FEDERAL COURT OF AUSTRALIA

Mainmark Corporation Pty Limited v Resinject Pty Limited [2015] FCA 205 

Citation:	Mainmark Corporation Pty Limited v Resinject Pty Limited [2015] FCA 205	
		
Parties:	THE MAINMARK CORPORATION PTY LIMITED (ACN 003 490 880) v RESINJECT PTY LIMITED (ACN 065 106 667) and URETEK WORLDWIDE OY	
		
File number(s):	NSD 1384 of 2014	
		
Judge(s):	YATES J	
		
Date of judgment:	13 March 2015	
		
Catchwords:	PRACTICE AND PROCEDURE – proceeding for patent infringement – application for strike out and summary dismissal – failure to plead material facts – statement of claim struck out – applicant given opportunity to replead 	
		
Legislation:	Federal Court of Australia Act 1976 (Cth) s 31A
Federal Court Rules 2011 (Cth) rr 14.01, 16.02, 16.21, 34.42
Trade Practices Act 1974 (Cth) 	
		
Cases cited:	The Bega Co-operative Society Limited v The Milk Authority of the Australian Capital Territory (unreported, Sup Ct, ACT, Neaves J, 12 May 1992)
Kernel Holdings Pty Ltd v Rothmans of Pall Mall (Australia) Pty Ltd (1991) 217 ALR 171
Multigroup Distribution Services Pty Ltd v TNT Australia Pty Ltd [1996] ATPR 41-522
Upaid Systems Ltd v Telstra Corporation Ltd (2013) 220 FCR 182	
		
Date of hearing:	20 February 2015	
		
Place:	Sydney	
		
Division:	GENERAL DIVISION	
		
Category:	Catchwords	
		
Number of paragraphs:	44	
		
Counsel for the Applicant:	Ms J Baird SC with Dr AL Connolly	
		
Solicitor for the Applicant:	Curwoods Lawyers	
		
Counsel for the First Respondent:	Mr NR Murray	
		
Solicitor for the First Respondent:	Davies Collison Cave Law	
		
Counsel for the Second Respondent:	The second respondent did not appear	

IN THE FEDERAL COURT OF AUSTRALIA		
NEW SOUTH WALES DISTRICT REGISTRY		
GENERAL DIVISION	NSD 1384 of 2014	
 
BETWEEN:	THE MAINMARK CORPORATION PTY LIMITED (ACN 003 490 880)
Applicant
	
AND:	RESINJECT PTY LIMITED (ACN 065 106 667)
First Respondent

URETEK WORLDWIDE OY
Second Respondent

JUDGE:	YATES J	
DATE OF ORDER:	13 MARCH 2015	
WHERE MADE:	SYDNEY	

THE COURT ORDERS THAT:

1.	The statement of claim filed 24 December 2014 be struck out.
2.	On or before 27 March 2015, the applicant serve on the first respondent a draft of any amended statement of claim which it seeks to file.
3.	On or before 3 April 2015, the first respondent raise any objection to the filing of the draft amended statement of claim.
4.	If there is no objection taken by the first respondent to the filing of the draft amended statement of claim, leave be granted to the applicant to file the draft amended statement of claim. 
5.	If objection is taken by the first respondent to the filing of the draft amended statement of claim, leave be granted to the applicant to file and serve an interlocutory application seeking leave to file the draft amended statement of claim. 
6.	The applicant pay the first respondent’s costs of and incidental to the interlocutory application filed 30 January 2015. 

