Allied Pumps Pty Ltd v LAA Industries Pty Ltd

[2021] APO 46

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Allied Pumps Pty Ltd v LAA Industries Pty Ltd [2021] APO 46

Patent Application:             2017210650

Title:MOTOR STARTING AND CONTROL SYSTEM AND METHOD UTILISED BY DIRECTLY CONNECTED ISLANDED RECIPROACTING ENGINE POWERED GENERATORS

Patent Applicant:                LAA Industries Pty Ltd

Opponents:Allied Pumps Pty Ltd

Delegate:Xavier Gisz

Decision Date:  23 November 2021

Hearing Date:  Written submissions filed on 14 July 2021

Catchwords:  PATENTS - opposition to the grant of the patent under s 59 – opposed on the basis of novelty, inventive step, clarity, clear enough and complete enough disclosure, and best method – claims 1 to 20 lack novelty and inventive step – costs awarded

Representation:

Patent attorney for the applicant: Armour IP Pty Ltd

Patent attorney for the opponent: MINTER ELLISON

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:             2017210650

Title:MOTOR STARTING AND CONTROL SYSTEM AND METHOD UTILISED BY DIRECTLY CONNECTED ISLANDED RECIPROACTING ENGINE POWERED GENERATORS

Patent Applicant:                LAA Industries Pty Ltd

Date of Decision:                23 November 2021

DECISION

Claims 1-20 lack novelty and inventive step in light of US2005146221A1 (Pettigrew), WO2015/041805 (Torrey), and US 2014/0209289 (Boot). The invention meets the requirements of providing a clear enough and complete enough disclosure and a best method.

I allow the applicant two months from the date of this decision to propose amendments to overcome the deficiencies.

Costs are awarded against the Applicant.

REASONS FOR DECISION

Three concurrent oppositions

1. Three parties have opposed the grant of the patent: Taranis Power Group Pty, Allied Pumps Pty Ltd, and Stephen Anderson. The three parties did not request that the oppositions be enjoined and so the three oppositions remain independent.

2. Although there is significant overlap in the arguments made by the three parties, there are differences in the grounds and particulars of the oppositions and the evidence relied upon by each party. Consequently, there are three separate decisions for each of the three oppositions.

   Background

3. The matters relate to the opposition to grant of patent application number 2017210650 (the application) in the name of LAA Industries Pty Ltd (LAA) (the Applicant) by Allied Pumps Pty Ltd (the Opponent). The application was filed on 5 August 2017 and is based on the provisional application 2016903254 with a priority date of 16 August 2016.

4. The Application was advertised as accepted on 28 February 2019. The Opponent filed a Notice of Opposition on 28 May 2019. The Opponent filed a Statement of Grounds and Particulars on 28 August 2019.

5. Evidence in Support was filed and completed by the Opponent on 28 November 2019.

6. Evidence in Answer was due on 2 March 2020. The Applicant filed some Evidence in Answer on 2 March 2020 and also requested an extension of time of three months, until 2 June 2020, for filing the remainder of Evidence in Answer for each of the three oppositions.

7. On 14 September 2020 the Delegate refused the Applicant’s request for an Extension of Time to file the remainder of its Evidence in Answer.

8. On 17 November 2020 The Opponent filed Evidence in Reply.

   Request to consider information under Regulation 5.23

9. On 17 November 2020 the Applicant requested that a new declaration by James Waterreus dated 11 November 2020 (hereinafter referred to as the new Waterreus declaration) be considered by the Commissioner under regulation 5.23.

10. On 19 November 2020 a Delegate informed the parties that the new Waterreus declaration would not be considered under regulation 5.23. In relation to the relevance of the information provided in the James Waterreus declaration of 11 November 2020 the Delegate noted:

    “The Applicant has not outlined in any material sense the significant of the material to the oppositions. Rather it is merely stated that “The information contained therein is explanatory in nature, and we do not consider it to be controversial”. The material appears to merely provide qualifying statements regarding the evidence in support in each opposition. It is not apparent how this is likely to be crucial to the delegate’s decision. Consequently, this factor weighs against allowing the Applicant’s 5.23 requests.”

11. On 1 December 2020 the Applicant filed a declaration by Barry Newman, further explaining why the new Waterreus declaration was filed. Mr Newman states in his declaration:

    “During my review, my attention was drawn to the declaration of James Waterreus filed as evidence-in-answer to the opposition. It was clear to me that this declaration had been prepared without an appropriate amount of professional assistance. As a result, I found elements of the declaration difficult to understand.

