Bitech Engineering v Garth Living Pty Ltd

Case [2009] FCA 1393

FEDERAL COURT OF AUSTRALIA

Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393

PATENTS – construction of patent for simulating flames with common application in domestic room heaters – whether the respondents’ domestic room heaters infringed some of the Claims in the Patent – whether the Patent is invalid and should be revoked

Held: (1)   The respondents did not infringe the applicant’s Patent.

(2)   The Patent was not invalid and should not be revoked.  

Patents Act 1952 (Cth), s 40, s 100, Pt XVI
Patents Act 1990 (Cth), ss 7, 40, 138, 234

Bitech Engineering v Flameglow Pty Ltd [2008] FCA 1583 related
Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) 212 CLR 411 applied
Alphapharm Pty Ltd v H Lundbeck A/S (2008) 76 IPR 618 applied
Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524 applied
General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd (1971) 1A IPR 121, [1972] RPC 457 applied
ICI Chemicals & Polymers Ltd v The Lubrizol Corporation Inc (2000) 106 FCR 214 applied
Jupiters Ltd v Neurizon Pty Ltd (2005) 222 ALR 155, (2005) 65 IPR 86, (2005) AIPC 92-098 applied
Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (2004) 217 CLR 274 applied
Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) 137 CLR 228 applied
Minnesota Mining and Manufacturing Company v Beiersdorf (Australia) Ltd (1980) 144 CLR 253 applied
Populin v HB Nominees Pty Ltd (1982) 59 FLR 37, (1982) 41 ALR 471 applied
Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC (No 2) (2006) 71 IPR 46 applied
Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 cited
Welch Perrin & Co Pty Ltd v Worrel (1961) 106 CLR 588 applied

Blanco White TA, Patents for Inventions (5th ed, Stevens, 1983)

BITECH ENGINEERING v GARTH LIVING PTY LTD (ACN 111 145 432) and COHEN NOMINEES PTY LIMITED (ACN 008 526 994); GARTH LIVING PTY LTD (ACN 111 145 432) v BITECH ENGINEERING

NSD 1681 of 2006

BITECH ENGINEERING v BUNNINGS GROUP LIMITED (ACN 008 672 179)
NSD 43 of 2007

BITECH ENGINEERING v FLAMEGLOW PTY LTD (ACN 117 672 518); FLAMEGLOW PTY LTD (ACN 117 672 518) v BITECH ENGINEERING
NSD 105 of 2007

BITECH ENGINEERING v HOTPOINT (AUST) PTY LTD (ACN 082 599 086); HOTPOINT (AUST) PTY LTD (ACN 082 599 086) v BITECH ENGINEERING
NSD 2056 of 2007

FOSTER J
26 November 2009
SYDNEY


IN THE FEDERAL COURT OF AUSTRALIA

NEW SOUTH WALES DISTRICT REGISTRY

GENERAL DIVISION

NSD 1681 of 2006
BETWEEN:

BITECH ENGINEERING
Applicant/Cross-Respondent
AND:

GARTH LIVING PTY LTD (ACN 111 145 432)
First Respondent/Cross-Claimant

COHEN NOMINEES PTY LIMITED (ACN 008 526 994)
Second Respondent

JUDGE:

FOSTER J

DATE OF ORDER:

26 november 2009

WHERE MADE:

SYDNEY

THE COURT ORDERS THAT:

1.The Application be dismissed.

2.The Cross-Claim by Garth Living Pty Ltd against the applicant be dismissed.

3.The parties file and serve Written Submissions on the question of costs within…

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AGLC
Bitech Engineering v Garth Living Pty Ltd [2009] FCA 1393
Case
[2009] FCA 1393
Decision Date

CaseChat Overview and Summary

Bitech Engineering, the patent holder of Australian Patent No. 621713, brought an action against Garth Living, Cohen, and Bunnings, alleging infringement of the patent and passing off. The patent in question pertains to a flame effect means for electric heaters, where the flame effect is created by manipulating both directly emitted and reflected light. Garth Living, Cohen, and Bunnings denied the allegations and counterclaimed for a declaration that the patent is invalid and be revoked. The court needed to determine whether the flame effect means in the respondents' heaters infringed the patent and whether the respondents passed off the heaters as those of Bitech.