Note:	Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

IN THE FEDERAL COURT OF AUSTRALIA		
NEW SOUTH WALES DISTRICT REGISTRY		
GENERAL DIVISION	NSD 1384 of 2014	
 
BETWEEN:	THE MAINMARK CORPORATION PTY LIMITED (ACN 003 490 880)
Applicant
	
AND:	RESINJECT PTY LIMITED (ACN 065 106 667)
First Respondent

URETEK WORLDWIDE OY
Second Respondent

JUDGE:	YATES J	
DATE:	13 MARCH 2015	
PLACE:	SYDNEY	

REASONS FOR JUDGMENT
1		By interlocutory application filed on 30 January 2015, the first respondent seeks an order, amongst other relief, that the statement of claim filed 24 December 2014 be struck out.
Background
2		The applicant alleges that it is the exclusive licensee of patent no. 731637 for an invention entitled “Method for increasing the bearing capacity of foundation soils for buildings” (the patent).
3		The complete specification for the patent refers to the fact that any building requires the foundation soil to have sufficient bearing capacity to support it.  The absence of this capacity leads to the failure of a building overlying the soil, “regardless of whether the settling occurs in the uppermost or in the deep layers”.
4		The complete specification discusses the causes of this incapacity, as follows:
Often, however, the bearing capacity of the foundation soil is not sufficient, since the soil is compressible, as in the case of filled-in land, non-consolidated land, land with decomposing organic layers, peaty land, swampy land, land with considerable variations in water content, flooded or washed-out land with voids or with non-uniform or insufficiently aggregated masses, land with interstitial voids, et cetera; or the building is very heavy and requires a greater bearing capacity than the actual bearing capacity of the foundation soil.
5		The complete specification describes the following prior art directed to addressing this problem:
Various conventional systems ensure in any case the stability of the building.  Generally, these systems tend to directly transfer the weight of the building to the deeper and adequately solid soil layers or to spread the load over a wide ground surface, such as for example the method consisting in driving piles or micropiles and the like into the foundation soil.  This method can be used both before and after construction.

Of course, the driving of piles and micropiles or the like after the construction of the building is extremely complicated and expensive.

Conventional methods also cope with any subsidence of the building after its construction, such as for example the method described in US patent 4,567,708, which entails the injection of an expandable substance beneath the building to fill the interstices which have been formed and have caused the subsidence and in order to recover the subsidence of the building, or other lifting methods.

In the method disclosed in the above-cited patent, as well as in other lifting systems, however, the foundation soil is not treated;  at the most, one acts on the surface layers of the soil, and therefore if the underlying soil has not settled enough, further subsequent subsidence of said building will occur over time.

A method for ground consolidation using, an expandable substance, in which the expansion of time is controlled to be slow or very slow, is known from the document DE-A-33 32 256.
6		The complete specification discloses the invention by reference to a consistory statement, which is later reflected in claim 1. Claim 1 is: 
A method for increasing the bearing capacity of foundation soils for buildings comprising:  providing a plurality of holes spaced from each other deep in the soil;  injecting into the soil, through said holes, a substance which expands as a consequence of a chemical reaction;  producing compaction of the soil contiguous to the injection zone due to the expansion of said substance injected into the soil, characterized in that it further comprises the step of constantly monitoring the level of the soil and/or building overlying the injection zone to detect the moment when the building and/or the soil surface, overlying said injection zone, begins to raise which is the moment in which the compaction of the soil has reached levels generally higher than the required minimum value and in that the injection zone includes at least the foundation soil under the building and the expansion of the injected substance is very fast with a potential increase in volume of the expanded substance being at least five times the volume of the substance before expansion.

(Emphasis added.)
7		With respect to the increase in volume of the expanded substance, the complete specification says, when describing ways of carrying out the invention, that the expression “potential volume increase” relates to the volume increase of the substance as a consequence of an expansion occurring unhindered at atmospheric pressure. 
8		In this connection, the complete specification also says: 
High expansion coefficients of 20–25 times the initial volume or even higher such as 30–33 may be preferred.

The expandable substance is conveniently constituted by a mixture of expandable polyurethane foam, preferably a closed-cell polyurethane foam.  This substance can be constituted, for example, by a two-part foam mixed inside a mixing unit … connected to the injection tubes … The first component can be a mixture of polyols comprising a polyether polyol and/or a polyester polyol, a catalyst, such as RESINOL AL 643 produced by the Dutch company Resina Chemie, and water.  The water in the composition may be 3.44% by weight.  The second component can be an isocyanate MDI, such as URESTYL 10 manufactured by the same company.  The mixing of these two components produces an exapandable polyurethane foam the density whereof, at the end of expansion, varies according to the resistance opposed by the soil adjacent to the injection region. 

