A question of form

On 17 May 2019, the Federal Court of Australia handed down a decision in Gram Engineering v Oxworks[1], finding that Oxworks had manufactured and sold a product that infringed the claims of Gram’s Australian Patent No. 2004291566.

The Patent

The Patent relates to fencing, and more specifically to fence elements – known as plinths – used at the base of a fence construction. During the proceedings, Gram alleged that Oxworks’ product, the “ColourSmart Plinth”, when considered alone and as used in its other product, the “ColourSmart Fence”, infringed the claims of the Patent which required the plinth to be formed from sheet material.

Oxwork refuted this allegation on the basis that since the plinth was manufactured from a material using an extrusion process, at no point during its manufacture was the material in sheet form.

The Product

In October 2016, Oxworks engaged the services of a company in China to manufacture the “ColourSmart Plinth” in accordance with the specifications of a steel plinth that appeared on Gram’s website.As the company was only able to manufacture such products using an extrusion process, Oxworks’ plinth had a much greater wall thickness than the steel plinth listed on Gram’s website.


Gram submitted that Oxworks’ plinth infringed the claims of the Patent because when properly construed, Claim 1 (read as a whole and in the context of the body of the specification) used the phrase “formed from sheet material”, meaning a plinth formed from sheet material that is (i.e., being) profiled.

In particular, Gram submitted that Claim 1 was sufficiently broad to include a plinth that was formed from a sheet material that had a profile in it for the purpose described in the claim, which was to introduce stiffening formations along the length of the sheet.  That is, Claim 1 was not limited to sheet material that was made from a flat piece of material as a starting point. Gram further submitted that Claim 1 would embrace a profiled sheet which was manufactured from a material not only by roll forming, pressing or the like, but also by moulding or extrusion. 

In reply, Oxworks submitted that their plinth did not infringe any claim of the Patent because it was not formed from sheet material. Rather, the plinth was formed in an aluminium extrusion process in which an aluminium billet was forced through a die and extruded in the final form of the plinth, which had a zig-zag cross-section.

Oxworks argued that the term “formed” in the integer “formed from sheet material”, was the past participle of the verb “form”, meaning “to shape”, and “from” was a preposition indicating a starting point. Thus, the phrase “formed from” was argued by Oxworks to mean “shaped from a starting point of” sheet material.  In this respect, Oxworks submitted that Claim 1 was directed to a fence plinth that had been shaped from a flat piece of material, by introducing stiffening formations (and thus a non-flat profile) into the flat material. So construed, Oxworks’ plinth did not infringe Claim 1 because it was not formed from a flat sheet or a profiled sheet. 


Robertson J considered that the ordinary meaning of the word, “sheet” does not necessarily infer that the material is flat, and that as such, it may have corrugations or profiles, as is the case when referring to profiled material in the building industry, such as corrugated sheeting. 

In other words, his Honour took the view that the phrase “sheet material” in Claim 1 does not mean that the material is required to be flat and that “being profiled” is merely a description of the form of the plinth rather than something that is required to be done to a flat sheet to form the plinth.  As such, his Honour determined that the phrase “formed from”, merely describes what the plinth is made out of.

His Honour concluded that even though Oxworks’ plinth was manufactured by an extrusion process, the plinth was relevantly “formed from”, in the sense of “made out of”, sheet material, and thus infringed the claims of the Patent.

This decision highlights the importance of careful drafting of a patent application to ensure that the claims are clearly and unambiguously defined and fully supported within the description by well-defined language for each of the terms used in the claims.

[1] Gram Engineering Pty Ltd v Oxworks Pty Ltd [2019] FCA 689

Jon Wright, Senior Associate

Dr Jon Wright, Former POF Attorney

BSc (1st Class Hons) PhD MIP

Jon brings invaluable international and local IP-related experience to POF. His experience extends to seven years scientific research work in Japan, intellectual property management in the UK, and broad-ranging patent and trade marks attorney experience in both Sydney and Melbourne.