BLH Engineering and Construction Pty Ltd v Pro 3 Products Pty Ltd  FCA 83314 (August 2015)
Patents – innovation patent – unjustified threats
The owner of an innovation patent (Pro 3) for an invention relating to a system and components for safely enclosing handrails, stairways, walkways and platforms slipped up when it threatened patent infringement proceedings against the applicant parties (BLH).
Pro 3’s invention, in effect, relates to a means by which panels can be affixed to industrial frameworks constructed of piping (like scaffolding walkways) to fill in the gaps between the pipes. Pro 3 successfully fended off BLH’s novelty-focused attacks on the validity of the patent, but was unable to satisfy Justice Jessup that BLH’s products (for which BLH was in the process of seeking its own innovation patent) in fact infringed its patent.
It followed that threats by Pro 3 to commence infringement proceedings contained in pre-action letters from Pro 3’s solicitors (including without prejudice correspondence) fell within section 128 of the Patents Act 1990. In contrast, separate letters to BLH’s major customer, BHP, did not constitute an unjustifiable threat as they did not contain a “threat” in the requisite sense; rather, that correspondence merely pointed to the existence of Pro 3’s patent, and thus fell through the gaps.