The mixture may expand up to about 33 times its initial volume and the reaction time is of about 3–6 seconds, as it appears from the technical specifications of the manufacturer.

It is of course also possible to use other expandable substances having similar properties without thereby abandoning the scope of the protection of the present invention.
9		Claims 2, 3 and 4 are dependent on claim 1.  
10		Claim 2 is: 
A method according to claim 1, characterized in that the injecting step is repeated at different depth levels for producing compaction of the masses or layers of treated soil.
11		Claim 3 is: 
A method according to claim 2, characterized in that said different depth levels are spaced by approximately 1 m from each other, at each level a greater bearing capacity than the required one being obtainable.
12		Claim 4 is: 
A method according to any one of the preceding claims, characterized in that said monitoring step is performed with a laser level apparatus.
The statement of claim
13		After pleading a number of prefatory averments, the statement of claim identifies the first respondent’s alleged infringing acts as follows: 
7.	Since a date unknown to the applicant, but at least since about March 2011, the first respondent has exploited the invention that is the subject of the claims of the Patent.

Particulars

7.1	The first respondent has used the method claimed in the Patent by increasing the bearing capacity of foundation soils for buildings by consolidating the soil beneath buildings by injecting polyurethane that expands very fast and has a potential increase in volume, unhindered at atmospheric pressure, of at least 5 times its volume before expansion, deep into the soil under or near the buildings through a number of holes and constantly monitoring with a laser level apparatus or otherwise the level of the soil and/or the building overlying the injection zone to detect when the soil and/or building begins to rise (the Infringing Method).

7.2	On various dates since about March 2011 the first respondent has used the Infringing Method at locations including Maitland (at the request of Mr David Johnson), Tamworth and Port Macquarie (at the request of Mr Terry Tatham), East Tamworth (at the request of Mr Wayne Zell) and Arundel, Queensland (at the request of Archer Body Corporate Management).

7.3	The first respondent has since at least mid-July 2011 offered, and continues to offer, to use the Infringing Method through pages of the website maintained or authorised by the respondent located at the URL www.resinject.com.au (the Website).

7.4	The applicant reserves the right to add to these particulars including after discovery and inspection.
14		After pleading, in paragraph 8, that these acts were done without the licence of the applicant or the second respondent (the patentee), the statement of claim alleges: 
9.	By the acts and conduct described in paragraph 7, the first respondent has infringed and continues to infringe at least each of the claims 1, 2, 3 and 4 of the Patent.
15		The statement of claim also pleads, in paragraph 10, that the applicant is, at present, unable to give particulars of the precise number and date of all infringements or threatened infringements.
The draft amended statement of claim
16		After having been notified by the first respondent that it objected to the pleading of these paragraphs in the statement of claim, the applicant provided a draft amended statement of claim, hoping that the first respondent would consent to it being filed.  No consent was forthcoming.  Paragraphs 7 to 11 of the draft amended statement of claim are as follows:
7.	Since a date unknown to the applicant, but at least since about March 2011, the first respondent has, in the course of conducting its business in Australia of supplying services for, inter alia, any of the consolidation of ground, the relevelling of structures, the realigning of structures and the supporting of structures, used a method for increasing the bearing capacity of foundation soils for buildings, which method comprises consolidating the soil beneath buildings by injecting polyurethane that expands very fast and has a potential increase in volume, unhindered at atmospheric pressure, of at least 5 times its volume before expansion, deep into the soil under or near the buildings through a number of holes and constantly monitoring the level of either or both of the soil and the building overlying the injection zone to detect when one or both of the soil and building begin to rise (the Infringing Method).  

8.	On various dates since about March 2011 the first respondent has provided services using the Infringing Method in at least the States of New South Wales and Queensland, including at Maitland, Tamworth, Port Macquarie and East Tamworth in New South Wales and at Arundel in Queensland.

