VIP Plastic Packaging wins patent infringement case against BMW Plastics
VIP Plastic Packaging Pty Ltd v B.M.W. Plastics Pty Ltd  FCA 660
On 10 June 2011, Federal Court determined that B.M.W. Plastics Pty Ltd (“BMW Plastics”) infringed the principal claim of VIP Plastic Packaging Pty Ltd’s (“VIP”) Patent for a “variable dip length tube for a fluid transfer container”. Davies Collison Cave Law acted for VIP in the proceeding.
This was the second and most important victory for VIP in its hard fought proceeding against BMW Plastics. In June 2009, Justice Kenny ruled in favour of VIP in its opposition to an application made by BMW Plastics seeking an order under section 97 (3) of the Patents Act 1990 (Cth) that the Commissioner of Patents be directed to re-examine the specification of VIP’s patent. We reported on that decision in our IP Update of September 2009.
The VIP Patent
VIP is the owner of an Australian Patent No. 2001235262 entitled “variable-length dip tube for a fluid transfer container” (“the Patent”), which was designed to overcome structural weaknesses of other conventional variable length plastic dip tubes. Specifically, the compressible and extensible sections of other dip tubes had the tendency to break under chemical and physical stresses, thereby blocking the efficient transfer of liquids. The invention overcomes these deficiencies through the implementation of a plastic tube system which consists of two component parts:
- A relatively rigid inner tube of pre-determined length designed to inhibit the bending of the outer tube referred to below (“the inner tube”). The inner tube is designed to be connected to a valve or pump at the opening of a liquid container (e.g. industrial chemical drums); and
- An outer, shorter, flexible tube which has an easily compressible and extensible bellows structure, and an opening designed to maximise the extraction of liquid from the bottom of a liquid container drum (“the outer tube”). The outer tube fits over the inner tube like a sleeve.
VIP alleged that its competitor, BMW Plastics, had infringed claims 1, 2, 5, 6, 7, 9 and 10 of the Patent by manufacturing and selling dip tubes to its customers. BMW Plastics denied infringement, and, in response, cross claimed for revocation of the Patent on the basis that the Patent:
- was not novel;
- lacked an inventive step;
- was not a manner of new manufacture; and
- did not clearly define the invention.
Central to the outcome of the dispute was the Court’s treatment of the “expert” evidence tendered by each party.
Expert evidence in Patent cases
Australian patent law requires Courts to consider and assess the validity and infringement of patents with close reference to the knowledge, understanding, and inventive approach of the Patent’s addressees, namely, non-inventive persons skilled in the art or field of the invention in suit.
However, in order for the opinions of such persons to be admissible, the opinion must be:
- relevant1, and;
- prepared and tendered by an “expert”, that is, a person who has “specialised knowledge based on the person’s training, study or experience.”2
VIP’s expert evidence
VIP relied upon the evidence of the inventor of the Patent, Mr Mandile, and Mr McFadyen, a member of VIP’s design team who assisted Mr Mandile in the development of VIP’s invention.
Whilst noting that persons involved in the development of an invention in suit must be treated with caution3, Justice Kenny proceeded to accept VIP’s expert evidence on the basis that VIP’s experts could be properly described as persons skilled in the relevant art of manufacturing and using dip tubes, particularly in chemical transfer drums used in the agricultural and veterinary industries. In fact, Justice Kenny acknowledged that VIP’s experts were the “only two witnesses at trial who worked in the art or science with which the invention as claimed in the Patent was concerned.”4
BMW Plastics’ expert evidence
BMW Plastics relied solely upon the evidence of Professor Field, who was a mechanical engineer who had, amongst other things, published books and papers on engineering design and innovation theory.
Flowing from the Court’s characterisation of the relevant “art” (see above), Justice Kenny rejected Professor Field’s opinion on the meaning of the Patent and the relevant prior art, and his opinions in relation to the issues of novelty and inventive step, explaining at  to :
“Professor Field is not in the class of skilled addressees. Indeed, in cross-examination, Professor Field readily conceded that he was not in the class of people that he himself had described as skilled in the art of dip tubes, and that Mr McFadyen and Mr Mandile were in this class. Professor Field simply did not fall within the class of people who could be regarded as “a skilled addressee and in a position to give expert evidence of assistance to the Court, or a person whose evidence, together with other evidence, creates the construct of the skilled addressee”: see Fina Research SA v Halliburton Energy Services Inc  FCA 55 (“Fina”) at  (Moore J)…
…There was, however, a serious difficulty with Professor Field’s evidence in another respect: it was not just that he was not a skilled addressee but that he had no history of working in the fields of dip tubes or plastics, or some related field. Without this specialised knowledge, based on training, study or experience, Professor Field was not in a position to give relevant evidence to the court bearing on the meaning of the VIP Patent or a prior publication, the issue of novelty and the issue of obviousness.”
