Taking a position on patent infringement – position statements where multiple products accused

Date: 30 September 2021
Court:  Federal Court of Australia
Judge: Rofe J

Background

The patentee (Surefoot) alleged that seven of the respondents’ (All Footings) products infringe Australian Patent 2012276281 (Patent), which relates to ‘footing plates’ to be placed at the base of posts, poles or upright beams to secure them in position. All Footings’ seven impugned footing plates differ in their features, most significantly in that six of the footing plates are square and one is circular.

Key Issues

At the first directions hearing, Surefoot was ordered to serve particulars of infringement. It subsequently filed a position statement on infringement (PSI). PSIs are described in the Federal Court Intellectual Property Practice Note, and are intended to concisely state the facts and matters relied upon in support of infringement allegations, including by reference to the particular integers of any claim alleged to have been infringed. In this case, Surefoot’s PSI addressed one of All Footings’ products by way of example, only briefly addressing relevant differences between it and the other six products.

All Footings disputed the adequacy of the PSI, submitting that the PSI should address each footing plate individually to indicate how differences between the products were relevant to the integers of the claims. They further submitted that it was unclear from the PSI how three of the integers of the claims were satisfied by the exemplified product; in simple terms, how one part of the product “originated” from another part, how one part of the product was connected to and supported another part, and how one part of the product was “offset” from another part. All Footings therefore sought amendment of the PSI.

Surefoot submitted that All Footings were fully informed of the infringement case based on the PSI and that each of the alleged deficiencies in the PSI resulted from the parties’ differing views on construction, which would be resolved at trial.

Outcome

Regarding All Footings’ first submission, Rofe J held that, insofar as the six square footing plates were concerned, it was sufficient to use an example footing plate as the basis for identifying the features said to correspond to the claim integers. However, it was not sufficient in the case of the seventh, circular footing plate. This was because several of the claim integers referred to “edges” (plural), and there was room for confusion as to how Surefoot construed these integers to read onto the product features. Surefoot was ordered to amend its PSI to address the circular footing plate specifically.

As to All Footings’ second submission, Rofe J applied established case law that the purpose of a PSI is to clarify the patentee’s construction of the integers of each asserted claim, not to justify or explain that construction. In each case, Surefoot’s construction of the relevant integer was clear from the PSI. All Footings were seeking an explanation or justification of that construction, which is a matter for trial. Surefoot was not required to amend its PSI to include such explanation or justification.

Implications

The judgment provides useful clarification on the use of a PSI and the level of detail required on points of construction. In the case of multiple allegedly infringing products, the PSI must adequately cover all features of each product to the extent that they materially differ from each other, but examples can be used where there are no such differences.

The judgment also highlights in a more general sense the utility of a PSI to force the patentee to adopt a specific construction of its claims and infringement position early on. By insisting that this is done precisely, a respondent can not only determine its response on infringement but also seek to prevent ‘slippage’ in construction arguments, particularly as an invalidity case takes shape.