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

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

The respondents' heaters infringed because the primary Judge's unchallenged findings showed that each integer of claim 1 was present and that reflected light made a contribution to the flame effect that was not de minimis; the additional formation of images by directly emitted light did not negate infringement and did not create a new working of the claimed combination. Claim 1 did not exclude directly emitted light and was not limited to specular reflection. Claims 1, 8 and 20 were fairly based because the specification's consistory clause described the invention in the same terms as claim 1 and the preferred embodiments did not narrow or limit the invention.

Jurisdiction
Australia
Judgment Date
23 June 2010
Procedural Posture
Patent Infringement and Validity Proceedings Concerning Australian Patent No 621713, 'apparatus for Simulating Flames' / Appeal From Bitech Engineering V Garth Living Pty Ltd [2009] FCA 1393; Cross Appeal by Garth Living Pty Ltd on Fair Basis
Outcome
Appeal allowed; cross-appeal dismissed; Bitech entitled to the costs of the appeal, subject to submissions on costs and consequential orders.
Legal Topics
['patent Infringement' 'construction of Patent Claims' 'essential Integers' 'additional Integers in Alleged Infringing Product' 'fair Basis' 'patents Act 1990 (cth) S 40(3)']
['patents' 'intellectual Property'] ['patent Infringement' 'construction of Patent Claims' 'essential Integers' 'additional Integers in Alleged Infringing Product' 'fair Basis' 'patents Act 1990 (cth) S 40(3)']

Case Brief

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Procedural Posture

Patent Infringement and Validity Proceedings Concerning Australian Patent No 621713, 'apparatus for Simulating Flames' / Appeal From Bitech Engineering V Garth Living Pty Ltd [2009] FCA 1393; Cross Appeal by Garth Living Pty Ltd on Fair Basis

Legal Issues

  1. 1 ["Whether the respondents' heaters contained all of the essential integers of claims 1, 8 and 20 of the patent despite also using directly emitted light to contribute to the simulated flame effect." 'Whether claim 1 excluded an apparatus that relied to a substantial or significant degree on directly emitted light in addition to reflected light.' 'Whether the reflected light required by claim 1 was limited to specular reflection rather than diffuse reflection.' 'Whether claims 1, 8 and 20 were fairly based on the matter described in the specification for the purposes of s 40(3) of the Patents Act 1990 (Cth).']

Ratio Decidendi

The respondents' heaters infringed because the primary Judge's unchallenged findings showed that each integer of claim 1 was present and that reflected light made a contribution to the flame effect that was not de minimis; the additional formation of images by directly emitted light did not negate infringement and did not create a new working of the claimed combination. Claim 1 did not exclude directly emitted light and was not limited to specular reflection. Claims 1, 8 and 20 were fairly based because the specification's consistory clause described the invention in the same terms as claim 1 and the preferred embodiments did not narrow or limit the invention.

Court Disposition

Appeal allowed; cross-appeal dismissed; Bitech entitled to the costs of the appeal, subject to submissions on costs and consequential orders.

Orders

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