Ding ding ding…is the fight over for BMW Plastics?

In what is seeming like the never ending fight over a dip tube patent, the Federal Court has handed another win to VIP Plastic Packaging in its long running dispute with BMW Plastics regarding a patent for a “variable-length dip tube for a fluid transfer container”.  One wonders if this latest ruling is the knock-out that VIP Plastic Packaging needed to end the fight once and for all. 
 
The fight commenced in 2008, with VIP Plastic Packaging bringing an action for patent infringement against BMW Plastics; in response, BMW Plastics counter-claimed for patent invalidity.
 
Round ONE…
Round ONE of this fight involved BMW Plastics bringing an application to the Court to obtain a court ordered re-examination of the patent by the Commissioner of Patents for want of novelty and inventiveness.  BMW Plastics argued that such a re-examination would be a cheaper alternative to initiating Court proceedings and would enable use of the significant technical expertise within the Patent Office compared to that available in the Federal Court.  In June 2009, Kenny J refused the application on the basis that a re-examination was not conclusive and would not obviate the requirement for expert evidence on novelty and inventiveness.
 
Round TWO…
Having lost round ONE, the substantive proceedings continued against BMW Plastics for infringing the patent by manufacturing and supplying infringing dip tubes.  BMW Plastic’s counter-claim for invalidity was based on lack of novelty, inventive step, manner of manufacture and that the claims were not clear and succinct.  After consideration of the evidence and the decided law, Kenny J found that the patent was valid and that there was clear evidence of infringement by BMW Plastics.
 
In making this decision, the Court found that BMW Plastic’s expert lacked the relevant qualifications to be an expert in the proceedings and had no experience within the relevant field of technology.  The Court held that BMW Plastic’s expert could not give evidence of the state of the common general knowledge of a skilled addressee at the priority date.  As such the evidence of BMW Plastic’s expert was either inadmissible as it was opinion evidence provided by a non-expert or was to be given little weight.  This provides a timely reminder about choosing experts carefully – it must be clear that the expert has the relevant qualifications and experience to assist the Court.
 
Round THREE…
One wonders if BMW Plastics will take this fight onto round THREE…