Federal Court of Australia Surefoot IP Holdings Pty Ltd v All Footings Solutions Pty Ltd [2021] FCA 1181 File number(s): VID 298 of 2021 Judgment of: ROFE J Date of judgment: 30 September 2021 Catchwords: PRACTICE AND PROCEDURE – patents – position statement on infringement – adequacy of position statement – need to identify features of allegedly infringing products and corresponding integers of claims in patent Cases cited: ViiV Healthcare Company v Gilead Sciences Pty Ltd (2020) 152 IPR 31 Division: General Division Registry: Victoria National Practice Area: Intellectual Property Sub-area: Patents and associated Statutes Number of paragraphs: 31 Date of last submission/s: 20 September 2021 Date of hearing: Determined on the papers Counsel for the Applicant Mr C H Smith with Mr R J Maguire Solicitor for the Applicant Arcadia Lawyers Counsel for the Respondents Ms C Cunliffe Solicitor for the Respondents DLA Piper ORDERS VID 298 of 2021 BETWEEN: SUREFOOT IP HOLDINGS PTY LTD Applicant AND: ALL FOOTINGS SOLUTIONS PTY LTD First Respondent MICHAEL MICHAEL Second Respondent ANTHONY RAPA Third Respondent order made by: ROFE J DATE OF ORDER: 30 SEPTEMBER 2021 THE COURT ORDERS THAT: 1. By 4:00pm on 8 October 2021, the Applicant file and serve a Further Amended Position Statement that separately deals with the circular footplate (example (g)), clearly identifying for that example the precise features which are said to correspond with the integers of the asserted claims of the patent in suit. 2. Costs be reserved. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011. REASONS FOR JUDGMENT ROFE J Backgroud 1 On 4 June 2021, the Applicant commenced patent infringement proceedings against the Respondents. The Applicant is the patentee of Australian Patent No 2012276281 (the Patent) entitled 'improved footing plates'. The Patent relates to footing plates for posts, poles or upright beams in buildings and similar structures. 2 On 1 September 2021, the Applicant filed and served its position statement on infringement on the Respondents. On 8 September 2021, the Respondents requested that the Applicant file an amended position statement, addressing the alleged issues described below. 3 On 13 September 2021, the Applicant served an Amended Statement of Claim alleging infringement of claims 2, 3, 4, 5, 6 and 7 in relation to the First Respondent's products identified as 'AFS footing plates'. This term is defined to include seven different footing plates, samples of each of which have been provided to the Applicant. 4 Claim 2 of the Patent provides: A footing plate including a planar web from which a plurality of tubes originate and descend, said tubes being adjacent the edges of the planar web and being disposed at angles to the planar web, none of said angles being 90°, said tubes being sited to permit the passage therethrough of pins for fixing thereof into underlying ground, the planar web being provided with a downwardly extending flange on at least one of the edges of the planar web. 5 On 13 September 2021, the Applicant also served an Amended Position Statement on Infringement (Amended PSI) which is said to identify the basis upon which each of the seven products are said to possess the integers of the claims in suit. The products are depicted in Schedule 1 of the Amended PSI. 6 Each of the seven footing plates has certain features in common. However, there are also differences in configuration. The Respondents describe the differences as relating to the presence and shape of an upper plate, and the means of affixing and positioning the upper plate relative to a base component: (a) In the example marked (a) in the Schedule the upper plate is square and is bolted to a square base, with a gap between the plate and the base; (b) In the examples marked (b) and (e) in the Schedule the upper plate component is square, and is welded to a square base; (c) In the examples marked (c) and (d) in the Schedule to the Amended PSI, the upper plate is bolted to a square base, with no gap between the plate and the base, but whereby the position of the plate relative to the base may be adjusted so as to provide a gap; (d) In the example marked (f) in the Schedule to the Amended PSI, there is no upper plate; and (e) In the example marked (g) in the Schedule to the Amended PSI, the upper plate is circular and is bolted to a circular base, with a gap between the plate and the base. Submissions 7 The Respondents submit that the Amended PSI does not clearly identify the features of each footing plate that is said to correspond to each integer of the claims. The Respondents further submit that the Amended PSI contains additional deficiencies which mean the Respondents cannot properly apprehend and respond to the Applicant's infringement case. 8 The Respondents state that certain integers of the asserted claims referring to the relationship of the upper plate to other features of the product, in particular Integers 2.2, 2.3 and 2.5, will be in serious dispute between the parties. 9 First, the Respondents submit that the Amended PSI does not address how the integers in the impugned products are affected by the differences between the products. Rather, the Amended PSI refers to one example product and attempts to deal with variations by exception in Schedule 1. 