Rakman International Pty Limited v Boss Fire & Safety Pty Ltd
[2022] FCA 464
•29 April 2022
FEDERAL COURT OF AUSTRALIA
Rakman International Pty Limited v Boss Fire & Safety Pty Ltd [2022] FCA 464
File numbers: NSD 1589 of 2018
NSD 641 of 2019
NSD 1242 of 2019Judgment of: YATES J Date of judgment: 29 April 2022 Catchwords: PATENTS – innovation patent – infringement alleged under s 117(1) of the Patents Act 1990 (Cth) (Patents Act) –whether instructions given for the use of a firestopping device in conformity with the claims of the patent – whether infringement established, assuming the claims in suit to be valid
PATENTS – innovation patent – infringement – whether, assuming the claims in suit to be valid, the director of the alleged infringer is liable as a joint tortfeasor with the alleged infringer – whether the director authorised an exploitation of the invention – discussion of whether authorisation, as understood by s 13(1) of the Patents Act, provides a basis for establishing liability in relation to infringement alleged under s 117(1) thereof
PATENTS – innovation patent – validity - whether invention as claimed is novel – whether invention as claimed involves an innovative step – whether invention as claimed is useful – whether the claims of the patent are supported by matter disclosed in the specification – discussion of relevant legal principles
PATENTS – whether patentee has made unjustifiable threats under s 128(1) of the Patents Act – whether patentee has engaged in conduct that is misleading or deceptive or likely to mislead or deceive in contravention of s 18(1) of the Australian Consumer Law by sending letters to customers or potential customers of alleged infringer
TRADE MARKS – appeal from the decision of a delegate of the Registrar of Trade Marks in opposition proceedings – whether the trade mark applicant is the owner of the trade mark FIREBOX in relation to designated goods – alleged prior use – whether alleged prior use established – whether alleged prior use in the course of or for the purposes of trade – whether alleged prior use in the character of trade mark use – discussion of relevant legal principles
TRADE MARKS – appeal from the decision of a delegate of the Registrar of Trade Marks in opposition proceedings – composite mark comprising the word FYREBOX represented in stylised form with a flame device – where delegate decided the opposition on the ground provided by s 44(1) of the Trade Marks Act 1955 (Cth) adversely to the trade mark applicant – whether the composite mark is substantially identical with the trade mark comprising the word FYREBOX simpliciter – whether trade mark applicant is the owner of the composite mark in relation to designated goods
Legislation: Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) ss 18, 18(1)
Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)
Patents Act 1990 (Cth) ss 7A, 7(1)(a)‑(b), 7(4), 7(5)(a)‑(b), 13(1), 24(1)(b), 40(2)(a), 40(3), 117, 117(1)‑(2), 128(1), Sch 1
Trade Marks Act 1955 (Cth) ss 17, 27(1)(a), 40(2)(a), 41, 42, 42(b), 44, 44(3)(a)‑(b), 58, 59, 60, 62, 62A, 228
Patents Act 1977 (UK) ss 14(3),14(5)(c)
Cases cited: Aspirating IP Ltd v Vision Systems Ltd [2010] FCA 1061; 88 IPR 52
AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 226 FCR 324
Boss Fire & Safety Pty Ltd v Fire Containment Pty Ltd [2019] ATMO 107
Boss Fire & Safety Pty Ltd v Fire Containment Pty Ltd 2019 ATMO 43
C Van der Lely N.V. v Bamfords Limited [1963] RPC 61
Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; 96 FCR 107
Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160
CQMS Pty Ltd v Bradken Resources Pty Ltd [2016] FCA 847; 120 IPR 44
Damorgold Pty Ltd v Blindware Pty Ltd [2017] FCA 1552; 354 ALR 1
Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225; 78 IPR 463
DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2013] FCA 132; 100 IPR 19
Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81; 177 FCR 239
E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15; 241 CLR 144
Fieldturf Tarkett Inc v Tigerturf International Ltd [2014] FCA 647; 317 ALR 153
GE Trade Mark [1973] RPC 297
General Tire & Rubber Company v Firestone Tyre & Rubber Company Ltd (1971) 1A IPR 121
Griffin v Isaacs (1938) 1B IPR 619
Hill v Evans (1862) 1A IPR 1
Hoechst Celanese Corp v BP Chemicals Ltd [1998] FSR 586
Jafferjee v Scarlett (1937) 57 CLR 115
JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474; 67 IPR 68
JR Consulting & Drafting Pty Ltd v Cummings [2016] FCAFC 20; 329 ALR 625
Keller v LED Technologies Pty Ltd (2010) 185 CLR 449
Lane Fox v Kensington and Knightsbridge Electric Lighting Company [1892] 3 Ch 424
Liberation Developments Pty Ltd v Lomax Group Pty Ltd [2019] FCA 1180; 144 IPR 413
Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1477
Moorgate Tobacco Co. Limited v Philip Morris Limited (No 2) (1984) 156 CLR 414
Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd [2020] FCAFC 116; 279 FCR 354
Norton and Gregory Ltd v Jacobs (1937) 54 RPC 271
Oakley, Inc v Franchise China Pty Ltd [2003] FCA 105; 58 IPR 452
Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676; 51 IPR 43
Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd [1999] FCA 898; 164 ALR 239
Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365
Rowntree plc v Rollbits Pty Ltd (1988) 90 FLR 398
Samsung Electronics Co Ltd v Apple Inc [2011] FCAFC 156; 217 FCR 238
Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402
The Seven Up Company v O.T. Limited (1947) 75 CLR 203
The Shell Company of Australia Limited v Rohm and Haas Company (1949) 78 CLR 601
Thompson v Australian Capital Television Pty Ltd (1996) 186 CLR 574
Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592
Vehicle Monitoring Systems Pty Ltd v SARB Management Consulting Group Pty Ltd [2013] FCA 395; 101 IPR 496
W.D. & H.O. Wills (Australia) Ltd v Rothmans Ltd (1956) 94 CLR 182
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588
WM Wrigley Jr Co v Cadbury Schweppes Pty Ltd [2005] FCA 1035; 66 IPR 298
Division: General Division Registry: New South Wales National Practice Area: Intellectual Property Sub-areas: Patents and associated Statutes;Trade Marks Number of paragraphs: 689 Date of hearing: 11‑12 August 2020, 17‑18 December 2020, 22‑25 March 2021, 29 March‑1 April 2021 Counsel for the Applicants and Cross-Respondents in NSD 1589 of 2018,
Counsel for the Respondent in NSD 641 of 2019, and
Counsel for the Applicant in NSD 1242 of 2019:
Mr A Fox with Mr E Thompson Solicitor for the Applicants and Cross-Respondents in NSD 1589 of 2018,
Solicitor for the Respondent in NSD 641 of 2019, and
Solicitor for the Applicant in in NSD 1242 of 2019:
Bird & Bird Counsel for the Respondents and Cross-Claimant in NSD 1589 of 2018,
Counsel for the Applicant in NSD 641 of 2019, and
Counsel for the Respondent in NSD 1242 of 2019:
Mr N R Murray SC with Ms F St John Solicitor for the Respondents and Cross-Claimant in NSD 1589 of 2018,
Solicitor for the Applicant in NSD 641 of 2019, and
Solicitor for the Respondent in NSD 1242 of 2019:
DLA Piper Australia Table of Corrections 8 June 2022 The medium neutral citation has been amended from “Rakman International Pty Limited v Trafalgar Group Pty Ltd [2022] FCA 464” to “Rakman International Pty Limited v Boss Fire & Safety Pty Ltd [2022] FCA 464”. ORDERS
NSD 1589 of 2018 BETWEEN: RAKMAN INTERNATIONAL PTY LIMITED ACN 097 979 685
First Applicant
TRAFALGAR GROUP PTY LTD
Second Applicant
AND: BOSS FIRE & SAFETY PTY LTD ACN 136 955 685
First Respondent
MARK PRIOR
Second Respondent
AND BETWEEN: BOSS FIRE & SAFETY PTY LTD ACN 136 955 685
Cross-Claimant
AND: RAKMAN INTERNATIONAL PTY LIMITED ACN 097 979 685 (and another named in the Schedule)
First Cross-Respondent
ORDER MADE BY:
YATES J
DATE OF ORDER:
29 APRIL 2022
THE COURT ORDERS THAT:
1.The parties bring in agreed draft orders or, if agreement cannot be reached, competing draft orders, giving effect to these reasons and providing for the further conduct of this proceeding, by 4.00 pm on 10 May 2022.
2.The parties liaise with the Associate to Yates J to list the proceeding for further case management and the making of orders.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
ORDERS
NSD 641 of 2019 BETWEEN: BOSS FIRE & SAFETY PTY LTD
Applicant
AND: TRAFALGAR GROUP PTY LTD
Respondent
ORDER MADE BY:
YATES J
DATE OF ORDER:
29 APRIL 2022
THE COURT ORDERS THAT:
1.The parties bring in agreed draft orders or, if agreement cannot be reached, competing draft orders, giving effect to these reasons, by 4.00 pm on 10 May 2022.
2.The parties liaise with the Associate to Yates J to list the proceeding for the making of orders.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011
ORDERS
NSD 1242 of 2019 BETWEEN: TRAFALGAR GROUP PTY LTD
Applicant
AND: BOSS FIRE & SAFETY PTY LTD
Respondent
ORDER MADE BY:
YATES J
DATE OF ORDER:
29 APRIL 2022
THE COURT ORDERS THAT:
1.The parties bring in agreed draft orders or, if agreement cannot be reached, competing draft orders, giving effect to these reasons, by 4.00 pm on 10 May 2022.
2.The parties liaise with the Associate to Yates J to list the proceeding for the making of orders.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011
REASONS FOR JUDGMENT
INTRODUCTION
[1]
THE EVIDENCE
[13]
The lay evidence
[13]
The expert evidence
[28]
THE PATENT
[33]
The complete specification
[33]
Construction of the claims
[54]
“Around”
[55]
“Thermally insulative”
[70]
PATENT VALIDITY: LEGAL PRINCIPLES
[89]
Lack of novelty
[90]
Lack of innovative step
[108]
Lack of claim support
[115]
Lack of utility
[121]
PATENT VALIDITY: LACK OF NOVELTY
[126]
Overview
[126]
FSi Transits
[128]
The Speedpanel meeting: 23 October 2014
[151]
The Seltor meeting: September 2015
[173]
The Pass-It Versions 1 and 2
[242]
The Pass-It with butterfly screws
[274]
The FSi drawings
[284]
PATENT VALIDITY: LACK OF INNOVATIVE STEP
[332]
Overview
[332]
The Firestopit PDS
[346]
The genuineness of the Firestopit PDS
[353]
The disclosures in the Firestopit PDS and the presence or lack of innovative steps
[391]
PATENT VALIDITY: LACK OF CLAIM SUPPORT
[412]
PATENT VALIDITY: LACK OF UTILITY
[425]
PATENT VALIDITY: CONCLUSION
[435]
INFRINGEMENT
[436]
Introduction
[436]
The Boss installation instructions
[441]
The presence of integer 1.11
[447]
Conclusion on infringement
[449]
AUTHORISATION AND JOINT TORTFEASANCE
[453]
UNJUSTIFIABLE THREATS AND CONTRAVENTION OF S 18 OF THE ACL
[471]
THE TRADE MARK APPEALS
[501]
Introduction
[501]
The nature of the appeals
[518]
Trade mark ownership: relevant principles
[519]
Boss’s case on the 748 application: an overview
[541]
Emails
[550]
Aural use
[554]
Conversation with Mr Ramunddal
[555]
Conversation with Mr Visser and Mr Bacon
[556]
Conversation with Mr Talbot
[573]
Conversation with Mr Halliday
[582]
Other aural uses
[590]
The Wormald data sheet
[598]
The product list
[640]
The CPG documents
[653]
Conclusion on prior trade mark use
[668]
The 214 application
[675]
CONCLUSION AND DISPOSITION
[688]
YATES J:
INTRODUCTION
There are three proceedings before the Court involving common parties, which have been heard concurrently.