Particulars

8.1	The first respondent has used the Infringing Method in the course of supplying services: 

(a)	at Maitland, which services were supplied at the request of Mr David Johnson;

(b)	at Tamworth and Port Macquarie, which services were supplied at the request of Mr Terry Tatham;

(c)	at East Tamworth, which services were supplied at the request of Mr Wayne Zell;

(d)	at Arundel, which services were supplied at the request of Archer Body Corporate Management. 
	
8.2	The applicant reserves the right to add to these particulars.

9.	Further, when using the Infringing Method, including on one or more of the occasions pleaded in paragraph 8, the first respondent has:

(a)	repeated the injecting step at different depth levels;

(b)	repeated the injecting step at different depth levels spaced approximately 1 metre from each other;

(c)	performed with a laser level apparatus the step of constantly monitoring the level of either or both of the soil and the building overlying the injecting zone.  

10.	Further, the first respondent has since at least mid-July 2011 offered, and continues to offer, to use the Infringing Method through pages of the website maintained or authorised by the first respondent located at the URL www.resinject.com.au (the Website). 

11.	By the conduct pleaded above, the first respondent has exploited the invention that is the subject at least of each of the claims 1, 2, 3 and 4 of the Patent.
The first respondent’s objection
17		In essence, the first respondent submitted that the applicant has failed to plead the material facts of its allegations of infringement, supported by proper particulars.  
18		The first respondent submitted that, in the present case, it is not sufficient for the applicant merely to recite the features of claim 1 of the patent.  It submitted that the applicant must plead the material facts of the first respondent’s conduct by which it is alleged the first respondent has used a process taking each and every one of the essential features of the invention as so claimed.
19		In oral argument, the first respondent focused on the following features of claim 1 in respect of which it submitted that the applicant had failed to plead material facts:
·	“providing a plurality of holes spaced from each other deep in the soil; injecting into the soil, through said holes, a substance which expands as a consequence of a chemical reaction”; and
·	“the expansion of the injected substance is very fast with a potential increase in volume of the expanded substance being at least five times the volume of the substance before expansion.”
20		The first respondent submitted that the amendments proposed in the draft amended statement of claim do not overcome this fundamental problem.  The first respondent saw these proposed amendments as really rising no higher than implementing changes in form rather than addressing the substance of the problem.  Further, the first respondent submitted that paragraph 9 of the draft introduces a further problem, namely that it is unclear as to which of the several pleaded acts were involved on each of the occasions identified in the particulars in paragraph 8.1.
21		The first respondent further submitted that, based on statements made by Mr Snelgrove, the applicant’s solicitor, and Mr Deller, an employee of the applicant, it is clear that the applicant’s allegations of infringement are essentially speculative because the applicant simply does not know whether, for example, the two features identified in [19] above have been used by the first respondent when undertaking its work.
22		In this connection, the applicant sought, as interlocutory relief in its originating application, orders under r 14.01(1) of the Federal Court Rules 2011 (Cth) for:  
·	the observation of the process offered by the first respondent of improving ground bearing capacity by means of the injection of polyurethane into the soil, as stated on its website;  
·	the inspection of the equipment used by the first respondent for that purpose;  and 
·	the taking of samples of the polyurethane used in the process.  
23		It is not necessary for me to set out the substance of that evidence in these reasons.  The thrust of the first respondent’s submissions in this regard was that, if the Court were to be satisfied that the pleading of the statement of claim is defective, and would not be overcome by the proposed amendments in the draft amended statement of claim, it would be pointless allowing the applicant a further opportunity to re-plead.  For these reasons, the first respondent submitted that the applicant’s claim against it should be summarily dismissed under s 31A of the Federal Court of Australia Act 1976 (Cth).  The first respondent also relied on r 16.21.
The applicant’s position
24		The applicant submitted that it has pleaded all the material facts that are necessary to be pleaded, and has provided sufficient particulars of the alleged infringing acts.  The applicant submitted that what the first respondent really seeks is its evidence of the taking of the two features to which I have referred.
25		With respect to the first respondent’s complaints in respect of paragraphs 8 and 9 of the draft amended statement of claim, the applicant submitted that these defects, if they be such, can readily be overcome by revised drafting.
The pleading requirements 
26		Rule 16.02 stipulates the requirements for a pleading.  One of those requirements (r 16.02(1)(d)) is that the pleading “state the material facts on which [the] party relies that are necessary to give the opposing party fair notice of the case to be made against that party at trial, but not the evidence by which the material facts are to be proved”.
27		Rule 16.02(2) provides: 
A pleading must not: 

