Federal Court of Australia

Rakman International Pty Limited v Boss Fire & Safety Pty Ltd [2022] FCA 464

ORDERS

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

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

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

YATES J:

Introduction

1    There are three proceedings before the Court involving common parties, which have been heard concurrently.

2    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.

3    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.

4    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.

5    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.

6    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”.

7    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.

8    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.

9    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.

10    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.

11    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.

12    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

13    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.

14    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.

15    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.

16    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.

17    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.

18    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”.

19    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.

20    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.

21    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”.

22    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.

23    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.

24    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.

25    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.

26    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.

27    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

28    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.

29    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.

30    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.

31    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).

32    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

33    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).

34    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.

35    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.

36    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.

37    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.

38    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.

39    As will be clear, all the claims are method claims, and claims 2 to 5 are each dependent, directly or indirectly, on claim 1.

40    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.

41    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.

42    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.

43    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:

44    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:

45    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.

46    The first embodiment of the firestopping device is illustrated by Figure 1, which is an upper perspective view of the device:

47    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.

48    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.

49    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.

50    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.

51    The specification describes the placement of intumescent material within and outside the device to resist the passage of fire and smoke.

52    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.

53    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

54    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”

55    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.

56    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.

57    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).

58    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.

59    Mr Hunter illustrated his view by the following diagram:

60    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.

61    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.

62    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.

63    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.

64    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.

65    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.

66    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.

67    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.

68    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.

69    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”

70    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).

71    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.

72    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.

73    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”.

74    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 ...

75    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.

76    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.

77    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.

78    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.

79    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.

80    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.

81    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.

82    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.

83    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.

84    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.

85    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.

86    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.

87    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.

88    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

89    Boss challenges the validity of the claims of the patent on a number of discrete grounds.

Lack of novelty

90    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.

91    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).

92    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.

93    After referring to that passage, the plurality in AstraZeneca v Apotex said (at [294]):

294    The 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.

94    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.)

95    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.

96    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]):

156    The 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.

97    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.

98    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.

99    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.

100    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.

101    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”.

102    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.

103    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.

104    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.

105    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.

106    At [25], the Full Court said:

25    In 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.

107    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]):

311    Section 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

108    Secondly, Boss alleges that the invention, as claimed in each claim of the patent, does not involve an innovative step.

109    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).

110    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.

111    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:

52     There 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.

53     The 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.

112    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]):

61     In 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.

113    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]):

73     Section 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.

114    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

115    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”.

116    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.

117    Section 40(2)(a) provides that a complete specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. This requirement is directed to the sufficiency of the description of the invention given in the specification. In Merck v Wyeth, Burley J surveyed the United Kingdom law in relation to the concepts termed “classical insufficiency” and “Biogen insufficiency”. It is not necessary for me to repeat his Honour’s careful analysis. It is sufficient for me to note that “classical insufficiency” concerns the disclosure obligation of a patent specification under s 14(3) of the Patents Act 1977 (UK) (the UK Act) (the language of which is substantially reflected in s 40(2)(a) of the Patents Act) and “Biogen insufficiency” concerns the claim support obligation of a patent specification under s 14(5)(c) of the UK Act (the language of which is substantially reflected in s 40(3) of the Patents Act).

118    The disclosure obligation under s 14(3) of the UK Act has been interpreted to require the teaching of the specification to enable the skilled addressee to perform the invention to the full extent of the claims—conveniently referred to as an “enabling disclosure”. The requirement for claim support in s 14(5)(c) of the UK Act is directed to claim breadth, but it interacts with the s 14(3) requirement that the claims should, essentially, correspond to the scope of the invention, in the sense of not exceeding the scope of the invention, disclosed in the description given by the specification. In other words, the breadth of a claim must be supported (or justified) by the “technical contribution to the art” (meaning, the enabling disclosure of the specification).

119    In Merck v Wyeth, Burley J explained (at [527] – [529]):

527     “Classical insufficiency” is to be distinguished from “Biogen insufficiency” which is also considered under United Kingdom law to form part of the disclosure obligation. That overlap may be considered to be confusing at first, because Biogen insufficiency draws on the law of support, identified in s 14(5)(c) of the UK Act. However, as the cases in that jurisdiction explain, the reason for this is because the UK Act contains a “logical gap” arising from its drafting, in that whilst s 14(5)(c) imposes the claim support obligation as a statutory requirement for the grant of a patent, there is no concomitant provision whereby a granted patent that fails to satisfy the claim support obligation may be revoked. That gap was plugged when the House of Lords resolved that the claim support obligation fell under the umbrella of the requirement that the patent specification contain an enabling disclosure: Biogen Inc v Medeva Plc [1996] 10 WLUK 486; [1997] RPC 1 at 47 (Lord Hoffman, with whose reasons the other members of the House of Lords agreed). Accordingly, in the context of revocation actions, the UK courts sometimes (but not always) refer to a distinction between classical insufficiency and Biogen insufficiency, the former arising from s 14(3) and the latter arising from s 14(5)(c), but both falling within the unifying requirement that there be an enabling disclosure, and both being available as a ground of invalidity within s 14(3).

528     The main difference between the two is that the disclosure obligation under s 14(3) relates to the specification as a whole whereas the claim support obligation under s 14(5)(c) relates to the claims which define the invention: Generics UK (HL)at [19]. As Walker LJ said in Generics (UK) at [20]:

Ss 14(3) and (5)(c) operate together, as EPC Arts 83 and 84 operate together, to spell out the need for an “enabling disclosure”, which is central to the law of patents …The disclosure must be such as to enable the invention to be performed (that is, to be carried out if it is a process, or to be made if it is a product) to the full extent of the claims. The question whether there is sufficient enabling disclosure often interacts with a question of construction as to the extent of the claims …

529     In Terrell the learned editors summarised the distinction between classical sufficiency and Biogen sufficiency in the following terms at page 403:

The self-standing objection that a claim is broader than the technical contribution of the patent, even when it can be performed, is sometimes referred to as “Biogen insufficiency”. It is to be contrasted with “classical insufficiency” which is concerned with whether or not embodiments within the claim can be performed. Thus peculiarly under English law it is said that at patent can be insufficient even if it is possible to make everything within the scope of the claim, if the scope of the claims exceed the technical contribution.

120    Later, his Honour said with respect to the Patents Act (at [544] – [545]):

544     It is apparent from the language adopted in the sections and also from the Second Reading Speech and the Explanatory Memorandum that the intention of parliament in amending s 40(2)(a) and s 40(3) of the Patents Act was to align the law in relation to these requirements with that of the United Kingdom and Europe. That is not to say that all aspects of the approach adopted in the United Kingdom are to be adopted here. In particular, there is no warrant provided in the language of s 40(2)(a) to incorporate within the disclosure obligation a separate claim support obligation, in addition to the one within s 40(3). Nor is there any need to do so: failure to comply with either ss 40(2)(a) or 40(3) provides a basis upon which a granted patent may be revoked: s 138(3)(f). There is no gap in the Patents Act akin to the one in the UK Act referred above, and each ground is to be considered separately. Nevertheless, the law as it has developed in the United Kingdom and Europe in relation to the support obligation, when disentangled from classical insufficiency, provides guidance as to how s 40(3) should be approached.

545     The theme common to each ground, however, reflects what the Minister described in his Second Reading Speech as the cornerstone of the patent system, namely that in exchange for a monopoly on commercialisation, the patentee must tell the public how their idea works. As said in the Explanatory Memorandum, in exchange for the exclusive rights given to the patentee, the patentee must share with the public the information necessary to make and use the invention. This is the essential exchange between inventors and the public which has long been a feature of patent law in Australia: see Lockwood No 1 at [57].

Lack of utility

121    Fourthly, Boss alleges that the invention, as claimed, is not useful.

122    In Lane Fox v Kensington and Knightsbridge Electric Lighting Company [1892] 3 Ch 424 at 431, Lindley LJ described utility, in the patent context, as follows:

The utility of the alleged invention depends not on whether by following the directions in the complete specification all the results now necessary for commercial success can be obtained, but on whether by such directions the effects which the patentee professed to produce could be produced, and on the practical utility of those effects. Can it be said that the invention as described in the amended specification was in 1878 a practically useful addition to the then stock of inventions? To judge of utility the directions in the amended specification must be followed, and, if the result is that the object sought to be attained by the patentee can be attained and is practically useful at the time when the patent is granted, the test of utility is satisfied. Utility is often a question of degree, and always has reference to some object. Useful for what? is a question which must be always asked, and the answer must be, Useful for the proposes indicated by the patentee.

123    The second requirement referred to by Lindley LJ—whether the object sought to be attained by the patentee is practically useful—is, in part, now qualified by the requirements of s 7A of the Patents Act, which stipulates that an invention is taken not to be useful unless a specific, substantial, and credible use for the invention, so far as it is claimed, is disclosed in the complete specification. Boss does not contend that the requirements of s 7A are not met in the present case.

124    Whether the object of the invention can be attained, assuming it to be a practically useful result, depends on whether the essential features of the claim, defining the invention, secure that outcome. Here, the principle is that all within the scope of the claim must be useful if the claim is not to fail for inutility: Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 at 601; WM Wrigley Jr Co v Cadbury Schweppes Pty Ltd [2005] FCA 1035; 66 IPR 298 at [138]. The object might not be capable of being attained because, for example, the claim omits some feature that is necessary for the invention to work as promised: DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2013] FCA 132; 100 IPR 19 at [337] – [338]; or it may be that the claim includes, expressly, a feature whose presence means that the invention, as so defined, will not achieve the promised objective: Norton and Gregory Ltd v Jacobs (1937) 54 RPC 271 at 276 – 277.

125    Essentially, this aspect of utility—whether the object of the invention can be attained—is a function of claim breadth.

Patent validity: Lack of novelty

Overview

126    Boss alleges that the invention, as claimed in each claim of the patent, is not novel in light of disclosures made at two meetings, considered separately (the Speedpanel meeting and the Seltor meeting); made in the course of promoting devices described as the Pass-It Version 1, the Pass-It Version 2, and the Pass-It with butterfly screws; and made in a document described as the FSi drawings, before the priority date.

127    Boss’s challenge on lack of novelty focuses on fire transits manufactured by FSi Limited (FSi)—formerly called Firestopit Limited—in the United Kingdom. As these devices, and the documents describing them, feature prominently in this part of the case, it is convenient to commence with the evidence adduced by Boss in relation to the development, promotion, and supply of these devices.

FSi Transits

128    Fire transits were not new at the priority date. If novelty exists in relation to the invention in suit, it is to the particular method of constructing a barrier that is claimed, not because of the use of a fire transit, as such, in relation to the installation of services.

129    At its most simple level, a fire transit is a device that extends through a fire resistant barrier (a wall, floor, or ceiling) to allow services to be routed through the barrier without loss of fire resistance.

130    Early fire transit systems were simple boxes or tubes packed with an intumescent material, allowing one or more services to be routed through the box or the tube. The system is designed so that, in the event of a fire, the intumescent material reacts to the heat generated, to expand and block the penetration completely, thereby preventing the spread of the fire through the penetration. The use of a fire transit allows all required services to be installed through a single fire-resistant penetration.

131    FSi has manufactured and developed fire protection systems since 2000. It is a business with an annual turnover of approximately £20 million.

132    In around 2009 or 2010, FSi commenced to develop a fire transit, which it called the Pass-It. As originally developed, the Pass-It was intended to be retrofitted into buildings and structures, especially those which did not have any fire-stopping technology, or where the previously installed fire-stopping systems were insufficient or improperly installed.

133    The early Pass-It was made from both metal and thermoplastic material (glass fibre). It required a person with experience in passive fire protection to install it.

134    Mr Atkinson, who is the founder, and now Chairman, of FSi, gave evidence that, in 2013, FSi developed a version of the Pass-It which was intended to be more user friendly, and to have an improved appearance.

135    This version had a two-piece steel shell forming an aperture. The first piece was formed into an elongated C-shape, and the second piece was formed into a much smaller C-shape to be fixed into the first piece. Services could be installed through the aperture. When installed, the services were surrounded by the outer shell, and also intumescent material encased in plastic packets housed on the inner surface of the shell pieces. Brushes were riveted to each shell piece, so as to be located at each end of the aperture that was formed. The function of the brushes was to block smoke and reduce noise passing through the device.

136    This version of the Pass-It could be installed in a variety of ways. It could be fitted into a wall, on a ceiling, or on a floor. It could be fitted as a complete unit, with the services routed through it later. It could also be split apart, by removing Phillips head screws holding the two pieces together.

137    When split apart, the two pieces could be fitted around existing cables, closed up (by re-inserting the screws), and then installed as a unit into an existing penetration. Alternatively, each shell piece could be installed separately. In this mode of installation, the elongated C-shape piece could be attached to the wall/ceiling/floor, followed by:

(a)    installing the services, closing the two pieces (by re-inserting the screws), and then building the wall/ceiling/floor around the Pass-It; or

(b)    closing the two pieces (by re-inserting the screws), installing the services, and then building the wall/ceiling/floor around the Pass-It; or

(c)    closing the two pieces (by re-inserting the screws), building the wall/ceiling/floor around the Pass-It, and then installing the services.

138    In this mode of installation, the elongated C-shape piece was attached to the relevant structure by simply driving a bolt, self-tapping screw, or similar fastener through the steel casing.

139    Mr Atkinson identified this version of the Pass-It by reference to photographs, which show the device in a metallic grey or silver colour. He said that he sent a sample of this product to Mr Prior. He could not be certain of the date when this was done, but his evidence suggests that this was sometime in 2013. Trafalgar referred to this product as the Pass-It Version 0.