In the first proceeding (NSD 1589 of 2018), Rakman International Pty Limited (Rakman) and Trafalgar Group Pty Ltd (Trafalgar) sue Boss Fire & Safety Pty Ltd (Boss) and its sole director, Mark Prior, for infringement of Patent No. 2017101778 (the patent), in reliance on s 117(1) of the Patents Act 1990 (Cth) (the Patents Act). Rakman is the patentee, and Trafalgar claims to be the exclusive licensee, of the patent.
The respondents deny infringement. Boss has cross-claimed, seeking revocation of all the claims. Boss has also cross-claimed against Trafalgar seeking relief pursuant to s 128(1) of the Patents Act for unjustifiable threats, and for relief on the basis that Trafalgar has contravened s 18(1) of the Australian Consumer Law (Schedule 2 to the Competition and Consumer Act 2010 (Cth)) (the ACL). The claims for relief under s 128(1) of the Patents Act, and the claims for relief based on contravention of s 18(1) of the ACL, concern a letter which Trafalgar sent to a number of firms and others engaged in the building industry, in which Trafalgar made a number of statements concerning Boss’s conduct and the fact that it (Trafalgar) had commenced proceedings against Boss for patent infringement.
The second proceeding (NSD 641 of 2019) is an appeal by Boss from a decision of a delegate of the Registrar of Trade Marks in opposition proceedings relating to Trade Mark Application No. 1736748 for the word FIREBOX (the 748 application). The applicant for the mark is Trafalgar whose registered corporate name, at the time of application, was Fire Containment Pty Ltd (Fire Containment). The delegate found that Boss had failed to establish the grounds of opposition on which it relied, and directed that the mark proceed to registration.
The third proceeding (NSD 1242 of 2019) is an appeal by Trafalgar from a decision of a delegate of the Registrar of Trade Marks in opposition proceedings relating to Trade Mark Application No. 1812214 for a composite mark which includes the word FYREBOX in stylised form and a stylised flame device (the 214 application). The applicant for the mark is Trafalgar whose registered corporate name, at the time of the application, was, once again, Fire Containment Pty Ltd. The delegate found that Boss had made out its opposition and refused to register the mark.
Rakman is, primarily, a holding company for various assets including intellectual property rights. It does not trade, other than to offer consulting services under the name “J-RAK Consulting”.
Fire Containment acquired certain assets of the business of Trafalgar Building Products Pty Ltd in May 2009. It then traded under the name “Trafalgar Fire Containment Solutions”, manufacturing and supplying fire containment products and systems. Fire Containment has since changed its name to Trafalgar Group Pty Ltd.
For ease of reference, it is convenient to refer to Rakman, Fire Containment, and Trafalgar as, simply, Trafalgar, unless it is necessary to distinguish between them. Similarly, it is convenient to refer to Boss and Mr Prior as, simply, Boss, unless it is necessary to distinguish between them.
For the reasons that follow, I have found that all claims of the patent are invalid. Claims 1, 2, 3, and 4 are invalid on the ground that the invention, as claimed in each claim, is not novel. Claim 5 is invalid on the ground that the invention, as claimed in that claim, does not involve an innovative step. Had I not found that the invention as claimed in claim 3 is not novel, I would have found that the invention, as so claimed, does not involve an innovative step.
It follows that Trafalgar’s claim of infringement against Boss under s 117(1) of the Patents Act is not, and cannot be, established. Had the claims of the patent not been invalid, Trafalgar’s case of infringement against Boss would have succeeded. However, its case against Mr Prior for infringement would not have succeeded.
I am not satisfied that Boss has established that Trafalgar made unjustifiable threats within the meaning of s 128(1) of the Patents Act. However, I am satisfied that Trafalgar contravened s 18(1) of the ACL by sending the letter to which I have referred.
As to the trade mark appeals, I have concluded that the appeal in NSD 641 of 2019 should be allowed. In light of that conclusion, and subject to hearing further from the parties, I have reached the provisional conclusion that the appeal in NSD 1242 of 2019 should be dismissed.
THE EVIDENCE
The lay evidence
In its patent case, Trafalgar adduced evidence from Mr Rakic, who is the director and company secretary of the applicants. It also adduced evidence from Mr Todd, who is Trafalgar’s Director of Innovation, and Mr Vickery, who is Trafalgar’s Chief Financial Officer and General Manager. Mr Rakic and Mr Todd were cross-examined. Evidence of a formal nature was also adduced from Ms Currey, a solicitor employed in the firm of solicitors acting for Trafalgar in the three proceedings. Ms Currey was not cross-examined.
In answer, Boss adduced evidence from Mr Prior, who is the director and company secretary of Boss. It also adduced evidence from Mr Bacon, the National Sales Manager of Boss; Mr Visser, the former Managing Director and Chief Executive Officer of Speedpanel Australia Pty Ltd; Mr Atkinson, the former Managing Director and Chairman of the United Kingdom company FSi Ltd; and Mr Ramunddal, the Chief Executive Officer of the Norwegian company Seltor Gruppen AS. These witnesses were cross-examined. Evidence of a formal nature was also adduced from Ms Sanders, a partner in the firm of solicitors acting for Boss, and from Mr Warzecha, a solicitor employed in that firm. Ms Sanders and Mr Warzecha were not cross-examined.
As I have noted, the patent case and the trade mark appeals have been heard concurrently. Mr Rakic and Mr Prior, for example, each gave evidence that was directed to all three proceedings. Because of the overlapping nature of the evidence, evidence in one proceeding was taken to be evidence in each other proceeding as well.
Evidence specifically directed to the trade mark appeals was adduced not only from Mr Rakic and Mr Prior but also, for Trafalgar, from Mr Wax, a Project Manager employed by Paladin Group and, for Boss, from Mr Falkiner, a former Passive Fire Services Manager at Wormald International; Mr Halliday, one of the founders and Managing Directors of Airport Consultancy Group Pty Ltd; Mr Talbot, the founder and Managing Director of Verified Pty Ltd; and Mr Bradley, a Construction Manager employed by Paladin Group.
In closing submissions, the parties made various criticisms of (some of) each other’s witnesses. With one exception, it is not necessary for me to recount these criticisms in this part of the reasons. I have considered and reflected on these criticisms in my assessment of the evidence. Where I have considered it necessary to make specific comment, I have done so in my discussion of that evidence.
The exception is Mr Prior’s evidence. Trafalgar made a sustained attack on Mr Prior’s credit. It submitted that Mr Prior’s evidence should not be accepted on any issue adverse to Trafalgar’s case, “unless corroborated by a genuine contemporaneous document”.
Trafalgar put the matter that way because it contended that Mr Prior had been involved in the creation of a number of documents adduced in evidence which, it claimed, were not created on the dates asserted by him. Trafalgar contended that Mr Prior’s creation of “highly significant documents … casts doubts about the veracity of his evidence and is illustrative of the steps he is willing to take to advance Boss’ interests in the proceeding”. This is really an allegation that Mr Prior falsified and fabricated evidence in aid of Boss’s case.
None of these claims were made good by Trafalgar. What is more, Trafalgar’s allegations of falsification and fabrication extended to documents which were, in fact, documents whose contents emanated from third parties for which Mr Prior could not have been responsible—for example, the Firestopit PDS prepared by Mr Atkinson, a digital image taken at FSi, and a digital image taken by Mr Ramunddal, all of which are discussed below. To the extent that these claims were advanced in cross-examination—and not all such claims were advanced in the cross-examination of relevant witnesses—they failed. I raise these matters, primarily, in fairness to Mr Prior and to make clear that I do not accept the submission which Trafalgar advanced in this regard.
This, however, was not the end of Trafalgar’s criticisms of Mr Prior’s evidence. Based on identified passages from Mr Prior’s cross-examination, Trafalgar submitted that the Court should have “serious doubts about the accuracy and reliability of [Mr Prior’s] recollection in circumstances where he was unable to recall basic matters during the same period which did not suit his case”. Trafalgar also submitted that Mr Prior presented as “a witness whose recollection of matters occurring in 2014 and 2015 was not as clear as he presented it to be in his affidavit and whose ability to recall matters occurring many years later was dictated solely by his self-interest in the proceeding”.
Trafalgar also submitted that the Court should conclude that aspects of Mr Prior’s affidavit evidence were implausible. This submission was coupled with the submission that the Court should find that Mr Prior gave deliberately false evidence concerning the fact that he had lost certain documents relating to the time that he said that Boss commenced using FYREBOX for certain products supplied by Abesco, and that he could not recall the name of the consulting company that he requested to recover emails and documents.
I do not accept these submissions. In particular, I do not accept that Mr Prior gave deliberately false evidence on the topic of lost documents and the steps that Boss had taken to recover documents. Further, I do not have particular concerns about Mr Prior’s ability to recall events. In that regard, I have exercised caution in accepting Mr Prior’s recollection of events that occurred some years ago, in the same way as I have exercised caution in accepting other witnesses’ recollections of such events.
There are, however, some aspects of Mr Prior’s evidence which have caused me concern. In the trade mark opposition proceeding below in relation to the 748 application, Mr Prior made a declaration in which he deposed to the total sales revenue received by Boss, in a particular period, from the sale of products bearing, or promoted by reference to, the FYREBOX trade mark. Leaving aside the question of whether the products did bear, or were promoted by reference to, the FYREBOX trade mark, Mr Prior accepted, in cross-examination, that the revenue recorded in the declaration for the products (to which he was referring) was grossly different to the revenue recorded in Boss’s sales records. When asked to explain this discrepancy, Mr Prior said:
No. I can’t give clarity on exactly how that happened. As I said a few minutes ago, I don’t recall writing this. I accept that it came from me; it was authorised by me. And certainly, in the declaration, there was a less level of detail and focus as there was in court proceedings. So I very much accept they’re different. I can see that. It’s in front of me.
Mr Prior accepted that, at the time he made his declaration for the purposes of the opposition proceeding, the declaration would be used to advance Boss’s interests over Trafalgar’s interests. When asked whether, by his answers in cross-examination, he was suggesting that the declaration had not been prepared with the degree of care that he (Mr Prior) thought the declaration should have been prepared, Mr Prior said:
I’m not sure I would put it like that. However, I would say that for Federal Court proceedings, there was considerably more and intensive research that went into this case than there was into a declaration, and evidenced by having different legal representation as well, with a considerably different focus on the depth of data they had to dig into. I don’t recall the legal advice I had in the preparation of the declaration; much of a discussion at all.
Relatedly, Trafalgar submitted that Mr Prior was being less than frank in his declaration, and also in his affidavits in the present proceedings, by giving the impression that significant sales of products had been made by Boss since 2013 using the FYREBOX trade mark when, in fact, on careful consideration, the evidence did not show this to be the case.
These criticisms of Mr Prior’s evidence are justified. They have led me to scrutinise Mr Prior’s evidence with some care. Having said that, my impression of Mr Prior in cross-examination was that he was careful, and responded directly and truthfully, in the answers he gave. As will become apparent, on a number of critical matters, Mr Prior’s evidence was, in fact, corroborated by other evidence, which I consider to be reliable.
