High pressure fluid injection (HPFI) injuries occur when fluid escapes as a thin jet from machinery. The velocity of that jet is often high enough to result in the jet piercing human skin and injecting itself into a person’s body.
In Quaker Chemical (Australasia) Pty Ltd v Fuchs Lubricants (Australasia) Pty Ltd (No 2) [2020] FCA 306, Quaker sued Fuchs Lubricants (Australasia) Pty Ltd (Fuchs), alleging infringement of its patents.
Claim 1 of the ‘245 patent is worth reciting:
A method for detecting fluid injection in a patient, the method including the steps of:
providing a fluid storage tank;
providing fluid for use in machinery and adding said fluid to the fluid storage tank;
providing a fluorescent dye and adding the fluorescent dye to the fluid such that the fluid fluoresces in the presence of ultraviolet light; and
a possible fluid injection occurring in a patient.
This article focuses on what constitutes infringement by supply or offering to supply. The relevant legislation is section 117 of the Patents Act 1990, which sets out:
117 Infringement by supply of products
(1) If the use of a product by a person would infringe a patent, the supply of that product by one person to another is an infringement of the patent by the supplier unless the supplier is the patentee or licensee of the patent.
(2) A reference in subsection (1) to the use of a product by a person is a reference to:
(a) …; or
(b) if the product is not a staple commercial product—any use of the product, if the supplier had reason to believe that the person would put it to that use; or
(c) in any case—the use of the product in accordance with any instructions for the use of the product, or any inducement to use the product, given to the person by the supplier or contained in an advertisement published by or with the authority of the supplier.
The term “supply” is defined in Sch 1, the Dictionary, as follows:
supply includes:
(a) supply by way of sale, exchange, lease, hire or hire purchase; and
(b) offer to supply (including supply by way of sale, exchange, lease, hire or hire purchase).
Quaker submitted that Fuchs infringed the Patents by supplying products containing fluorescent dye, where those products, and the dye, had not been acquired by the patentee. Quaker alleged that Fuchs:
- Had reason to believe that the products it sold would be used by its customers in the method claimed in the patents, and/or
- induced, authorised or procured its customers to use those products in the method claimed in the patents.
It is relevant to understand that Fuchs did supply hydraulic fluid containing a dye for the purposes of detecting leaks in hydraulic equipment. Such supply would not have been infringement, resulting in an additional layer of complexity in the matter. Indeed, this was likely the reasoning behind the recitation of a large amount of affidavit material by the Court.
The s117(2)(b) case
In each case of supply, the first issue was whether the product was a “staple commercial product”. If not, the second issue was whether Fuchs would have had reason to believe that the actual method and the valid claims of the patent would be used by the operator at the relevant mine site. This was not a general question of whether the operator was interested in HPFI detection. The question is whether Fuchs had reason to believe that the operator would actually use the method of the patent.
The Court held that it is the product as supplied that needs to be considered rather than the components of the product. It was found that Fuchs supplied “special-purpose hydraulic fluid products designed for particular uses in hydraulic machinery, which products included fluorescein.” Fuchs had submitted that the hydraulic fluids acted merely as “carriers” for the fluorescein, and that there remained a separate supply of the fluorescein contained in the hydraulic fluids. The court rejected this submission saying that this was an artificial approach to characterising the supply. The hydraulic fluid products were not staple commercial products within s117(2)(b). According to the Court, “the phrase “staple commercial product” refers to a product, such as a product in the nature of raw materials, which is commonly available and has a multitude of different uses (Sanofi-Aventis Australia Pty Ltd v Apotex Pty Ltd (No 3) [2011] FCA 846; 196 FCR 1 at [267]-[271]).
The evidence of one Mr Roberts was that the products were “specially formulated products having regard to matters such as the requirements of the particular OEM or particular standards that were introduced and they were special purpose products in that they were formulated having regard to a particular purpose.” The Court noted and accepted this evidence.
Fuchs contended that there was a clear difference between low concentration products for leak detection and high concentration products suitable for HPFI detection. The Court set out that the most direct way of addressing the issue would be to examine whether the operator of the mine sites in question said that HPFI detection was the purpose for which it wanted to buy the product.
In several instances raised by Quaker, the Court did find that Fuchs was conscious of the possibility of infringing the patents by supply and took steps to communicate to the operators that the product in question was not to be used for HPFI detection. But an inference that Fuchs proceeded on the basis that the product having a concentration of fluorescent dye suitable for leak detection could be used for HPFI detection was not drawn.
One occurrence of supply complained of by Quaker was that to Broadmeadow mine. Evidence supported the supply by Fuchs of a high concentration product to match Quaker’s product referred to as “Fluidsafe”. The Court found that Fuchs believed that the operator would have used the claimed method if a suspected HPFI injury did occur. In this case, the products were supplied as suitable for “HPFI detection”.
Fuchs submitted that because HPFI injuries were especially rare, there was no real or likely prospect that the patented method would be performed and that, therefore, Fuchs did not have reason to believe that the operator would put the product to an infringing use. The Court construed s117(2)(b) as applying where an alleged infringer has reason to believe that, if the occasion for a product to be put to a particular use arose, the product would be put to that use. There is no reason to go further and require that the alleged infringer also have reason to believe that the occasion would in fact arise.
The s117(2)(c) case
Quaker advanced three propositions:
- Fuchs compared qualities of its product to that of Quaker (Fluidsafe) in its presentation and discussions with Broadmeadow.
- Fuchs knew that Broadmeadow wanted to use a dye to aid HPFI detection. An inference should be drawn that the customer was given instructions or inducements at that time.
- In adopting this approach, Fuchs wanted to undercut the cost of what it would supply by using a dye other than Fluidsafe.
The court concluded that this aspect of Quaker’s case succeeded. The court applied the orbiter observations of the plurality in AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99 at [425]-[427] where, at [427], their Honours held “the Watson product information document provided a clear inducement to consumers of its 20 mg dosage product to engage in tablet splitting.” The court inferred that the cheaper pricing of the Fuchs product compared to fluid safe constituted an inducement to use the product.