Fighting Simulated Fire with Simulated Fire

Hot off the press is the Federal Court judgment in Bitech Engineering v Garth Living [2009] FCA 1392 handed down on 26 November 2009.  The case involved a patent for simulating flames in domestic room heaters.  Foster J extinguished both Bitech’s claim that its patent had been infringed and the respondents’ cross-claim that the patent was invalid.

Bitech put the heat on four respondents, alleging that their conduct had infringed Bitech’s patent, an essential feature of which was that the simulated flame effect be produced by reflected light.  However, expert evidence disclosed that the simulated flames in the respondents’ heaters were predominantly produced by directly emitted light, not reflected light, so there was no infringement.

The respondents’ cross-claim that Bitech’s patent lacked novelty crashed and burned with Foster J’s finding that the prior art did not disclose all the essential integers of the claimed invention.  In their attack on inventive step, the respondents attempted to rely on s 7(3) augmentation to the common general knowledge.  This argument failed because the specification was filed before the Patents Act 1990 (Cth) came into force, meaning that local common general knowledge applied, and the respondents were forced to rekindle an old flame in the Alphapharm rules.  However, the subsequently limited common general knowledge meant that the obviousness argument went up in smoke.

In obiter, Foster J gave fuel to Bitech’s forthcoming submissions as to costs.  His Honour suggested that Garth Living’s failure to lead any evidence to support its pleaded denial that it had imported the allegedly infringing heaters had caused Bitech “additional time, trouble and expense” which would be relevant to his exercise of discretion in respect to costs.

It remains to be seen whether parties will keep the litigation fires burning with an appeal. 

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