10 To illustrate this submission, the Respondents point to Integer 2.2. Integer 2.2 refers to a planar web 'from which a plurality of tubes originate and descend'. The Amended PSI states that 'each of the AFS footing plates has a plurality of tubes that descend relative to the planar web, arranged around the perimeter of the web'. The Respondents submit that the Amended PSI fails to explain how the arrangement of tubes meets the requirement that the tubes 'originate and descend from' the web, including where the planar web is an adjustable and detachable component from the component to which the tubes are attached. 11 The Respondents submit that where infringement is alleged in respect of multiple products with substantive differences the correct approach is to deal with each product individually. As such, the Respondents say the Applicant should further amend its Amended PSI to address each of the seven products separately and to identify the precise feature of each product said to correspond with each integer. 12 Second, the Respondents submit that the Applicant's position in respect of certain integers is not clear in relation to the particular product chosen as the example on which the Amended PSI is based. In particular: (a) Integer 2.5 refers to the planar web 'being provided with a downwardly extending flange on at least one of the edges'. The Respondents assert that the Applicant has not explained how the flange is 'on at least one of the edges' where the planar web and the flanges are not directly connected. (b) Integer 4.1 requires that the tubes are 'offset from the edges of the planar web'. Claim 2 includes the requirement that the tubes are 'adjacent the edges of the planar web'. The Respondents submit that a plain reading of Integer 4 requires the tubes to be both 'adjacent' and 'offset from' the edges of the planar web, and that the Applicant's basis for alleging that the tubes are both 'offset from' and 'adjacent' to the planar web is unclear. 13 Additionally, in relation to Integer 2.3, which requires that tubes are adjacent to the 'edges' of the planar web, the Respondents submit that the Applicant does not explain how the tubes are said to be adjacent to the 'edges' of the circular plate depicted in example (g). 14 The Applicant submits that the Respondents are fully informed as to the case put against them by the Amended PSI. In response to each of the Respondents' complaints, the Applicant submits: (a) The Respondents' claim in respect of Integer 2.2 is a result of a different view as to the construction of the relevant claim language and should therefore be determined at trial and supported where necessary by expert evidence. (b) The Respondents' claim in respect of Integer 2.3 (regarding the 'edges' on the circular footing plate) is similarly a construction issue to be resolved at trial. (c) The Respondents' claim in respect of Integer 2.5 (where the Applicant contends the planar web is 'provided with' a flange even where it is not directly connected) is again a result of a different view as to the correct construction of the Amended PSI to be determined at trial. (d) The Respondents' claim in respect of Integer 4.1 raises a further construction issue. The Applicant contends that when read together, claims 4 and 2 should be construed to require the tubes be offset instead of adjacent. In other words, the two claims are alternative rather than cumulative requirements. Consideration 15 In ViiV Healthcare Company v Gilead Sciences Pty Ltd (2020) 152 IPR 31 (ViiV), Beach J set out a non-exhaustive list of general observations on position statements on infringement. His Honour stated at [15]–[20]: First, whether dealing with an allegedly infringing product, process or method there needs to be a clear identification of the precise features thereof which are said to correspond with one or more integers of the asserted claim(s) of the patent in suit. Whether pharmaceutical compounds, gadgets or some other subject matter, this can usually be advantageously portrayed by the use of diagrams or photographs, where available or suitable. Indeed, three-dimensional structures can readily be portrayed in two-dimensions. So, for example, chemists use Haworth projections and more generally drawing conventions to represent the 3D stereochemistry of molecules; and Markush structures can also be expressed in a Haworth projection. Such diagrams or pictorial representations of the alleged infringing subject matter can advantageously identify, by appropriate markings, the matching integer(s) of the asserted claim(s). The short point is that diagrams or other pictorial representations should be used where possible. Second, it must be clear from the position statement, whether expressed or necessarily implied, what is the construction of the integer(s) and the asserted claim(s) being advanced by the applicant which is the foundational assumption upon which the said matching underpinning the alleged infringement proposition is being made. But this does not mean that the applicant has to justify any such construction including explaining any reasons for advancing it by reference to the complete specification. And nor does the applicant need to anticipate any contrary construction and rebut it in advance. Of course though, the applicant may wish to put a case on alternative constructions for the purpose of saying that whichever one applies, the alleged infringer loses. But if it seeks to do this, this should be made clear. The point is that the position statement needs to be clear on the foundational construction being used by the applicant concerning the relevant integer(s) and the asserted claim(s). 16 The Amended PSI needs to be clear as to the foundational construction being adopted by the Applicant concerning the relevant integers of the asserted claims. However, the Amended PSI is not required to justify or explain the construction adopted by the Applicant. The purpose of the Amended PSI is to clearly identify the precise features of the allegedly infringing product which are said to infringe. 