The primary issue was whether the flame effect in the respondents' heaters involved substantial contribution from reflected light as required by the patent. The court heard expert evidence from Dr Ian Cowling, Professor Keith Nugent, and Professor Tanya Monro, each an expert in the field of optics. The court also observed demonstrations of the heaters and concluded that the flame effect in the respondents' heaters was predominantly created by directly emitted light rather than reflected light. Consequently, the flame effect means in the respondents' heaters did not fall within the scope of the patent.

The court found that Garth Living had imported, supplied, and sold the infringing heaters, and had thus engaged in passing off. The court dismissed Bitech's claims for infringement and passing off against all respondents. The counterclaim by Garth Living for a declaration of invalidity and revocation of the patent was also dismissed. The parties were directed to submit on the question of costs, and the determination of costs was reserved pending those submissions. The exhibits were to be returned after 21 days from the date of the orders.

Orders

Orders of the court

1. The Application be dismissed.

2. The Cross-Claim by Garth Living Pty Ltd against the applicant be dismissed.

3. The parties file and serve Written Submissions on the question of costs within seven (7) days of the date of the making of these Orders.

4. The question of the costs of the principal proceeding and of the Cross-Claim made by Garth Living Pty Ltd against the applicant be reserved to be determined in light of the parties’ Written Submissions.

5. The exhibits may be returned at the expiration of twenty-one (21) days from the date of these Orders.

Note:

1. The Application be dismissed.

2. The parties file and serve Written Submissions on the question of costs within seven (7) days of the date of the making of these Orders.

3. The question of the costs of the proceedings be reserved to be determined in light of the parties’ Written Submissions.

4. The exhibits may be returned at the expiration of twenty-one (21) days from the date of these Orders.

Note:

1. The Application be dismissed.

2. Those claims made by Flameglow Pty Ltd against the applicant in the Cross-Claim for relief that Australian Patent No 621713 be declared invalid and be revoked be dismissed.

3. The balance of the Cross-Claim be listed for directions before Foster J at 9.30 am on 3 December 2009.

4. The parties file and serve Written Submissions on the question of costs within seven (7) days of the date of the making of these Orders.

5. The question of the costs of the principal proceeding and of the Cross-Claim insofar as the claims referred to in par 2 above are concerned be reserved to be determined in light of the parties’ Written Submissions.

6. The question of the costs of the balance of the Cross-Claim be reserved to await the determination of the claims made in the balance of that Cross-Claim.

7. The exhibits may be returned at the expiration of twenty-one (21) days from the date of these Orders.

Note:

1. The Application be dismissed.

2. The Cross-Claim be dismissed.

3. The parties file and serve Written Submissions on the question of costs within seven (7) days of the date of the making of these Orders.

4. The question of the costs of the principal proceeding and of the Cross-Claim be reserved to be determined in light of the parties’ Written Submissions.

5. The exhibits may be returned at the expiration of twenty-one (21) days from the date of these Orders.

Note:

Background

Background to the litigation

Full text does not contain this section.