    I contacted Mr Waterreus to ask him to clarify aspects of his evidence. After receiving his response, it was apparent to me that clearer evidence from Mr Waterreus would save considerable time and effort from all parties in preparing the oppositions for hearing, and would greatly assist the delegate in narrowing the issues.

    …

    On 10 November 2020 I provided Mr Waterreus with a further draft of the declaration. He replied with comments and corrections on 11 November 2020. I then produced final versions of the declarations, which Mr Waterreus duly signed.”

12. The new Wattereus declaration explains the differences and benefits of the present invention with respect to the prior art. The new Wattereus declaration reinforces the information already present in the Applicant’s Evidence in Answer. I am not satisfied that the information provided would be determinative of the opposition. Consequently, I will not rely upon this information under regulation 5.23.

    Evidence

13. The Evidence in Support comprises:

    ·First Declaration of Professor Donald Grahame Holmes dated 27 November 2019 (Holmes 1) accompanied by exhibits DGH-1 to DGH-8

    ·Declaration of James Thomas Pringle dated 27 November 2019 (Pringle) accompanied by exhibit JTP-1

14. The Evidence in Answer comprises:

    ·Declaration of Mr James Waterreus (Mr Waterreus) dated 2 March 2020 (Waterreus)

    ·Declaration of Mark Keogh dated 2 March 2020 (Keogh) accompanied by exhibits MVK‑1 to MVK-7

    ·Declaration of Fidel Dela Paz (Mr Dela Paz) dated 2 March 2020 (Dela Paz) accompanied by exhibits FDP-1 to FDP-17

15. The Evidence in Reply comprises:

    ·Second Declaration of Professor Holmes dated 10 November 2020 (Holmes 2) accompanied by exhibits DGH-9 to DGH-10

    Discussion of experts

16. The Opponent has provided evidence of Professor Holmes and Mr Pringle.

17. The Applicant has provided evidence of Jim Waterreus, Mark Keogh and Fidel Dela Paz. Mr Dela Paz is a patent attorney and is not asserted to be an expert in relation to the technology of the invention. Mr Waterreus has close professional links with the Applicant. However, this does not significantly affect the weight I will give to his evidence. I accept that he has provided his objective professional opinion on the matters at hand.

18. Each of the experts (Professor Donald Holmes, James Pringle, Jim Waterreus, and Mark Keogh) have a significant amount of experience relevant to understanding the present invention and the prior art.

    Grounds of Opposition

19. The Opponent opposed the grant of the patent on the grounds of: Novelty, Inventive step, clarity, clear enough and complete enough disclosure, and best method.

    Specification

20. The invention relates to an engine-powered generator system for starting, powering and controlling electric motors and motor-driven devices.

21. The description states at paragraph 1:

    “The present invention relates to a system for starting and controlling an electric motor and/or motors solely via an optimally sized generator connected directly to said electric motor, including induction motor and/or motors, eliminating the need for external conventional current-limiting motor starting and control devices such as VSD (Variable Speed Drives), Soft-starters, Star/Delta Starting, Auto-transformers or the need to use expensive Wound-rotor motors.”

22. The invention is essentially using less electronics (than a traditional generator) to ‘condition’ power in between the engine-powered generator (which generates electricity) and the electric motor (which consumes the electricity).

23. Because there is less ‘conditioning’ of power between the generator and electric motor, this requires changes to the system, (when compared with a traditional generator) to ensure enough power is delivered to the electric motor when it is needed. In particular, this requires more active control of the engine speed (when compared with a traditional generator).

24. The system has sensors to measure the parameters of the effects of the motor (in particular fluid flow, fluid pressure or fluid level), instead of the parameters of the motor itself. The measured parameter is then compared against the desired ‘parameter set-point’. For example, if the motor drives a pump to keep water at a particular level, data from the water level sensor is compared against the desired water level. The speed of the generator is adjusted based on this comparison to keep the system at the parameter set-point.

25. The invention is shown in figure 1:

    Construction

    Construction Legal Principles

26. The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70:

    “...the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear. Words used in a specification are to be given the meaning which the person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification ... This applies to words used in the claims. ... the construction of a specification, including the claims, is ultimately a question of law ...
    ...While the claims define the monopoly claimed in the words of the patentee’s choosing, the specification should be read as a whole ...
    It is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ...”

27. The following pithy advice was provided by Middleton J in Ranbaxy Laboratories Ltd v AstraZeneca AB [2013] FCA 368:

    “Above all, the [decision maker] should approach the task of patent construction with a generous measure of common sense.”