17 The Applicant alleges infringement by reference to seven example products. Photographs of each of the examples are in Schedule 1 to the Amended PSI. Six of these products have a four-sided footing plate. The Amended PSI refers to the claim integers by reference to one example (H6) and then deals with any variations in the other examples separately. 18 The Applicant's method of using one exemplar (H6) to identify the features which are said to correspond to the claimed integers is sufficiently precise for the four-sided footing plates. It can be seen how the Applicant's construction is put to include the various four-sided variations. 19 However, I consider that the circular footplate example is sufficiently different to the four-sided examples that there is potential for confusion as to some elements of the Applicant's construction when applied to the circular footplate. Greater precision of identification is required for the circular example than treating it as a variation to the four-sided example. Where integers such as 'adjacent to the edges' and 'at least one of the edges' are identified by reference to a four-sided footing plate it is not immediately apparent how the Applicant's construction is put to include the circular example. There is room for confusion as to the nature of the Applicant's construction. 20 The Applicant states in the Amended PSI that 'for each of the footing plates, the 'planar web' is the essentially flat upper plate component'. This is illustrated by reference to a picture of the 'H6 (bolted)' product as an example (example (a) of Schedule 1). It is also noted that for the general product (example (f)), the allegation that there is a planar web is contingent upon a flat plate being bolted to the sample footing in the photograph. 21 The Applicant adopts a construction that does not distinguish between footing plates by reason of the manner in which the upper plate component is attached to the lower component: by bolts or welding, or whether it is adjustable or not. Integer 2.2 22 Integer 2.2 requires a footing plate including a planar web 'from which a plurality of tubes originate and descend'. The Amended PSI omits reference to 'originate' from the footing plate including a planar web but shows where the plurality of tubes are found and how they descend relative to the planar web. It is not clear how it is put by the Applicant that the tubes 'originate'. 23 The Respondents seek an explanation of how the arrangement of tubes described in the Amended PSI meets the requirement of Integer 2.2 that the tubes 'originate and descend' from the planar web. Such an explanation is beyond the role of the Amended PSI. The Amended PSI need only make the foundational construction clear. It does not need to explain or justify that construction. Integer 2.3 24 Integer 2.3 requires the 'tubes being adjacent to the edges of the planar web…'. The Respondents take issue with the circular example (g) being dealt with together with the other quadrilateral samples in the integer table, which have four edges. 25 The Applicant identifies the Respondents' complaint as being that the circular planar web does not have 'edges' but only a single edge. The Applicant describes this as a construction issue to be resolved at trial. 26 I agree that ultimately this will be a construction issue for trial, but as noted above, in order to avoid potential confusion as to how the Applicant's construction is to be applied to the circular example, the Applicant should make it clear via a separate consideration for the circular example where it says each integer is to be found. 27 In relation to Integer 2.5, the Applicant in the Amended PSI refers to the edge (perimeter) of the circular footing plate as being 'at least one of the edges of the planar web'. However, the Applicant does not provide any further information or diagram to identify the 'edges' being 'adjacent the edges of the planar web' for the purposes of Integer 2.3 in the case of the circular example. 28 It appears from the foregoing that the Applicant's construction of Integer 2.3 includes the perimeter or edge of the circular example. If so, then there may well be a construction argument at trial, but the Applicant is not required to explain or justify the construction in the Amended PSI. If that is not the construction propounded by the Applicant, the Amended PSI should be amended to clarify the construction relied upon. Integer 2.5 29 The Applicant notes in relation to Integer 2.5 that for all of the AFS footing plates the flange is structurally connected with, and mechanically supports, the planar web. It does not need to explain that construction further. Integer 4.1 30 The Applicant's position is that claim 4 when read with claim 2 is to be construed as requiring the tubes to be offset instead of adjacent. The Applicant is not required to justify or explain the construction it has adopted in the Amended PSI. Conclusion 31 For the reasons above, I order that the Applicant file and serve a Further Amended Position Statement that separately deals with the circular footplate (example (g)), clearly identifying for that example the precise features which are said to correspond with the integers of the asserted claims of the Patent. I certify that the preceding thirty-one (31) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Rofe. Associate: Dated: 30 September 2021