Simulated flames: a matter of construction

Simulated flames: a matter of construction

Simulated flames: a matter of construction

Bitech Engineering v Garth Living Pty Ltd [2010] FCAFC 575

In this appeal decision, Justices Sundberg, Bennett and Yates correct the mistaken approach taken by Justice Foster1 to the construction of claims directed to an apparatus for simulating flames. The decision serves as confirmation that infringement is determined based on the existence or non-existence of claimed features in the allegedly infringing article, and is unaffected by the existence or non-existence of additional, unclaimed features.

Facts of the case

Bitech Engineering (Bitech) brought proceedings against a number of parties, including Garth Living Pty Ltd, Bunnings Group Limited, Flameglow Pty Ltd and Hotpoint (Aust) Pty Ltd (the Respondents) for infringement of its Australian patent entitled “Apparatus for Simulating Flames” (the Patent). The Patent describes a device for simulating flames in electric and gas fired room heaters, making it appear as if flames are arising from burning wood or coal. An essential feature of the claims is a “simulated flame effect means for reflecting … light to simulate flames”.

Justice Foster found that the Respondents’ products were not infringements as the “substantial and predominant contributor” to the light generating the simulated flame shapes was directly emitted and not reflected. Essential to His Honour’s reasoning was his interpretation of the scope of the claims:

Claim 1 does not contemplate, in my opinion, that the flame effect means will substantially rely upon or involve to any significant degree a process whereby light is directly emitted from that means to the viewing screen so that the images viewed on the screen are substantially or predominantly the result of the transmission of light directly emitted from the flame effect means.

That is, his Honour did not consider that the claims included within their scope “an apparatus that relies to a substantial degree upon the transmission of directly emitted light from or via the flame effect means to the viewing screen in order to simulate flames on that screen.”

Bitech appealed this decision to the Full Court of the Federal Court of Australia. It submitted that although some directly emitted light contributes to the overall flame effect, this does not avoid infringement, as the flame effect is also produced by reflected light to a not insubstantial degree. Garth Living initially argued that the claims should be read to require that the simulated flame effect be created by reflection alone. However, it later modified its submissions, suggesting that although the claims do not exclude other forms of light, the reflected light must be dominant. Garth Living also cross-claimed for revocation on the basis that the claims were not fairly based on the specification because neither the claims nor the specification referred to a source of direct light. This was a secondary argument for Garth Living, which presumably put the argument in the alternative, asserting as a primary position that the claims do not cover heaters where the flame effect involves the use of directly emitted light, but if the claims are interpreted to cover such devices, they are not fairly based.

The decision

The Court accepted Justice Foster’s findings (unchallenged on appeal) that the simulated flames were formed from both directly emitted light and diffusely reflected light, although the directly emitted light was a “substantial and predominant contributor to the light” forming the flame shapes. However, the Court found that Justice Foster answered the wrong question for infringement based on a mistaken construction of the claims. The claims did not exclude the presence of light additional to the reflected light. An apparatus in which reflected light made a de minimus contribution to the flame effect would not fall within the scope of the claims, but this was not the case with the allegedly infringing products. Furthermore, although infringement will not be found if an additional feature makes a “new working of the combination” of features, the addition of directly emitted light does not result in such a “new working” and does not alter the effect of the reflected light.

The primary Judge’s findings show that each of the integers of claim 1 was present in the respondents’ heaters. Moreover, his Honour noted at [99] and [100] the contribution that reflected light made to the flame effect of the respondents’ heaters, which cannot be said to be de minimis. The fact that an additional integer is present, namely the formation of additional images by directly emitted light, does not negate the fact that all of the claimed integers, in combination, are present. Whether or not the additional integer is inventive, Bitech says that there is infringement …. The respondents have taken each and every one of the essential integers of Bitech’s claims. Accordingly, there is infringement. (citations removed)

In relation to fair basis, the Court found that the claims were supported by consistory statements identifying the invention, and although the described embodiments of the invention were narrower than the claims, claims can extend beyond the scope of preferred embodiments.

There was nothing in the specification suggesting that the described embodiments were intended to embody the extent of the invention.


This decision of the Full Federal Court applies well-understood principles to facts that were not in contention. It is consistent with established authority on both infringement and fair basis.

The simple question to be asked when considering infringement is: Does the allegedly infringing product or process have all of the features recited in the claim? The existence of additional features is not relevant to this question, unless those additional features operate to change the character of the allegedly infringing product or process such that it no longer possesses all of the features of the claim.