Justice Burley of the Federal Court of Australia has ruled in favour of Safe Direction with respect to what Safe Direction considers was a misconceived litigation brought against it and its Managing Director Hayden Wallace by Ingal Civil Products (Ingal) a Valmont Company.
Justice Burley ruled:
- In favour of Safe Direction with respect to a patent infringement claim asserted by Ingal relating to Safe Direction’s manufacture, promotion and sale of its RamShield guardrail product
- In favour of Safe Direction and Wallace against Ingal’s attempt to seek damages for infringement pursuant to s 122(1A) of the Patents Act based on Ingal’s allegation that Safe Direction and Wallace engaged in flagrantly infringing conduct
- In favour of Safe Direction against Ingal’s contention that Safe Direction by offering for sale and promoting its RamShield Product, Safe Direction is engaging in conduct which is likely to be, misleading or deceptive in contravention of Australian Consumer Law
- In favour of Wallace with respect to Ingal’s contention that Wallace is a joint tortfeasor with Safe Direction or a person who has authorised Safe Direction to infringe Ingal’s patent
Ingal were seeking amongst other things: permanent injunctions which would have resulted in the withdrawal from manufacture and sale of the RamShield product; the withdrawal of the RamShield product from regulatory directories; damages; as well as punitive damages relating to Safe Direction’s and Wallace’s conduct together with the costs of the litigation. Moreover, Ingal were seeking to make Wallace jointly liable with Safe Direction. The ruling of the Federal Court means Ingal failed in obtaining any of the remedies sought against Safe Direction.
Justice Burley found that Ingal’s patent for a post for a guardrail system designed to work better during a collision lacked novelty in light of Safe Direction’s patent for its RamShield product and that Safe Direction’s patent was entitled to a priority date.
Ingal had originally filed a patent application in December 2008 but made amendments to the claims of that application over 7 years later in May 2015 and claimed priority for the changed claims effective from the 2008 application. The 2015 amendments made by Ingal were after Safe Direction’s RamShield patent had been published, after Safe Direction had promulgated marketing materials and product manuals and after Safe Direction had sold its RamShield product. Safe Direction’s Managing Director, Hayden Wallace, said that it would be difficult to conclude other than that Ingal purposefully made the May 2015 amendments and drafted them in such way (after Ingal had full visibility of the commercialised RamShield product), to bring about infringement by the RamShield product – something that was not denied by Ingal during the court hearing. The absurdity of Ingal’s act was that the changes to the claims made in 2015 to the 2008 patent application were not based on any matter in substance disclosed in the 2008 application i.e. Ingal prima facie had no entitlement to the changed claims, Wallace said.
Wallace a former MD of Ingal, (is the inventor of both the Ingal 2008 patent application and the Safe Direction RamShield product), said that Safe Direction has never been anything other than resolute in defending itself against what it considers to be an utterly misconceived, licentious, cynical and contrived act by a recalcitrant company in what he believes was an attempt to leverage the balance sheet of its US domiciled multinational parent company, Valmont Industries, against a small Australian business.
Wallace said he believes that the costs to the parties is likely to be in the order of $2m, something that Ingal who have been vocal in bragging about their deep pockets can now, under the orders of the court, put to use and account for.