The expert evidence
Trafalgar adduced evidence from a number of experts in its patent case. It adduced evidence from Mr Harriman, who is a building and fire regulation consultant, and from Mr Hunter, who is a mechanical engineer. It also adduced evidence from Mr van de Weijgert, a fire safety engineer, whose evidence was directed to the standards applicable to fire protection devices in the United Kingdom and Europe.
Trafalgar also called evidence from Mr McKemmish, an expert in computer forensics. Mr McKemmish addressed the metadata recorded in electronic copies of documents that had been produced on discovery by Boss. Mr McKemmish was cross-examined.
For its part, Boss adduced evidence from Mr Page, who has expertise in the field of passive fire safety based on various roles he has had working with suppliers and manufacturers of passive fire safety equipment, subcontractors responsible for the installation of passive fire safety products, laboratories involved in the testing of passive fire safety products, and consultants to the building and fire safety industry. His experience has been gained predominantly in the United Kingdom and New Zealand.
Four joint expert reports were provided. These were designated Part A (Mr Harriman, Mr Hunter and Mr Page); Part B (Mr Hunter and Mr Page); Part C (Mr Harriman and Mr Page); and Part D (Mr Harriman, Mr van de Weijgert, and Mr Page).
Mr Harriman and Mr Page were separately cross-examined. There were also a number of concurrent evidence sessions over Days 9 and 10 of the hearing: Mr Harriman, Mr Hunter, and Mr Page; Mr Harriman and Mr Page; Mr Hunter and Mr Page; Mr Harriman, Mr van de Weijgert and Mr Page; and a further session involving Mr Hunter and Mr Page.
THE PATENT
The complete specification
The title of the complete specification of the patent (the specification) is: A Firestopping Device and Associated Method. The application for the patent was filed on 21 December 2017 as a divisional application of Patent Application 2016208262. The priority date of the claims is 12 February 2016 (the date of filing Provisional Application No 2016900475).
The specification describes the invention as relating to the field of passive fire protection, with embodiments of the invention finding application in the construction of buildings, such as residential apartment buildings and the like.
In essence, the claimed invention is a method of constructing a barrier (typically, a wall) and routing services (electrical cables, water pipes, and the like) through the wall deploying an element referred to in the specification as a “firestopping device”, but commonly referred to as a transit (or fire transit). The firestopping device is fastened to an external object (typically, but not necessarily, a soffit) and the barrier is constructed around the device. It is this feature which is said to distinguish the method of the invention from prior art methods.
In describing the prior art methods, the specification states:
In a typical prior art method for constructing a residential apartment building the walls are constructed prior to installation of the services such as electrical cables, water pipes, etc. In this prior art method, a hole is made in the wall for each of the services, which typically must be separated by a standard separation distance, such as 200 mm for example. This separation distance requires significantly larger overall areas for services, which severely limits the design options for construction. Additionally, the typical prior art method often requires ladders and the like to be set up and moved repeatedly. Each of the individual holes through which the services extend must then be separately sealed in a fire rated fashion, which can be time consuming and expensive.
The specification explains that an object of the invention is to overcome, or substantially ameliorate, one or more of these disadvantages, or to provide a useful alternative.
The specification continues by providing consistory statements for claims 1, 2, and 3 of the patent. It is convenient, at this stage, to quote all the claims, noting that Trafalgar alleges that Boss has infringed claims 1, 2, 3, and 5, and that Boss alleges (as I have noted) that all the claims are invalid:
1.A method of constructing a barrier having at least one service routed there through, the method including the steps of:
providing a firestopping device including: a first portion formed from a metallic material or a thermally insulative material having formations for fastening of the first portion to an external object; and a second portion formed from a metallic material or a thermally insulative material being separable from the first portion and being mateable to the first portion such that the first and second portions, when mated together, define the firestopping device; wherein the firestopping device has a first opening at a first end, a second opening at a second end and an internal volume intermediate the first and second ends, the internal volume and each of the openings being sized such that at least one service may extend through the firestopping device, and wherein an intumescent material is housed within the internal volume, the intumescent material being responsive to heat so as to swell within the internal volume;
fastening the first portion to an external object at a position that straddles the proposed positioning of the barrier;
positioning at least one service such that it is adjacent to, or in alignment with, the first portion;
positioning the second portion around the at least one service;
mating the first and second portions to each other such that the at least one service extends through the firestopping device; and
constructing the barrier around the firestopping device.
2.A method according to claim 1 wherein the first and second portions of the firestopping device are mateable to each other by at least one mechanical fastener without the use of any tools.
3.A method according to any one of the preceding claims wherein the first portion of the firestopping device is a planar panel defining a pair of opposite sides each having a side wall extending therefrom.
4.A method according to any one of the preceding claims wherein the second portion of the firestopping device is U-shaped so as to define a base connected to a pair of opposed side walls.
5.A method according to any one of the preceding claims further including the step of marking a line on the external object so as to depict the proposed centre line of the barrier.
As will be clear, all the claims are method claims, and claims 2 to 5 are each dependent, directly or indirectly, on claim 1.
The specification describes non-limiting embodiments of the invention. In order to summarise the invention as described, I will focus on the first embodiment, which receives the greatest treatment in the specification.
In the first embodiment, the firestopping device is comprised of two separate portions which are mated. Consistently with the claims, these portions are referred to as, simply, the first portion and the second portion. The separability of the two portions allows the firestopping device to be used in the method that is claimed.
The first portion is a planar panel with a pair of opposing side walls. The first portion is provided with holes to facilitate the fastening of this portion to an external object. The specification explains:
… In typical implementations the object to which the first portion 2 is likely to be fastened is an overhead concrete slab, although other possibilities include wooden frame structures, walls, floors, service shafts, etc. Fasteners, in the form of bolts, screws, or the like, extend through the holes 3 so as to fasten into the concrete slab, thereby securing the first portion 2 in place.
The first portion is illustrated in Figures 5 and 6. Figure 5 is an upper perspective view, and Figure 6 is a lower perspective view, of the first portion:
The second portion is described as U-shaped, so as to define a base with a pair of opposing side walls. The second portion is illustrated in Figure 7, which is an upper perspective view of that portion:
The specification describes features of the first portion and the second portion that provide means by which the two portions can be mated to provide the firestopping device. It is not necessary to dwell on these particular features. They do not feature prominently in the claims. Claim 2, for example, merely requires that the two portions are “mateable” to each other by at least one mechanical fastener, without the use of tools.
The first embodiment of the firestopping device is illustrated by Figure 1, which is an upper perspective view of the device:
The specification states that, in this particular embodiment, the second portion forms the base and “the majority” of the side walls of the firestopping device. This statement acknowledges that, in this particular embodiment, the side walls of the first portion also define, in part, the side walls of the device. Indeed, as I have noted, the first portion is described as a planar panel with a pair of opposing side walls. Figure 6 shows the opposing side walls by indices 10 and 11.
The specification continues:
... in other embodiments the second portion mates with the first portion so as to form one of the sides and/or the top of the firestopping device.
This statement discloses that, in other embodiments, the opposing side walls of the first portion provide the side walls of the firestopping device, with the second portion providing one wall of the device, including by acting as a “top” for the device.
The specification continues by explaining that, in the described embodiment, the firestopping device has openings (shown by indices 5 and 6 in Figure 1) and an intermediate, internal volume through which at least one service (not illustrated) extends.
The specification describes the placement of intumescent material within and outside the device to resist the passage of fire and smoke.
The specification then describes a method of constructing a barrier:
Either of the above-described embodiments of the firestopping device 1 or 19 may be used in a method of construction of a barrier having at least one service routed there through. For the sake of providing an example, we shall assume that the barrier is a wall. The method commences with the marking of a line 27 on the concrete ceiling 28, which depicts the proposed centre line of the wall. The installer then fastens the first portion 2 to the ceiling 28 at a position that straddles the proposed positioning of the wall. More specifically, the first portion 2 is bolted onto the ceiling such that its intumescent material 15 is centred over, and extends parallel to, the centre line of the proposed wall, as shown in figure 13. Hence the positioning of the first portion 2 on the ceiling 28 provides a visual guide as to where the services are to penetrate through the proposed wall.
Next the installer positions the services (not illustrated) such that they are adjacent to, or in alignment with, the first portion 2. More specifically, the services are typically suspended by fastening devices such as clips, clamps, etc., approximately 50 mm below the ceiling so as to extend below the first portion 2 and generally perpendicular to the intumescent material 15 of the first portion 2. Typically, the installer will be supported by a lifting mechanism, such as a scissor lift or the like, whilst running the services. This process doesn't require the threading of the services through a prior art style of firestopping device, which helps ease of running the services and minimises the potential for the services to be damaged by the firestopping device. It is also time efficient and therefore has the potential to yield cost savings for the construction of the building. It also has the potential to assist project managers to coordinate the activities of various tradesmen and sub-contractors.
The reduction in required space for the firestopping of these services allows for significantly more flexibility in design, and the application of a multi-service firestopping device provides an "all-in-one" solution, allowing easier certification and compliance procedures.
Once the services have been run, the second portion 4 is positioned around the services. That is, the side walls 7 and 8 of the second portion 4 are positioned on either side of the services, with the base 17 of the second portion 4 below the services. The second portion 4 is then slid upwards so as to mate the first and second portions 2 and 4 to each other as shown in figure 14. Hence, the services now extend through the firestopping device 1.
It is now possible to construct the wall 30, as illustrated in figure 15, around the firestopping device 1 using standard barrier building techniques. For example, the wall installer may now attach wall engaging formations, in the form of a head track, to the ceiling 28 and to the exterior of the second portion 4, to which a barrier material, such as plaster board for example, may be attached. Additionally, or alternatively, wooden frame work may be constructed, to which a barrier material, such as plaster board for example, may be attached. Alternatively, formwork may be positioned to allow the pouring of a concrete wall. These processes may be assisted with the use of the second embodiment of the firestopping device 19, as illustrated in figures 16 to 19, to which the wall engaging formations in the form of channels 20 are pre-installed.
The resulting wall 30 has the firestopping device 1, and the services (not illustrated), extending there through. A number of services may extend together through the firestopping device without requiring the approx. 200 mm separation between each of them that is applicable to some prior art techniques.
The specification describes the application of sealant around the inner perimeters of the first and second openings, and the placement of graphite impregnated foam and, optionally, thermally insulative wrap around the services, externally to the device.
Construction of the claims
There are two questions of construction. The first is the meaning of “around” as used in claim 1 to describe the positioning of the second portion when forming the fire stopping device. The second question is the meaning of “thermally insulative” as used in claim 1 to describe the material from which the first and second portions can be made.
“Around”
Claim 1 defines a method in which, after the first portion of the fire stopping device is fastened to an external object, and after at least one service is positioned adjacent to or in alignment with that portion, the second portion is positioned “around” at least one service. The parties described this as integer 1.11.
The question that arises is: what does it mean to say that the second portion is positioned “around” the (at least one) service, bearing in mind that: (a) the specification describes an embodiment in which the second portion is U-shaped, but also refers to other embodiments in which the second portion forms one wall and/or the “top” of the device; and (b) in claim 1, the second portion is not expressly defined as having any particular shape or configuration.
The issue that divides the parties is this:
(a)Boss submitted that where, for example, the second portion is a planar portion and/or is the “top” of the fire stopping device (in other words, it has no side walls), positioning this portion, in the sequence described, cannot be positioning it “around” the (at least one) service because this portion can only form one side of the device.
(b)Trafalgar submitted that positioning this portion in the sequence described is positioning it “around” the (at least one) service because it would partially surround the service(s).
