Bitech Engineering v Garth Living Pty Ltd

Case [2010] FCAFC 75

FEDERAL COURT OF AUSTRALIA

Bitech Engineering v Garth Living Pty Ltd [2010] FCAFC 75

Citation: Bitech Engineering v Garth Living Pty Ltd [2010] FCAFC 75
Appeal from: Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393
Parties:

BITECH ENGINEERING v GARTH LIVING PTY LTD (ACN 111 145 432) and COHEN NOMINEES PTY LTD (ACN 008 526 114)

BITECH ENGINEERING v BUNNINGS GROUP LTD (ACN 008 672 179)

BITECH ENGINEERING v FLAMEGLOW PTY LTD (ACN 117 672 518) (IN LIQUIDATION)

BITECH ENGINEERING v HOTPOINT (AUST) PTY LTD (ACN 082 599 086)
File numbers:

NSD 1434 of 2009
NSD 1435 of 2009
NSD 103 of 2010
NSD 1433 of 2009
Judges: SUNDBERG, BENNETT AND YATES JJ
Date of judgment: 23 June 2010
Catchwords:

PATENTS – patent for apparatus for simulating flames – infringement – additional integer present in the heaters –whether respondents’ heaters contained all the essential integers of the claim

PATENTS – validity – whether the claims are fairly based on the specification – consistory clause in specification describes invention in same terms as the claim – whether specification discloses an invention narrower than the consistory clause – preferred embodiments do not limit the invention

Words and phrases: “simulated flame effect means for reflecting said light to simulate flames”
Legislation: Patents Act1990 (Cth) s 40(3)
Cases cited: Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393 reversed
Fresenius Medical Care Australia Pty Ltd v Gambro Pty Ltd (2005) 224 ALR 168, (2005) 67 IPR 230 considered
Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155; (2005) 65 IPR 86 cited
Kirin-Amgen Inc v Hoechst Marion Roussel (2004) 64 IPR 444 considered
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274 applied
Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 considered
Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 applied
Sachtler GMBH & Co KG v RE Miller Pty Ltd (2005) 221 ALR 373; 65 IPR 605 considered
Date of hearing: 26 May 2010
Place: Sydney
Division: GENERAL DIVISION
Category: Catchwords
Number of paragraphs: 49
Counsel for the Appellant in all matters: Mr D K Catterns QC, Mr C Dimitriadis, Mr P A Maddigan
Solicitor for the Appellant in all matters: DLA Phillips Fox
Counsel for the First and Second Respondents in NSD 1434 of 2009: Ms J Rawlings
Solicitor for the First and Second Respondents in NSD 1434 of 2009: Eales & Mackenzie
Counsel for the Respondent in NSD 1435 of 2009: Ms J Rawlings
Solicitor for the Respondent in NSD 1435 of 2009: Eales & Mackenzie
Counsel for the Respondent in NSD 103 of 2010: Mr M R Hall
Solicitor for the Respondent in NSD 103 of 2010: Donaldson Walsh Lawyers
Solicitor for the Respondent in NSD 1433 of 2010: Rutland’s Law Firm

IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 1434 of 2009
ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA
BETWEEN:

BITECH ENGINEERING
Appellant

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AGLC
Bitech Engineering v Garth Living Pty Ltd [2010] FCAFC 75
Case
[2010] FCAFC 75
Decision Date

CaseChat Overview and Summary

The case of Bitech Engineering v Garth Living Pty Ltd involved claims by Bitech Engineering for patent infringement against Garth Living. Bitech alleged that Garth Living had manufactured and sold heaters that infringed upon Bitech's patent for apparatus designed to simulate flames. The primary dispute centred on the interpretation of claim 1 and its dependent claims 8 and 20, focusing particularly on the definition and role of the "flame effect means" within the apparatus. The court had to determine whether Garth Living’s heaters contained all the essential integers of the claims in the patent. Additionally, the validity of the patent claims was scrutinized, particularly whether the claims were fairly based on the specification and whether the invention described in the specification was narrower than that claimed.

The court examined the legal principles governing the construction of patent claims, including the need for a common-sense interpretation that considers the prior knowledge as of the priority date. It was imperative to ascertain whether the accused apparatus contained all the essential integers of the claims, as per established jurisprudence. The court also needed to decide whether the specification disclosed an invention that was narrower than the claims, which would affect the validity of the patent. The consistency between the claims and the specification, particularly the consistency clause, was a critical point of discussion.

The court found that the primary judge had misconstrued the question of infringement by examining whether the claims contained all the integers of the accused heaters, rather than whether the heaters contained all the essential integers of the claims. The court held that Garth Living’s heaters indeed contained all the essential integers of the claims, including the flame effect means, which was defined as the means for reflecting light to simulate flames. The presence of an additional integer, involving directly emitted light, did not negate the infringement as long as all essential integers were present. The court emphasized that the claims did not exclude the presence of additional light, as long as the primary means for simulating flames was through reflection. Consequently, the court held that there was infringement.

ORDERS:
1. The parties file and serve any submissions on the costs of the appeal and on any variation to the order for the costs before the primary Judge within 7 days.
2. The parties propose orders to give effect to the reasons of the Full Court and the further conduct of the matter within 7 days.

Orders

Orders of the court

1. The parties file and serve any submissions on the costs of the appeal and on any variation to the order for the costs before the primary Judge within 7 days.

