical Care South East Asia Pty Ltd (2004) 61 IPR 442; [2004] FCA 323 General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121 H Lundbeck A/S v Alphapharm Pty Ltd (2009) 177 FCR 151; [2009] FCAFC 70 Hill v Evans (1862) 31 LJ Ch 457 Hill Pty Ltd v Great Western Corp Pty Ltd (2002) 55 IPR 257; [2002] FCAFC 183 ICI Chemicals v Lubrizol Corporation (2000) 106 FCR 214; [2000] FCA 1349 Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (2008) 78 IPR 20; [2008] FCAFC 139 Jones v Dunkel (1959) 101 CLR 298 Jupiters Limited v Neurizon Pty Limited (2005) 65 IPR 86; [2005] FCAFC 90 Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2007) 235 CLR 173; [2007] HCA 21 Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd (1980) 144 CLR 25 Martin Engineering Co v Trison Holdings Pty Ltd (1989) 14 IPR 330 Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56 Nicaro Holdings Pty Ltd v Martin Engineering Co (1990 91 ALR 513 Old Digger v Azuko Pty Ltd (2000) 51 IPR 43; [2000] FCA 676 Olin Corporation v Super Cartridge Co. Pty Ltd (1977) 180 CLR 236 at 246 Quantel Ltd v Spaceward Microsystems Ltd [1990] RPC 83 Radiation Limited v Galliers and Klaerr Pty Ltd (1938) 60 CLR 36 Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd (1999) 164 ALR 239; [1999] FCA 898] Re ICI Chemicals & Polymers Ltd and Lubrizol Corp Inc (1999) 45 IPR 577; [1999] FCA 345 Rodi & Wienenberger AG v Henry Showell Ltd [1969] RPC 367 Root Quality Pty Ltd v Root Control Technologies Pty Ltd (2000) 177 ALR 231; [2000] FCA 980 Stanway Oyster Cylinders Pty Ltd v Marks (1996) 66 FCR 577 Tye-Sil Corporation Ltd v Diversified Products Corp (1991) 20 IPR 574 Windsurfing International Inc v Petit [1984] 2 NSWLR 196 Oxford English Dictionary Online
Date of hearing:	2 - 10 October 2012
Place:	Sydney
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	147
Counsel for the Applicants:	Mr A J Bannon SC with Ms P Arcus
Solicitor for the Applicants:	Creagh & Creagh
Counsel for the Respondents:	Ms S J Goddard SC with Mr H P T Bevan
Solicitor for the Respondents:	Conditsis Lawyers

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 111 of 2011

JUDGE:	JAGOT J
DATE OF ORDER:	8 March 2013
WHERE MADE:	SYDNEY

JUDGE:	JAGOT J
DATE:	8 March 2013
PLACE:	SYDNEY

Laboratory Sample No:		122040	122041	122042	122043
Date Received:		8.9.11
Sample Description:		Jewels 4 Pools Clear 1mm-3mm	Jewels 4 Pools Green 1mm-3mm	Jewels 4 Pools Ice Blue 1mm-3mm	Jewels 4 Pools Cobalt Blue 1mm-3mm
Test Method	Test	Results
AS1141.11.1	%Passing A.S.Sieve 4.75mm 2.36mm 1.18mm 600 micron 425 micron 300 micron 150 micron 75 micron	100 91 2 Nil Nil Nil Nil Nil	100 69 10 1 Nil Nil Nil Nil	100 73 23 1 Nil Nil Nil Nil	100 78 21 Nil Nil Nil Nil Nil

Lab Sample	122040	122040	122041	122041
AS1141.11.1 Sieve	Jewels 4 Pools Clear 1-3mm	Jewels 4 Pools Clear 1-3mm	Jewels 4 Pools Green 1-3mm	Jewels 4 Pools Green 1-3mm
% Passing	% Retained	% Passing	% Retained
4.75mm	100	0
3.35mm	100	0	99	1
2.80mm	99	1	92	7
2.36mm	92	7	72	20
2.00mm	63	29	42	30
1.70mm	33	30	28	14
1.40mm	5	28	16	12
1.18mm	2	3	10	6
1.00mm	1	1	6	4
.850mm	1	0	4	2
75micron	Nil	1	Nil	4
100%	100%

Lab Sample	122042	122042	122043	122043
AS1141.11.1 Sieve	Jewels 4 Pools Ice Blue 1-3mm	Jewels 4 Pools Ice Blue 1-3mm	Jewels 4 Pools Cobalt Blue 1-3mm	Jewels 4 Pools Cobalt Blue 1-3mm
% Passing	% Retained	% Passing	% Retained
4.75mm	100	0
3.35mm	99	1	100	0
2.80mm	86	13	91	9
2.36mm	74	12	78	13
2.00mm	58	16	63	15
1.70mm	47	11	50	13
1.40mm	32	15	34	16
1.18mm	23	9	22	12
1.00mm	14	9	11	11
.850mm	9	5	5	6
75micron	Nil	9	Nil	5
100%	100%