    Construction of terms

    ECU - Engine control unit

28. An ECU Engine control unit is an electronic control unit that controls an internal combustion engine to ensure optimal engine performance. It does this by reading values and adjusting the engine actuators.

29. I consider that any electronic control of the engine speed falls within the scope of an ECU.

    AVR – automatic voltage regulator

30. A voltage regulator is an electronic device that stabilises voltage. An automatic voltage regulator (AVR) is a feedback control system that adjusts the voltage. The feedback control takes the output voltage of the AVR as an input (together with other input) to control the voltage.

    Alternator

31. The alternator converts mechanical energy to electrical energy in the form of an alternating current.

32. The frequency and voltage output by an alternator is directly related to the speed of the engine which spins the rotor of the alternator.

    VSD – Variable Speed Drive

33. A Variable Speed Drive (VSD) takes electricity of one frequency and voltage, and converts it to another frequency and voltage to drive an electric motor. A VSD ‘conditions’ electricity so it can drive the motor at the desired speed.

34. The waveform generated by a VSD are typically entirely ‘synthetic’. That is, the waveform does not merely modify the incoming waveform by adjusting parameters of the original waveform; it creates a new waveform ‘from scratch’.

    HMI – Human machine interface

35. The human machine interface allows a person to adjust the settings of the system. For example, allowing the user to set the parameter set-point.

    Fluid flow, fluid pressure, fluid level

36. Claim 1 contains the feature of:

    “the system controller receives sensor signals, and based on type of control selected - selected from fluid flow, fluid pressure and fluid level”

37. I understand the words “selected from” to mean that the claim only requires that one of these three parameters are measured and sent to the system controller.

38. I consider that fluid flow, fluid pressure, fluid level are each a measure of the fluid in the system external of the pump and motor, and do not include measures of fluid within the pump.

    Claims

39. The specification ends with 20 claims; 2 independent claims and 18 dependent claims. The independent claims are reproduced below:

    Claim 1

    A starting and control system for an assembly having an electric motor or motors, the system comprising:

    - a generator assembly comprising an engine coupled to an alternator;

    - an automatic voltage regulator (AVR) for controlling voltage output of the alternator;

    - an engine control unit (ECU) for controlling an operation of the generator engine;

    - a system controller connected to the AVR and operable to control the AVR, the system controller controlling the manner in which the AVR controls the alternator voltage output, the system controller being connected to the ECU and operable to control the manner in which the ECU controls the generator engine speed and therefore frequency of the voltage output from the alternator,

    - wherein parameter set points are set in the system controller, and the system controller receives sensor signals, and based on type of control selected - selected from fluid flow, fluid pressure and fluid level

    - the system controller is configured and operable to control the AVR and/or the ECU to vary the speed of the generator engine and the alternator voltage output by the generator assembly so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and

    - wherein alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed which maintains the speed to voltage relationship required to suit the motor or motors’ electrical characteristics.

    Claim 20

    A method for starting a motor or motors using a generator assembly comprising an engine coupled to an alternator, the method comprising:

    - generating a voltage from the generator assembly for supply to the motor or motors;

    - controlling the voltage generated by the alternator via an automatic voltage regulator (AVR);

    - controlling the speed of the generator engine and therefore alternator frequency via an engine control unit (ECU);

    - controlling the AVR and ECU via a system controller;

    - setting parameter set points in the system controller, and the system controller receiving sensor signals, and based on type of control selected - selected from fluid flow, fluid pressure and fluid level – the AVR is to cause the generator alternator voltage to vary as the ECU is controlled to cause the generator engine to increase or decrease in speed with the alternator voltage varying in proportion to engine speed so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points and to maintain the speed to voltage relationship required to suit the motor or motors’ electrical characteristics.

    Integers of claim 1

40. Professor Holmes at paragraph 253 of his declaration has split claim 1 into integers as follows:

    (i)A starting and control system for an assembly having an electric motor or motors, the system comprising:

    (ii)a generator assembly comprising an engine coupled to an alternator;

    (iii)an automatic voltage regulator (A VR) for controlling voltage output of the alternator;

    (iv)an engine control unit (ECU) for controlling an operation of the generator engine;

    (v)a system controller connected to the A VR and operable to control the A VR,

    (vi)the system controller controlling the manner in which the A VR controls the alternator voltage output,

    (vii)the system controller being connected to the ECU and operable to control the manner in which the ECU controls the generator engine speed and therefore frequency of the voltage output from the alternator;

    (viii)wherein parameter set points are set in the system controller,

    (ix)and the system controller receives sensor signals and based on type of control selected - selected from fluid flow, fluid pressure and fluid level -

    (x)the system controller is configured and operable to control the AVR and/or the ECU to vary the speed of the generator engine and the alternator voltage output by the generator assembly so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and

    (xi)wherein alternator voltage is controlled by the system controller and the A VR to increase or decrease in proportion to changes in engine speed which maintains the speed to voltage relationship required to suit the motor or motors' electrical characteristics.

