Federal Court decides second round of fencing (patent) duel

By Oliver Lloyd
Intellectual Property Patents & Trade Marks

In brief 3 min read

A patent dispute concerning a patent for a 'fence plinth' highlights some of the key elements of any patent dispute: What does the patent claim? Was it infringed? What should the damages be?

Key takeaways

  • The meaning of ordinary terms in the patent must be understood in the context of the whole patent specification.
  • Where there is an allegation of patent infringement, a reasonably defensible explanation of the allegedly infringing conduct may reduce the risk of additional damages being ordered, even where a court ultimately finds the conduct to be infringing..

The invention in dispute

The patent in this case was owned by Gram Engineering Pty Ltd and was entitled 'Fence Plinth'. A fence plinth is an element of a fence that is used at the base of a fence construction to cover the space between the fence palings and the ground (see 28 of Fig 1).


In 2015, Oxworks Trading Pty Ltd engaged a third party manufacturer to supply it with an aluminium plinth by reference to Gram's steel plinth.

After Gram became aware of this, it sued Oxworks and the third party manufacturer for infringement of various claims of its patent, and sought additional damages on the grounds that Oxworks' infringement had been flagrant.

The Federal Court at first instance (Gram Engineering Pty Ltd v Oxworks Pty Ltd [2019] FCA 689) and then the Full Court on appeal (Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd [2019] FCAFC 240) held that there was infringement of Gram's patent. Additional damages were ultimately not ordered.

What did the patent claim?

The dispute between the parties centred on the interpretation of the first claim of the patent:

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

Oxworks argued that 'formed from sheet material' was a method claim for 'substantially flat' sheet material being 'formed' and 'profiled' into the zig-zag shaped plinth below.


The court rejected Oxworks' interpretation, holding that the use of the term 'sheet' throughout the patent and the nature of the invention supported an interpretation of 'sheet' that included material already 'profiled' (eg as 'corrugated sheets' are).

Was that claim infringed?

The Full Court upheld the decision that the Oxworks plinth infringed the Gram patent, as, despite Oxworks' plinth being manufactured by an extrusion process, the plinth was still held to be 'formed from sheet material'.

Should additional damages be awarded?

Ordinary relief in patent disputes takes the form of damages for the patentee's loss or an injunction.

However, a court may grant an amount for additional damages where justified by the 'flagrancy of the infringement'.

The Full Court held that additional damages would not be awarded. Although the product was modelled on the patented product and Oxworks did not cease selling the product when asked, the court held that, as Oxworks had a reasonably arguable defence to the allegation of infringement, its conduct was not so flagrant as to trigger an order for additional damages.