FEDERAL COURT OF AUSTRALIA
Bitech Engineering v Garth Living Pty Ltd [2011] FCA 357
Citation: Bitech Engineering v Garth Living Pty Ltd [2011] FCA 357 Parties: BITECH ENGINEERING v GARTH LIVING PTY LTD (ACN 111 145 432) and COHEN NOMINEES PTY LIMITED (ACN 008 526 994)
BITECH ENGINEERING v BUNNINGS GROUP LIMITED (ACN 008 672 179)
BITECH ENGINEERING v HOTPOINT (AUST) PTY LTD (ACN 082 599 086)
File numbers: NSD 1681 of 2006
NSD 43 of 2007
NSD 2056 of 2007Judge: FOSTER J Date of judgment: 12 April 2011 Catchwords: PATENTS – practice and procedure – whether in a patent infringement case, in circumstances where the trial of all questions of liability (including the determination of claims for injunctive relief) were heard and determined before all claims for pecuniary relief, the patentee is entitled without more to seek to recover damages in respect of the importation, sale and/or distribution of additional devices which are alleged to infringe the patent even though those devices were not considered by the Court at the liability stage and were not the subject of any findings of infringement at that stage – in the present case, the patentee had specifically identified the articles which allegedly infringed the patent and conducted the trial and subsequent appeal upon the basis that these were the only articles said to have infringed the patent – the patentee did not reserve the right to enlarge the type of its infringing articles at the damages stage – in the events which have happened and in light of the form of the patentee’s Statements of Claim, additional infringements not permitted to be litigated at the damages stage Legislation: Federal Court of Australia Act 1976 (Cth), s 37M
Federal Court Rules, O 58 r 11(2)Cases cited: Bitech Engineering v Garth Living Pty Ltd (2010) 86 IPR 468 related
Bitech Engineering v Garth Living Pty Ltd (2009) 84 IPR 78 related
Aktiebolaget Manus v RJ Fullwood & Bland Ltd (1949) 66 RPC 285 cited
Cleveland Graphite Bronze Co Ltd v Glacier Metal Co Ltd (1951) 68 RPC 181 followed
Elecon Australia Pty Ltd v PIV Drives GmbH [2010] FCAFC 56 cited
General Tire & Rubber Company v Firestone Tyre & Rubber Company Ltd (No 2) [1973] FSR 79 followed
LED Builders Pty Ltd v Eagle Homes Pty Ltd (1999) 44 IPR 24 cited
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) (2007) 235 CLR 173 cited
MMI Research Limited v Cellxion Limited [2009] EWHC 1938 (Pat) followed
National Broach and Machine Co v Churchill Gear Machines Ltd [1965] 1 WLR 1199 cited
Nokia Corporation v Liu (2009) 179 FCR 422 cited
AG Spalding & Bros v AW Gamage Ltd (1915) 32 RPC 273 cited
AG Spalding & Bros v AW Gamage Ltd (1913) 30 RPC 388 cited
Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 364 followed
Welcome Real-Time SA v Catuity Inc (No 2) (2001) AIPC 91-736 citedMiller, Terrell On the Law of…
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- AGLC
- Bitech Engineering v Garth Living Pty Ltd [2011] FCA 357
- Case
- [2011] FCA 357
- Decision Date
CaseChat Overview and Summary
The court held that the applicant was not entitled to seek to recover damages in respect of the additional devices. The court found that Bitech Engineering had not reserved the right to enlarge the type of its infringing articles at the damages stage, and that additional infringements not permitted to be litigated at the damages stage. The court also found that the same approach to identifying the alleged infringements sued upon was taken in proceedings NSD 43 of 2007 and NSD 2056 of 2007. The court concluded that the applicant's application for discovery in respect of the additional apparatus be refused and that the applicant pay the costs of the respondent.
Orders
Orders of the court
1. The separate question ordered to be tried by orders made on 17 March 2011, namely:
Whether, upon the basis of the pleadings as they currently stand and in light of the judgments of this Court in Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393, Bitech Engineering v Garth Living Pty Ltd (No 2) [2009] FCA 1460, Bitech Engineering v Garth Living Pty Ltd [2010] FCAFC 75 and Bitech Engineering v Garth Living Pty Ltd (No 2) [2010] FCAFC 93, it is open to the applicant to claim damages for infringement of its patent being Australian Patent No 621713 in respect of the importation, distribution or sale of electric flame heaters bearing model numbers BH3, BH8, BH11, BH13 and BH14.
be answered in the negative.
2. The application made by the applicant that the respondents provide discovery in respect of the additional apparatus described in the separate question at par 1 of these Orders be refused.
3. The applicant pay the costs of the respondents of and incidental to the hearing of the separate question extracted at par 1 above and the application for discovery described in par 2 above.
