The Full Federal Court of Australia has reconfirmed two important principles concerning patent infringement and fair basis. First, a party will not necessarily avoid infringement of a patent merely because there is an additional feature in its product. Second, claims can be fairly based and extend beyond the disclosure in the preferred embodiments.
In Bitech Engineering v Garth Living Pty Ltd  FCAFC 75, the Full Federal Court held that the respondents had infringed Bitech’s patent and that the patent claims were fairly based.
The respondents did not dispute that their heaters included all of the integers of claim 1. Instead, the respondents argued that they did not infringe because their heaters included images created by directly emitted light in addition to the reflected light required by the claim.
The primary judge found that each of the integers of claim 1 was present in the respondents’ heaters, and that about half of the viewing screen was occupied across its full width by the image sourced from reflected light, even though the images from the directly emitted light dominated the flame effect. The primary judge also found that the contribution of the reflected light images was not de minimis.
The claims do not expressly exclude the presence of light additional to the reflected light to simulate flames. Further, none of the expert witnesses read claim 1 as necessarily excluding direct light.
The Full Federal Court reiterated that it is not permissible to introduce a qualification that does not appear in the claims. The fact that an additional integer is present does not negate the fact that all of the claimed integers, in combination, were present. While infringement may be avoided where additional integers make a new working of the combination of those integers and those of the claim, that is not the case here. There was no material effect on the way the claimed invention worked. Purposive construction did not lead to a construction of claim 1 that excludes direct light.
There is also no basis for a construction that requires a quantification of the reflected light such that it be to “a substantial degree” and this would import into a claim an unwarranted ambiguity. As a result, the respondents’ heaters were held to infringe.
The Full Federal Court reiterated that fair basis is determined by whether there is a “real and reasonably clear disclosure of the invention claimed” and consequently it requires a comparison between the claims and the disclosure in the specification.
The respondents submitted that if there was a finding of infringement, then the claims lack fair basis because there is no disclosure of the use of direct light. The Full Federal Court rejected this submission as that is not the requirement for fair basis. The only characteristic required by claim 1 is a means of reflecting light to simulate flames.
The respondents then submitted that the specification disclosed an invention narrower than claim 1. Each of the alleged limitations was being imported from the preferred embodiments. The Full Federal Court rejected this submission and held that it was clear from the specification that the invention is as set out in the consistory clause and that what follows does not limit or narrow the invention.
Claims can extend beyond the scope of the preferred embodiments. The skilled addressee would not read the specification as imposing serial restrictions or limitations on the invention. The specification describes different preferred ways in which integers of the invention can be made to maximise the solution to the different problems of the prior art. In one case, alternative embodiments are described for the same problem. This does not suggest that any one embodiment was intended to embody the extent of the invention. Accordingly, the claims are fairly based.
This decision by the Full Federal Court is a useful reminder of three important principles:
If an alleged infringement has all the essential features of a claim then it is likely to be held to infringe the patent, regardless of whether the alleged infringement includes additional features. The only exception is where it can be established that the additional features have a material effect on the way the claimed invention works such that there is a new working of the combination of the additional features and those of the claim.
It is not permissible to introduce a qualification that does not appear in the claims.
In the absence of any language to limit the disclosure of the specification, the claims can extend beyond the disclosure in the preferred embodiments.