The parties advanced their competing constructions through the expert evidence of Mr Hunter (for Trafalgar) and Mr Page (for Boss). Both witnesses used as their starting point a dictionary meaning of “around”—namely, to “surround”. They reasoned that, as used in integer 1.11, “around” could not have this meaning. It must mean something less than surround. They agreed that if the second portion had the U-shaped configuration of the first embodiment, then it would be appropriate to speak of this portion being positioned “around” the (at least one) service in the step preceding the mating of the two portions to form the firestopping device. However, Mr Hunter went further. He contended that if the second portion was planar, and could thus only provide one side of the device, it would still be appropriate to speak of it being positioned “around” the (at least one) service.
Mr Hunter illustrated his view by the following diagram:
The effect of Boss’s submission is that by using the word “around” in integer 1.11, claim 1 confines the shape and configuration of the second portion to exclude a one-sided or substantially planar element, even though earlier integers in the claim do not do so. In developing its submissions on this question, Boss submitted that, even though the specification refers to other embodiments of the invention, in which the second portion forms but one side and/or the top of the device, these embodiments are disclaimed in claim 1 by the presence of integer 1.11. On occasion, Boss’s submissions went so far as to suggest that integer 1.11 effectively required the second portion to be a three-sided element.
The parties agreed that “around” is not used in claim 1 as a technical term or a term of art. They accepted that, as the question of construction is one for the Court to decide, the evidence given by Mr Hunter and Mr Page on this score is of limited assistance.
I think it is perfectly clear what claim 1 means when it uses the word “around” in integer 1.11, as I will now explain.
Claim 1 defines the firestopping device by reference to two “mateable” portions which, when mated, have an opening at one end, an opening at the other end, and an internal volume that is intermediate the two ends. The internal volume and the two ends are of a size that permits at least one service to extend through the device. The internal volume also houses the intumescent material.
Other than providing for these features, the method claimed in claim 1 is agnostic as to the shape or configuration of the firestopping device. The claimed method is also agnostic as to the shape or configuration of each, separate portion making up the device.
According to claim 1, the firestopping device is provided by: fastening the first portion to an external object in a particular position (straddling the position of the proposed barrier); positioning the (at least one) service adjacent to or in alignment with the first portion; positioning the second portion “around” the (at least one) service; and then mating the two portions so that the (at least one) service extends through the device.
When these sequential steps of claim 1 are recognised—appreciating that neither the firestopping device nor its two separate and “mateable” portions are required to be of any particular shape or configuration—the step of positioning the second portion “around” the (at least one) service means no more than positioning the second portion in relation to the (at least one) service (which is already adjacent to or in alignment with the first portion) so that, when the second portion is mated with the first portion to create the first and second openings at respective ends of the device and the intermediate internal volume, the (at least one) service is accommodated within the device.
In short, the word “around” does not function as a limitation on the shape or configuration of the second portion, so as to require the second portion to be something other than a one-sided or substantially planar element. It is simply referring to the positioning of the second portion so that the (at least one) service is accommodated within the device.
Boss submitted that its construction is supported by the further integer of claim 1—referred to by the parties as integer 1.13—“constructing the barrier around the firestopping device”. The gist of this argument is that integer 1.13 cannot mean constructing the barrier on one side of the firestopping device; it must mean constructing the barrier so as to surround the device on three sides. Therefore, the word “around” in integer 1.11 should be construed conformably with the word “around” in integer 1.13.
I am not persuaded that the use of “around” in integer 1.13 dictates the meaning of “around” in integer 1.11. “Around” in integer 1.13 is used in a different context to “around” in integer 1.11. The two integers speak to different relationships.
“Thermally insulative”
The contest about the meaning of “thermally insulative” arises from a subsidiary argument concerning integer 1.11 that was advanced through Mr Hunter with reference to Boss’s FyreBox device. Trafalgar contends that the supply of this device is an infringement of the patent because its use in accordance with Boss’s installation instructions would infringe claims 1, 2, 3, and 5 of the patent: s 117(1) of the Patents Act, read with s 117(2)(c). Alternatively, Trafalgar contends that the supply of this device is an infringement of the patent because Boss has reason to believe that it would be put to use in a way that would infringe claims 1, 2, 3, and 5 of the patent: s 117(1) of the Patents Act, read with s 117(2)(b).
The meaning of “thermally insulative” is also relevant to Boss’s challenge to the validity of the patent based on the ground of lack of utility.
The FyreBox device has two, separable portions which can be mated. One portion is a three-sided chassis. The second portion is described as a “bottom sliding lid”. The bottom sliding lid engages with the chassis. The two portions are held in place by four thumbscrews. The instructions direct that the bottom sliding lid be removed from the chassis by removing the four thumbscrews, and that the chassis then be mounted on the underside of a soffit or slab using mounting holes provided in the chassis.
It will be necessary to return to these instructions when considering the question of infringement. Of present importance is the fact that the bottom sliding lid is a substantially planar metal element that is fitted with smoke brushes at each of two opposing ends of the lid. The brushes are disposed perpendicularly. They are referred to in the instructions as “FR Smoke Seal Brushes”. Mr Hunter and Mr Page understood the letters “FR” to mean “Fire Resistant”.
The instructions direct that, after the services are installed, the lid be installed by resting it on flanges provided in the chassis, and sliding it into place. The instructions continue:
The Smoke Brushes will shape themselves around the penetrating services and when closed, the Smoke Brushes can easily be tucked into place by hand. Secure the lid using the four thumb screws provided ...
The subsidiary argument advanced through Mr Hunter is that the lid is one component comprising the substantially planar metal element and the smoke brushes attached to it, and that the step of sliding the lid into engagement with the chassis constitutes the step of “positioning the second portion around the at least one service”, within the meaning of integer 1.11.
This argument seeks to accommodate integer 1.11 in two ways. First, if the word “around”, as used in integer 1.11, has the literal meaning of “surround”—an argument which both expert witnesses rejected—then the smoke brushes “surround” the (at least one) service. Secondly, if only a second portion configured with at least three sides can be positioned “around” the (at least one) service, then that feature of claim 1 is satisfied by the lid of the FyreBox device because the planar metal element and the smoke brushes form a three-sided second portion.
This last-mentioned argument provoked more arguments—namely, (a) whether the lid (the planar element and smoke brushes) is formed from a metallic material or a thermally insulative material, as required for the second portion referred to in clam 1, and (b) whether the smoke brushes are, truly, “around” the (at least one) service if they are not “around” the (at least one service) for the entire length of the service as it extends through the device.
In light of my finding about the meaning of “around” in integer 1.11, it is not necessary for me reach a view on these arguments for that purpose. As a matter of substance, they add nothing to the construction I have found. Nevertheless, the first argument has a continuing relevance to Boss’s challenge to validity based on lack of utility. I will state my conclusions on both arguments as briefly as I can.
First, I do not accept that the smoke brushes are positioned “around” the (at least one) service for the purposes of integer 1.11. As I have explained, the word “around” in integer 1.11 means positioning the second portion of the firestopping device in relation to the (at least one) service so that, when the second portion is mated with the first portion of the device, the mated portions create the first and second openings at respective ends of the device, and the intermediate internal volume through which the (at least one) service is accommodated. The smoke brushes might, literally, “surround” the (at least one) service at each end of the completed Fyrebox, but it is the planar element of the FyreBox lid that is positioned “around” the (at least one service) so that, in combination with the chassis, it creates the openings for the device and the internal, intermediate volume through which the services extend and are accommodated.
Secondly, the fact that the smoke brushes happen to be attached to the “bottom sliding lid” of the FyreBox device is neither here nor there. I do not regard them as comprising part of the first portion or the second portion of the firestopping device that is described in the specification and defined in the claims.
Thirdly, claim 1 requires the first and second portions of the firestopping device to be formed from a metallic material or a thermally insulative material. It is silent on the composition of other elements that, in practice, might happen to be part of the firestopping device, but which are extraneous to the definition of the firestopping device in the claims. Whether the “fire resistance” of the brushes, which are extraneous to the claims, equates with them being formed from “thermally insulative” material is not a question that need be pursued.
Fourthly, Boss’s case on the meaning of this integer was advanced through Mr Page’s evidence. In a Joint Report prepared by Mr Page, Mr Harriman, and Mr Hunter, which was signed by them on 16 April 2020 (Joint Report Part A), Mr Harriman said that “thermally insulative” means “to restrict the passage of heat in a fire”. Mr Hunter agreed.
Mr Page said that his understanding of “thermally insulative” was similar to Mr Harriman’s view, but added that:
… the term referred to the ability of the device to restrict the passage of heat across it, including in fire situations where there could be 1200°C on one side of a barrier for an extended period (rerf 30 minutes), and there was requirement for the temperature to be kept to less than 180°C on the other side of the barrier.
Mr Harriman disagreed. He included the following section in Joint Report Part A:
Mr Harriman made the point that in his view the Patent did not specify that the invention needed to work solely in the case of a 1200°C fire. He added that another exemplary fire could be a smouldering fire of less than 200°C, or a sprinkler-protected fire of ~ 200°C. Mr Harriman noted that for such lower temperature fires, the foam would be important as it is the initial barrier which restricts the passage of heat and hot smoke across the device before the intumescent material is triggered (which occurs in the range 200-300°C). Mr Harriman added that in some of these lower temperature fires, the intumescent material may not be triggered at all. Mr Harriman stated that the example of the foam pads shows that ‘thermally insulative’ is therefore not limited solely to materials which can retain their integrity up to 1200°C (which he considers to be a ‘worst case’ fire). Mr Harriman stated that some materials used in firestopping devices (for example powder coat paints) are thermally insulative, but burn off well below 1200°C.
In Joint Report Part A, Mr Page agreed that the “invention” can be exposed to lower temperature fires. He said, however, that:
… the primary intent of the patent was to solve the problem of multiple services with a fire stopping device this term [sic] in itself suggests that the device must work at least equal to the external object which is being fitted around it.
I do not accept that the expression “thermally insulative” as used in the specification and claims has the qualified meaning given by Mr Page. The firestopping device defined in the claimed method is not one limited to use in fires of any particular temperature. I accept Mr Harriman’s evidence in that regard.
It is also to be understood that it is the intumescent material within the firestopping device that operates to “stop” the fire, not the first and second portions formed from a metallic material or thermally insulative material. The first and second portions are made from this material to retard the transmission of heat to enable the intumescent material to respond to the heat by swelling within the internal volume of the firestopping device to resist the passage of fire and smoke through the device. The evidence before me is that, in practice, the intumescent material, inside the device, will swell when the ambient temperature reaches 230°C.
I accept that, as used in the specification and claims, the expression “thermally insulative” has the meaning of “to restrict the passage of heat in a fire”.
PATENT VALIDITY: LEGAL PRINCIPLES
Boss challenges the validity of the claims of the patent on a number of discrete grounds.
Lack of novelty
First, Boss alleges that the invention, as claimed in each claim of the patent, is not novel in light of the public disclosure of certain documents, and in light of the public disclosure of certain firestopping devices in circumstances where, according to Boss, the manner of their installation was explained in terms which disclosed each and every step of the method claimed in claims 1 to 5 of the patent. All the disclosures involve fire transits manufactured by FSi Limited (formerly called Firestopit Limited), a United Kingdom company.
For the purposes of the Patents Act, an invention is to be taken to be novel, when compared with the prior art base, unless it is not novel in light of certain kinds of information, including (a) prior art information made publicly available in a single document or through doing a single act; and (b) prior art information made publicly available in two or more related documents or through doing two or more related acts, if the relationship between the two or more documents or two or more acts is such that a person skilled in the art would treat them as a single source of information: ss 7(1)(a) and (b).