Justice Kenny also criticised Professor Field’s evidence in a number of other respects:
- His evidence in relation to the general “industrial innovation process” was not relevant, as it was not directed to such processes within the dip-tube field;5
- His evidence demonstrated a misunderstanding of relevant legal principles;
- His evidence in relation to inventive step was impermissibly tainted by hindsight, as Professor Field received a sample of the allegedly infringing product which at least had a “close…arrangement to the VIP Dip Tube” prior to preparing his evidence in relation to inventive step; and
- Professor Field improperly relied upon irrelevant notions of “common sense” to support his conclusions.
These admissibility findings largely defined and influenced Justice Kenny’s approach to the substantive issues in dispute (discussed immediately below), and were arguably determinative of the outcome in the case.
Relying principally upon the evidence of Mr McFadyen, Justice Kenny found that BMW Plastics’ dip tube product infringed claim 1 and the other subsidiary claims of the Patent. Specifically, Justice Kenny rejected BMW Plastics’ contentions that:
- Its product did not have an outer tube with a lower end portion as required by the Patent: Justice Kenny held that the BMW Plastics product had a section of outer tube after the bellows which vertically separated the bottom of the inner tube’s bellows and the bottom of the drum into which the dip tube is inserted; and
- The lower portion and bellows of BMW Plastics’ outer tube were not in a “loose clearance fit” with the inner tube, as required by the Patent: Justice Kenny rejected that the fit or distance between the bellows and lower portion of the outer tube and the inner tube had to be the same. All that was required was the effective loose but close relationship of the bellows of the outer tube and the inner tube. On Justice Kenny’s analysis, this feature was clearly present in BMW Plastics’ product.
The validity of the Patent
As outlined above, in response to VIP’s allegations of Patent infringement, BMW Plastics sought to revoke the Patent on a number of grounds. Relying once again on Mr McFadyen’s evidence, Justice Kenny dismissed BMW Plastics’ cross claim, and confirmed the validity of the Patent.
BMW Plastics argued that the invention claimed in the Patent lacked novelty in light of the prior publication of a US Patent which related to drinking water dispensers for bottled water (“the Hancock Patent”). Justice Kenny rejected BMW Plastics’ contentions, finding that the Hancock Patent did not anticipate the VIP Patent’s claims as:
- The relevant tube of the Hancock Patent consisted of three component parts (as opposed to the two component tubes of the invention as claimed in the VIP Patent);
- The arrangement of the tubes in the invention as described in Hancock Patent was different to the arrangement described in the VIP Patent; and
- The tube described in the Hancock Patent was specifically designed to operate in a vacuum or suction system.
Lack of Inventive Step
Having regard to the rejection of BMW Plastics’ evidence (outlined above), Justice Kenny determined that BMW Plastics failed to establish that the invention claimed in the Patent was obvious:
[BMW Plastics] “failed to adduce any evidence that the hypothetical skilled addressee faced with the problem of buckling (which the VIP Patent identifies as the problem addressed) would have taken as a matter of routine whatever steps might have led from the prior art to the invention as claimed in any of the claims of the VIP Patent.”6
Justice Kenny also noted that there was no evidence that the Hancock Patent formed part of the prior art base for the purposes of the assessment of inventive step. In this respect, Justice Kenny appeared to accept the evidence of Mr. Simon Ware (a Patent attorney at Davies Collison Cave) to the effect that a search for prior art publications relevant to the subject matter of the Patent would not have located the Hancock Patent.
Other grounds of invalidity
Justice Kenny also rejected the other grounds of invalidity advanced by BMW Plastics at trial, finding that the Patent specification disclosed a “new manner of manufacture”, and clearly defined the invention in a manner that enabled a skilled addressee to perform the invention.
Justice Kenny’s decision highlights the importance of identifying and selecting appropriate expert witnesses in contentious patent matters. Expert opinion is fundamental to the Court’s assessment of patent infringement and validity, and undoubtedly has the potential to be determinative of the outcome of patent disputes. Accordingly, in general, expert evidence in patent matters should be prepared and tendered by persons with relevant qualifications and experience in the field of the invention in suit. Non-inventive persons skilled in the relevant art can provide the best evidence in this regard. It may also be appropriate to seek evidence from those involved in the development of the invention itself, despite the potential for such persons to be criticised as being improperly “inventive” and partial.
- Evidence Act 1995 (Cth), s. 56
- Evidence Act 1995 (Cth), s. 79 (1).
- Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd  HCA 12
- VIP v BMW Plastics at 
- VIP v BMW Plastics at 
- VIP v BMW Plastics at