1. The separate question ordered to be tried by orders made on 17 March 2011, namely:
Whether, upon the basis of the pleadings as they currently stand and in light of the judgments of this Court in Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393, Bitech Engineering v Garth Living Pty Ltd (No 2) [2009] FCA 1460, Bitech Engineering v Garth Living Pty Ltd [2010] FCAFC 75 and Bitech Engineering v Garth Living Pty Ltd (No 2) [2010] FCAFC 93, it is open to the applicant to claim damages for infringement of its patent being Australian Patent No 621713 in respect of the importation, distribution or sale of electric flame heaters bearing model numbers BH3, BH8, BH11, BH13 and BH14.
be answered in the negative.
2. The application made by the applicant that the respondent provide discovery in respect of the additional apparatus described in the separate question at par 1 of these Orders be refused.
3. The applicant pay the costs of the respondent of and incidental to the hearing of the separate question extracted at par 1 above and the application for discovery described in par 2 above.
1. The separate question ordered to be tried by orders made on 17 March 2011, namely:
Whether, upon the basis of the pleadings as they currently stand and in light of the judgments of this Court in Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393, Bitech Engineering v Garth Living Pty Ltd (No 2) [2009] FCA 1460, Bitech Engineering v Garth Living Pty Ltd [2010] FCAFC 75 and Bitech Engineering v Garth Living Pty Ltd (No 2) [2010] FCAFC 93, it is open to the applicant to claim damages for infringement of its patent being Australian Patent No 621713 in respect of the importation, distribution or sale of electric flame heaters bearing model number DBL-2000-DZ.
be answered in the negative.
2. The application made by the applicant that the respondent provide discovery in respect of the additional apparatus described in the separate question at par 1 of these Orders be refused.
3. The applicant pay the costs of the respondent of and incidental to the hearing of the separate question extracted at par 1 above and the application for discovery described in par 2 above.
Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
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Ratio Decidendi
Legal Principle Established
The same approach to identifying the alleged infringements sued upon was taken in proceedings NSD 43 of 2007 and NSD 2056 of 2007. CONSIDERATION The applicant submitted that I should answer the separate questions with a resounding “Yes”. Counsel for the applicant submitted that the relevant guiding principles were articulated by the Full Court in Nokia Corporation v Liu (2009) 179 FCR 422 and that the statements of principle made by the Full Court in that case are binding upon me. In Nokia, the applicant (Nokia) had sued the respondent for infringement of its trade marks. In its Statement of Claim, Nokia provided particulars of two instances of the infringements alleged. One instance was a trap purchase. The other was an attempted importation of infringing goods which had been prevented by the Australian Customs Service. Those goods had been seized by Customs. The particulars provided by Nokia in its Statement of Claim otherwise generally referred to acts of manufacture of the offending items from a date unknown up to the date of the filing of Nokia’s Application. The particulars provided in par 4 of the Statement of Claim concluded with the statement:The applicant cannot until after discovery give full particulars of all the aforesaid acts of the Respondent, but at the trial of this action the Applicant will rely upon and claim relief in respect of all such acts.([4] of the Full Court’s judgment] In Nokia, the infringement case never went to trial. Consent orders were made before trial which included a permanent injunction restraining further infringement of Nokia’s trade marks and an order for delivery up of all goods in the respondent’s possession, custody or control which carried any of the infringing trade marks. Additional consent orders were made as follows:THE COURT FURTHER ORDERS BY CONSENT THAT:5.Within seven (7) days of the date of these orders, the Respondent file and serve on the Applicant an affidavit setting out (and exhibiting all relevant supporting documentation (including, but not limited to, any purchase orders, invoices and receipts) in the possession, power and control of the Respondent whether by himself, his employees or agents) the full details of the supplier of each product that the Respondent has purchased, imported, distributed and sold to which any of the Nokia Trade Marks or any name, word, mark, sign or device which is substantially identical with or deceptively similar thereto has been applied without the licence or authority of the Applicant, such details to include full address, email address, telephone number, corporate and business details.6.Within fourteen (14) days of the service of these orders upon him, the Respondent make discovery verified by affidavit to the Applicant in respect of all purchases and sales by him or on his behalf of all items bearing the Nokia Trade Marks, or any of them or any name, word, mark, sign or device which is substantially identical with or deceptively similar to any one or more of the Nokia Trade Marks, without the licence or authority of the Applicant.7.The Respondent pay the Applicant damages for infringement of the Nokia Trade Marks, to be assessed together with interest thereon, or, at the option of the Applicant, the Respondent account for the profits made by him by his infringements of the Nokia Trade Marks and pay the Applicant the amount found to be due on the taking of such account, together with interest thereon.