(a)	contain any scandalous material; or
(b)	contain any frivolous or vexatious material; or
(c)	be evasive or ambiguous; or
(d)	be likely to cause prejudice, embarrassment or delay in the proceeding; or
(e)	fail to disclose a reasonable cause of action or defence or other case appropriate to the nature of the pleading; or
(f)  	otherwise be an abuse of the process of the Court.

28		Further, r 16.21(1) provides: 
A party may apply to the Court for an order that all or part of a pleading be struck out on the ground that the pleading:

(a)	contains scandalous material; or
(b)	contains frivolous or vexatious material; or
(c)	is evasive or ambiguous; or
(d)	is likely to cause prejudice, embarrassment or delay in the proceeding; or
(e)	fails to disclose a reasonable cause of action or defence or other case appropriate to the nature of the pleading; or
(f)	is otherwise an abuse of the process of the Court.

29		In Multigroup Distribution Services Pty Limited v TNT Australia Pty Limited & Ors [1996] ATPR 41-522 at 42, 679 Burchett J quoted, with approval, the following observations made by Neaves J in The Bega Co-operative Society Limited v The Milk Authority of the Australian Capital Territory (unreported, Sup Ct, ACT, Neaves J, 12 May 1992): 
The material facts are all those facts necessary for the purpose of formulating a complete cause of action: Bruce v. Odhams Press Ltd [1936] 1 K.B. 697 at p. 712; Pinson v. Lloyds and National Provincial Foreign Bank Ltd [1941] 2 K.B. 72 at p. 75.  It is not sufficient that the statement of claim simply express a conclusion drawn from facts which are not stated: Trade Practices Commission v. David Jones (Australia) Pty Ltd (1985) 7 F.C.R. 109 at p. 114; though in some circumstances to plead a conclusion may be to plead a material fact: Kernel Holdings Pty Ltd v. Rothmans of Pall Mall (Australia) Pty Ltd (Federal Court of Australia — French J. — 3 September 1991 — unreported).  Not only must all material facts be pleaded but they must be pleaded with a sufficient degree of specificity, having regard to the general subject-matter, to convey to the opposite party the case that party has to meet:  Ratcliffe v. Evans [1892] 2 Q.B. 524 at p. 532; Charlie Carter Pty Ltd v. The Shop, Distributive and Allied Employees' Association of Western Australia (1987) 13 F.C.R. 413 at p. 417.  It must be apparent on the face of the document that the facts pleaded, if proved, would establish the cause of action relied upon: H 1976 Nominees Pty Ltd v. Galli (1979) 40 F.L.R. 242 at p. 246.  It is not a function of particulars to take the place of the necessary averments in the statement of claim:  ibid. at p. 247; Trade Practices Commission v. David Jones (Australia) Pty Ltd (supra) at p. 114.
30		In Kernel Holdings Pty Ltd v Rothmans of Pall Mall (Australia) Pty Ltd (1991) 217 ALR 171 at 173,  French J (when in this Court) said: 
A material fact is one which is necessary to formulate a complete cause of action. It is to be distinguished from particulars which are not part of the pleading. Material facts must be pleaded with the degree of specificity necessary to define the issues and inform the parties in advance of the case they have to meet. There are certain levels of generality in pleading which while they may bring in all facts necessary to establish a cause of action, are insufficient for that purpose: Bruce v Odhams Press Ltd [1936] 1 KB 697 at 705, 712; [1936] 1 All ER 282 at 289, 294; Ratcliffe v Evans [1892] 2 QB 524 at 532; [1891–4] All ER Rep 699 at 704; Farrell (formerly McLaughlin) v Secretary of State for Defence [1980] 1 WLR 172 at 179–80; Charlie Carter Pty Ltd v SDAEA (WA) (1987) 13 FCR 413.
31		In that case, the applicant brought a proceeding against the respondent alleging contraventions of various provisions of the Trade Practices Act 1974 (Cth).  The respondent applied to have the statement of claim struck out for failing to disclose a reasonable cause of action.  In essence, the respondent submitted that the statement of claim pleaded only conclusions and not the material facts on which those conclusions were based.  With respect to the pleading of “conclusions”, his Honour said (at 173-174): 
I do not accept that the pleading of something which can be described as a conclusion cannot also be a pleading of a material fact. The real issue in a case where such an objection is raised is whether the facts are pleaded at too great a level of generality. In my opinion, the level of generality of the statement of claim in this case is too great for Rothmans to know with any precision what case it has to meet. The facts relied upon to support the conclusion about Rothmans’ alleged purpose in refusing supply should be spelt out. So too should the facts relied upon to support the conclusion that the refusal has or is likely to have the effect of substantially lessening competition in the relevant market. The allegation is made in para 10 that the refusal to supply substantially damages Kernel’s ability to compete in the wholesale and retail markets for the supply of cigarettes in Western Australia. It does not follow from that however, that there would or is likely to be a substantial lessening of competition in that market. The mechanism of the lessening is not identified in the statement of claim. Further, the market in which the lessening of competition is to be measured must be a market in which Rothmans and/or Kernel supplies or acquires goods and must [be] defined with some precision. It is not clear whether Rothmans and Kernel are said to be operating in the same or different functional markets.