When dealing with prior publication in a document or documents, the plurality in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 226 FCR 324 (AstraZeneca v Apotex) at 293, said that the touchstone for determining whether the prior publication discloses (anticipates) a claimed invention is stated in General Tire & Rubber Company v Firestone Tyre & Rubber Company Ltd (1971) 1A IPR 121 (General Tire) at 138:
When the prior inventor's publication and the patentee's claim have respectively been construed by the court in the light of all properly admissible evidence to technical matters, the meaning of words and expressions used in the art and so forth, the question whether the patentee's claim is new for the purposes of s 32(1)(e) falls to be decided as a question of fact. If the prior inventor's publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee's claim if carried out after the grant of the patentee's patent, the patentee's claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated. The prior inventor, however, and the patentee may have approached the same device from different starting points and may for this reason, or it may be for other reasons, have so described their devices that it cannot be immediately discerned from a reading of the language which they have respectively used that they have discovered in truth the same device; but if carrying out the directions contained in the prior inventor's publication will inevitably result in something being made or done which, if the patentee's patent were valid, would constitute an infringement of the patentee's claim, this circumstance demonstrates that the patentee's claim has in fact been anticipated.
If, on the other hand, the prior publication contains a direction which is capable of being carried out in a manner which would infringe the patentee's claim, but would be at least as likely to be carried out in a way which would not do so, the patentee's claim will not have been anticipated, although it may fail on the ground of obviousness. To anticipate the patentee's claim the prior publication must contain clear and unmistakable directions to do what the patentee claims to have invented: Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457, line 34, approved in BTH Co Ltd v Metropolitan Vickers Electrical Co Ltd (1928) 45 RPC 1 at 24, line 1. A signpost, however clear, upon the road to the patentee's invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee.
After referring to that passage, the plurality in AstraZeneca v Apotex said (at [294]):
294The metaphor of planting the flag has been taken up in this Court. For example, in ICI Chemicals, the Full Court at [51], after noting the metaphor, remarked that, in that case, the appellant’s argument involved the skilled addressee rummaging through a “flag locker“ to find a flag which the prior art document possessed and could have planted. In Apotex Pty Ltd and Another v Sanofi-Aventis and Another (2008) 78 IPR 485 …, Gyles J at [91] adopted a different metaphor, remarking that “anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun“. Each metaphor underlines the importance of the specificity required in order for a prior art document to anticipate an invention as claimed.
In order to be novelty-destroying, a prior documentary disclosure must provide information that is equal to the invention that is claimed: Hill v Evans (1862) 1A IPR 1 at 7; Samsung Electronics Co Ltd v Apple Inc [2011] FCAFC 156; 217 FCR 238 at [127]. In Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd [2020] FCAFC 116; 279 FCR 354, the Full Court noted (at [82]) that:
82… equality in this context refers to both the specificity of the information and its completeness. Unless these twin qualities are present, the prior disclosure will not be sufficient to deprive the invention of novelty.
(Emphasis in original.)
The same approach applies to public disclosure by an act or acts. Where, however, the prior art information is said to have been made publicly available by an act or acts, caution must be exercised in relying on the memory of witnesses in recounting the act or acts that are said to be anticipatory, given the fallibility of memory and the risk of reconstruction: Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 (CIG) at 165 – 166. As Besanko J observed in Aspirating IP Ltd v Vision Systems Ltd [2010] FCA 1061; 88 IPR 52 at [200], the correct principle is that a prior public use must be strictly proved, and evidence which is not corroborated must be scrutinised with care, particularly where it is evidence of events which occurred many years ago.
This is even more so where the evidence of the prior acts is constituted by recollections of the features of, and/or the manner of use of, equipment that is not in evidence before the Court. For example, in Old Digger Pty Ltd v Azuko Pty Ltd [2000] FCA 676; 51 IPR 43 (Old Digger) Von Doussa J said (at [156]):
156The onus of proof is on the respondents to establish a clear case of invalidity: see Montecatini Edison SpA v Eastman Kodak Co (1971) 45 ALJR 593 at 595-596 per Gibbs J. The evidence adduced by the respondents as to the prior use of the invention is the oral evidence of witnesses to the alleged use based on their recollections of events years beforehand. The alleged use is said to have taken place in the course of trialling reverse circulation percussive hammers incorporating prototype face sampling drill bit assemblies. The particular assemblies have not been produced in evidence. Oral evidence led in these circumstances must be viewed with particular caution, partly for the reason that the memory of the witnesses is likely to have been influenced by other products seen in the meantime, and to reflect reconstruction on the basis of these later observations: see Commonwealth Industrial Gases Ltd v MWA Holdings Pty Ltd (1970) 180 CLR 160 at 165-166, and Nicaro Holdings Pty Ltd & Others v Martin Engineering Co & Another (1990) 91 ALR 513 at 525 per Gummow J.
A further example is provided by Fieldturf Tarkett Inc v Tigerturf International Ltd [2014] FCA 647; 317 ALR 153 (Fieldturf). There, the case on lack of novelty was based on prior art information comprising both acts and documents. The acts concerned four installations of synthetic turf. The primary evidence was the recollections of a witness who was involved, one way or another, in each installation. The installation was carried out 25 or more years before the evidence was given. The claims were directed to a synthetic surface. A large number of claims were in issue. The claims specified features of the alleged invention in some detail. The claims in issue are quoted at [12] of the reasons for judgment. To illustrate the particular evidential difficulties in Fieldturf, it will suffice to quote claims 1 to 4:
1.A synthetic surface comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other from between 5/8 inch (1.588 cm) and 2 ¼ inches (5.715 cm), and the length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons, whereby the synthetic surface can receive an infill of particular [sic] material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.
2.A synthetic surface for a sports playing field comprising a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other, whereby the relationship of the length of the ribbons and the spacing between the rows is 2A ≤ L such that the length of the ribbons is at least twice the spacing; where A is the spacing between the rows, and L is the length of the ribbon measured from the flexible backing, whereby the synthetic surface can receive an infill of particulate material to approximately 2/3 the height of the ribbons such that a free length of ribbon extending above such infill can overlap with a corresponding free length of ribbon from adjacent rows to encapsulate such infill.
3.A synthetic surface having a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other from between 5/8 inch (1.588 cm) and 2 ¼ inches (5.715 cm), and the length of the ribbons, extending upwardly from the backing member, is at least twice the dimension of the spacing between the rows of ribbons, the surface including a layer of particulate material on the backing member supporting the ribbons in a relatively upright position relative to the backing member 2A ≤ L such that the length of the ribbons is at least twice the spacing; and the particulate material having a thickness, T, which is substantially equal to 2/3 the length, L, of the ribbons, where A is the spacing between the rows, L is the length of the ribbon measured from the flexible backing and T is the thickness of the layer of particulate material.
4.A synthetic surface for a sports playing field wherein the synthetic surface comprises a flexible backing member, parallel rows of synthetic ribbons, representing blades of grass, projecting upwardly from the backing member, the rows of ribbons spaced apart from each other, the surface including a relatively thick layer of particulate material on the backing member supporting the ribbons in a relatively upright position relative to the backing member, whereby the relationship of the length of the ribbons and the spacing between the rows is 2A ≤ L such that the length of the ribbons is at least twice the spacing; and the particulate material having a thickness, T, which is substantially equal to 2/3 the length, L, of the ribbons, where A is the spacing between the rows, L is the length of the ribbon measured from the flexible backing and T is the thickness of the layer of particulate material.
The evidence of prior use, given by this witness, was described by Jagot J (at [95]) as a form of “self-reinforcing tapestry”. Her Honour noted (at [96]) the significant length of time that had elapsed since the installations were undertaken. She said (at [95]) that it was apparent that the witness had added, to his recollection, information which had been made available to him “over the past ten years”. She noted, further (at [97]), that the witness’s evidence was given with full knowledge of the claimed invention. At [98], she also remarked on the fact that the witness’s evidence changed over time, saying:
98… It tends to reinforce the overall impression of reconstruction and forcing new information to fit within a framework first identified in 2004.
As I will later explain, I do not think that the particular difficulties illustrated in Old Digger and Fieldturf are present in the instant case, or at least present to the same extent.
It is convenient at this point to turn to the notions of inevitable result and implicit disclosure, and their role in determining whether an invention, as claimed, is not novel. These are aspects of the specificity and completeness which a prior documentary publication must have before it will be novelty-destroying.
As is made clear in General Tire, if a prior documentary publication contains clear instructions which, if followed, will inevitably constitute an infringement of the invention as claimed (assuming the claim to be valid), then the prior publication will be novelty-destroying. However, if the prior publication gives a direction which could be carried out in a way that would infringe the claim, but could also be carried out in a way that would not infringe the claim, the prior publication will not be novelty-destroying. In short, the “flag” will not have been “planted”.
Turning to implicit disclosure, it is trite that a prior documentary publication, which is alleged to be novelty-destroying, must be read through the eyes of the person skilled in the art. If an essential feature of the invention, as claimed, is not explicitly disclosed, the publication may still be novelty-destroying if the person skilled in the art would infer the presence of the feature from the document itself.
The decision in C Van der Lely N.V. v Bamfords Limited [1963] RPC 61 provides an example. In that case, the claimed invention was a hay rake having a combination of features, including a number of rake wheels arranged to be rotated by contact between the ground and consecutive teeth disposed on the circumference of the wheels. The question was whether the invention was anticipated by certain photographs of a prior art hay rake, even though the ground contact feature was not visible in the photographs. It was held that the invention was anticipated because the person skilled in the art would infer the presence of the ground contact feature from the photographs themselves.
There are limits to which this notion can be applied. As Jacob J cautioned in Hoechst Celanese Corp v BP Chemicals Ltd [1998] FSR 586 at 600 – 601:
… if what is said to be implicit in a document is given too much scope you will be blurring the distinction between lack of novelty and obviousness. On the other hand it must be right to read the prior document with the eyes of the skilled man. So if he would find a teaching implicit, it is indeed taught. The prior document is novelty-destroying if it explicitly teaches something within the claim or, as a practical matter, that is what the skilled man would see it is teaching him.
This caution was also emphasised by the Full Court in Ramset Fasteners (Aust) Pty Ltd v Advanced Building Systems Pty Ltd [1999] FCA 898; 164 ALR 239 (Ramset). In that case, the invention was a method of using a quick release hoisting attachment (a ring clutch) for tilt-up walls. The method included remotely operating the lever arm of the ring clutch by means of a release cable (rope) attached to the distal end of that arm. The invention was alleged to have been anticipated by three advertisements. One advertisement depicted the hoisting attachment with a lever arm which had a hole at one end to which something could be attached. However, no release cable or release rope was illustrated. The appellant argued that the rope release method would be inferred by the person skilled in the art on reading the advertisements. The Full Court disagreed and held that the advertisements were not novelty-destroying.
