FEDERAL COURT OF AUSTRALIA
Multisteps Pty Ltd v Specialty Packaging Aust Pty Ltd [2018] FCA 587
ORDERS
NSD 465 of 2016 BETWEEN: MULTISTEPS PTY LTD
Applicant
AND: SPECIALTY PACKAGING AUST PTY LTD
First Respondent
NEIL ALEXANDER AINSLIE
Second Respondent
AND…
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Details
- Case
- [2018] FCA 587
- Decision Date
CaseChat Overview and Summary
Multisteps Pty Ltd brought an action against Specialty Packaging Aust Pty Ltd and Mr Ainslie, asserting infringement of patents and designs for plastic produce containers. The dispute centered on whether the respondents had infringed certain patents and designs, and whether Mr Ainslie was liable for authorising these infringements. The court was tasked with determining the validity and infringement of the patents and designs, as well as the common general knowledge of the ordinary skilled addressee at the priority dates of the patents.
The key legal issues included the interpretation of the patents and designs, the identification of the common general knowledge of the ordinary skilled addressee at the priority dates, and the determination of infringement by the respondents and Mr Ainslie. The court had to assess the expert evidence provided by Dr Bruce Field and Mr Nicholas Mebberson, both mechanical engineers with expertise in thermoforming plastics. The court noted that while the expert evidence was valuable, it could not determine the meaning of the documents in dispute, which should be understood as the person skilled in the relevant art would understand them at the priority date. The court also had to determine whether the respondents had proved the common general knowledge that would be attributed to the skilled addressee of the patents at their respective priority dates.
The court found in favour of Multisteps Pty Ltd, concluding that the first respondent had infringed the patents and designs by supplying specific containers in Australia, and that Mr Ainslie was also liable for authorising these infringements. The court accepted the applicant's submission that the respondents had not proved the common general knowledge that would be attributed to the skilled addressee of the patents at their respective priority dates. The court also rejected the respondents' criticisms of Dr Field, finding that they were unjustified and not supported by the evidence.
The court ordered that the parties confer and propose orders for the relief to be granted to Multisteps Pty Ltd, including a timetable dealing with issues of pecuniary relief and costs. The entry of orders was to be dealt with in accordance with Rule 39.32 of the Federal Court Rules 2011.
The key legal issues included the interpretation of the patents and designs, the identification of the common general knowledge of the ordinary skilled addressee at the priority dates, and the determination of infringement by the respondents and Mr Ainslie. The court had to assess the expert evidence provided by Dr Bruce Field and Mr Nicholas Mebberson, both mechanical engineers with expertise in thermoforming plastics. The court noted that while the expert evidence was valuable, it could not determine the meaning of the documents in dispute, which should be understood as the person skilled in the relevant art would understand them at the priority date. The court also had to determine whether the respondents had proved the common general knowledge that would be attributed to the skilled addressee of the patents at their respective priority dates.
The court found in favour of Multisteps Pty Ltd, concluding that the first respondent had infringed the patents and designs by supplying specific containers in Australia, and that Mr Ainslie was also liable for authorising these infringements. The court accepted the applicant's submission that the respondents had not proved the common general knowledge that would be attributed to the skilled addressee of the patents at their respective priority dates. The court also rejected the respondents' criticisms of Dr Field, finding that they were unjustified and not supported by the evidence.
The court ordered that the parties confer and propose orders for the relief to be granted to Multisteps Pty Ltd, including a timetable dealing with issues of pecuniary relief and costs. The entry of orders was to be dealt with in accordance with Rule 39.32 of the Federal Court Rules 2011.
Orders
Orders of the court
1. The parties confer and within 14 days of the date of these orders file agreed or competing proposed orders for the relief which should be granted to the applicant consistent with these reasons for judgment, including a timetable dealing with issues of pecuniary relief and costs.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Background
Background to the litigation
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Evidence
Evidence Before The Court
There was no dispute about the principles concerning infringement (or, indeed, the fact that the first respondent supplied containers 1 to 7 in Australia). All essential integers of the claimed invention must be taken to constitute infringement (Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd [2005] FCAFC 220; (2005) 224 ALR 168 at [49]).The evidence The applicant relied on evidence of Dr Bruce Field, a mechanical engineer with experience in thermoforming plastics. The respondents relied on evidence of Nicholas Mebberson, a mechanical engineer also with experience in thermoforming plastics. The patents in dispute are concerned with the design of plastic produce containers which I accept would be undertaken by mechanical engineers with expertise in thermoforming plastics. However, It was common ground that none of the documents in dispute contain any special or technical terms. Accordingly, the expert evidence cannot determine the meaning to be given to those documents, but the documents are to be understood as the person skilled in the relevant art would understand them at the priority date (Kimberly-Clark Australia Pty Ltd v Multigate Medical Products Pty Ltd [2011] FCAFC 86 (2011) 92 IPR 21 at [12]-[14] and [39]). The relevant art in the present case involves plastic containers. Dr Field and Mr Mebberson are persons skilled in the art, although their experience and expertise indicates that it should not be inferred that they are non-inventive or possessed only the common general knowledge of the notional ordinary skilled addressee and nothing more. Apart from this it is necessary to record that I reject the respondents’ criticisms of Dr Field. The criticisms were unjustified, particularly given that the allegations his mind was “made up” before he engaged in the expert conference with Mr Mebberson and that he is a “professional witness whose approach to the prior art … is partisan” were not put to Dr Field. Nothing in the evidence supported these submissions. The fact that Dr Field wrote parts of the joint report, including parts relating to Mr Mebberson’s opinions, is immaterial. Mr Mebberson and Dr Field conferred and agreed the contents of the joint report before they signed it. Dr Field exhibited nothing other than what would be expected of an expert witness giving his genuine opinions to assist in resolving the issues in dispute. Identifying the common general knowledge of the ordinary skilled addressee at any time is also not a straightforward exercise. As the applicant submitted, while Mr Mebberson identified matters he said were common general knowledge, he did so relying on information provided by Trevor Dredge, a patent attorney. Mr Dredge identified various designs and patents of plastic containers as representing the prior art base at the priority dates of the 641 and 488 patents (6 June 2010 and 31 August 2012 respectively). But the fact that these documents existed and had been published does not make them part of the common general knowledge. While Mr Mebberson said that he considered that Mr Dredge’s report “is an accurate representation of the state of development of the prior art base in Australia”, he also agreed that he did not routinely search for patents and designs in his professional practice. I am not satisfied that this evidence provides a reliable foundation for identifying the common general knowledge of the ordinary skilled addressee of the patents. It carries too great a risk that Mr Mebberson’s recollection has been infected by reviewing the documents located by Mr Dredge. As such, I accept the applicant’s submission that the respondents simply have not proved the common general knowledge that would be attributed to the skilled addressee of the patents at their respective priority dates or otherwise.
Decision
Reasons for decision
Mr Ainslie has also infringed the patents and designs which the first respondent infringed.Conclusions The applicant has proved its claims. In particular:(1)The first respondent infringed the 641 patent by the supply of containers 1 to 7.(2)The first respondent infringed the 488 patent by the supply of containers 5, 7 and 8.(3)The first respondent infringed the 565 design by the supply of containers 1 and 3.(4)The first respondent infringed the 628 design by the supply of containers 5, 7 and 8.(5)Mr Ainslie also infringed the applicant’s patents and designs by authorising the infringements by the first respondent.
Ratio Decidendi
Legal Principle Established
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