140    This version of the Pass-It underwent fire resistance testing on 28 November 2013. A report was prepared and issued by Exova Warringtonfire (Exova) on 24 January 2014 (the Exova 2014 Report).

141    Mr Atkinson said that, shortly after the issue of the Exova 2014 Report, FSi prepared a product data sheet for the Pass-It product. In fact, Mr Atkinson said that he created the document with Oliver Shaw, who was one of FSi’s salesmen at the time. The document was issued using the Firestopit name. It bears the Revision Date “28/03/2014” and the Revision Number “02” (the Firestopit PDS). It depicts the Pass-It as a red-coloured product. The Firestopit PDS is important to Boss’s case on invalidity based on lack of innovative step. It also has a role to play in Boss’s case on invalidity based on lack of novelty.

142    Mr Atkinson said that the Firestopit PDS was prepared from an earlier data sheet that had been prepared specifically for use by one of FSi’s United Kingdom distributers, Tecnica Fire Solutions, in about November 2013 (the Tecnica PDS). He said that the data from the earlier data sheet was contained in the Firestopit PDS.

143    Mr Atkinson said that, sometime between late 2014 and early 2015, FSi manufactured new versions of the Pass-It, with dedicated fixing lugs and green powder coating (part of the re-branding from the Firestopit name to FSi in the period 2013 to 2014 also involved changing from red-coloured products to green-coloured products). By this evidence, I take Mr Atkinson to mean that, in the period late 2014 to early 2015, FSi commenced to manufacture these new versions of the Pass-It. Trafalgar disputes this fact. I will return to that dispute.

144    Mr Atkinson described these versions of the product as comprising a two-piece steel shell. There were two configurations. In one configuration, the first piece of the shell was an elongated U-shaped element with four soffit fixing lugs formed into the upper part of the piece. The second piece was a smaller, U-shape panel which, in use, was fixed to the first piece using Phillips head screws. In the other configuration, the first piece of the shell was a short-armed U-shaped element with four soffit fixing lugs formed into the upper part of the piece. The second piece was an elongated U-shaped element which, in use, was fixed to the first piece using Phillips head screws.

145    It is not clear to me whether Mr Atkinson’s choice of the word “U-shape” for these elements is intended to convey a shape that is substantially different to the “C-shape” of the elements making up the steel shell of the earlier version (in Trafalgar’s parlance, the Pass-It Version 0). Nothing turns on that difference, if there be one.

146    Mr Atkinson identified these versions of the Pass-It by reference to photographs of two samples. The parties referred to these samples as the Pass-It Version 1 and the Pass-It Version 2.

147    In the Pass-It Version 1, the fixing lugs are located on the piece with the elongated U-shape. In the Pass-It Version 2, the fixing lugs are located on the piece with the short-armed, U-shape.

148    Mr Atkinson said that he sent samples of these products to Mr Prior (amongst others) at this time.

149    Following a meeting in Melbourne on 23 October 2014, at which a Pass-It was displayed and discussed with representatives of Speedpanel Australia Ltd (the Speedpanel meeting, discussed below), and at which it was suggested that installation of the Pass-It could be improved if the two shell pieces could be opened and closed by hand, FSi considered various methods by which the two pieces could be separated and put together quickly and easily. Mr Atkinson said that one option considered by FSi was to use butterfly screws instead of the Phillips head screws. In 2015, this option was pursued in favour of other options. It provided an alternative to the versions with standard Phillips head screws.

150    Mr Atkinson identified this version of the Pass-It by reference to photographs. These photographs do not show the Pass-It with soffit fixing lugs. The parties referred to this version as the Pass-It with butterfly screws.

The Speedpanel meeting: 23 October 2014

151    In 2014, Speedpanel Australia Pty Ltd carried on the manufacture and supply of a product called “Speedpanel”—a panel forming part of a panel wall system designed to reduce the spread of fire between non-structural walls, shaft risers, and stairs by providing a physical fireproof barrier. The panel walls were built by placing the panels into brackets installed on the floor and ceiling known as “C-Track”. The main application for Speedpanels was in apartment buildings, where they would be installed between tenancies to provide protection against fire spreading from one apartment to the next.

152    On about 23 October 2014, a meeting was held at the company’s premises in Melbourne. This meeting was attended by Mr Visser and Mr Bacon (from Speedpanel), Mr Prior, and Mr Atkinson. The context of the meeting was the possible use of the Pass-It with the Speedpanel wall system. Speedpanels were difficult to cut through to make penetrations because they were made of steel and concrete.

153    Boss contends that, at this meeting, a Pass-It transit was displayed and demonstrated in such a way that it disclosed all the features of each claim of the patent. On the evidence before me, I am not persuaded that all the features were disclosed.

154    There is no doubt that the meeting occurred and that Mr Visser, Mr Bacon, Mr Prior, and Mr Atkinson, attended that meeting. There is also no doubt that the Pass-It product was discussed, with reference to a sample Pass-It. However, one important matter that is not clear is the version of the Pass-It that was at the meeting.

155    Mr Prior’s evidence was that he brought a sample of the Pass-It to the meeting, but the sample is not in evidence. Mr Prior does not identify or describe that sample, other than it was a Pass-It. Similarly, Mr Atkinson’s evidence is that a sample Pass-It was at the meeting, but he does not identify or describe it. Indeed, he could not recall how the sample was provided. Mr Visser could not recall, specifically, the colour of the sample, but he thought that it was red. It is likely, however, that this recollection in that regard was prompted by Mr Visser viewing the Firestopit PDS—which, as I have said, depicts the Pass-It as a red-coloured product—when preparing his affidavit evidence. Mr Bacon could not recall the colour of the sample at the meeting.

156    On the evidence before me, I am not prepared to accept, on the balance of probabilities, that the sample at the meeting was either the Pass-It Version 1 or Version 2. To start with, the evidence as to when the samples of these versions were sent to Mr Prior is quite unclear. Mr Prior’s evidence is that the samples were provided to him “in around 2014 or 2015”. However, Mr Atkinson’s evidence is that the samples were “manufactured new versions of the Pass-It” (with the dedicated fixing lugs and new green powder coating) and that manufacture took place “sometime between late 2014 and early 2015”. In cross-examination, Mr Prior accepted that it was possible that he received the samples of the Pass-It Version 1 and the Pass-It Version 2 after the Speedpanel meeting.

157    Further, no witness gave evidence that the sample Pass-It at the meeting had dedicated fixing lugs. Mr Bacon’s evidence of the discussion at the meeting was that “one of the pieces of the box could be attached … to a soffit”. Mr Atkinson’s evidence was that he informed Mr Visser and Mr Bacon that the Pass-It could be installed before the wall is erected by “attaching one part of the Pass-It to the soffit using bolts or similar”, although he also said that he explained that the Pass-It device could be installed “using dedicated fixing lugs and bolts or similar”. Mr Prior’s evidence was that either he or Mr Atkinson said that the “slab-mounted installation method is achieved using fire resistant masonry fixing to attach the top part of the box to the slab”.

158    Mr Bacon’s, Mr Atkinson’s, and Mr Prior’s evidence of the description, given at the meeting, of the mode of attachment of the Pass-It, is no more specific than that. Had the sample been presented with dedicated fixing lugs, I cannot help but think that prominence would have been given to that feature when installation of the Pass-It was discussed. Only Mr Atkinson gave evidence to the effect that, in one mode of installation, the Pass-It device could be installed using “dedicated fixing lugs”. This rather suggests that, in fact, the sample at the meeting did not have fixing lugs. This, then, strongly suggests that the sample at the meeting was not the Pass-It Version 1 or the Pass-It Version 2.

159    Mr Visser’s evidence was different. He said that the sample had holes (to the best of his recollection, two holes) in the “top part”, which Mr Prior or Mr Atkinson said “could be used with masonry anchors to attach the open box to the concrete slab and thereby hold the box to the roof”. In cross-examination, he said that the holes he recalled were “one side of the gel packs”, meaning the sachets of intumescent material. None of the other participants at the meeting gave evidence to this effect or described the sample as having “holes … in the top part” or holes to “one side of the gel packs”. Thus, this part of Mr Visser’s evidence stands in stark contrast to the evidence of the other meeting participants.

160    I do not understand Mr Visser to be referring, in this part of his evidence, to the dedicated fixing lugs of the Pass-It Version 1 and the Pass-It Version 2. Mr Visser presented as a witness of considerable technical expertise (after all, he designed the Speedpanel). If the sample had the fixing lugs of the Pass-It Version 1 and the Pass-It Version 2, I think it is more likely than not that Mr Visser would have referred to them as such, or by a similar technical description. Had the dedicated fixing lugs been present in the sample, it is most unlikely that he would have referred to them as, merely, “holes … in the top part”. It is also most unlikely that Mr Visser would have referred to them as located on “one side of the gel packs” had the Pass-It Version 1 or Pass-It Version 2 been before him.

161    Also, when shown the Firestopit PDS, Mr Visser’s evidence in chief was:

I recall we discussed the testing which had been completed on the device I was shown during the meeting on 23 October 2014 but I cannot recall exactly what testing it had undergone.

162    It is to be recalled that the version of the Pass-It developed in 2013—a sample of which was provided to Mr Prior—underwent fire resistance testing on 28 November 2013, and the Exova 2014 Report was subsequently prepared and issued. According to Mr Atkinson, it was after this that the Firestopit PDS was prepared and published.

163    It is certainly possible, therefore, that this part of Mr Visser’s evidence refers to a discussion, at the Speedpanel meeting, of the testing undertaken by Exova in November 2013, as reported in January 2014. If so, it is also certainly possible that the sample being discussed at the Speedpanel meeting—and, hence, the sample at that meeting—was the so-called Pass-It Version 0, even though, in cross-examination, Mr Prior rejected the suggestion that the sample at the meeting was that version of the product.

164    Therefore, if accepted, Mr Visser’s evidence, on this aspect of the case, also does not support the sample being the Pass-It Version 1 or the Pass-It Version 2.

165    However, even though I accept Mr Visser as a generally reliable witness, I am not persuaded that his recollection of “holes … in the top part” of the sample discussed at the Speedpanel meeting is reliable. I therefore do not accept that particular part of his evidence.

166    This is not a criticism of Mr Visser. In his affidavit evidence, he was endeavouring to recall the meeting some four and one half years after it had taken place. In his oral evidence, he was endeavouring to recall the meeting more than six years after it had taken place. It is not suggested that he had any greater familiarity with the Pass-It sample beyond that one occasion when he was shown it    .

167    I am wary of relying on Mr Visser’s recollection of the sample, in that particular respect, when it is based solely on recollection and that part of his recollection is not supported by the other witnesses who were at the meeting, particularly Mr Atkinson and Mr Prior who were uniquely placed to describe the features of the Pass-It product and the sample they were seeking to promote.

168    I am confirmed in this view because none of the samples provided to Mr Prior were said to have “holes … in the top part”. Further, the photographs in evidence of the so-called Pass-It Version 0, the Pass-It Version 1, the Pass-It Version 2, and the Pass-It with butterfly screws (which, in any event, only came into existence after the Speedpanel meeting), do not show “holes … in the top part”.

169    On the whole of the evidence, I am unable to conclude what version of the Pass-It was demonstrated and discussed at the meeting, or the precise configuration of the sample.

170    It is an essential feature of the claimed method that the first portion of the firestopping device has “formations for fastening of the first portion to an external object”. Boss has not established that the sample at the Speedpanel meeting had such formations. The highest that the evidence gets in relation to the disclosure of that feature is Mr Atkinson’s evidence that, in his explanation, he referred to the fact that the Pass-It could be installed using “dedicated fixing lugs”. However, I have strong reservations about the reliability of that evidence. The explanation recounted in Mr Atkinson’s affidavit is expressed in somewhat idealised terms and, like Mr Visser’s recollection, is based on his recollection of a discussion at a meeting that occurred a number of years before he made his affidavit. To compound matters, Mr Atkinson has presented and explained the Pass-It device on innumerable occasions over the years. I cannot be confident that Mr Atkinson’s evidence, in this regard, is not affected by what he has said, might have said, or believes he has said, on numerous other occasions. While I do not doubt Mr Atkinson’s honesty as a witness, and while it is possible that, at the Speedpanel meeting, he might have referred to installation of the Pass-It using “dedicated fixing lugs”, I am not prepared to find, on the balance of probabilities, that he did so.

171    Therefore, I am not satisfied, on the evidence before me, that the method claimed in claim 1 of the patent was made publicly available at the Speedpanel meeting. It follows from this finding that the method claimed in each of dependent claims 2 to 5 was not disclosed.

172    Further, as to claim 5, there is no evidence that, at the Speedpanel meeting, a method was disclosed which included the essential step of “marking a line on the external object so as to depict the proposed centre line of the barrier”. The evidence does not support a finding that that step was disclosed explicitly or implicitly during the course of that meeting.

The Seltor meeting: September 2015

173    Seltor Gruppen AS (Seltor) is one of the oldest construction firms in Norway. Mr Ramunddal is its Chief Executive Officer.

174    Seltor purchased mastic and mortar products (which are used to stop fire passing through penetrations for pipes and cables in fire resistant walls) from Boss since about 2008 to about 2015. After that time, Seltor engaged subcontractors to complete passive fire protection work on its building projects. The subcontractors are now responsible for buying the products used in undertaking this work.

175    The Seltor meeting took place in September 2015 at Seltor’s premises in Norway. The meeting was between Mr Ramunddal and Alex Knutson (from a Seltor subsidiary company), and Mr Prior. Mr Prior and Mr Ramunddal were friends as well as industry colleagues. They met at university in 2002. They had travelled together.