Evidence

Evidence Before The Court

Claim 1 does not make a distinction, either expressly or implicitly, between specular and diffuse reflection when it speaks of reflection. The language of Claim 1, understood in the context of the balance of the Patent and looked at from the point of view of a skilled reader familiar with optics, having regard to that reader’s general knowledge and to what is disclosed in the body of the specification, does not distinguish between types of reflection. The Patent contemplates that the reflected light, which is integral to the invention, might be specular, diffuse or a combination of the two. I do not accept the submission made by Counsel for Hotpoint that the reflected light called for by Claim 1 must be specular. Expert Evidence Three experts gave evidence at the trial. Bitech called Dr Ian Cowling, who is an Associate Professor in the School of Physical and Chemical Sciences of the Queensland University of Technology (QUT). His field of expertise is optics, which is the study of the behaviour and properties of light. He has been involved in that field for more than 25 years. The respondents called Professor Keith Nugent, who is the Laureate Professor of Physics and Federation Fellow, Executive Research Director, ARC Centre of Excellence for Coherent X‑Ray Science in the School of Physics at the University of Melbourne. Professor Nugent said that he was expert in the field of optical methods and technologies. The respondents also called Professor Tanya Monro, who is the Professor of Physics with the Chair of Photonics and a Director of DSTO Centre of Expertise in Photonics, School of Chemistry and Physics at the University of Adelaide. Each expert was amply qualified in the relevant field of physics, although none of the experts had ever been involved in the design or manufacture of heaters or devices endeavouring to simulate flame effects. In his first affidavit, Dr Cowling gave a succinct but very helpful synopsis of the behaviour and properties of light insofar as those matters are relevant to the present proceedings. At pars 23–28 of that affidavit, Dr Cowling said:23Light is a form of energy, or radiation, that is generally accepted as having the properties of waves. A beam of light is actually a number of different waves travelling through the air (or other medium) together. From a scientific perspective, light behaves in a predictable manner.24Energy that has the properties of waves, such as light, will be partially transmitted and partially reflected at the boundary or surface between any two media. Generally speaking, when a beam of light strikes the surface of a new medium (or substance), two things happen. Some of the energy will be reflected off the surface of the new medium in the form of reflected light, and some energy will be transmitted through or absorbed into the new medium. In effect, what this means is that all surfaces reflect light to some degree. Conversely, no surface reflects 100% of light, because some of the energy is always absorbed.25At its simplest, reflection of light is the change in the direction of light waves when they hit a surface and bounce off it, retaining their energy. Because not all of the light is reflected, the intensity of the reflected light decreases. This will be the case if that light is again reflected off another surface, with the intensity of the light decreasing with each incident of reflection. The amount of reflection that there is occurring, and consequently the decrease in intensity of the reflected light, depends on the nature of the surface that the light is hitting.26It is generally accepted that there are two types of reflection – specular and diffuse reflection:26.1Specular reflection occurs when light is reflected off a smooth surface (such as a mirror, glass or other shiny surface). The waves of light remain concentrated during specular reflection, and are reflected uniformly off the surface in a particular direction rather than being scattered in different directions. This creates an image behind the surface that can be detected by the eye. The most obvious example of this is an image in a mirror.26.2Diffuse reflection occurs when a wave of light is reflected off rough surfaces (such as wood, walls or fabric), and scatters in different directions. While this may (depending on the degree of scattering that takes place) be sufficient to produce an outline of an image on the surface, it is not the clear mirror image that can be seen in the case of specular reflection.27It is possible to measure the reflection and transmission of light from different materials, and I have the capability to do so at QUT’s Photometric Laboratory. Through my experience in conducting such measurements, I am generally aware of the reflective qualities of different kinds of materials. By way of example, from my own knowledge and experience, I am aware that glass typically has a reflectivity of about 8% (that is, it reflects about 4% as it enters and another 4% as it emerges from the glass, with the remaining light being transmitted through or absorbed into the glass). 28When light encounters an obstacle in its path which is not transparent (so that it does not transmit light, as for example glass does), the obstacle, to a significant degree, tends to block the light waves. Some of the light waves will be reflected off the obstacle and some will be absorbed by the obstacle. In addition, however, some light will diffract (bend) around the edges of the obstacle, which is why shadows can have what appear to be fuzzy edges. Diffraction is the change of direction of waves as they pass around an obstacle or barrier.