At [25], the Full Court said:
25In the present case, it is clear that the “pull rope” is an essential integer of the combination described in the patent. It is claimed as such in the claims by the words “a release cable attached to the distal end of the lever arm to remotely operate the lever arm by rotating it outwardly and downwardly to a predetermined degree relative to the wall section to rotate the bolt to the released condition and disconnect the ring clutch from the anchor”. This aspect of the combination is fundamental to the invention claimed, which aims at speedy and safe release of the clutch. Whether or not a skilled worker might deduce the desirability of adding such a feature, it cannot be said that any of the pictures in the advertisements, or anything said in them, infers that the device to which they relate involved the presence of this feature. The appellant argued that the alleged invention makes no “difference in substance from that which was known”, presumably by virtue of these advertisements. But this way of putting the matter, which departs from an investigation as to whether the essential integers of the combination were revealed, risks a coalescence between considerations of novelty and obviousness so as to create an amorphous test on which the modern law of patents has turned its back. In a case in which any allegation of obviousness has been deliberately abandoned, both fairness and clarity of thought require the Court to concentrate on the doctrine of novelty as posing a distinct test. The appellant's argument would reintroduce the confusion of the issues of novelty and obviousness which, earlier in this litigation, was introduced by the attack on the patent as not involving a new manner of manufacture. The sole question raised by the issue of novelty is whether the device to be seen by the skilled viewer as being depicted and in part described in the advertisements anticipated the Burke patent. That depends on whether all the essential integers were revealed in any one of those publications. It is not to be disposed of by a kind of confession and avoidance that acknowledges an integer is missing, but treats it as unimportant because, as the appellant asserts, it could easily have been worked out by a very small application of thought and experimentation. Any argument along those lines is inadmissible in principle, and betrays what seems to be the lingering influence of the approach the High Court has rejected. Considerations of the value, that is, of the magnitude or paucity, of the insight inherent in the advance made by the invention are considerations belonging to obviousness and not to novelty. So far as novelty is concerned, the attack on the patent must be rejected; whether or not the idea was brilliantly inventive, the respondents’ system did involve a new feature, claimed as such, which was essential to its safe and effective operation.
Thus, in a challenge to validity based on lack of novelty, it is not sufficient to say that, on reading the prior documentary publication, the person skilled in the art would see that the need for a claimed feature, which is not explicitly referred to or illustrated, is obvious. The question is whether the claimed feature would be (is) revealed to the person skilled in the art, implicitly, by the disclosure itself, based on that person’s understanding of the disclosure. This is a nuanced, but important, distinction. The plurality in AstraZeneca v Apotex said (at [311]):
311Section 7(1) of the Act sets the precise boundaries of the information that is to be taken into account when assessing novelty. Common general knowledge, as a notionally organised body of information possessed by the person skilled in the art, does not fall within these boundaries.
Lack of innovative step
Secondly, Boss alleges that the invention, as claimed in each claim of the patent, does not involve an innovative step.
For the purposes of the Patents Act, an invention is to be taken to involve an innovative step, when compared with the prior art base, unless the invention would, to a person skilled in the relevant art, in light of the common general knowledge before the priority date, only vary from certain kinds of information, in ways that make no substantial contribution to the working of the invention: s 7(4).
The kinds of information are (a) prior art information made publicly available in a single document or through doing a single act; and (b) prior art information made publicly available in two or more related documents or through doing two or more related acts, if the relationship between the two or more documents or two or more acts is such that a person skilled in the art would treat them as a single source of information: ss 7(5)(a) and (b). Each kind of information must be considered separately.
The approach to determining whether an innovative step is present was discussed by Gyles J in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225; 78 IPR 463. At [52] – [53], his Honour said:
52There is no need to search for some particular advance in the art to be described as an innovative step which governs the consideration of each claim. The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date of the relevant claim and ask whether the invention as claimed only varies from the kinds of information set out in s 7(5) in ways that make no substantial contribution to the working of the invention. It may be that there is a feature of each claim which differs from the prior art base and that could be described as the main difference in each case but that need not be so. Section 7(4), in effect, deems a difference between the invention as claimed and the prior art base as an innovative step unless the conclusion which is set out can be reached. If there is no difference between the claimed invention and the prior art base then, of course, the claimed invention is not novel.
53The phrase “no substantial contribution to the working of the invention” involves quite a different kind of judgment from that involved in determining whether there is an inventive step. Obviousness does not come into the issue. The idea behind it seems to be that a claim which avoids a finding of no novelty because of an integer which makes no substantial contribution to the working of the claimed invention should not receive protection but that, where the point of differentiation does contribute to the working of the invention, then it is entitled to protection, whether or not (even if), it is obvious. Indeed, the proper consideration of s 7(4) is liable to be impeded by traditional thinking about obviousness.
At [54], his Honour turned to consider the proper meaning of “substantial” as used in s 7(4): did it mean “great” or “weighty”, or did it mean “more than insubstantial” or “of substance”? After considering certain secondary materials, and earlier case law dealing with the expanded view of novelty expressed in Griffin v Isaacs (1938) 1B IPR 619—which is the provenance of the expression “make no substantial contribution to the working of the invention” as used in s 7(4)—Gyles J held (at [61]):
61In my view the provenance of the phrase “make no substantial contribution to the working of the invention” indicates that “substantial” in this context means “real” or “of substance” as contrasted with distinctions without a real difference. That confirms my impression from construction of the words of the section itself.
Gyles J’s construction of s 7(4) was not disturbed on appeal: Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81; 177 FCR 239 at [73] – [79] and [91]. As the plurality in the Full Court pointed out (at [73]):
73Section 7(4) requires a comparison to be made between the invention as claimed in each claim with the information s 7(5) describes. That is, s 7(5) identifies the kinds of information to which the invention as claimed in each claim is to be compared. This information is particular kinds of prior disclosures. Section 7(6) requires that each such prior disclosure be considered separately. That is, the invention as claimed in each claim must be compared separately with each relevant prior disclosure.
In undertaking a claim by claim comparison with the prior art information, it should not be forgotten that a dependent claim includes the features that define the invention in the claim from which the dependency derives: Vehicle Monitoring Systems Pty Ltd v SARB Management Consulting Group Pty Ltd [2013] FCA 395; 101 IPR 496 at [222] – [223]. It is not the case that, in assessing the validity of a dependent claim, the innovative step must be found in the features added to the definition of the invention by that claim.
Lack of claim support
Thirdly, Boss alleges that the complete specification does not comply with the requirements of s 40(3) of the Patents Act in that the claims are not “supported by matter disclosed in the specification”.
This requirement of s 40(3) cannot be considered in isolation from s 40(2)(a) of the Patents Act, having regard to the explanation given by Burley J in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1 (Merck v Wyeth) at [502] – [547] as to the operation of these provisions following the amendments to the Patents Act introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (the RTB Act). The parties were at one that this aspect of Boss’s challenge to validity should be considered in light of that explanation.
Trafalgar submitted that given the existence of the Intu-CLAMP brochure, and Boss’s accounting records using the name Intu-CLAMP for the products in question, the evidence does not establish any objective commitment by Boss to trade using the name FYREBOX before 24 November 2015.
Fourthly, Trafalgar submitted that Mr Falkiner’s recollection of these events might not be clear given the passage of time and also the fact that, by the time of these events, Mr Falkiner was already familiar with the Abesco products, which had been sold under various names, by different suppliers, including Trafalgar.
Fifthly, Trafalgar submitted that the Court does not have before it the original version of the Wormald data sheet which Boss contends was used before 24 November 2015. It complains that no such document was discovered by Boss and that, if such a document existed, Boss should have taken the step of issuing subpoenas to Wormald and the University of Newcastle to obtain copies of the document.
The Wormald data sheet shows the words FYRE-BOX and FYRE BOX used as a trade mark in respect of relevant goods. Trafalgar does not dispute that fact. Nor does it contend that FYRE-BOX and FYRE BOX are not substantially identical to FYREBOX or, indeed, to FIREBOX. Its contention is that the Court does not have before it an example of the Wormald data sheet as originally created and that Boss has not established that the Wormald data sheet was, in fact, created before the priority date of 24 November 2015. As it put the matter in its written closing submissions:
Ultimately, the Court does not have the alleged document relied on by Boss before it to determine whether or not the document involved trade mark use before the priority date.
It is not entirely clear what Trafalgar means by characterising the Wormald data sheet as “the alleged document”. If, by that characterisation, Trafalgar seeks to contend that the Wormald data sheet is not a genuine document—meaning that it is a fabrication—then that contention was not put to Mr Falkiner. Mr Prior, on the other hand, was cross-examined on the genuineness of the electronic files produced by Boss on discovery. He rejected the suggestion that the particular Word and pdf files produced on discovery were not genuine records of Boss. Mr Prior was not directly challenged on the genuineness of the Wormald data sheet as such, although that challenge seems to be implicit in Trafalgar’s attack on the electronic files. Mr Prior was challenged with the suggestion that the Wormald data sheet had not been distributed to any person before November 2015. He rejected that suggestion.
I am satisfied that the Wormald data sheet, referred to in Mr Prior’s and Mr Falkiner’s evidence, is a genuine document that was created and used before the priority date. The precise date of its creation is not revealed in the evidence. In his evidence, Mr Prior suggested that the document must have been created before 19 February 2015 because, in his email to Mr Falkiner of that date, he referred to the fact that Mr Falkiner already had a data sheet. I am not satisfied, however, that the reference in the email to a data sheet is, in fact, a reference to the Wormald data sheet. It is more likely to be a reference to some other data sheet. I reach this conclusion because, in the same email, Mr Prior reminds Mr Falkiner of a cable transit they discussed at a TAC meeting. On the evidence before me, this meeting is likely to be the occasion when Mr Prior and Falkiner had their conversation when Mr Falkiner was seeking a “solution”. If so, it cannot be the case that Mr Falkiner already had the Wormald data sheet. The Wormald data sheet must have been created after that conversation and, on Mr Falkiner’s timeline of events, after Wormald had commenced to acquire the Abesco products from Boss for use in the University of Newcastle project.
Nevertheless, I am satisfied that the Wormald data sheet was created during the time that Mr Falkiner was an employee of Wormald. I am also satisfied that, while he was an employee of Wormald, Mr Falkiner provided the Wormald data sheet to the University of Newcastle. The thrust of Mr Falkiner’s evidence was that his conversation with Mr Prior (referred to above), the creation of the Wormald data sheet, and his production of that data sheet to the University of Newcastle, took place well before his employment with Wormald ceased. Further, the line of cross-examination pursued with Mr Falkiner was not that he did not supply a data sheet (with respect to the Abesco products) to the University of Newcastle while he was employed by Wormald, but that, if he did supply a data sheet, it would have been the Intu-CLAMP brochure—a suggestion which, as I have said, Mr Falkiner rejected. I accept Mr Falkiner’s evidence on these matters.
I am satisfied that the Wormald data sheet that is in evidence is a copy of the data sheet that was created for Wormald’s use. Mr Falkiner’s evidence confirms that to be the case. Before being presented with a copy of the Wormald data sheet that is in evidence, Mr Falkiner described its features from memory. His unprompted recollection accorded with certain specific features of the document he later identified as the Wormald data sheet. This leads me to conclude that Mr Falkiner’s recollection of the document, and his later identification of it, is sound.
I do not accept that these findings are gainsaid by the evidence going to the creation of the electronic files of the Wormald data sheet that were produced on discovery. Mr Prior gave an account of how the electronic files, that were produced on discovery, were created. These files were forensically examined by Mr McKemmish. Mr McKemmish said that the file properties of the two electronic files produced on discovery were inconsistent with Mr Prior’s explanation of when, and how, the Wormald data sheet was created. However, it became clear during the course of Mr McKemmish’s cross-examination that the date of creation of the electronic files he examined was not necessarily the date of creation of the underlying document that is, in fact, the Wormald data sheet.
The metadata for the Word file of the Wormald data sheet that Mr McKemmish examined indicate that it was created on 11 December 2019. And yet, the metadata also show that the file was “last printed” on 12 December 2011, well before this particular electronic file was recorded as having been created. Mr McKemmish accepted in cross-examination that this means that an underlying document was in existence before the creation of the electronic file he examined. He accepted that the explanation for the “creation” date of 11 December 2019 is that a pre-existing Word file was opened, and then saved as a new document, on 11 December 2019. Mr McKemmish also accepted in cross-examination that, even given the “last printed” date of 12 December 2011, there are circumstances in which a Word document can be opened and printed, without the “last printed” date updating to a new date.