176    Mr Prior’s evidence is that he travelled to the United Kingdom, and then to Norway, in the period 14 September to 30 September, 2015. While in the United Kingdom, he visited FSi and obtained further samples of the Pass-It and at least one copy of the Firestopit PDS. His purpose in doing so was to make a presentation of the product to Mr Ramunddal.

177    At the Seltor meeting, Mr Prior gave Mr Ramunddal and Mr Knutson two samples of the Pass-It. In his evidence, he says he called the product the “Fyrebox”. He said he did so because that was the name that Boss was using, at the time, for the Pass-It product. In his evidence, Mr Ramunddal referred to the product as the “Fire Box”. Mr Prior says that, at the Seltor meeting, he also gave Mr Ramunddal and Mr Knutson a copy of the Firestopit PDS.

178    Mr Prior says that, at the Seltor meeting, he described the function and features of the “Fyrebox” and how it could be installed during the construction of a building. The substance of his evidence is that he disclosed the following matters:

(a)    The “Fyrebox” is installed after the position of the walls is marked out.

(b)    The “Fyrebox” is installed in a position that straddles the wall.

(c)    The wall can be built after the “box goes up”. The pipes and cables can be installed at any time, so that “scheduling issues” are solved.

(d)    The intumescent material is in white plastic sleeves inside the “Fyrebox”.

(e)    To install the “Fyrebox”, it is first pulled apart and the top part is mounted to the slab with masonry fixings.

(f)    The other part of the box then slides into the top part and is attached to the top part using the screws provided or a wing nut (which can be provided).

(g)    The services can then be run through the “Fyrebox” or the wall can be built.

(h)    If the services are run through the “Fyrebox” before the wall is built, it is possible to remove the lower part to “fit the services through” and then reattach it. It is also possible to install the services after the lower part is attached.

(i)    Fire resistant brushes are provided at each end of the “Fyrebox”. These will be fire resistant for the first 10 minutes of the fire, after which the intumescent material will have activated. The brushes will be burnt away.

179    Mr Ramunddal’s evidence is consistent with Mr Prior’s evidence. Mr Ramunddal said that, at the meeting, Mr Prior described the following features of the “Fire Box”:

(a)    It replaced traditional mortars and mastics to stop fire passing through penetrations for pipes and cables in fire resistant walls.

(b)    It had a two-part steel case.

(c)    The steel case had “four wings of steel” on the upper part, in which four holes were provided to allow that part to be attached to an upper concrete “deck”.

(d)    The lower part could be connected to the upper part by either “normal” screws or wing screws.

(e)    Brushes are provided to stop dust and other particles getting into the device.

(f)    Sachets, containing “expanding fire resistant material” were attached to the inside of the steel frame. This material would expand and close the whole box in the event of a fire.

(g)    The “Fire Box” was installed before the rest of the wall is put in place by removing the lower part and fixing the upper part to the concrete deck using the four wings of steel.

(h)    The lower part could be attached to the upper part before the pipes and cables are installed or it can be attached after the pipes and cables are installed.

(i)    If the lower part is attached to the upper part before the pipes and cables are installed, it is necessary for the plumbers and electricians to pull the pipes and cables through the brushes.

(j)    If the lower part is attached to the upper part after the pipes and cables are installed, it is necessary for the plumbers and electricians to line up the pipes and cables with the pre-installed upper part.

(k)    Once the lower part is attached to the upper part, the rest of the wall can be built around the completed “Fire Box”.

180    Mr Ramunddal said that he read the Firestopit PDS after the meeting to see if the “Fire Box” had the necessary approvals to permit its use in Norway. It did not.

181    Mr Ramunddal said that, after the meeting, he took a “photograph” (digital image) of the “Fire Box” samples. A copy of the digital image is in evidence. It has been tendered as Exhibit 7. It shows two samples of the Pass-It Version 2 with what appears to be a copy of the Firestopit PDS. The screen properties of the digital image show that it was taken on 23 September 2015.

182    Mr Ramunddal kept the two samples. They have been tendered as Exhibit 4. Mr Ramunddal also kept a copy of the Firestopit PDS. This has been tendered as Exhibit 5. The production of that document satisfied me that the document in the digital image is, in fact, the Firestopit PDS.

183    Trafalgar made a wide-ranging attack on the veracity of the evidence given by Mr Prior and by Mr Ramunddal. It did not dispute that Mr Prior visited Mr Ramunddal in Norway in September 2015, but it did dispute that they met for the purpose of the Seltor meeting. Indeed, the upshot of its submissions is that the Seltor meeting did not take place. Acceptance of that proposition involves the wholesale rejection of Mr Prior’s and Mr Ramunddal’s evidence on this topic.

184    As to Mr Prior’s evidence, Trafalgar submitted that I should not accept that Mr Prior visited FSi’s offices in the United Kingdom in September 2015 because Mr Prior’s evidence of that visit is not corroborated. Trafalgar also submitted that the Firestopit PDS is not a genuine document and that is was not publicly available before February 2016. By this, I take Trafalgar to mean that, as (on its case) the Firestopit PDS is not a genuine document but one fabricated for the purposes of these proceedings, it was not, and could not have been, publicly available before February 2016.

185    Further in this regard, Trafalgar submitted that a brochure in the form of the Firestopit PDS could not have been collected by Mr Prior from FSi in September 2015 because, by that time, FSi had ceased using the Firestopit name, and FSi was using another PDS for the Pass-It, which adopted the FSi name in substitution for the Firestopit name.

186    Further, based on a photograph taken at an event described by Mr Atkinson as “the September 2015 ASFP UK seminar day”, which shows part of an FSi display, Trafalgar submitted that FSi was not distributing any version of the Pass-It with dedicated fixing lugs. This is one element of Trafalgar’s challenge to Mr Atkinson’s evidence that, in the period late 2014 to early 2015, FSi commenced to manufacture the Pass-It Version 1 and the Pass-It Version 2.

187    Therefore, Trafalgar submitted that I should not accept Mr Prior’s evidence because it is uncorroborated, and requires me to accept that Mr Prior collected a brochure from FSi “in the wrong company name” and a product that was not available for sale by FSi at the seminar, in the very same month that Mr Prior visited Mr Ramunddal in Norway.

188    This attack on Mr Prior’s evidence is unconvincing. First, the fact that Mr Prior took samples of the Pass-It Version 2 and a copy of the Firestopit PDS to the Seltor meeting is corroborated.

189    Secondly, in light of that corroboration, I have no cogent reason to doubt Mr Prior’s evidence that he collected the samples and a copy of the Firestopit PDS while visiting FSi at that time.

190    In this connection, I think that Trafalgar makes too much of the photograph taken at the September 2015 ASFP UK seminar day. Mr Atkinson’s evidence on this topic was that FSi displayed the Pass-It, including versions with the soffit fixing lugs and butterfly screws, at most—not all—exhibitions at which FSi has presented since at least 2015. He suggested that, as it was FSi’s practice to present the latest versions of the Pass-It as such presentations, it is likely that versions with soffit fixing lugs with butterfly screws were presented at that seminar day.

191    Although not objected to, this part of Mr Atkinson’s evidence obviously involved speculation on his part. This evidence is hardly definitive of the fact that Pass-It versions with soffit fixing lugs or with the butterfly screws, were presented at the September 2015 ASFP UK seminar day. Those versions may or may not have been presented at that seminar. But, if they were not presented, it simply does not follow that FSi had not commenced to manufacture versions of these products in the period late 2014 to early 2015. Mr Atkinson’s unqualified evidence is that the Pass-It Version 1 and the Pass-It Version 2 were manufactured at this time and that samples were supplied to a number of FSi’s customers and distributors around the world. Mr Atkinson also produced copies of invoices relating to sales of these versions of the Pass-It in mid to late 2015.

192    Further, and in any event, the photograph itself is hardly definitive of the products that were presented at the September 2015 ASFP UK seminar day. Mr Atkinson’s evidence was that the photograph, on which Trafalgar relies, was taken by an unidentified person and subsequently posted on FSi’s Twitter page. The photograph shows the FSi stand as partly obscured. I would not rely on the photograph to find that versions of the Pass-It with soffit fixing lugs or with butterfly screws were presented at the seminar. But, similarly, I would not rely on the photograph to find that versions of the Pass-It with soffit fixing lugs or with butterfly screws were not presented at the seminar.

193    Further, even if physical samples of the Pass-It with soffit fixing lugs or with butterfly screws were not displayed, it does not follow that other material about these versions was not available to interested persons attending the seminar or that these versions were not promoted by those manning the stand by reference to the versions of the Pass-It that can be seen in the photograph.

194    Therefore, I do not accept that, based simply on the photograph taken at the September 2015 ASFP UK seminar day, no version of the Pass-It with dedicated fixing lugs was available to Mr Prior when he visited the United Kingdom and Norway in September 2015.

195    As to the Firestopit PDS, I am not persuaded that this document is not genuine. I deal with this question more fully in a later part of these reasons dealing with Boss’s challenge to validity based on a lack of innovative step. In order to deal with the particular submissions on the genuineness of the Firestopit PDS which Trafalgar advanced in the context of the Seltor meeting, it is sufficient for me to note the following matters.

196    The documentary evidence shows that there are Pass-It product data sheets that have been published under the Tecnica name and the FSi name, which each bear the Revision Date “01/11/2013” and the Revision Number “01”, and under the Firestopit name, which bears the Revision Date “28/03/2014” and the Revision Number “02”. There is also a Pass-It product data sheet published under the FSi name, which also has the Revision Date “28/03/2014” and the Revision Number “02”. Further, there is a Pass-It product data sheet published under the FSi name, which bears the Revision Date “15/11/2016” and the Revision Number “03”.

197    Mr Atkinson’s evidence was that numerous versions of product data sheets for the Pass-It were produced over time, each having slightly different content. These documents, and promotional material generally, were, he said, created at FSi in “a fairly ad hoc manner”. In cross-examination, Mr Atkinson rejected the proposition that where there are multiple versions of a product data sheet, a later version necessarily replaced an earlier version, so far as public availability was concerned.

198    Mr Atkinson said that FSi did not follow any strict document or version management procedures when creating new versions of documents. He also said that it was common for amendments or corrections to be made to product data sheets, and for the original documents to be overwritten or deleted in the process. He said further that FSi never created any branding or marketing guidelines regarding the use of the FSi brand, or any written instructions to implement the rebranding from “Firestopit” to “FSi”.

199    In light of this evidence, I do not accept that a brochure in the form of the Firestopit PDS could not have been collected by Mr Prior from FSi in September 2015.

200    Trafalgar’s contention that Mr Ramunddal’s evidence is unreliable and should not be accepted is based on the following propositions.

201    First, Trafalgar repeated its submissions that, in September 2015, FSi was not distributing any version of the Pass-It with dedicated fixing lugs, and that the Firestopit PDS is not a genuine document. Trafalgar contended, therefore, that the digital image (Exhibit 7) could not have been taken when Mr Ramunddal says it was.

202    Secondly, the sachets of intumescent material exposed in the photograph bear the date “12/01/15”. Trafalgar submitted that none of the other physical exhibits of transits tendered in this proceeding include date stamps in the manner shown in Mr Ramunddal’s digital image. Further, Mr Harriman gave evidence that intumescent material is not normally date stamped or provided with a “use by” date or the like. Trafalgar submitted that Mr Atkinson had no direct knowledge of FSi using date stamping in that way. Trafalgar submitted that, in these circumstances, the Court could have no confidence that Mr Ramunddal’s digital image is genuine.

203    Thirdly, Trafalgar contended that the Seltor meeting is not corroborated by any contemporaneous documents relating to the meeting, apart from the digital image. Further in this regard, Trafalgar pointed to the fact that Boss has not called Mr Knutson (who is also said to have attended the Seltor meeting) to give evidence. Further still, Trafalgar pointed to the fact that, in oral evidence, Mr Ramunddal said that he took the image to send a copy to his regional manager in South Norway. Trafalgar said that Mr Ramunddal did not refer to this fact in his affidavit or produce any email sending the image. Trafalgar submitted that sending the image to a colleague was “at odds” with Mr Ramunddal’s later view that the “Fire Box” could not be used in Norway, because it did not have the necessary approvals.

204    Fourthly, Trafalgar contended that the digital image taken by Mr Ramunddal is “staged” because the products are displayed to show the date shown on the intumescent material. Further, the camera used to take the image was capable of having its date setting changed. Trafalgar queried why the file properties show that the image was taken at 12.10 am on 23 September 2015 if, as Mr Ramunddal says, he took the image “shortly after the meeting”.

205    In addition to these propositions, Trafalgar submitted that, in his affidavit, Mr Ramunddal recited “very detailed oral instructions” which he said were provided by Mr Prior at the Seltor meeting. Trafalgar submitted that these instructions are not corroborated by notes. It submitted that it is inherently unlikely that detailed instructions were provided or that either Mr Prior or Mr Ramunddal could properly remember those instructions.

206    I reject Trafalgar’s first proposition, for the reasons I have already given.

207    As to Trafalgar’s second proposition, Mr Atkinson did not agree with the suggestion, put to him in cross-examination, that FSi did not deploy date stamping for its intumescent materials or any of its Pass-It devices. He said that specific customers would have their own packing specifications, but it was not his remit to understand these things.

208    Further, another example of intumescent materials in a Pass-It being date-stamped is in evidence. When challenged with the proposition that there was no regulation in the United Kingdom that required FSi to date-stamp its sachets of intumescent material, Mr Atkinson explained that there was another reason for date-stamping—namely, to link the material to a batch sheet as part of FSi’s factory control processes and management system for audit purposes.

