Overly precise pleadings in patent litigation confine damages claims against Bunnings
Bitech Engineering v Garth Living Pty Ltd  FCA 357 (12 April 2011)
Having succeeded in its patent infringement proceedings against Bunnings and others for their sale of flame effect heaters, Bitech Engineering’s ability to obtain an account of profits, or damages, for infringing products it had not specifically pleaded has been limited by its overly precise pleadings.
The infringing products at trial
It is common in intellectual property matters for legal proceedings to be split, so that issues of validity and infringement are heard and determined before issues relating to damages, or an account of profits, are considered. Bitech’s amended Statement of Claim, as it stood at trial, specified 10 models of flame effect heaters which it asserted infringed its patent. The Full Federal Court, on appeal, found infringement of Bitech’s patent.
Damages limited to those infringing products specifically pleaded
Bitech then sought discovery in relation to other, unpleaded heaters at the commencement of the damages part of the proceeding, on the basis that the 10 models it had identified in its pleadings were merely examples of infringements. Because Bitech’s pleadings were very specific, Justice Foster held that the finding of infringement by the Full Court was not broad enough to enable Bitech to obtain damages for heaters not specifically pleaded. The reasoning of Justice Foster suggests that if Bitech’s pleadings were more general, or indicated that further instances of infringement may be pleaded after discovery, a different conclusion may have been reached.
Next steps for Bitech
It is now open to Bitech to amend its pleadings to include the additional heater models, and ask the Court to consider the infringement of its patent by these models before seeking further discovery. Curiously, the Court did not suggest that Bitech is estopped from taking this course of action based on the principles enunciated in Port of Melbourne Authority v Anshun Pty Ltd (1981) 147 CLR 589.