    Clarity

    Clarity legal principles

41. It is a requirement of section 40(3) of the Patents Act that the claims must be clear. This requirement is understood to be satisfied if a person could ascertain “whether or not what he proposes to do falls within the ambit of the claim” Monsanto Co v Commissioner of Patents (1974) 48 ALJR 59.

42. As noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) IPR 331 cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121:

    “The consideration is whether, on any reasonable view, the claim has meaning. In determining this, the expression in question must be understood in a practical, common sense manner.”

    Clarity of the present claims

43. The Opponent states:

    The Opponent submits that claims 1 to 20 are unclear. Claims 1 and 20 provide that the “alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed which maintains the speed to voltage relationship required to suit the motor or motors’ electrical characteristics” (integer (xi)). Professor Holmes was unable to determine the meaning of this claim integer (referred to below as “integer 1(xi)”).

    In particular, the terms “the speed to voltage relationship” and “the motor or motors’ electrical characteristics” in claims 1 to 20 leave the boundaries of the invention uncertain and also provide no workable standard. For example:

    (a) It is unclear whether active AVR operation is required to meet the requirements of integer 1(xi). A reduction in the speed of the engine will cause a corresponding and proportional reduction in the output voltage of the alternator (i.e., reducing the speed of the engine, and thereby frequency output, necessarily reduces the voltage output of the alternator proportionally). This change in the speed of the engine would achieve the constant volts-per-Hertz characteristic required by the motor without requiring active AVR operation. This situation could potentially meet the requirements of integer 1(xi) but it is unclear.

    (b) It is also unclear whether using the AVR to vary the rotor field winding current away from its nominal value, such as, for example, to compensate for second-order effects such as stator winding resistance, meets the requirements of integer 1(xi). This might be said to maintain “the speed to voltage relationship required to suit the motor or motors’ electrical characteristics”, as is described in integer 1(xi), but it is unclear.

    (c) It is also unclear whether the functionality defined in integer 1(xi) should be limited to a system that monitors the voltage output of the generator and adjusts the current in the field windings of the alternator (i.e., by using the AVR) to maintain the constant volts-to-Hertz supply required by the connected motor.

    Maintaining a constant volts-per-Hertz type supply is important for induction motors, to avoid either over-fluxing (i.e., saturating) the machine or producing a reduced torque output, as the motor speed varies. This may be achieved by active AVR control (as per paragraph 9.9(c) above), or in some circumstances, without active AVR control (i.e., a reduction in the speed of the engine causes a corresponding and proportional reduction in the output voltage of the alternator – as per paragraph 9.9(a) above).

    As Professor Holmes notes, the Opposed Application is completely silent in relation to which of the alternative AVR and system control options it proposes, and thus it was not possible for Professor Holmes to determine the meaning of integer 1(xi). Rather, in order to progress onto a novelty analysis, Professor Holmes applied a broad construction to integer 1(xi) to include each of the options described above at paragraph 9.9(a) to 9.9(c) above.

1. The Applicant states in their submissions:

   “Allied propose three possible constructions of the claimed integer. Each construction describes an operation which is properly contemplated by the claimed integer. Allied suggests a ‘broad construction’ which incorporates all three possibilities. The Applicant agrees that this broad construction is correct.

   …

   Waterreus explains the claimed integer: “ … the voltage to frequency (prime mover / engine speed) ratio is controlled in such a manner to meet the requirements of the manufacturer of the motor and to maximise motor efficiency in doing so.
   The precise nature of this control (whether or not it is the strict “constant volts-er-Herz characteristic”, a variation away from this to compensate for second order effects, or a variation in response to a system controller command) will depend on the requirements of the particular motor, and are defined by the motor manufacturer.”

2. I agree with the Applicant’s broad construction of the feature; the feature excludes any speed to voltage relationship that would be unsuited to the motor. I consider this feature of the claim to be clear.