209    Mr Harriman’s evidence that intumescent materials are not normally date stamped, or provided with a “use by” date or the like, does not mean that such materials never bear a date stamp or the like. The evidence simply does not disclose why the sachets of intumescent material shown in Mr Ramunddal’s digital image bear the particular labels shown, or who placed the labels on those sachets. In closing submissions, Trafalgar did not contend that Mr Prior or Mr Ramunddal placed the labels on those products.

210    As to Trafalgar’s third proposition, I have Mr Prior’s and Mr Ramunddal’s evidence that the Seltor meeting did take place in September 2015. Mr Prior’s travel itinerary is in evidence and shows him arriving in the United Kingdom on 16 September 2015 and departing Norway on 28 September 2015. Mr Prior’s flight tickets show him arriving in Oslo on 18 September 2015. I have no reason to doubt that Mr Prior and Mr Ramunddal met in September 2015 or, more importantly, that they met in the circumstances given in their evidence. I do not consider it necessary for Boss to have also called Mr Knutson to give evidence on that topic. There was no reason that required it to do so.

211    Mr Ramunddal’s evidence that he took the digital image to send to his regional manager in South Norway was elicited through cross-examination. There is no reason why Mr Ramunddal should have referred, in his evidence in chief, to his particular reason for taking the image. The relevant and important fact is that he took it. The evidence does not reveal whether Mr Ramunddal did, in fact, send the image to his regional manager. Even so, contrary to Trafalgar’s submission, I do not consider that taking the image, for that purpose, was “at odds” with Mr Ramunddal’s later realisation that the product he had been shown by Mr Prior did not (according to Mr Ramunddal’s understanding) have approval for use in Norway. That realisation certainly does not mean that the product was not of interest to Seltor.

212    As to the fourth proposition, I am not persuaded that the digital image taken by Mr Ramunddal was “staged” in the sense suggested by Trafalgar. When asked in cross-examination, Mr Ramunddal could not remember who placed the items as they are shown in the image. It was in the course of this line of questioning that it emerged that Mr Ramunddal had taken the image to send to his regional manager in South Norway. Mr Ramunddal said that it was quite a unique product and he wanted his manager’s opinion about it. It is unsurprising that, in those circumstances, Mr Ramunddal would take an image showing one transit in a complete state and one transit in a separated state. If the image was intended to reveal features of the Pass-It device, why would it not be “staged” to reveal those features?

213    As to the taking of the image, Mr Ramunddal said that he used a company camera. The camera was kept in the front office of Seltor’s premises, with three or four other cameras. These cameras were used in Seltor’s business for “quality measurement tasks in the construction project”. It was for this reason that the date setting on the cameras was “quite important”.

214    In cross-examination, Mr Ramunddal accepted that the date and time settings on the camera could be changed. He accepted that he did not know whether, at some point after the camera had been purchased, someone may have altered its date and time information. However, it was not put to Mr Ramunddal that he (or someone at his direction or with his knowledge) altered the date and time information on the camera or, more importantly, that he (or someone at his direction or with his knowledge) altered the date and time information on the camera for the purpose of recording a false date when the digital image was taken.

215    Considered in isolation, the time recorded for the taking of the image—12:10 AM—seems unusual. There could be any number of explanations for that time being recorded. For one thing, the image may have been taken at that time. But if, in fact, the image was not taken at that time, there are innocent explanations for the time setting. For instance, the setting of the AM/PM function of the 12-hour time clock might have been selected incorrectly at some time in the past, or simply ignored, well prior to the image being taken. Moreover, if the date and time settings of the camera had been tampered with for the purposes of taking the image, it seems hardly likely that, consistently with some fraudulent enterprise, a time setting would have been chosen that might raise suspicion and expose that enterprise.

216    Mr Ramunddal was not questioned about any of these matters. And, as I have said, it was not put to him that he altered the date and time information on the camera for the purpose of taking the image.

217    Trafalgar’s challenge to the veracity of the evidence given by Mr Prior and Mr Ramunddal in relation to the Seltor meeting really amounts to an allegation of fabrication that involves both Mr Prior and Mr Ramunddal. Trafalgar’s submissions were laced with the suggestion that, because of their relationship, Mr Ramunddal was a witness who would be prepared to conspire with Mr Prior to give false evidence at Mr Prior’s behest. I reject that suggestion. I have no reason not to accept Mr Ramunddal as an honest witness.

218    To summarise, according to Trafalgar the Firestopit PDS shown in the digital image is not a genuine document and, as at September 2015, the products shown in the image did not exist. Further, Trafalgar contended that the image was staged and that some unknown person purposely altered the date setting on the camera to record an event that did not take place.

219    On the evidence before me, this scenario is fantastical. It is based on theories which are not established by the evidence and which, taken as a whole, lack coherence. It also seems to envelope Mr Atkinson’s evidence concerning the creation of the Firestopit PDS and the date when the Pass-It Version 2 was first manufactured by FSi. However, I also accept Mr Atkinson as an honest witness. As explained in the next section of the reasons, I accept that the Pass-It Version 1 and the Pass-It Version 2 commenced to be manufactured by FSi in the period late 2014 to early 2015. I do not accept the likelihood that Mr Atkinson was mistaken about that matter. And, as I have said, I am not persuaded that the Firestopit PDS is not a genuine document. Indeed, it was not even put to Mr Ramunddal that he was not given a copy of the Firestopit PDS at the Seltor meeting.

220    I am satisfied, on balance, that the Seltor meeting took place, substantially as described by Mr Prior and Mr Ramunddal. I am satisfied, on balance, that Mr Prior brought two samples of the Pass-It Version 2 to the meeting and a copy of the Firestopit PDS. I am satisfied, on balance, that the information that Mr Ramunddal says he was given by Mr Prior with respect to the use and method of installing the “Fire Box” was, in fact, given.

221    In reaching this latter finding, I bear in mind the caution expressed in the cases about the care that must be exercised in considering evidence of prior acts based on recollection. I also bear in mind Trafalgar’s submission that, as recorded by Mr Ramunddal, Mr Prior’s instructions were “detailed” and not corroborated by notes. However, it is clear that Mr Ramunddal was not purporting to give a verbatim account of his meeting. He was intending to convey the substance and effect of information he had been given by Mr Prior. I do not accept that what he was told at the Seltor meeting with respect to the use and method of installing the “Fire Box” was beyond his accurate recollection, notwithstanding the passage of time. As Mr Ramunddal made clear in his oral evidence, as an engineer he was impressed by the product. He said that that is why he remembered it so well. It was, in his words, a game changer for the industry, especially for Seltor, even though, as events turned out, Seltor could not use it because it did not have Norwegian approvals. Also, unlike other cases dealing with evidence of prior acts, I have the physical evidence before me of the Pass-It devices that were presented to Mr Ramunddal at the Seltor meeting, as well as the digital image he took.

222    Mr Ramunddal was challenged in cross-examination on the preparation of his affidavit. I am satisfied that it contains his recollection, expressed in words of his choosing. He emphatically rejected the contrary suggestion. In so doing, he gave, as an example, the fact that he had difficulty in explaining, in English, the use of wing screws. He said:

… I had to search for those words, to explain the alternative way to – to mount it. So this is my words.

223    I am satisfied that, at the Seltor meeting, Mr Prior disclosed all the features of the method claimed in claim 1 of the patent, with reference to the Pass-It Version 2. I am also satisfied that, at the Seltor meeting, Mr Prior disclosed all the additional features of the method claimed in claims 2 and 4.

224    Trafalgar submitted that the evidence does not reveal that the Pass-It samples shown to Mr Ramunddal had the additional features of claim 3, where the first portion of the firestopping device is a planar panel defining a pair of opposite sides each having a side wall extending therefrom.

225    This submission is based on expert evidence given through the Joint Report prepared by Mr Hunter and Mr Page, which was signed by them on 16 April 2020 (Joint Report Part B).

226    Mr Page said that the device depicted in Mr Ramunddal’s digital image has a planar panel (which forms the top of the device), and two short flanges. In his view, claim 3 is not met unless the short flanges are considered to be “side walls”.

227    Mr Page’s view was based on his understanding that the term “side wall” means “something that extends more or less the full height of the device” and “should act as a wall (i.e. to contain something), not just to be an attachment point”. He acknowledged, however, that this is not how the term “side wall” is used in the specification:

The Patent describes similar short flanges as ‘sidewalls’ (see page 4, final paragraph, referring to items 10 and 11 which can be seen in figures 5 and 6). If these are ‘side walls’ then the flanges in … the Pass-It Box Version 2 (which are of a similar scale and have the same function) are also ‘side walls’. However, in my opinion, neither items 10 and 11 in the Patent, nor the flanges in … the Pass-It Box Version 2 can properly be described as ‘side walls’.

228    In the Joint Report, Mr Hunter expressed his agreement with Mr Page’s comments.

229    I do not accept Mr Page’s and Mr Hunter’s opinions that, in the Pass-It Version 2, the planar panel of the first portion of the device does not have, on each opposite side of the panel, a “side wall” extending therefrom.

230    The claims must be read in the context of the teaching of the specification, and construed accordingly. It is clear that, in using the expression “side wall”, the specification is intending that term to encompass the structure and geometry of the short flanges to which Mr Page and Mr Hunter refer, however else the expression “side wall” might be understood in other, and different, contexts and settings.

231    As the specification makes clear, these elements function, in part, as attachment points for the side walls of the second portion, with the second portion forming the base and “the majority of the side walls of the firestopping device”: specification pages 4 – 5; see [41] – [48] above. The fact that the flanges function as attachment points does not make them any less “side walls” for the purposes of the specification.

232    I am satisfied, therefore, that, at the Seltor meeting, the additional features of the method claimed in claim 3 were disclosed.

233    Boss submitted that, at the Seltor meeting, the additional feature of the method claimed in claim 5 was disclosed—the step of marking a line on the external object so as to depict the proposed centre line of the barrier. Boss relied on the opinions expressed by Mr Page and Mr Hunter on this matter in Joint Report Part B.

234    Trafalgar’s written closing submissions did not address this claim specifically. However, Trafalgar did dispute that Mr Prior gave detailed instructions about the use of the Pass-It Version 2, as Mr Prior and Mr Ramunddal had described. In this context, Trafalgar raised the unlikelihood that Mr Prior gave any instruction about the marking of a centre line.

235    I do not accept that the additional step of claim 5 was disclosed at the Seltor meeting—at least with the sufficient clarity to amount to an anticipation. Importantly, Mr Ramunddal’s recollection does not include any statement being made that reflects this step. The highest that Mr Prior’s evidence rises in this regard is that he disclosed that, after the walls are “marked out”, the device is installed in a position that would straddle the wall. Even if I were to accept this evidence, it falls short of Mr Prior disclosing the step of marking the centre line of the “barrier”, and it is not a disclosure of marking such a line on the external object to which the firestopping device is to be attached.

236    To the extent that Mr Page and Mr Hunter express the contrary view in Joint Report Part B, I do not accept their opinion. I put the matter this way because, even though, in their claim chart, they indicated (by signifying “yes”) their acceptance that the additional features of claim 5 were disclosed at the Seltor meeting, their conclusion was qualified, and also appears to involve legal judgments on their part, which I do not accept.

237    In this connection, Mr Page drew attention to the fact that, although there is mention in Mr Prior’s evidence about marking out walls, his instructions to Mr Ramunddal did not specify where the location of the walls was to be marked—that is, on the floor or on the soffit. In this connection, I also note that some of the evidence reveals the practice of marking wall locations on the floor.

238    Mr Page then drew attention to his own affidavit evidence where he discussed how he has installed a Pass-It Version 1. He also discussed his observation of how, consistently with his own method, other installers have installed such a device—which he described as “one way of doing this” (my emphasis). This way involved using a rotary laser to project a vertical plane (including onto a soffit) from a centre line marked on the floor.

239    There is no challenge to this evidence. I accept that, if this method were to be employed, it would satisfy the additional features of the method claimed in claim 5. I am not persuaded, however, that, at the Seltor meeting, Mr Prior made any disclosure about marking a centre line on the soffit (or on any other external object to which the transit is to be fixed). Further, I am not persuaded that the inevitable result of following the instructions given by Mr Prior at the Seltor meeting would be the marking of such a line.

240    I am not satisfied, therefore, that, at the Seltor meeting, Mr Prior disclosed, with sufficient clarity, the additional features of the method claimed in claim 5.

241    For these reasons, I am satisfied that claims 1, 2, 3, and 4 of the patent are invalid because, at the priority date, the invention, as claimed in each of those claims, was not novel.

The Pass-It Versions 1 and 2

242    Boss contended that all the claims of the patent are anticipated by the public display, demonstration, offer for sale, sale, and installation of the Pass-It Version 2, when taken with the instructions, given by Mr Atkinson, for use of the device.

243    Boss also contended that all the claims of the patent are anticipated by the Pass-It Version 1, taken with Mr Atkinson’s instructions, should I also accept that the accused product for s 117(1) purposes—the Fyrebox device—has the features of the firestopping device referred to in the claims.

244    Mr Atkinson gave this evidence with respect to these devices:

Since they were created I have presented [these] versions of the Pass-It … to many customers and potential customers. In most cases when I presented the Pass-It, I had a sample with me, as the device is relatively compact and easier to explain to customers when they are holding it in their hands and can easily see how the device works. I also explained the different installation methods available for this of Pass-It. In most cases I explained every option of installation available, although if the customer was only interested in one of the methods, or their intended use made a particular method irrelevant, I did not explain that method. …

245    Mr Atkinson then said that, when he explained the installation methods, he used words to the following effect:

Pass-Its can be installed in more than one way depending on your particular needs.

