Deliberate copying: Federal Court finds patentee entitled to additional damages in patent infringement case

Since the introduction of additional damages in 2007, the Court has only made one award: in Pacific Enterprises (AUST) Pty Ltd v Bernen Pty Ltd (2014) 321 ALR 715. In that case, Justice Pagone awarded the patentee additional damages of $40,000, representing half the gain from the infringement.

This case may provide encouragement to patentees that the courts are becoming more inclined to determine flagrancy and to award appropriate compensation for flagrancy.

Background

The patent in suit (AU 2004291566) is directed at fence plinths.

The case ultimately turned on the construction of the words "formed from sheet material".

Claim 1 of the patent claims:

A fence plinth formed from sheet material having spaced apart edge margins and being profiled to incorporate stiffening formations that extend along the sheet between the end edge margins.

The alleged infringer argued that its fence plinth product did not infringe the patent in suit, by virtue of the fact that its product was made from an aluminium billet that was extruded through a die, rather than being bent or pressed into shape.

However, Justice Robertson found that the word "sheet" did not necessarily require that the material be flat, and that it may have corrugations or profiles, and that the sheet, may or may not be made from metal. "A point of significance", his Honour said, "is that claim 1 of the patent in suit is a description of a product, rather than the specification of a process or description of an activity of profiling or shaping".

Entitlement to additional damages

In finding that the applicant was entitled to additional damages under s 122(1A) of the Patents Act, Justice Robertson referred to the nine principles set out in in H Lundbeck A/S v Sandoz Pty Ltd [2018] FCA 1797, in particular that…