There is no direct evidence of the precise form of the document that was opened on 11 December 2019, or of the precise form of the document that is recorded in the metadata as having been “last printed” on 12 December 2011. However, the cross-examination of Mr McKemmish reveals to me that the metadata of the files he examined in relation to the Wormald data sheet do not provide a reliable basis for drawing conclusions as to when the Wormald data sheet, referred to in Mr Prior’s and Mr Falkiner’s evidence, was, in fact, created. In the circumstances, I see no convincing reason why I should not accept the account given by Mr Prior and Mr Falkiner. I consider that account to be credible and likely.
As to the criticism that Boss had not taken steps to obtain a copy of the Wormald data sheet from Wormald or the University of Newcastle, Mr Prior explained in cross-examination that, in fact, he had approached Wormald to obtain a copy of the Wormald data sheet, but that his approach was both unsuccessful and inconclusive. He explained that the Wormald business had been sold. He said that when he made his inquiry, the current owner of Wormald referred him to the previous owner, and that when he inquired of the previous owner, he was referred back to the current owner.
I accept that Boss could have taken the step of seeking the issue of subpoenas to Wormald and the University of Newcastle for the Wormald data sheet, but I have no reason to think that, by taking that step, it is likely that any documents would have been produced. Certainly, Mr Prior’s inquiries of Wormald, which were not disputed, give no confidence that the Wormald data sheet would have been produced by Wormald.
Finally, I am satisfied that, for trade mark purposes, the creation of the Wormald data sheet and its production by Mr Prior to Mr Falkiner occurred in the course of trade. I am also satisfied that Mr Falkiner’s subsequent production of the Wormald data sheet to “Mark” at the University of Newcastle occurred in the course of trade.
This leaves the question of the trade mark significance, if any, of the email of 19 February 2015, and of Mr Prior’s and Mr Falkiner’s conversation referred to above. I am not persuaded that the evidence establishes that, on these occasions, FIREBOX was used as a trade mark.
As with the use of “fire box” in the 22 July 2014 email that Mr Prior sent to Mr Burton of Ferm Engineering (see above), the use of “fire box” in the 19 February 2015 email to Mr Falkiner is equivocal. The email does not clearly show “fire box” functioning as a trade mark. Objectively, those words are equally likely to convey, and to be understood as, a purely descriptive reference to the nature and purpose of the cable transits.
Mr Prior’s reference to “a Firebox” in the conversation, as recalled by Mr Falkiner in his first affidavit, is of the same character. I observe that, because the use on that occasion was aural use, the capitalisation of “Firebox”, in Mr Falkiner’s affidavit, is without significance. So too is the fact that, in that account, “Firebox” is represented as one word rather than two (“fire box”).
As I have noted, Mr Prior’s recollection of the conversation is different. His recollection is that he responded to Mr Falkiner’s inquiry by stating that he (Mr Prior) had a product that was called FIREBOX. This is, arguably, trade mark use. However, given the differing versions of the conversation on this point, I cannot say which version of the conversation is correct, even though I accept that the word “Firebox”, or words “fire box”, were used. For this reason, the evidence falls short of establishing trade mark use on that occasion.
The product list
The product list on which Boss relies is a document which Mr Prior said he created in August 2015 to assist some staff at Boss, as well as some third party distributors and resellers, to identify products in the Boss range. Mr Prior said that it was his experience that customers often inquired about products using one of several names that Boss had used, or even the name of a competitor’s similar product. He regarded the product list as a “tool” by which the names of products, that might be used by customers, could be matched to a particular product.
Mr Prior said that this document was not provided to all staff or distributors of Boss’s products. It was only provided to those who did not have good knowledge of the market and who were not likely to be immediately familiar with the names used by Boss or its competitors for equivalent products. Mr Prior said that he remembers providing a copy of the product list to Boss’s then receptionist, Clarissa The; Jerry Tanner from FireCorp SA Pty Ltd; and Toby Ginn from TLE Electrical Wholesalers in New South Wales.
The product list contains three columns: “Official Product Name”; “Commonly known as”; and “Competitor Products”. Relevantly, the document identifies in the “Official Product Name” column, the name “Intu-Clamp Cable Transit”; in the “Commonly known as” column, the name “Fyrebox Cable Transit”; and, in the “Competitor Products” column, the name “FyreClamp” (i.e., Trafalgar’s product).
Boss submitted that the product list is relevant in two ways. First, because (on its case) the product list was distributed to customers, it evidences trade mark use of FYREBOX. Secondly, it supports Boss’s case that there had been use of FYREBOX before the priority date because, at the date of the document’s creation, Boss considered that the common name of the product it was supplying (which was the Abesco product) was the “FyreBox Cable Transit”.
Trafalgar disputed the date of creation of the product list. It contended that Mr Prior created the product list on 15 June 2016, not in August 2015 as he had deposed.
Boss was required to give discovery of the original and published versions of the product list. It gave discovery of three electronic files in the form of Excel spreadsheets. These files were examined by Mr McKemmish. The metadata shows that each file was “created” on 15 June 2015 with a “last printed” date of 19 September 2017. Two files (Boss Schedule of Product Names.xlxs and Boss Schedule of Product Names (2).xlxs) have a “modified” date of 12 December 2019. One file (Boss Schedule of Product Names (3).xlxs) has a “modified” date of 20 September 2017.
Mr Prior said that he could not recall the exact date on which he created each file, or the order in which he created them. His recollection was that he created the first version of the product list “in around August 2015”, with two further versions created at later times. According to Mr Prior, all versions were in existence before March 2016. Mr Prior said that he did not access these files after they were brought into existence until around September 2017, when he accessed the file Boss Schedule of Product names (3).xlxs. He said that he accessed all three files in December 2019.
The document that Boss adduced in evidence is reproduced from the file Boss Schedule of Product Names (3).xlxs. The document contains the header “Boss Products Name Comparison to Competitors August 2015 selling tool.pdf”. Mr Prior said that he does not recall creating a pdf version of the product list. Further, he was not able to locate a file having the name of the document’s header. He accepted that the recorded creation date of each file is not consistent with his recollection of when he created the content of the files.
Mr McKemmish said that the file properties of the three files were inconsistent with Mr Prior’s evidence as to the date of creation of each file and his evidence that the files were created sequentially. Further, Mr McKemmish said:
In my experience, as a forensic consultant, documents that contain identical file names with numbering such as (1), (2) or (3) at the end of the file name, such as the “Boss Schedule of Product Names” documents, are documents that have opened from an email or USB device and saved to the same location on another device. As a function of a file existing with the exact name in that location where the second file is trying to be saved, the software used adds the (1), (2) extension to the file as necessary. This is typical where files, for example, are opened and saved locally from an email, or are downloaded from the internet and saved to local location on a PC.
However, in cross-examination, Mr McKemmish accepted that, regardless of the date of creation of the electronic files he examined, it is possible that the content of the files could have been created at an earlier time.
I am not satisfied that the product list was created before the priority date of 24 November 2015. Mr Prior’s evidence that the product list was created in August 2015 is based only on his recollection. The file properties of each file seriously undermine the accuracy of that recollection and, unlike the evidence relating to the Wormald data sheet, there is no countervailing independent evidence that supports Mr Prior’s evidence. Even though Mr McKemmish accepted the possibility that the content of the electronic files could have been created at an earlier time, Mr Prior did not give evidence that the content of the product list was created earlier than the electronic files themselves. In other words, on Mr Prior’s evidence, one of the files constituted the creation of the product list. There is no earlier “content” on which Boss can rely.
I would add that I do not place significant weight on the header of the document as evidence of the date of the document’s creation. I cannot be satisfied as to when the header was placed on the document. Further, the header appears to be a file name. As I have noted, Mr Prior cannot recall creating a pdf version of the product list. No file bearing that name appears to exist. I do not consider the header to be reliable evidence for the purposes of drawing inferences as to the date of creation of the document.
Even if the product list was in existence before 24 November 2015, I am not satisfied that Boss has established that it was used in the course of trade before that date. I do not accept that mere internal use of the document within Boss, for reference purposes, constitutes a use of the document, and hence FYREBOX, in the course of trade. Further, there is no evidence as to when, in fact, Boss supplied the document to any customer. This evidence falls short of establishing trade mark use of FYREBOX before the priority date.
The CPG documents
Boss relies on a transaction which occurred between it and Commercial Plumbing Group Pty Ltd (CPG) on 30 October 2015. The transaction is evidenced by tax invoices and an adjustment note. These documents were obtained under subpoena from CPG and tendered by Boss as Exhibit 6. Mr Prior also annexed copies of these documents that had been reproduced from Boss’s own records, as well as a Packing Slip/Delivery Docket with respect to the same transaction. These constitute the CPG documents.
On their face, the CPG documents record a sale to, and return of products by, CPG. The products are described as: “Fyrebox Intu Cable Clamp 100mm Round”; “Fyrebox Intu Cable Clamp 150mm Round”; and “Fyrebox Intu-Clamp Transit 50mm Round”. The documents also record the sale of a product described as “Retrofit Pipe Collar – 150mm” which, apparently, was not returned by CPG.
The returned products are fire-stopping and smoke-stopping products into which cables (and, in the case of the transit, pipes) can be placed. The products contain intumescent material. A Technical Data Sheet in evidence describes Intu-Cable Transits as follows:
The Intu-Clamp Cable Transits consist of a square or round steel sleeve containing heat reactive intumescent polymer. Cables and pipes are placed inside the Intu-Clamp and set into place on the wall or ceiling. In a fire situation, the intumescence reacts to the heat and rapidly expands, sealing the cable sleeve and preventing the passage of fire and smoke.
The CPG documents provoked a degree of controversy. In its written closing submissions, Trafalgar submitted that there were a number of “unusual features regarding the transaction” which “cast doubt on whether the order for transit units recorded in the invoices took place”. Trafalgar referred to the following matters: the person named on the documents as having ordered them (“Aaron” (accepted to be Aaron Wax)) did not recall ordering the products, and had never seen or heard of them; the person named on the Packing Slip/Delivery Docket as having returned the products (Ben Bradley) had no recollection of being involved in the transaction and had not heard of a product called an Intu-Clamp; neither of the signatures on the Packing Slip/Delivery Docket recording the return of the products was Mr Bradley’s signature; and invoices sent to another customer (Coral Air Conditioning Pty Ltd in October, November, and December 2015, and July 2016) for the Intu-Cable Clamp 100mm Round and Intu-Cable Clamp 100mm Square did not contain reference to the word “Fyrebox” when identifying the products.
Trafalgar submitted that the CPG documents are “at best an anomaly” and do not reflect the manner in which the Intu-Clamp product was sold and invoiced by Boss before November 2015. Mr Prior was cross-examined on that particular matter. It was put to him that the use of FYREBOX in the CPG documents was an anomaly in the sense that the use was “an isolated event” and not consistent with Boss’s practice at the time. Mr Prior said that he would not use the word “anomaly”, but he accepted that the CPG documents were the first invoices that he could find which used FYREBOX with respect to the products.
The evidence does not answer the questions that Trafalgar raised in submissions. However, I do not think it can be said that the transaction did not take place. If, by raising that matter, Trafalgar was intending to assert that the CPG documents are not genuine, then it certainly did not squarely advance that proposition or put it to Mr Prior. Indeed, the only matter put to Mr Prior in that regard was that the use of FYREBOX in the CPG documents was an isolated event.