For example, a Pass-It can be installed in an existing wall by:

1.     cutting a suitable sized penetration in the wall;

2.     routing the services through that penetration;

3.     splitting the Pass-It by removing the Philips head screws holding the two metal shell pieces together and reassembling it around the services by replacing those screws;

4.     pushing the completed Pass-It into the penetration;

5.     if necessary or preferred the fixing lugs can be bent 90° to attach them to the wall for a more secure fit (this helps if more services are expected to be routed through the device); and

6.     sealing up around the edges of the Pass-It.

Steps 4 and 5 could also be completed before step 2 which would eliminate the need for step 3.

Or a Pass-It can be installed before the wall is erected by:

1.     splitting the Pass-It by removing the Philips head screws holding the two metal shell pieces together;

2.     attaching one part of the Pass-It to the soffit using the dedicated fixing lugs and bolts or similar;

3.     routing the services under (or through, depending on which version of the Pass-It was used) the portion fixed to the soffit;

4.     reassembling the Pass-It around those services;

5.     erecting the wall around the Pass-It; and

6.     sealing up around the edges of the Pass-It.

Or a Pass-It can be installed before the wall is erected by:

1.     attaching the Pass-It to the soffit using dedicated fixing lugs and bolts or similar;

2.     routing the services through the Pass-It;

3.     erecting the wall around the Pass-It; and

4.     sealing up around the edges of the Pass-It.

FSi makes Pass-It devices in different configurations, shapes and sizes suitable for a variety of different services or combinations of services. Different configurations of which piece of the shell has the soffit fixing lugs are available and the number of soffit fixing lugs can be altered depending on the required use. For example in some versions the piece designed to be fixed to the soffit has side walls which hang down and the piece that attaches at the bottom is effectively just a flat plate. In other versions the piece designed to be fixed to the soffit is just a flat plate with very small side walls and the piece that attaches has longer sidewalls which can be attached to the plate piece. In other versions not designed to be attached to the soffit the second piece can be attached on one side the fixing lugs would be bent and attached to the wall itself.

246    It appears to be common ground that the mere display, sale, and offer for sale of the Pass-It Version 1 and the Pass-It Version 2 could not anticipate the invention as claimed. In and of themselves, these products do not disclose a method of constructing a barrier, let alone the particular method that is claimed—hence the importance of advancing this challenge to validity on the basis of the instructions that Mr Atkinson says he gave.

247    Trafalgar advanced two main contentions. First, it submitted that the Court should not accept Mr Atkinson’s evidence that the Pass-It Version 1 and the Pass-It Version 2 were manufactured in late 2014 early 2015. Secondly, it submitted that the Court should not accept that the “detailed oral instructions” recorded in Mr Atkinson’s affidavits were provided, as Mr Atkinson says they were.

248    As to the availability, before the priority date, of the Pass-It Version 1 and the Pass-It Version 2, Trafalgar submitted that: the photographs used by Mr Atkinson to illustrate those versions were taken in 2019; the invoices annexed to his first affidavit showing sales of the products in 2015 do not refer to “fixing lugs”; and Mr Atkinson’s evidence that these versions were manufactured in late 2014 and early 2015 was “fundamentally at odds” with FSi’s contemporaneous documents (FSi’s Technical Handbooks for 2014 and 2015, and certain products data sheets issued in the period 2013 to 2016). It also pointed, again, to what it says is the absence of those versions from the photograph taken at the September 2015 ASFP UK seminar day. I have already dealt with that particular matter.

249    There is no dispute that the photographs used by Mr Atkinson to illustrate the Pass-It Version 1 and the Pass-It Version 2 were taken on 3 April 2019. But Mr Atkinson did not suggest that the photographs were taken on any particular date. Indeed, as he made clear in his cross-examination, he did not know when the photographs were taken. Further, Mr Atkinson did not suggest that he had taken the photographs himself. Plainly, Mr Atkinson simply used the photographs as a convenient means to identify and illustrate the versions he was addressing in his evidence. Nothing turns on when, or by whom, the photographs were taken.

250    Mr Atkinson was not directly challenged on his evidence that the invoices he produced were invoices relating to sales of the Pass-It Version 1 and the Pass-It Version 2 in mid to late 2015. I have no reason not to accept his evidence in that regard. It is true that the invoices do not, in terms, refer to the products as having fixing lugs. But no foundation was laid in the evidence to show that the products should have been described in the invoices in that particular way, or to suggest that it was, in some way, surprising or unusual that they were invoiced without describing them as having fixing lugs. These matters were simply not canvassed with Mr Atkinson in cross-examination.

251    Mr Atkinson was taken to FSi’s 2015 Technical Handbook (the 2015 Handbook) and 2014 Technical Handbook (the 2014 Handbook). These handbooks concern a range of different fire resistance products and systems. They each include a section on the Pass-It-Transit System, which is described in general terms.

252    For new installations, the 2015 Handbook says:

… simply slide the Pass-It through the pre-cast/cut aperture, then when ready, push the service (cable/pipe) etc. through the liquid intumescent.

253    For existing installations, the 2015 Handbook says:

… split the outer case, close the case around the required service, slide into place and fix the lid ensuring that the liquid intumescent pads are central to the shell.

254    The 2015 Handbook also says that the Pass-It is designed:

… to prevent the passage of fire between rigid floors, walls and flexible walls …

255    The same instructions are given in the 2014 Handbook. These instructions are no more than high-level statements which simply do not descend to the detail of how the Pass-It should be attached to the structures to which they were intended to be associated.

256    Mr Atkinson was also taken to FSi’s 2018 Technical Handbook (dated April 2018) (the 2018 Handbook), which does illustrate the Pass-It fitted to a soffit. He accepted that he could not point to any technical handbook from FSi after 2015, and before the 2018 Handbook, that described soffit mounting for the Pass-It device in similar terms. He accepted that the 2018 Handbook was the first technical handbook in evidence that shows the possibility of the Pass-It being soffit-mounted. He also said, however, that the 2014 Handbook and the 2015 Handbook refer to mounting the Pass-It between the wall and the floor.

257    Mr Atkinson also accepted that the product data sheets to which he was taken in the early part of his cross-examination—which did not include the Firestopit PDS—do not refer to the Pass-It being fitted to a soffit, as such. Even a product data sheet bearing the date September 2018, which shows examples of the Pass-It with fixing lugs, does not contain an express description of those products being available for soffit mounting. However, Mr Atkinson drew attention to the fact that that product data sheet does state that the described product is “designed to prevent the passage of fire between compartment floors and walls”.

258    In relation to the other data sheets, Mr Atkinson accepted that, where FSi described installation methods, it was FSi’s expectation that its customers would install the Pass-It in the manner described. He said, however, that those instructions showed mounting between the floor and the wall, in the floor, or in the wall.

259    Mr Atkinson explained these configurations in re-examination:

… inside the wall would be literally a preformed penetration in the flexible wall or a ridged wall and the box would slide in and you would either bend the tabs up or you would use a fixing bracket on one side to hold it in place. If it was between a wall and the floor, this was what has been termed as the soffit mounting. This is where the box is pre-mounted to the underside of the floor and then the wall is formed around the outside of that. Or in some cases, the wall and the floor are formed and then the hole – or the penetration is made for the seal or the box to go into it. And then, of course, the last one is through the floor where there is a precast hole or penetration in the floor and the boxes are mounted inside the floor.

260    I do not think that the product data sheets for the Pass-It to which Mr Atkinson was taken in the early part of his cross-examination (which, as I have said, did not include the Firestopit PDS) are as explicit as this explanation, although it is possible that those with knowledge of fire transits might understand them as conveying that explanation.

261    The fact that FSi’s technical literature does not illustrate the Pass-It with fixing lugs, or refer, in terms, to its availability for soffit-mounting, until 2018, casts some doubt on Mr Atkinson’s evidence that, sometime between late 2014 and early 2015, FSi manufactured new versions of the Pass-It with dedicated fixing lugs. However, I must consider this evidence with all the other evidence before me on this topic.

262    Another aspect of Trafalgar’s challenge to Mr Atkinson’s evidence was based on the fact that he did not produce, as part of his evidence in chief, design drawings for the Pass-It Version 1 or the Pass-It Version 2. While Mr Atkinson accepted that design drawings for these versions would have been created at some point in time, he explained that:

… it was quite often that we would manufacture or produce a sample or a design idea in the workshop first, and then go back and put finishing touches on the design drawing at a later stage.

263    This explanation was not challenged.

264    I do not think that Mr Atkinson’s evidence about when the Pass-It Version 1 and the Pass-It Version 2 were first manufactured is called into question simply because Mr Atkinson did not include design drawings as part of his evidence in chief.

265    Mr Atkinson’s evidence about when the Pass-It Version 1 and Pass-It Version 2 were first manufactured was not shaken by cross-examination. It was not suggested that his evidence was given falsely. Although it was put to Mr Atkinson that there was no Pass-It product with lugs (making it suitable for soffit mounting) that FSi offered for sale or promoted for sale before 12 February 2016, Mr Atkinson disagreed, and confirmed his evidence in chief on that subject. He also disagreed with the more specific proposition that, by 12 February 2016, FSi had not produced or offered for sale either the Pass-It Version 1 or the Pass-It Version 2. Further, Mr Atkinson rejected the proposition that FSi was only able to produce a device such as the Pass-It Version 1 or the Pass-It Version 2 upon receipt of correspondence from Mr Prior on 16 December 2015, which enclosed material relating to the testing of one of Trafalgar’s products. I deal with that correspondence when discussing the FSi drawings as anticipatory disclosures: [294] – [295] below.

266    For completeness, I also note that Mr Atkinson specifically disagreed with the proposition that FSi had not circulated the Firestopit PDS at any time prior to 12 February 2016.

267    Mr Atkinson impressed me as an honest and reliable witness who had a sound knowledge of FSi’s business and products at the times relevant to the present case. His evidence was given responsively and carefully to the questions he was asked. I think it most unlikely that he would be mistaken on a basic fact as to when the Pass-It Version 1 and the Pass-It Version 2 were developed.

268    On the whole of the evidence, I am satisfied that the Pass-It Version 1 and the Pass-It Version 2 were in existence and available for supply when Mr Atkinson says they were—sometime in the period late 2014 to early 2015. This was before the priority date. I am confirmed in this view by my acceptance of Mr Ramunddal’s evidence concerning the Seltor meeting in September 2015, at which time Mr Ramunddal was given samples of the Pass-It Version 2.

269    However, the difficulty I have with this particular challenge to validity is that it depends, for the giving of instructions as to use of the Pass-It Version 1 and the Pass-It Version 2, on unidentified conversations with unidentified individuals at unidentified times in unidentified circumstances. As I have recorded, all that Mr Atkinson was able to say was that, since they were created, he has presented the Pass-It Version 1 and the Pass-It Version 2 to many customers and potential customers. He said that, in most cases, he had a sample with him, because the devices are relatively compact and are easier to explain and understand when a sample is present.

270    Mr Atkinson said that, on these occasions, he explained the different installation methods that are available for these versions. He also said that, on most occasions, he explained “every option of installation available”. However, he said that his explanation would be more limited if the customer was only interested in one method of installation, or if the customer’s intended use made a particular method irrelevant.

271    The explanation I have quoted at [245] above is, plainly, idealised. As accepted by Mr Atkinson in cross-examination, it does not purport to be an actual conversation that Mr Atkinson had with a particular customer at a particular time.

272    Evidence expressed at this high level of generality lacks the requisite precision as to time, circumstance, and content to provide a sufficiently reliable foundation for me to be satisfied, on the balance of probabilities, that the invention was disclosed with the particularity required for an anticipatory disclosure.

273    I therefore reject this particular challenge to the validity of the invention as claimed.

The Pass-It with butterfly screws

274    Boss contended that all the claims of the patent are anticipated by the public display, demonstration, offer for sale, sale, and installation of the Pass-It with butterfly screws, when taken with the instructions, given by Mr Atkinson, for use of the device.

275    Mr Atkinson’s evidence was that this version of the Pass-It was developed after the Speedpanel meeting, around mid-2015. He said that the Pass-It with butterfly screws, and the Pass-It Version 1 and the Pass-It Version 2, have been on display since mid-2015 in FSi’s training room, which is used for meetings with customers almost every week to provide training in, and public awareness of, FSi’s products.

276    Mr Atkinson said that, when he showed customers these devices in FSi’s training room, he gave the explanation I have quoted at [245] above. In relation to the Pass-It with butterfly screws, he said that he also explained that the butterfly screws can be used with any Pass-It device in substitution for the Phillips head screws that are typically used.

277    As with the Pass-It Version 1 and the Pass-It Version 2, Trafalgar submitted that the Court should not accept Mr Atkinson’s evidence that the Pass-It with butterfly screws was available and displayed from mid-2015. It submitted that Mr Atkinson’s evidence on this score was vague and contradicted by the contemporaneous materials.

278    Significantly, Trafalgar also suggested that photographs, taken in FSi’s training room, of the Pass-It with butterfly screws—which the parties agree were taken in 2018 and 2019—include images that have been falsified, because those images show sachets of intumescent material that are date-stamped “03 05 15”. This suggestion was made because some of the images also show the presence of a date stamper with a piece of paper. Trafalgar contended that the piece of paper shows “practice stamping impressions (of the same date as appears on the sachets)”. Trafalgar’s theory is that some unknown person or persons—presumably at FSi—staged the images of the sachets by fraudulently impressing them with the date “03 05 15” so as to portray that the products to which the sachets were attached were available at around that date. It was not suggested that Mr Atkinson was that person or that Mr Atkinson had any knowledge of such an event. Nor was this theory supported by any evidence as to who, at FSi, would be motivated to fabricate evidence for the purpose of this case.

