Quaker Chemical (Australasia) Pty Ltd v Fuchs Lubricants (Australasia) Pty Ltd (No 2)

• Jurisdiction: Australia Federal only
• Judge: ROBERTSON J
• Judgment Date: 17 March 2020
• Neutral Citation: [2020] FCA 306
• Court: Federal Court
• Date: 17 March 2020

FEDERAL COURT OF AUSTRALIA

Quaker Chemical (Australasia) Pty Ltd v Fuchs Lubricants (Australasia) Pty Ltd (No 2) [2020] FCA 306

File number:	NSD 1210 of 2016
Judge:	ROBERTSON J
Date of judgment:	17 March 2020
Catchwords:	PATENTS – standard patent and innovation patent –patents entitled “Method for Detecting Fluid Injection in a Patient” – where applicant alleged respondent infringed patents by supplying, or offering to supply, to certain of its customers, hydraulic products containing fluorescent dye, in circumstances where the dye or product was not acquired from the patentee – whether products not a “staple commercial product” – whether respondent had reason to believe that the person supplied by it would put the products to an infringing use – whether use of the products in accordance with any instructions for that use, or any inducement to use the products, given to the person supplied – whether respondent liable for patent infringement by the person supplied with respondent’s products as having authorised the infringement – whether joint tortfeasance ; PATENTS – cross-claim by respondent against applicant alleging that standard patent and innovation patent were invalid and liable to be revoked on the grounds of: lack of clarity; insufficiency and failure to disclose best method; lack of utility; lack of fair basis; lack of novelty; and secret use – where respondent also contended the innovation patent was invalid on an additional ground, being that claims 1 to 3 of that patent were not clear and succinct and supported by matter disclosed in the specification within the meaning of the new form of s 40(3) of the Patents Act 1990 (Cth)
Legislation:	Intellectual Property Amendments (Raising the Bar) Act 2012 (Cth) sch 6 items 28 and 29 Patents Act 1990 (Cth) ss 7(1), 9, 13, 18, 24, 40, 117, 122, dictionary (pre-Raising the Bar Act) Patents Act 1990 (Cth) ss 7A, 7(1), 9(e), 13(1), 24(1)(a), 24(1)(b), 18(1)(d), 40, 59, 117, dictionary (post-Raising the Bar Act) ; Patents Regulations 1991 (Cth) regs 2.2 and 2.3 ; Explanatory Memorandum to the Intellectual Property Amendments (Raising the Bar) Bill 2011, items 28 and 29
Cases cited:	Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 2) [2012] FCAFC 102; 204 FCR 494 Apotex Pty Ltd v Warner-Lambert Company LLC (No 2) [2016] FCA 1238; 122 IPR 17 AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99; 226 FCR 324 Coretell Pty Ltd v Australian Mud Company Pty Ltd [2017] FCAFC 54; 250 FCR 155 Davies v Lazer Safe Pty Ltd [2019] FCAFC 65 Fresenius Medical Care Australia Pty Limited v Gambro Pty Limited [2005] FCAFC 220; 224 ALR 168 Grove Hill Pty Ltd v Great Western Corporation Pty Ltd [2002] FCAFC 183; 55 IPR 257 Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; 207 CLR 1 Northern Territory v Collins [2008] HCA 49; 235 CLR 619 Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd [2019] FCAFC 240 Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) [2011] FCA 846; 196 FCR 1 Warner-Lambert Co LLC v Apotex Pty Ltd [2018] FCAFC 26; 355 ALR 44 Welcome Real-Time SA v Catuity Inc [2001] FCA 445; 113 FCR 110
Date of hearing:	11-15 and 18-22 March 2019
Date of last submissions:	24 May 2019
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Patents and Associated Statutes
Category:	Catchwords
Number of paragraphs:	856
Counsel for the Applicant and Cross-Respondent:	Mr C Dimitriadis SC with Mr R Clark
Solicitor for the Applicant and Cross-Respondent:	Silberstein & Associates
Counsel for the Respondent and Cross-Claimant:	Mr C Moore SC with Mr A Fox and Ms A McDonald
Solicitor for the Respondent and Cross-Claimant:	Shelston IP Lawyers Pty Ltd

ORDERS

		NSD 1210 of 2016
BETWEEN:	QUAKER CHEMICAL (AUSTRALASIA) PTY LTD (ACN 000 465 949) Applicant
AND:	FUCHS LUBRICANTS (AUSTRALASIA) PTY LTD (ACN 005 681 916) Respondent
AND BETWEEN:	FUCHS LUBRICANTS (AUSTRALASIA) PTY LTD (ACN 005 681 916) Cross-Claimant
AND:	QUAKER CHEMICAL (AUSTRALASIA) PTY LTD (ACN 000 465 949) Cross-Respondent

JUDGE:	ROBERTSON J
DATE OF ORDER:	17 MARCH 2020

THE COURT ORDERS THAT:

1. Within 14 days of the date of these orders the parties file an agreed form of orders, including as to costs. Failing agreement, the parties file and serve competing forms of orders within 21 days of the date of these orders.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

ROBERTSON J:

Introduction

1 These proceedings concern two Patents, the Standard Patent, Australian Patent No. 2012304245, entitled Method for Detecting Fluid Injection in a Patient, with a priority date of 2 September 2011, and the Innovation Patent, Australian Patent No. 2013100458 which in part is in similar terms. The Innovation Patent is a divisional of the Standard Patent claiming the same priority date, and was certified on 25 July 2013.

2 The Patents relate generally to a method for detecting high pressure fluid injection (HPFI or HPI) injuries. These injuries can occur where fluid is kept under high pressure in machinery, such as hydraulic machinery used in mines. For example, longwall systems are used to extract coal resources from underground. They utilise many very large hydraulic roof supports which operate under extremely high pressures, often 5000 psi and above, and require very large amounts of hydraulic fluid given their size, length of hosing and pressure requirements.

3 Fluid may escape from the machinery, for example, through a small crack in a tube carrying the fluid. When it escapes, it can emerge under high velocity, as a fine stream of liquid, which is capable of injecting itself into the body of a person. Injuries of that type can be difficult to detect, but can lead to severe health consequences.

4 As explained under the heading “Preferred Embodiment of the...