I accept that the plea based on the contravention of s 46 should plead the material facts necessary to support the allegations that Rothmans has a substantial degree of power in a relevant market and that it has taken advantage of that power for a particular purpose. The incantation of the components of s 46 is not sufficient to disclose the material facts on which Kernel relies to establish those elements.
32		In the result, his Honour struck out the statement of claim for failure to plead the material facts on which the applicant relied.  
33		Rule 34.42(3) relevantly provides that, in a proceeding for infringement of a standard patent, the statement of claim must include particulars of the alleged infringements that specify which of the claims of the complete specification are alleged to be infringed and give “at least one instance of each type of infringement alleged.”  I have recently discussed the requirements of that rule:  Upaid Systems Ltd v Telstra Corporation Ltd (2013) 220 FCR 182 at [26]-[43].  It is not necessary to repeat or summarise that discussion here, except to note that the function of particulars is not merely to prevent surprise at trial, but also to define the scope of the proceeding for the purpose of taking interlocutory steps and also to condition the form of final relief that is appropriate, should infringement be found:  see at [27].
Consideration
34		In my view, the statement of claim does not sufficiently plead the material facts necessary to support the allegation that the first respondent’s conduct infringes claims 1, 2, 3 and 4 of the patent.  I accept the first respondent’s submission that, in the circumstances of this case, it is not enough to identify the accused process by simply reciting, in a slightly modified form, the language of claim 1.  The applicant must go further and identify the material facts by which it alleges that the features of the claim or claims have been taken. 
35		Thus, with respect to the first feature identified by the first respondent, it is not enough for the applicant to merely plead that the first respondent has injected polyurethane “deep into the soil under or near the buildings”.  
36		Although claim 1 of the patent refers to a method in which a substance is injected through holes spaced from each other “deep in the soil”, the nature of that essential requirement must be seen in the context of the complete specification as a whole.  In the passage I have quoted at [5] above, the invention is sought to be distinguished from other methods in which an expandable substance is injected beneath the building to fill the interstices which have formed and have caused the subsidence.  These methods are distinguished as only acting on the surface layers of the soil, such that the foundation soil is not treated.
37		As presently advised, it seems to me that the requirement that the spaced holes be “deep in the soil” must be one that involves some relativities.  The applicant’s pleading, with respect to the first respondent’s conduct, provides no stated measure by which it can be gauged whether, at the sites particularised, the holes were “deep in the soil”.  That said, Mr Snelgrove’s evidence provides details, at least from one apparently independent observer, of the depths of holes used in the first respondent’s method.  If this is what the applicant intends to convey by alleging that the first respondent has injected polyurethane “deep into the soil”, then it should say so.  Whether this satisfies the requirements of claim 1 will be a matter to be determined at trial.