279    Although I can see the date stamper, a stamp pad, and what are possibly multiple ink impressions on a piece of paper, I am unable to see with sufficient clarity the markings which Trafalgar says are “practice” stamping impressions of “03 05 15”. For all I know, the ink impressions could be of any number of different dates, none of which is “03 05 15”. Why several “practice” impressions of one date might be required was not explained. I am not persuaded that Trafalgar’s theory is anything more than hopeful speculation on its part.

280    I am prepared to accept that the Pass-It with butterfly screws was available when Mr Atkinson says it was. Once again, I am confirmed in this view by Mr Ramunddal’s evidence of the disclosures made at the Seltor meeting in September 2015, which included the oral disclosure that the lower part of the two piece device could be connected to the upper part by either “normal” screws or wing screws.

281    This finding, however, does not significantly advance this particular challenge to validity because, once again, Trafalgar submits that the Court should not accept that the “detailed oral instructions” recorded in Mr Atkinson’s affidavit were provided when this version of the Pass-It, was promoted.

282    My conclusion on that matter is that same as for the challenge based on the Pass-It Version 1 and the Pass-It Version 2. The evidence of the instructions that were given lacks the requisite precision as to time, circumstance, and content to provide a sufficiently reliable foundation for me to be satisfied, on the balance of probabilities, that the invention was disclosed with the particularity required for an anticipatory disclosure.

283    I therefore reject this particular challenge to the validity of the invention as claimed.

The FSi drawings

284    The FSi drawings are drawings that were prepared by FSi and sent by Mr Atkinson to Mr Prior by email on 2 February 2016. The drawings were preceded by email correspondence between Brookfield Multiplex Australasia (Multiplex) and Boss, commencing on 18 November 2015.

285    In that correspondence, Multiplex asked Boss to come up with a “service peno device”—meaning, a service penetration device—that would be suitable for services entering an apartment, which Multiplex stipulated as:

∙    Low Voltage cable bundle (around 20mm dia.) including MATV, intercom, security, EWIS, TV aerial

∙    NBN Conduit – usually a 20mm dia. PVC conduit – with our without cable

∙    Fire sprinkler line – Steel pipe at either 11/4” or 11/2” dia.

∙    Gas line – either in copper or CXL polyethylene – around 20mm dia.

∙    Rehau hot water line – around 20mm dia.

∙    Rehau cold water line – around 20mm dia.

∙    Occasionally a Rehau recycled water line – around 20mm dia.

∙    A/C refrigerant line bundle – around 60mm dia. Including 2 copper lines in insulation, and control cable

∙    Power cable bundle – either 1 or 2 - 2 core and earth 240V – around 30mm dia.

286    Multiplex proposed the following order of construction involving such a device:

1.    Remove slab soffit propping and formwork

2.    Markout on the floor all the apartment walls and wall types

3.    Fix fire rated “service peno device” to soffit (likely by concrete nail gun)

4.    Fire service contractor installs fire sprinkler line through “service peno device”

5.    All other services contractors install through “service peno device”

6.    Install drywall tracks, studs and noggins

7.    Install fire rated plasterboard walls, including sealant to “service peno device”

8.    Close-up “service peno device” for smoke and acoustics

9.    Install ceiling to apartment and to hallway

287    It can be seen that Multiplex wanted a device that would be mounted on a soffit.

288    The email concluded:

Over to you to come up with the “service peno device” capable of taking all the above items through a typical - /60/60, or -/90/90, or -/120/120 firewall.

289    These figures refer to fire ratings.

290    Mr Prior forwarded this email to Mr Atkinson on the same day, asking for Mr Atkinson’s thoughts. Mr Atkinson responded on 19 November 2015, saying:

That is a very interesting number of services, albeit small in size. I am very happy that they would all fit in to the Largest size Pass-it box, we could construct the box to suit the width of the wall, making it a nearly flush fitting system. The “intumescent” that is used in the box will move than accommodate these services, I would suggest that we conduct some indicative testing to see how the results come out, we can get most of the services here to.

Shall we go ahead with an indicative test or would you like to jump straight in to a full test in Oz.

Will call later UK time to chat about things anyway before I jump ship to USA.

(Errors in original.)

291    It is clear from this response that Mr Atkinson considered the Pass-It to be suitable for this particular application, and that he was contemplating that the Pass-It would be installed within the wall and sit substantially flush with it.

292    Boss, through Mr Prior, responded to Multiplex later on 19 November 2015, saying:

We can prepare an indicative test of our product around all of these services – if its successful we can book it into Exova.

I understand (from D&E Air) the 90min wall system as single 16mm plasterboard each side of a 92mm stud. Can you tell me what [the] 60min and 120min wall systems are?

293    Multiplex subsequently provided the wall system details.

294    Further, in another email dated 19 November 2015, Multiplex said:

One thing to watch is – make the device easy to get the services in. Preferably open at the bottom during initial installation so the trades don’t pull their services through and damage – just clip the service to the underside of the slab and through the device. Once all are in place close up the bottom, frame the device out with studs/noggins and then apply the plasterboard.

Our OH&S didn’t like a hinged bottom hanging down. It is likely to be a hazard for trades working from a scissor.

295    On 16 December 2015, Mr Prior sent an email to Mr Atkinson:

Hi Carl

Just thought I’d give you a heads up on the Trafalgar version of this multi-service transit we spoke of developing. I have attached some photos of their transit set up for test last week, see attached.

Note the important factors for this application:

∙    Can be installed to the underside of the slab before the wall goes up – note the top dynabolts on the extended flange

∙    Can be loaded with pipes and services and then ‘closed off’ after all the trades run their services

∙    Will provide 120min integrity and insulation to the services we spoke about below. The Trafalgar intumescence looks to be roughly 10mm thick.

∙    A separate insulating wrap for the sprinkler pipe and copper is acceptable. Trafalgar is using a 300mm wide superwool wrap and black foam smoke seal (see attached images)

Have you had more thoughts on an FSI version? Would it be best to use plastic sleeves of HPE or a multi-layered intumescent with the mesh?

Looking forward to your feedback.

Mark

296    The “photos” referred to are of a Trafalgar test specimen installed at Exova’s testing facility at Dandenong in Victoria, in circumstances which I relate below. The email also attached an image of a diagram entitled “Apartment Entry Door – Fire Box Detail”. The diagram was prepared by Mr Tyler Brenchley from Multiplex. It shows a “fire rated services penetration box” mounted on a soffit.

297    It is to be remembered that, by this time, the Pass-It Version 1 and Pass-It Version 2 had already been made by FSi. Also, at the Speedpanel meeting in October 2014, the Pass-It was discussed as a two-piece transit that could be mounted on a soffit. The same information was disclosed with reference to the Pass-It samples discussed at the Seltor meeting in September 2015. Thus, the fact that the “service peno device” that Multiplex had sought was to be a two-piece device installed on a soffit, in which the services were to be positioned before the two pieces were joined, was not a new design concept for FSi or for Boss.

298    The device was, however, one that was to meet Multiplex’s requirements as set out in the email dated 18 November 2015, including that it was to accommodate a specific combination of services and, if possible, achieve certain fire ratings. At that time, Mr Atkinson was confident that the largest Pass-It could accommodate the specific combination of services, as reflected in his email to Mr Prior on 19 November 2015. However, the fire rating of the Pass-It with these particular services, installed as Multiplex wanted them to be installed, would need to be tested. Mr Atkinson also explained in his evidence in chief, and in re-examination, that the Pass-It had not undergone fire testing according to Australian standards. It had, however, been tested under European Standards (EN 1366-3:2009, to which I make further reference below).

299    On 2 February 2016, Mr Prior sent an email to Mr Atkinson seeking “an update on the multi-service Pass It”. Mr Prior also mentioned another request he had received from Multiplex, which was for a fire-rated solution when plumbing fixtures are installed in a wall cavity and penetrate through a fire-rated wall in an apartment building.

300    Mr Atkinson responded to this email on the same day. He attached “3 basic drawings of the proposed Pass-It Transit System” which would “sit on the underside of the soffit up against the face of the flexible wall …”. Two of the drawings are dated “20-01-16”. One drawing is dated “22-01-16”. These dates indicate that the drawings had been prepared before Mr Prior’s email of 2 February 2016 seeking an “update”. The drawings depict a transit mounted (or, in the case of one drawing, to be mounted) to the underside of a concrete soffit on the outside of a flexible wall.

301    Approximately two hours later, Mr Atkinson sent a further email attaching three further drawings. In that email, Mr Atkinson said:

Following the recent conversation please find attached two further details that cover the “internal” use of Pass-It hanging from the soffit and a drawing showing the “J” Bracket.

302    Two of the drawings are dated “20-01-16”. One drawing is dated “21-01-16”. These dates also indicate that the drawings had been prepared before Mr Prior’s email of 2 February 2016 seeking an “update”. The drawings depict a transit mounted to the underside of a concrete soffit within a flexible wall. These particular drawings are the FSi drawings which, Boss contends, anticipate the method claimed in claims 1, 3, and 5 of the patent, assuming that the Fyrebox device is held to be an infringement of those claims.

303    Trafalgar disputed that the FSi drawings are anticipatory disclosures. It argued that, in any event, the FSi drawings were derived from disclosures made to Multiplex by Trafalgar itself, and that these disclosures were made publicly available without Trafalgar’s consent. Trafalgar developed its case, in this regard, as follows.

304    According to Mr Rakic, Trafalgar fielded an inquiry from Multiplex in around late August 2015 in relation to Trafalgar’s range of products. An email, sent by Multiplex to Trafalgar on 2 September 2015, indicates that Multiplex’s interest was in two particular products—the Triplex 200 x 65 and the Maxi 350 x 125. The Multiplex email referred to certain services that it wanted to accommodate. It referred to these as “typical for a high rise apartment”. These services appear to be substantially the same services referred to in the email that Multiplex sent to Boss on 18 November 2015. The email asked:

Can you please confirm that these items can be placed directly to the concrete soffit, and that all the above services can be run through.

305    It is clear from this inquiry that Multiplex was seeking a soffit-mounted device.

306    Trafalgar responded by email on 4 September 2015, stating:

… The boxes you have seen in the catalogue would be a costly penetration as it uses three boxes in one peno. We have a Fyreclamp system that is designed and built at Trafalgar Manufacturing and can be made to size. John [Rakic] discussed that some services need to be in a separate box due to fire testing but we would like to discuss this with John expertise.

307    Mr Rakic and Ms Freel (also from Trafalgar) had a meeting with Multiplex in Melbourne at which time Mr Rakic said that he explained Trafalgar’s existing hinged Fyreclamp products and a “new soffit mounted solution” which Trafalgar had under development. Mr Rakic left a sample prototype of this product with Multiplex. Mr Rakic said that the prototype was “in one piece”, although in the meeting he informed Multiplex that the best solution that Trafalgar had under development was a “two-piece box design” in which the first piece would be attached to the slab, and the second piece would be attached to the first piece after the services had been run through.

308    Mr Rakic’s evidence is that, at this meeting, he was informed by Multiplex that it could incorporate the proposed product into a fire test it had booked in “the next few weeks”. The important thing to note is that this was testing that Multiplex had arranged for its own purposes on products of its choosing. This test was to be carried out at Exova’s testing facility at Dandenong in Victoria.

309    On about 26 November 2015, Mr Todd, Trafalgar’s Director of Innovation, attended the Exova facility and installed the test specimen. Mr Todd’s evidence is that, on completion of the installation, he requested the lab technicians at Exova to place a tarpaulin over the specimen to cover it. It is important to note that this was Mr Todd’s request, not Multiplex’s request. Mr Todd said that, at no stage during any of his interactions with Multiplex, did anyone suggest that this specimen, its features, or its method of installation, would be revealed to a third-party manufacturer, including Boss.

310    Mr Todd said further that, in his experience in the passive fire industry, including more than nine years of involvement with testing passive fire products, it is “standard industry practice” that activities at a testing facility take place in confidence.

311    The Trafalgar test specimen was tested at Exova on or around 14 December 2015.

312    Trafalgar’s response to this particular challenge to validity is that the Court should disregard the FSi drawings, having regard to s 24(1)(b) of the Patents Act, which provides:

(1)     For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard:

…     

(b)     any information made publicly available without the consent of the nominated person or patentee, through any publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title of the nominated person or patentee;

but only if a complete application for the invention is made within the prescribed period.

313    Leaving aside any question about its consent, Trafalgar’s response depends on acceptance that the FSi drawings were derived from the information in Mr Prior’s email to Mr Atkinson on 16 December 2015 about Trafalgar’s test specimen installed at the Exova test facility at Dandenong. Trafalgar’s case is that this information is constituted by the photographs attached to the email, and Mr Prior’s description of the Trafalgar test specimen. It also seems to be based on the diagram entitled “Apartment Entry Door – Fire Box Detail”.

314    The photographs show the Trafalgar test specimen installed in a wall penetration. It is attached to a soffit. Services are installed through the device. The photographs disclose little else about the features of the device. They do not disclose whether the device has each of the features of the firestopping device defined in claim 1 of the patent, or the additional features of the firestopping device defined in claims 2, 3, or 4.

315    Further, the photographs do not disclose the method by which the wall (barrier), in which the test specimen is installed, was constructed, or the method by which the services were positioned in it. In particular, they do not disclose whether, in installing the test specimen, each of the steps of the method claimed in claim 1 of the patent were undertaken, or the additional step of the method claimed in claim 5 was undertaken.