Decision

Reasons for decision

FOSTER J
About half the viewing screen is occupied by images sourced from reflected light, although they occupy the full width of the viewing screen. The images created by directly emitted light are found in the centre area of the viewing screen, are brighter and fuller than other images and dominate the flame effect. Decision on Infringement The respondents who were represented at the hearing conceded that each of the respondents’ heaters had:(a)A source of light;(b)Simulated fuel means to simulate a bed of combusting fuel; (c)Screen means on which one can observe an image of simulated flames, said screen means being positioned between said flame effect means and said simulated fuel means; and(d)The capability of producing images of flames on the said screen means which appear to emanate from the area between the simulated fuel means and an image of the simulated fuel means reflected in the screen means. The respondents contended, however, that the flame effect means in the respondents’ heaters comprised only the rotating cylinder and the flame shaped cut out plate (putting the light source to one side) and that that means did not fall within the flame effect means envisaged by the Patent because very little (if any) of the light which is transmitted to the viewing screen by those devices is reflected light. Rather, most of the light travelling to the viewing screen from those devices is light which is directly emitted from the light source via the cylinder and the flame shaped cut out plate. I have found that, in the respondents’ heaters, a substantial and predominant contributor to the light which is transmitted through the viewing screen and is thus the source of the flame shapes observable on that screen is light which is directly emitted (and not reflected) from the light source. On the construction of the Patent which I have found, that finding means that the flame effect means in the respondents’ heaters falls outside the scope of the Patent. Therefore, the respondents have not infringed the Patent and Bitech’s claim must be dismissed. The Conduct of Garth Living In the final version of its Defence (its Amended Defence filed in Court on 23 October 2008), Garth Living denied that it imported, supplied, sold, offered to sell or hire, advertised, kept or used any of the allegedly infringing electric flame heaters. It also denied that it directed, procured, aided or abetted such acts by others. It also denied Bitech’s allegation that it was involved in a common design with Bunnings and Cohen involving the importation, sale and distribution in Australia of those heaters. This Defence was filed at a time when the evidence was closed. Bitech proved the following facts: (a)The packaging in which the BH range of heaters is supplied all bears the name “Garth Living”;(b)The Safety Information and Instruction Manual for the BH1 heater is branded “Garth Living”. On that documentation, there is reference to Garth Living’s website;(c)Australian Customs documentation showed Garth Living as the owner in respect of the importation into Australia of some of the BH model heaters. That documentation showed GSM Gas Appliance Inc (a Chinese corporation) as the supplier and Garth Living as the paying entity to whom the goods were directed;(d)GSM Gas Appliance Inc invoiced Garth Living for substantial quantities of the BH range of heaters in April 2006;(e)Garth Living is shown on the BH models that were tendered in evidence as the distributor of those models;(f)The Safety Information and Operation Manual in respect of the MS-5 heater is branded “SUNCO by Garth” and refers to Garth Living’s website;(g)Email communications passing between Garth Living and Cohen indicated that Cohen was importing the MS-5 heater in the interests of and on behalf of Garth Living;(h)Garth Living placed an order with Cohen for the MS-5 heater; and(i)The name “Garth Living” is not a corporate or business name of any entity other than the respondent party in proceeding NSD 1681 of 2006.

Ratio Decidendi

Legal Principle Established

Established by: FOSTER J

Ultimately, I have benefitted most from the demonstrations which took place on the first and second days of the hearing. That is not to say that the evidence of the experts contained in their affidavits and oral evidence was not significant. That evidence served to crystallise the main issue between Dr Cowling, on the one hand, and Professors Nugent and Monro, on the other hand viz did reflected light contribute substantially to the flame effect depicted on the screen in the respondents’ heaters and, if so, in what way and to what extent? That evidence also provided a descriptive analysis and context in which I could assess that contribution for myself during the demonstrations. The Demonstrations On the first day of the hearing, Counsel provided a demonstration to me. This demonstration did not incorporate any commentary or evidence from the experts. Samples of three of the respondents’ heaters were placed side-by-side in the body of the Court. These were samples of the BH1, MS-5 and FG150-2 heaters. Various operations were performed with each of those heaters. Initially, the MS-5 heater was operated normally, just as it would be by the ultimate consumer in his or her sitting room. The back panel was removed from the BH1 heater and then it was operated. The MS-5 heater continued to operate whilst the BH1 heater was operated. The FG150-2 heater was also turned on. Observations were then made. A matt black finished metal baffle (Exhibit A) was then inserted into sample heater BH1 adjacent to the light globe. It was designed to prevent light from the light source passing through the middle apertures of the rotating cylinder thus preventing any directly emitted light from reaching the viewing screen. The back of the heater was then reaffixed to the body of the heater. On the assumption that the baffle operated to do that which it was designed to do, it was then possible to observe whether reflected light was making any contribution to the flame effect and, if so, in what way and to what extent. The bright light in the flame effect in the baffled unit was effectively removed by the insertion of the baffle. My own observations at this point were recorded as follows: I am seeing what I might call softer flame in the baffle unit which appears to me nonetheless to extend across the width of the unit fairly much uniformly but with intermittent appearance of slightly brighter yellow flames but nowhere near as bright as the unit which does not have the baffle. And I think the only other observation that I want to record is that to my eye, the unit that does not have the baffle’s central flames in the centre of the unit seem a little higher to me. And that depending upon whether one is perhaps sitting down or standing, looking at the baffled unit, one gets a slightly different level of intensity of the flame, that is to say, standing up, it looks a little softer than sitting down. They’re the observations that I am seeing and would wish to have recorded – anybody disagree with that?