38		With respect to the second integer identified by the first respondent (namely, the requirement that the potential increase in volume of the “expanded substance” be “at least five times the volume of the substance before expansion”), the applicant must, similarly, identify the objective measure by which it says that the first respondent’s method takes this feature.  It is not enough simply to recite the feature itself as having been taken.  In the course of the hearing, I was not taken to any specific evidence dealing with the first respondent’s alleged practice or practices in that regard.  There may be, however, objective circumstances to which the applicant can point, from which it can be said that this feature has been taken.  The applicant must plead the circumstances on which it relies.  It has not done so in the statement of claim.  
39		The defects to which I have referred are not addressed by the amendments proposed in the draft amended statement of claim.
40		I conclude, therefore, that the statement of claim does not plead the material facts on which the applicant relies and should, for that reason, be struck out.  I do not think, however, that I should accede to the first respondent’s further application that the proceeding be summarily dismissed.  Certainly, so far as the depth of the holes is concerned, I am satisfied that there is material available to the applicant from which it can plead relevant material facts.  The position is somewhat different with respect to the volume of increase of the polyurethane said to be used as the “expanded substance”.  However, I am not persuaded that it is futile to allow the first respondent an opportunity to remedy its pleading.  
41		I should make some further observations in relation to the draft amended statement of claim.  In my view, paragraph 9 is unclear.  It purports to introduce the additional features of each of dependent claims 2, 3 and 4 of the patent.   These are separate claims and give rise to separate infringements.  It is one thing to allege that, on each occasion the first respondent’s method has employed each of the features of those claims, thereby resulting in an infringement, on each occasion, of claims 1, 2, 3 and 4.  However, as presently drafted, paragraph 9 refers to each of those additional features having been taken “on one or more” of the occasions particularised.  If the applicant wishes to allege infringements of claims 2, 3 and 4 as well as of claim 1, it needs to make clear the occasion or occasions on which it alleges that each infringement took place.  
42		There is a further difficulty in that paragraph 9 of the statement of claim and paragraph 11 of the draft amended statement of claim, each allege that the first respondent’s conduct has infringed “at least” claims 1, 2, 3 and 4.  So pleaded, the statement of claim, and the draft amended statement of claim, leave open the possibility of other claims having been infringed.  The first respondent is not told the case it has to meet.  The applicant must identify the claims it alleges have been infringed and provide, in accordance with r 34.42(3), at least one instance of each type of infringement alleged.  Both the statement of claim, and the draft amended statement of claim, fail to comply with this rule. 
Disposition
43		The statement of claim should be struck out.  However, an opportunity should be given to the applicant to bring in an amended statement of claim which overcomes the defects to which I have referred.  I will allow the applicant 14 days to do so.  The first respondent should be given an opportunity to consider the draft then proposed.  If there is no objection to the filing of an amended statement of claim in the form of the draft within seven days after the draft has been served, leave will be granted to the applicant to file an amended statement of claim in that form.  If there is an objection within that time, then within ten days after the draft has been served, the applicant is to file an interlocutory application seeking leave to file an amended statement of claim in that form.
44		Costs should follow the event.  The applicant should pay the first respondent’s costs of and incidental to the interlocutory application filed on 30 January 2015.  
I certify that the preceding forty-four (44) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Yates.	

Associate:

Dated:	13 February 2015