316    The diagram adds nothing of substance. It merely shows a “fire rated services penetration box” mounted on a soffit. It does not disclose whether the “fire rated services penetration box” has each of the features of the firestopping device defined in claim 1 of the patent or the additional features of the firestopping device defined in claims 2, 3, or 4. It does not disclose the method by which the wall, in which the box is installed, was constructed or whether, in installing the box, each of the steps of the method claimed in claim 1 of the patent were undertaken, or the additional step of the method claimed in claim 5 was undertaken.

317    Mr Prior’s description in the email of 16 December 2015 is more informative, but only slightly so. Of relevance to the method claimed in the patent is that the Trafalgar test specimen:

Can be installed to the underside of the slab before the wall goes up …

and that it:

Can be loaded with pipes and services and then ‘closed off’ after all the trades run their services …

318    When this additional information is taken with the photographs and the diagram, it still does not disclose all the features of the firestopping device defined in claim 1 of the patent. For example, there is no disclosure of a first portion having formations for fastening that portion to an external object. Further, there is no disclosure of a device having the additional features defined in claims 2, 3, and 4. It follows that there is no disclosure of the method claimed in claims 1, 2, 3, and 4 of the patent. There is also no disclosure of the additional step of claim 5.

319    For these reasons, neither the installation of Trafalgar’s test specimen at the Dandenong testing facility, nor Mr Prior’s email to Mr Atkinson of 16 December 2015 with its attachments, disclosed all the features of the invention claimed in the patent.

320    Further, I am not satisfied that the FSi drawings were derived from the installation of Trafalgar’s test specimen at the Dandenong testing facility or from the information provided in Mr Prior’s email to Mr Atkinson of 16 December 2015, in any event.

321    It is to be remembered that Multiplex had already set the task for Boss to come up with a “service peno device” that would accommodate a number of specified services, and be fixed to a soffit: Multiplex’s email of 18 November 2018. Multiplex had also said that, preferably, the device should be “open at the bottom during initial installation” to allow the services to be positioned before the “bottom” was closed up, which would then allow the device to be framed and the plasterboard applied: Multiplex’s email of 19 November 2018. These were Multiplex’s requirements. This was not information derived from Trafalgar.

322    Whilst I have no doubt that Mr Prior considered the Trafalgar test specimen to be useful commercial information about a competitive product which he should pass on to Mr Atkinson, the information which Mr Prior gave in his email of 16 December 2015 about that device added nothing of significance, in terms of the method claimed in the patent, to the instructions that Multiplex had already given to Boss. And, as I have said, the fact that the “service peno device” that Multiplex had sought from Boss was to be a two-piece device installed on a soffit, and in which the services were to be positioned before the two pieces were joined, was not a new design concept for FSi or for Boss. In his email of 19 November 2015, Mr Atkinson had already expressed his satisfaction that, subject to testing, the solution sought by Multiplex could be accommodated in the largest size Pass-It, which he contemplated would be installed within the wall.

323    For completeness, I find that the diagram prepared by Mr Brenchley was not information derived from Trafalgar. It was information provided by Multiplex in relation to its requirements for the installation of a “fire rated services penetration box” in relation to an “Apartment Entry Door”.

324    For these reasons, s 24(1)(b) of the Patents Act has no application to this challenge to validity. However, the question remains: Do the FSi drawings disclose all the essential features of the invention as claimed?

325    I am not satisfied that the FSi drawings do disclose all the features of the invention as claimed.

326    It is to be borne in mind that the invention is a method of constructing a barrier according to a particular sequence of steps. According to claim 1, those steps are: fastening a first portion of a firestopping device to an external object; positioning at least one service adjacent to, or in alighnment with, that portion; positioning the second portion around the service(s); mating the two portions; and then constructing the barrier around the firestopping device.

327    In and of themselves, the FSi drawings do not disclose any particular sequence of steps for constructing a barrier. They show a two-piece firestopping device attached to a soffit, in association and opening in a flexible wall, with a combustible (plastic) service pipe and cable bunches passing through the device.

328    It is possible that the flexible wall (the barrier) could be constructed according to the claimed method. But the FSi drawings do not give any instruction to do so.

329    Therefore, the FSi drawings do not stand as an anticipatory disclosure of the method claimed in claim 1. It follows that the FSi drawings also do not stand as an anticipatory disclosure of the methods claimed in claims 2, 3, 4, or 5.

330    Further, the FSi drawings do not disclose the firestopping device defined in claim 2 or the additional step of the method claimed in claim 5. There is also a question whether the FSi drawings disclose a firestopping device having the features of claim 3 or of claim 4. That question, however, need not be determined.

331    I therefore reject this particular challenge to the validity of the invention as claimed.

Patent validity: Lack of innovative step

Overview

332    Boss’s challenge to validity based on a lack of innovative step, as advanced in its closing submissions, focussed on the publication of the Firestopit PDS and claims 1 and 5 of the patent. However, its case on lack of innovative step was not confined to the disclosures of the Firestopit PDS or those claims. Boss also placed reliance on the prior art information on which it relied in its case on lack of novelty, and on other claims. It contended that if, contrary to its case on invalidity based on lack of novelty, the prior art information on which it relied did not disclose the essential features of the claims, then the invention, so far as claimed, only varied only in ways that make no substantial contribution to the working of the invention.

333    Boss’s written submissions continued:

For example, the specific geometry attributed to each portion in claims 3 and 4 makes no substantial contribution to the working of the invention. All that matters is that there is a first portion fixed to the external object and a second portion position around the services. A comparison between Pass-It Version 1 and Pass-It Version 2 demonstrates the point. If the Court finds that claim 3 or 4 is not anticipated because the claimed geometry is not disclosed, those claims would lack an innovative step.

334    This is as far as Boss’s case on lack of innovative step was developed with reference to the prior art information relied on for lack of novelty.

335    There are real difficulties in dealing with a generalised submission of this kind, which provides no greater articulation than an illustrative example. A case on lack of novelty can be defeated by finding that one feature of the invention, as claimed, has not been made publicly available before the priority date of the claim. It is not necessary for the Court to go further and make additional findings that other features of the invention, as claimed in a particular claim, were not made publicly available. However, for an innovation patent, any one of a number of variances between the invention as claimed and the prior art information might be enough to provide an innovative step to support a given claim.

336    The expectation in Boss’s submissions appears to be that, by simply providing an illustrative example, the Court, left to its own devices, will be energised to explore where all the possible variances might exist between the prior art information and the claims, and to determine for itself whether each of those variances, considered individually, do or do not make a substantial contribution to the working of the invention as claimed.

337    The Court should not be left in this position. It is the task of the party relying on a lack of innovative step to identify each and every variance between the prior art information and the invention as claimed, and to articulate, by reference to the evidence, why that variance does not make a substantial contribution to the working of the invention as claimed. This is the task imposed by s 7(4) of the Patents Act.

338    That said, the outcome of Boss’s challenge to the validity of the patent, based on a lack of innovative step, can be found, most directly, in my findings in relation to the disclosures made at the Seltor meeting. I have found that all the features of the method claimed in claims 1, 2, 3, and 4 of the patent were disclosed at that meeting. It follows that, with respect to the prior art information constituted by the disclosures at the Seltor meeting, only the additional, but undisclosed, step in claim 5—the step of marking a line on the external object to depict the proposed centre line of the barrier (integer 5.2)—now stands to be assessed as to whether that variance does or does not make a substantial contribution to the working of the invention.

339    It should be appreciated at the outset that there is no requirement in the claims that the firestopping device be centred. Claim 1 merely requires the step of positioning the first portion of the firestopping device so that it straddles the proposed positioning of the barrier. “Straddling” the proposed positioning of the barrier is not the same as centring the device on a particular line. “Straddling” may or may not involve centring the device. Claim 5 itself does not require the step of centring the device. It simply stipulates the step of marking the centre line of the boundary on the external object to which the first portion of the firestopping device is to be fastened. I am satisfied that this step does not make a substantial contribution to the working of the invention. It is, truly, a trivial addition to the method that is otherwise described and claimed. But even if claim 5 were to be construed as requiring the step of centring the device on the centre line that is marked, that step would also be a trivial addition to the method that is described and claimed. Therefore, although the invention claimed in claim 5 is novel, it does not involve an innovative step based on the disclosures made at the Seltor meeting and is, accordingly, invalid on that ground.

340    I add that, if I am wrong in my conclusion that, at the Seltor meeting, the additional features of the method claimed in claim 3 were disclosed—meaning that a firestopping device whose first portion is a planar panel defining a pair of opposite sides each having a side wall extending therefrom was not disclosed—then I am satisfied that those features—which are no more than specific aspects of the shape or configuration of the first portion—do not make a substantial contribution to the working of the invention as claimed. Therefore, 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.

341    My findings on lack of novelty and, to this point, on lack of innovative step, are sufficient to determine the question of the validity of all the claims. Nevertheless—and bearing in mind the observations I have made above about the Court being left to its own devices—I will briefly refer to some other aspects of the prior art information discussed above as those aspects relate to the challenge to validity based on lack of innovative step.

342    As to the Speedpanel meeting, I am not satisfied that a firestopping device with a first portion having formations for fastening that portion to an external object, was disclosed (which the parties referred to as integer 1.4). This is a variance between the disclosures at the Speedpanel meeting and the invention as claimed in claim 1. It is, however, a variance that is common to all the claims of the patent. For the reasons given below in relation to the disclosures of the Firestopit PDS, I am not satisfied that this feature does not make a substantial contribution to the working of the invention as claimed.

343    As to the demonstrations of the Pass-It Versions 1 and 2, and the Pass-It with butterfly screws, I have concluded that the evidence of the asserted publication of the claimed method on these occasions is expressed at such a high level of generality as to time, circumstance, and content that it lacks the requisite precision to provide a sufficiently reliable foundation for me to be satisfied, on the balance of probabilities, that the invention was disclosed with the particularity required for an anticipatory disclosure. That inability leaves me in a position where I cannot rationally make the comparison required by s 7(4) of the Patents Act. Therefore, I am not prepared to find, on the basis of this evidence, that the invention, as claimed, does not involve an innovative step.

344    As to the FSi drawings, I have concluded that the FSi drawings do not disclose any particular sequence of steps for constructing a barrier. The sequence of steps for constructing a barrier lies at the heart of the invention, and is common to all claims. I am not satisfied that these features do not make a substantial contribution to the working of the invention as claimed.

345    Much time was spent, and much evidence was directed, to the Firestopit PDS and its genuineness as a document. For this reason, I will deal with this aspect of the case fully, including whether, based on that document alone, a lack of innovative step is established, even though, strictly speaking, it is not necessary for me to do so.

The Firestopit PDS

346    The Firestopit PDS describes the Pass-It Transit System as an intumescent device encased in a two-part steel shell that is designed to prevent the passage of fire between compartment walls. Amongst other things, it discloses that the Pass-It can be installed before the compartment wall is built by fixing it to the underside of a soffit during the construction phase of the build. In this application, the Firestopit PDS says that the top section of the device is fitted to the underside of the soffit. The services are then run through the “open space below” before the metal bottom section is attached. The wall can then be “built around the product”.

347    It is to be recalled that Mr Atkinson identified the Firestopit PDS as a document that had been brought into existence following the preparation and issue of a fire test report by Exova on 24 January 2014 in relation to the so-called Pass-It Version 0. Mr Atkinson said that the Firestopit PDS was prepared from an earlier data sheet that had been prepared specifically for use by Tecnica in about November 2013. This earlier product data sheet bears the Revision Date “01/11/2013” and the Revision Number “01”. The Firestopit PDS bears the Revision Date 28 March 2014 and also the Revision Number “01”. Mr Atkinson could not recall the exact date when the Firestopit PDS was created but, in cross-examination, he said that “it would have been produced around the date of the test”, meaning the Exova test which led to the Evoxa 2014 Report. In his evidence in chief, Mr Atkinson said that he always provided the Firestopit PDS during his presentations of the Pass-It.

348    In its written closing submissions, Boss directed attention to the requirement of claim 1 that the firestopping device have formations for fastening the first portion of the device to an external object (integer 1.4). Boss accepted that this feature is not disclosed in the Firestopit PDS. Based on Mr Page’s evidence, Boss contended that this feature does not make a substantial contribution to the working of the invention because an installer would simply create holes in the device to bolt it to a soffit.

349    Boss also contended that the additional step of claim 5—marking a line on the external object to depict the proposed centreline of the barrier (integer 5.2)—does not make a substantial contribution to the working of the invention. I have already concluded that that step does not make a substantial contribution to the invention as claimed.

350    Trafalgar’s response was that it has not been established that the Firestopit PDS is “genuine”. By this, I take Trafalgar to mean that it has not been established that the Firestopit PDS was ever made publicly available. Its case is that the Firestopit PDS is evidence that was fabricated for the purposes of these proceedings.

351    Trafalgar contended, alternatively, that it has not been established that the Firestopit PDS was made publicly available before the priority date of 12 February 2016. This contention assumes that it has failed in its contention concerning the genuineness of the Firestopit PDS.

352    Finally, Trafalgar contended that the Firestopit PDS does not disclose a number of the features of the invention as claimed, and that Boss has not established that these features do not make a substantial contribution to the working of the invention.

The genuineness of the Firestopit PDS

353    Trafalgar’s contention that Boss has not established that the Firestopit PDS is “genuine” is a curious way of putting the matter given that it is Trafalgar who has challenged the genuineness of the document. Trafalgar developed its case in the following way.