Trafalgar is unable to answer the fact that the CPG documents were produced by CPG pursuant to a subpoena that had been issued at Trafalgar’s request. CPG is a company that is independent of the parties to this case. There is no apparent reason why it would have the CPG documents in its possession other than as an incident of the transaction which they record. Therefore, I do not think that the genuineness of the documents, or the transaction they record, are seriously in question. Having regard to all the evidence, I accept that the CPG documents are genuine and that the transaction they record occurred in October 2015, before the priority date of the 478 application.
Trafalgar submitted that the use of “Fyrebox Intu Cable Clamp” and “Fyrebox Intu-Clamp Transit” in the CPG documents was not the use of the FIREBOX mark or the FYREBOX device mark. The burden of Trafalgar’s submission is that, in those renderings, FYREBOX cannot be separated from the complete description given in the documents.
I do not accept that submission. I am satisfied that the use of FYREBOX in the descriptions “Fyrebox Intu Cable Clamp” and “Fyrebox Intu-Cable Clamp Transit”, as used in the CPG documents, is use of FYREBOX as a trade mark. Further, I do not accept Trafalgar’s submission that this finding is gainsaid by the fact that the words “Intu Clamp” or “Intu-Clamp” are, themselves, inventions by Boss. I am satisfied that, in each description, the word FYREBOX was functioning as a trade mark in its own right.
Trafalgar also submitted that there is no evidence of the use of FYREBOX on the products referred to in the CPG documents or their packaging at the time of the transaction. That is so. But it does not follow from that fact that the use of FYREBOX in the CPG documents was not trade mark use. Use of a mark in commercial documents, such as invoices, can constitute trade mark use in the required sense: Thunderbird Products Corp v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592 (Thunderbird) at 600 – 602.
It also does not matter that the use might be “isolated” or, as Trafalgar also put it in submissions, “ad hoc”. It has been held that if prior trade mark use has occurred on even one occasion it can be sufficient to deny a trade mark applicant the right to claim authorship and consequent registration of the mark in question: The Seven Up Company v O.T. Limited (1947) 75 CLR 203 at 211, and 216; Thunderbird at 600. But, in any event, I do not accept that Boss’s use of FIREBOX/FYREBOX was isolated, in light of the other evidence I have discussed.
This leaves Boss’s case that there was aural use of FIREBOX/FYREBOX by Boss in a conversation which Mr Prior had with Mr Bradley in 2015.
Mr Prior and Mr Bradley played in a local soccer team. Mr Bradley gave evidence that, at training or at matches, Mr Prior would often talk about some of the products that Boss supplied. Mr Bradley said that, on one occasion “in around 2015”, Mr Prior told him about a product called FYREBOX. Mr Prior explained that this product could take multiple products through a fire-rated wall, and only needed “a single sign off and certification instead of certification for every individual product”. Mr Bradley said that he was “excited” about the product because he thought it had the potential to “revolutionise the industry”. Mr Bradley said that, after Mr Prior had shown him the product, he saw promotional material for it and a sample. He described the sample as:
… a red rectangular box, which had an opening at each end of about 300mm x 200mm. It could be installed in a wall and had an intumescent material inside. Once installed in a wall, it allowed you to just push a pipe or whatever had to pass through the wall through the box.
Although, in his affidavit evidence, Mr Bradley referred to the product by the name FYREBOX, he accepted in cross-examination that, at the time of this conversation, Mr Prior did not spell the name of the product. Also, Mr Bradley could not say where or when he saw the promotional material for, or a sample of, the product.
On the evidence before me, I cannot be satisfied that the conversation to which Mr Bradley deposed occurred before 24 November 2015. Further, I am not satisfied that the conversation evidences use of FIREBOX/FYREBOX in the course of trade, in any event. I am not persuaded that the conversation was anything more than a casual one on a social occasion.
Conclusion on prior trade mark use
In closing submissions, Trafalgar drew attention to the following statement made by Mr Prior in a declaration lodged in the Trade Marks Office:
The Opponent’s First Trade Mark [meaning FIREBOX] was used colloquially as the alternative name for ‘Intu-Clamp’.
In that declaration, he also said:
In or about May 2015, it was the Opponent’s opinion that the Opponent’s First Trade Mark [meaning FIREBOX] could be identified by its customers as being a descriptive word and not as a badge of origin for the Opponent’s Product, and that there would likely be difficulties in securing the Opponent’s First Trade Mark with a registered trade mark. As such, the Opponent decided to slightly alter the spelling, and commenced implementing the change in using and referring to the Opponent’s Product as “FYREBOX” … in the months thereafter.
Trafalgar submitted that these statements establish that Mr Prior (Boss) used FIREBOX before November 2015 as a generic or descriptive internal reference to a product, in circumstances where the product itself was branded and referred to in all promotional and sales materials under other brand names. In this regard, Trafalgar also referred to the product list, which gave the “Official Product Name” for the Abesco Product as “Intu-Clamp Cable System”.
Trafalgar also challenged the date when certain entries in Mr Prior’s notebook referring to FIREBOX or FYREBOX or variations of these names were made, in particular whether they were made before the priority date of 24 November 2015.
It is not clear to me what Mr Prior meant when referring to FIREBOX as a “colloquial” alternative for Intu-CLAMP. Leaving aside Mr Prior’s notebook entries (which could not stand as trade mark use of FIREBOX or FYREBOX in any event), it is certainly clear from the other evidence before me that Mr Prior was using FIREBOX and FYREBOX, and variations of those words, in the course of Boss’s business, with respect to fire transits, well before 24 November 2015. Although I am not satisfied that some of these uses constitute trade mark use of FIREBOX or FYREBOX, I am satisfied that other uses were trade mark use, as I have explained.
Boss’s use of FIREBOX or FYREBOX as a trade mark, in the period before the priority date of the 748 application, was sporadic and somewhat random. This does not mean, however, that, on those occasions, Boss, through Mr Prior, was not using, or not intending to use, FIREBOX or FYREBOX as a trade mark. It is also not to the point that, in respect of the same products, Boss was, at the same time, using, additionally or alternatively, other trade marks.
I am satisfied that the use demonstrated by the evidence was such that, at the priority date, Fire Containment (now, Trafalgar) could not validly claim to be the owner of the FIREBOX trade mark. It follows that the appeal in NSD 641 of 2019 succeeds. The 748 application should be refused. The delegate’s decision to the contrary should be set aside.
The 214 application
As I have recorded, in the Trade Marks Office the opposition to the 214 application was determined on the basis of s 44 of the Trade Marks Act, having regard to the existence of the deferred 702 application. The delegate embarked on that determination recognising that the 702 application might ultimately fail and might no longer pose a bar to the 214 application on the s 44(1) ground: 2019 ATMO 107 at [15].
The delegate noted that Boss had opposed the 214 application on the grounds in ss 42, 44, 58, 59, 60, 62, and 62A of the Trade Marks Act. The delegate recorded that “the focal points of contention at the hearing centered on questions of ownership under s 58 and bad faith under s 62A…”. Even so, the delegate said that the ground that concerned him most was the s 44(1) ground: 2019 ATMO 107 at [10] – [11]. He determined the opposition on the s 44(1) ground and made no findings in relation to the other grounds of opposition.
In the appeal in NSD 1242 of 2019, Boss maintained its opposition to the 214 application on a number of grounds including, importantly, s 58 of the Trade Marks Act, even though, as I have said, the focus of the parties’ submissions was s 44.
The abiding question in the appeals in NSD 641 of 2019 and NSD 1242 of 2019 has been: who, as between Trafalgar and Boss, is the owner, for the purposes of the Trade Marks Act, of the FIREBOX and FYREBOX marks in respect of the relevant goods?
As I have said on a number of occasions, the parties have accepted that, for relevant purposes, FIREBOX and FYREBOX are substantially identical. An issue in the appeal in NSD 1242 of 2019 is whether FYREBOX and the composite FYREBOX mark are substantially identical or deceptively similar, so as to engage s 44(1) of the Trade Marks Act.
I am satisfied that FYREBOX and the composite FYREBOX mark are substantially identical. Despite the presence of the flame element, the dominating element of the composite FYREBOX mark is the word FYREBOX itself. Indeed, the composite FYREBOX mark, even with its flame element, is properly seen as no more than a particular rendering of FYREBOX, which would fall within the scope of the 702 application, should that application proceed to registration.
In light of my finding that Trafalgar cannot validly claim to be the owner of FIREBOX as a trade mark, and that the 748 application should be refused, the 748 application can no longer be an impediment to registration of the 702 application for FYREBOX on the s 44(1) ground, contrary to the delegate’s assumption when deciding the opposition to the 214 application: 2019 ATMO 107 at [13].
This does not mean, however, that there no longer remains a question about whether the 702 application should, or will, proceed to registration. Even if the 702 application is accepted (and I do not know whether it will be accepted), I have no reason to think that the application will not, in any event, be opposed. And if registration is opposed, I have no way of foretelling (nor should I attempt to foretell) what the outcome of any opposition might be.
If it be assumed that, for some reason, the 702 application does not proceed to registration (including because it is successfully opposed on some ground other than s 58), then it cannot block the 214 application, and the questions whether s 44(1) applies and, in turn, whether the discretion under s 44(3) should be exercised, fall away.
If, on the other hand, it be assumed that the 702 application proceeds to registration, it does not follow that s 44 then becomes decisive of the fate of the 214 application, as the delegate treated it to be: 2019 ATMO 107 at [27]. The impediment remains that Trafalgar cannot claim to be the owner of FYREBOX as a trade mark for the purposes of the Trade Marks Act—a ground of opposition maintained by Boss in the appeal in NSD 1242 of 2019. If that ground of opposition holds good—as, arguably, it must, given the finding I have made in the appeal in NSD 641 of 2019—then the questions whether s 44(1) applies and, in turn, whether the discretion under s 44(3) should be exercised, are superfluous. Regardless of the answers to those questions, the 214 application cannot proceed to registration.
This seems to have been the considered position advanced by Trafalgar in closing submissions where, at T1020 (lines 18 – 20), leading counsel for Trafalgar said:
If we win the section 58 fight, your Honour will have to consider section 44. If we lose the section 58 fight and … Boss Fire win that, then this section 44 falls away. … they only need to win one ground.
Boss has won, and Trafalgar has lost, “the s 58 fight”. In light of this recognition, it is not appropriate that I make findings in relation to the issues raised by s 44(3). To do so would be supererogation in that, if it is not necessary to consider s 44(1) as a ground of opposition, then it is certainly not necessary to consider the consequential question whether the discretion in s 44(3) should be exercised.
In these circumstances, my provisional view is that the appeal in NSD 1242 of 2019 should, simply, be dismissed. I will, nevertheless, permit the parties to make further submissions on that particular question, if they wish, after having had an opportunity to consider these reasons.
CONCLUSION AND DISPOSITION
In light of these findings and conclusions, the parties should attempt to agree on draft orders in each proceeding. In the case of NSD 1589 of 2018, the draft orders should also provide for the further conduct of that proceeding. Agreed orders or, failing agreement, competing draft orders, should be provided to my Associate by no later than 4.00 pm on 10 May 2022. As I have said, the parties can make further submissions, if they wish, on the disposition of the appeal in NSD 1242 of 2019.
The parties should liaise with my Associate to have the three proceedings listed for the purpose of making orders and, in the case of NSD 1589 of 2018, for further case management.
I certify that the preceding six hundred and eighty-nine (689) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Yates. Associate:
Dated: 29 April 2022
SCHEDULE OF PARTIES
NSD 1589 of 2018
Cross-Respondents
Second Cross-Respondent
TRAFALGAR GROUP PTY LTD
6
15
5