2. The parties propose orders to give effect to the reasons of the Full Court and the further conduct of the matter within 7 days.

Note:

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

The patent claims priority from two basic applications filed in the United Kingdom on 10 February 1989 and 15 September 1989. The patent expired on 9 February 2010. The utility of the appeal resides in Bitech’s claims for pecuniary relief. Issues of quantum were not dealt with at the hearing before the primary Judge. THE DECISION OF THE PRIMARY JUDGEInfringement The case as presented to the primary Judge involved, primarily, questions of the construction of claim 1 and dependent claims 8 and 20 of the patent. His Honour considered the relevant principles of construction, as stated in Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155; (2005) 65 IPR 86. His Honour stated at [21] that he was obliged to adopt a common sense construction of the claims of the patent, having regard to the prior knowledge as at the priority date and then to determine whether the alleged infringers have taken all of the essential integers of the claims (Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 at 475). The claims said to have been infringed are claims 1, 8 and 20. Submissions in the appeal centred on claim 1 and, in particular, the “flame effect means”. Claim 1 is as follows:Apparatus for simulating flames, the apparatus comprising a source of light, simulated flame effect means for reflecting said light to simulate flames, simulated fuel means to simulate a bed of combusting fuel, and screen means on which to view an image of the simulated flames, said screen means being positioned between said flame effect means and said simulated fuel means, said screen means being capable of diffusely transmitting light reflected by said flame effect means and also being capable of reflecting light from said simulated fuel means so that the simulated flames appear to emanate between the simulated fuel means and an image of the latter means reflected in said screen means.(emphasis added) Garth Living does not dispute, as Bitech does not dispute, the description of the integer concerning the flame effect means at [36] of the primary Judge’s reasons:The integer of the apparatus defined as the simulated flame effect means for reflecting said light to simulate flames is met when the light from the light source is reflected by the simulated flame effect means in order to simulate flames in a manner which can be observed upon the screen means (the viewing screen) which is referred to later in Claim 1. The simulated fuel means refers to a bed of simulated combusting fuel (such as imitation wood or coal) intended to mimic the combustion of that fuel, so as to create an image of combusting fuel on the viewing screen which also can be observed by a person sitting or standing in front of the device in which the apparatus is installed. The primary judge concluded at [39] that, as to the flame effect means of the patent:The essence of the way in which light from the light source is ultimately used to create the images of flames on the screen is reflection. Claim 1 does not contemplate, in my opinion, that the flame effect means will substantially rely upon or involve to any significant degree a process whereby light is directly emitted from that means to the viewing screen so that the images viewed on the screen are substantially or predominantly the result of transmission of light directly emitted from the flame effect means.

Ratio Decidendi

Legal Principle Established

Garth Living submits that the reference in the specification to the problem of the effect of dust on the long-term imaging of simulated flames points the skilled addressee to specular reflection, where the screen means must be capable of diffusing light and of reflecting light, and the optical effect is produced by a screen that is partially diffusing and partially reflective. That is, there needs to be a strong reflection. It follows, says Garth Living, that all references to reflected light would be read by the skilled reader as a reference to specular reflection, or at least the skilled reader would read the claim as requiring a substantial proportion of the light incident on that surface. Garth Living accepts that nothing in the specification suggests that there must be a substantial proportion of such light but says that the reference to screen means in claim 1 must be strong enough to cast an image and therefore indicates specular reflection and not diffuse reflection.Consideration of infringement It seems to us that, with respect, the primary Judge posed the correct question (Populin) but answered the wrong question for infringement. His Honour looked to see whether claim 1 contained all of the integers of the allegedly infringing heaters instead of asking whether those heaters contained all of the essential integers of the claim. The primary Judge introduced a qualification that does not appear in the claims, namely that the flame effect means does not ‘substantially rely upon’ or ‘involve to any significant degree’ a process involving light directly emitted from, rather than reflected from, the light source. The claims do not exclude the presence of light additional to the reflected light, so long as the apparatus possesses the means for reflecting light to simulate flames. Bitech accepts that a de minimis contribution by reflected light would not be sufficient to satisfy the claimed integer, but that was not the primary Judge’s finding. The primary Judge observed at [100] that about half the viewing screen was occupied across its full width by the images sourced from reflected light, even though the images created by directly emitted light were found in the centre area of the viewing screen, were brighter and fuller than the other images and dominated the flame effect. Garth Living focuses on a submission that Bitech is seeking to expand its monopoly to encompass a heater that uses directly emitted light. That is not the substance of Bitech’s submissions. Garth Living has not answered or disputed Bitech’s case that their heaters include all of the integers of claim 1. The primary Judge’s findings show that each of the integers of claim 1 was present in the respondents’ heaters. Moreover, his Honour noted at [99] and [100] the contribution that reflected light made to the flame effect of the respondents’ heaters, which cannot be said to be de minimis. The fact that an additional integer is present, namely the formation of additional images by directly emitted light, does not negate the fact that all of the claimed integers, in combination, are present. Whether or not the additional integer is inventive, Bitech says that there is infringement (Blanco-White, Patents for Inventions, 5th edition at [3-004]; Palmer v Dunlop Perdriau Rubber Co Ltd (1937) 59 CLR 30 at 63 per Latham CJ; Fresenius at [70]). The respondents have taken each and every one of the essential integers of Bitech’s claims. Accordingly, there is infringement (Populin at 475).