354    First, Trafalgar compared the Firestopit PDS with another Pass-It product data sheet in evidence. The two documents have the same Revision Date (“28/03/2014”) and the same Revision Number (“02”), except the latter product data sheet was published under FSi’s name, not the Firestopit name. It is to be recalled that there are also other Pass-It product data sheets in evidence.

355    Trafalgar pointed to the different contents of the two documents. On the one hand, the Firestopit PDS refers, in a number of places, to the Pass-It being suitable for pre-installation by fitting the device to the underside of a soffit. The other document did not include these statements; nor did the other Pass-It product data sheets in evidence. On the other hand, other aspects of the two documents are the same. Trafalgar relied, in particular, on the two documents having the same layout, headings, diagrams, and photographs.

356    Trafalgar also relied on the fact that it was only in its 2018 Handbook that FSi referred, in terms, to the Pass-It being soffit-mounted.

357    Trafalgar also pointed to (what it described as) the incongruity of the Firestopit PDS using the Firestopit name when the company had changed its name to FSi on 24 October 2013. Trafalgar pointed to the fact that the other Pass-It product data sheets in evidence (with the exception of another version that was created in 2012 and published under the Firestopit name, and the version published under Tecnica’s name) were published under the FSi name.

358    Trafalgar also relied on numerous typographical errors in the Firestopit PDS.

359    Secondly, Trafalgar submitted that the electronic copy of the Firestopit PDS which has been discovered by Boss does not contain metadata that can verify the identity of the author of, or the date of creation of, that electronic copy.

360    Thirdly, Trafalgar submitted that there are “a number of other documents adduced by Boss in these proceedings which are clearly not genuine and have plainly been attributed by Mr Prior with an earlier date than the evidence reveals or [have been] altered by Mr Prior”.

361    Fourthly, Trafalgar submitted that no other contemporaneous record has been produced by Boss that shows that the Firestopit PDS was created and made publicly available before the priority date. It submitted that Mr Atkinson accepted that the product data sheet for the Pass-It that was published under FSi’s name, and which had the same Revision Date and Revision Number as the Firestopit PDS, was distributed by FSi from about the end of March 2014.

362    Finally, Trafalgar submitted that the evidence did not establish that FSi was approved to use the Pass-It in soffit-mounting application in March 2014, casting further doubt on the “reliability and origin” of the Firestopit PDS.

363    I am not persuaded that the Firestopit PDS is not a genuine document.

364    The comparison that Trafalgar made between the Firestopit PDS and the other Pass-It product data sheets published under FSi’s name, including the product data sheet bearing the same Revision Date and Revision Number as the Firestopit PDS, raises inconsistencies that might be thought to be irregular. I do not accept, however, that these inconsistencies indicate, necessarily, that the Firestopit PDS is not a genuine document that was created by FSi.

365    I have already touched on aspects of Trafalgar’s submissions in this regard when considering a number of the submissions it advanced in response to Boss’s challenge to the validity of the patent for lack of novelty. It is to be remembered that Mr Atkinson’s evidence was that numerous versions of product data sheets for the Pass-It were produced over time, each having slightly different content. He said that these documents (even FSi’s promotional material more generally) were created in “a fairly ad hoc manner”. It did not follow that where multiple versions of a product data sheet were created, a later version necessarily replaced an earlier version, so far as the public availability of the documents was concerned.

366    Importantly, Mr Atkinson made clear that FSi did not follow strict document or version management procedures when creating new versions of documents. He also said that it was common for amendments or corrections to be made to product data sheets, and for the original documents to be overwritten or deleted in the process.

367    Mr Atkinson also emphasised that FSi did not have branding or marketing guidelines regarding the use of the FSi brand, or any written instructions to implement the rebranding from “Firestopit” to “FSi”.

368    I accept this evidence. It suggests that, while it might be argued that the Firestopit PDS contains anomalies, when compared to the other product data sheets in evidence, these anomalies can be explained by poor document creation, and poor document management, procedures.

369    These anomalies are not just present in the Firestopit PDS. Trafalgar drew attention to the fact that the Firestopit PDS has the same Revision Date and Revision Number as the Pass-It product data sheet published under FSi’s name, with which it was specifically compared. But, as I have noted, there are also Pass-It product data sheets that have been published under FSi’s name and Tecnica’s name which bear the same Revision Date (“01/11/2013”) and Revision Number (“01”). Although bearing the same Revision Date and Revision Number, there are differences in the text and layout of the two documents. Trafalgar does not contend that these are not genuine documents.

370    I have previously considered Trafalgar’s submissions that the other product data sheets in evidence do not contain an express description of the Pass-It being available for soffit mounting, and that it was only in its 2018 Handbook that FSi referred, in terms, to the Pass-It being soffit-mounted. I accept that these are relevant matters to consider, but they only form part of the evidence before me. Certainly, they do not stand as a sufficient reason, alone, to conclude that the Firestopit PDS is not a genuine document.

371    As to the typographical errors in the Firestopit PDS, Mr Atkinson rejected the suggestion that FSi would not publish a document with such errors. I accept his evidence. I observe that the Pass-It product data sheet published under Tecnica’s name also has apparent typographical errors, which are also present in the Pass-It product data sheet published under FSi’s name which bears the same Revision Date and Revision Number (although, as I have said, there are also differences in the text and layout of the two documents). I do not regard the presence of typographical errors in the Firestopit PDS as indicating, necessarily, that it is not a genuine document. It merely shows that it was a somewhat carelessly prepared document.

372    I turn now to Trafalgar’s submission that the electronic copy of the Firestopit PDS, which has been discovered by Boss, does not contain metadata that can verify the identity of the author of, or the date of creation of, that electronic copy. Mr Prior explained how this electronic copy was brought into existence.

373    Mr Prior’s evidence was that, when visiting FSi in September 2018, he had a meeting with Mr Atkinson and Mr Peach, who was, at that time, FSi’s Managing Director. Mr Peach showed Mr Prior copies of numerous historical data sheets and instruction sheets for the Pass-It. At Mr Prior’s request, Mr Peach made a copy of the Firestopit PDS.

374    On 26 October 2018, when he was back in Australia, Mr Prior scanned the copy of the Firestopit PDS that Mr Peach had made for him, so as to create an electronic version of the document that he could email to his solicitors. The scanning was done on his home printer. The electronic file was saved on a USB drive that was plugged into the printer. Once the electronic file was saved, Mr Prior removed the USB drive from the printer. He then plugged it into a laptop computer and sent the saved file to his solicitors. His evidence is that he did not make any alterations or modification to this electronic file. Further, no-one else had access to the electronic file between the time he scanned the copy Firestopit PDS and the time he sent the electronic file to his solicitors.

375    I accept this evidence. I note that Mr Atkinson was not cross-examined on Mr Prior’s meeting with Mr Peach, at which Mr Atkinson was also present. I have no reason to doubt the provenance of the document that Mr Prior said he had scanned. It came from FSi.

376    The electronic file was forensically examined by Trafalgar’s expert, Mr McKemmish. Mr McKemmish drew attention to what he considered to be an unexplained absence of metadata associated with the file, which raised questions about its creation. However, in cross-examination, Mr McKemmish accepted that there might be a legitimate reason for the lack of metadata associated with the file. He explained that data might be missing because of the particular version of the firmware in the printer.

377    As to Trafalgar’s submission that Mr Atkinson accepted that the product data sheet for the Pass-It that was published under FSi’s name, and which had the same Revision Date and Revision Number as the Firestopit PDS, was distributed by FSi from about the end of March 2014, I note that Mr Atkinson said that this product data sheet was “a form of brochure” (my emphasis). He did not accept that this was the only form of product data sheet for the Pass-It which FSi used at around that time.

378    Trafalgar’s submission that, in March 2014 (the Revision Date for the Firestopit PDS), the Pass-It was not approved for use in a soffit-mounting application, is based on evidence given by Mr van de Weijgert. Mr van de Weijgert is the Principal Fire Safety Engineer at International Fire Consultants Ltd. He expressed the opinion that the testing covered by the Exova 2014 Report did not mean that the Pass-It could be supplied for mounting to a soffit in the particular way depicted in the 2018 Handbook, so as to be compliant with EN 1366-3:2009 (the EN Standard), referred to in the Firestopit PDS.

379    Apart from Mr van de Weijgert’s evidence, this topic was canvassed in expert evidence given by Mr Harriman and Mr Page. Mr van de Weijgert, Mr Harriman, and Mr Page prepared a Joint Report (Joint Report Part D). Mr Atkinson also gave evidence on this topic. I accept that Mr Atkinson has specialised knowledge and experience in the field of fire testing, with knowledge of, and familiarity with, the standards under which the Pass-It was tested in the Exova 2014 Report.

380    I commence with Mr Atkinson’s evidence on this topic. Mr Atkinson said that Mr van de Weijgert’s opinion was based on an interpretation of the EN Standard that was much narrower than the interpretation that Mr Atkinson holds (and has held), and upon which FSi’s business has been conducted, including in relation to the promotion and supply of Pass-Its. Indeed, Mr Atkinson said that Mr van de Weijgert’s view was inconsistent with the EN Standard. Mr Atkinson considered that the Exova 2014 Report covered the Pass-It when mounted on a soffit because, in the testing covered by the Exova 2014 Report, the Pass-It was tested in a “worst-case location” (the position most likely to result in failure) and mounting the Pass-It on a soffit presented less onerous fire conditions for the device.

381    Mr Page also expressed the opinion that the Exova 2014 Report covered the Pass-It when mounted on a soffit, which he considered would be compliant with the EN Standard. However, his evidence in that regard might have been affected, in part, on a misreading of one section of the Exova 2014 Report.

382    Mr Harriman did not direct his opinion to the EN Standard as such. He did say, however, that the Exova 2014 Report does not contain an “opinion for variations” to the tested configuration (which did not involve the tested product mounted on a soffit). He said that if it was envisaged that the test product would be mounted on a soffit, then, at the very least, an opinion should have been included in the Exova 2014 Report stating that this variation to the fixing method was acceptable.

383    It is not necessary for me to come to a finding as to which of the opposing views is correct—that is to say, on whether the Exova 2014 Report covered the Pass-It when mounted on a soffit such that this particular application would be compliant with the EN Standard. It is to be remembered that this topic was only raised because Trafalgar contended that a lack of approval for the Pass-It to be mounted on a soffit reflected on the “reliability and origin” of the Firestopit PDS. It is sufficient for me to find, as I do, that the opinion advanced by Mr Atkinson is a legitimate view as to the scope of approval that FSi obtained through the Exova 2014 Report, which he reasonably held at the time that the Firestopit PDS was created and made publicly available.

384    Finally, I turn to Trafalgar’s submission that there are a number of other documents adduced by Boss in these proceedings which are clearly not genuine and have plainly been attributed by Mr Prior with an earlier date than the evidence reveals, or have been altered by Mr Prior. This submission was advanced, unreferenced, in Trafalgar’s written submissions. It is a serious, but unsubstantiated, allegation. It is, on the evidence before me, an unwarranted attack on Mr Prior, and I make no such finding.

385    On the whole, the evidence falls well short of establishing that the Firestopit PDS is not a genuine document, particularly in light of the evidence given by Mr Atkinson. In this connection, it is to be recalled that Mr Atkinson advanced the Firestopit PDS as a document emanating from FSi. Importantly, he said that he created it with one of FSi’s salesmen, Mr Shaw. He said that the document was created shortly after the Exova 2014 Report was issued. Mr Atkinson also said that he provided the Firestopit PDS to a number of FSi’s customers (some of whom he identified), including Boss (Mr Prior). He said further that he provided the Firestopit PDS to customers during presentations of the Pass-It to them.

386    The allegation that the Firestopit PDS is not a genuine document is really a challenge to Mr Atkinson’s evidence—namely, that the document had not been created and used as Mr Atkinson had said in his evidence in chief. And yet, Mr Atkinson was not challenged in cross-examination on these matters. The cross-examination went no further than challenging Mr Atkinson with the proposition that the Firestopit PDS was never circulated or distributed by FSi at any time prior to 12 February 2016. Mr Atkinson accepted that he could not give an exact date when the Firestopit PDS was created. He disagreed, however, with the proposition that FSi had not circulated the Firestopit PDS at any time prior to 12 February 2016.

387    I accept Mr Atkinson’s evidence as to the creation of the Firestopit PDS. I am satisfied that it was created at around the time that the Exova 2014 Report was issued and that Mr Atkinson was one of its creators. I am satisfied that the document was used commercially, and made publicly available, by FSi. I am satisfied that such use occurred before the priority date of 12 February 2016.

388    One such use occurred when Mr Prior obtained a copy of the Firestopit PDS before his visit to Mr Ramunddal in September 2015. A copy of the Firestopit PDS is shown in the digital image of the samples of the Pass-It Version 2 that Mr Ramunddal was given at the time of the Seltor meeting.

389    It is to be remembered that Trafalgar’s case is that the Seltor meeting did not occur. One reason it advanced for that contention is that the Firestopit PDS, which is shown in the digital image, is not a genuine document.

390    I have rejected Trafalgar’s case that the Firestopit PDS is not a genuine document and that the Seltor meeting did not occur. And, as I have said, it was never put to Mr Ramunddal that he was not given a copy of that document at the Seltor meeting. The digital image taken by Mr Ramunddal is evidence that the Firestopit PDS was made publicly available before 12 February 2016.

The disclosures in the Firestopit PDS and the presence or lack of innovative steps

391    As I have noted, Trafalgar contended that the Firestopit PDS does not disclose a number of features of the invention as claimed. It contended that Boss has not established that these features, taken individually, do not make a substantial contribution to the working of the invention.