   Novelty

   Novelty Legal Principles

3. Under subsection 7(1), an invention is taken to be novel unless it is not novel in the light of the prior art base. Information in a document forms part of the prior art base for the purposes of novelty if it was published before the priority date of a claim, or the information was contained in a specification published after the priority date of the claim under consideration and, if that information is, or were to be, the subject of a claim of the specification, that claim has, or would have, a priority date earlier than that of the claim under consideration (referred to as “whole of contents” novelty).

4. It is well established that the general test for lack of novelty is the reverse infringement test. The classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr Industries Ltd, [1977] HCA 19; 137 CLR 228 at 235 [20]:

   “The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement”

5. This test is satisfied if the alleged anticipation discloses all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at 549). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).

   Novelty documents

6. The Opponent asserts that the claimed invention lacks novelty in light of US 2005/0146221A1 (Pettigrew) (which will be referred to as D1), WO2015/041805 (Torrey) (which will be referred to as D2), and US 2014/0209289 (Boot) (which will be referred to as D3).

   D1 – US 2005/146221A1 (Pettigrew)

7. D1 relates to a generator to provide power to a motor. The electrical power to the motor is adjusted to meet the requirements of the motor, without the use of a variable speed drive (VSD) between the generator and the motor. D1 shows a depiction of the prior art in figure 1 and the invention in figure 2:

8. Professor Holmes states in Holmes 1 at paragraphs 293 to 312:

   “Integers (i) and (ii)

   (i)A starting and control system for an assembly having an electric motor or motors, the system comprising:

   (ii)a generator assembly comprising an engine coupled to an alternator.

   Pettigrew 1 concerns a power system for starting and controlling electric motors (including electric motors in submersible pumps). For example, page 5, lines 16-18 of Pettigrew 1 states that:

   "The present invention is a variable frequency power system to drive a three phase electrical motor at the frequency, voltage and amperage, as required by the motor operation to drive a driven unit."

   Pettigrew 1 at page 5, lines 28-29 states that:

   "The variable frequency power system can be programmed with start-up, steady-state operation, and emergency shutdown parameters for the driven unit."

   The system in Pettigrew 1 includes an engine that drives a three-phase electrical generator "designed for variable frequency operation" (page 8, lines 12-13). The generator supplies an "electric submersible pump [that] is driven by [an] alternating current (AC) three phase electrical motor" (page 5, lines 20-21). Therefore, Pettigrew 1 meets the requirements of integers (i) and (ii) of claim 1.

   Integers (iii) to (vii)

   (iii)an automatic voltage regulator (AVR) for controlling voltage output of the alternator;

   (iv)an engine control unit (ECU) for controlling an operation of the generator engine;

   (v)a system controller connected to the AVR and operable to control the AVR,

   (vi)the system controller controlling the manner in which the AVR controls the alternator voltage output,

   (vii)the system controller being connected to the ECU and operable to control the manner in which the ECU controls the generator engine speed and therefore frequency of the voltage output from the alternator;

   The system described in Pettigrew 1 is an excitation controller (AVR) for varying the voltage output of the electrical generator (page 7, lines 2-3 and lines 15-17). The excitation controller, in turn, adjusts the output voltage of the electrical generator. For example, at page 6, lines 7-9, Pettigrew 1 explains that:

   "The system controller of the variable frequency power system controls the

   generator ... output voltage"

   A system controller is described that controls the speed of the engine that drives the electric generator (i.e. an ECU). For example, at page 6, lines 7-9, Pettigrew 1 explains that the "system controller of the variable frequency power system controls the generator speed..." And again, at page 6, lines 24-25, Pettigrew 1 states that the "engine includes a throttle that is regulated by the system controller." Furthermore, at page 5, lines 24-26, Pettigrew 1 states that "The variable frequency power system includes a specially programmed logic circuit.., which interfaces with the power source of the generator... designed to monitor and control the driven unit... ".

   The system controller is connected to, and controls, the excitation controller. For example, at page 8, lines 19-20, Pettigrew 1 explains that "the system controller interfaces with the throttle device and the excitation controller...".

   The system controller varies engine speed to, in turn, varying the generator output voltage frequency. Pettigrew 1 at page 7, lines 18-20, states that:

   "A system controller is used to control the frequency output of the electrical generator by controlling the engine throttle device, speed control settings and also controls the on-off function of the switchboard."

   Furthermore, at page 8, lines 16-18, Pettigrew 1 states that:

   "an increase or decrease in engine speed would in turn increase or decrease the frequency of generated three phase power being supplied to the three phase motor by the generator."

   Therefore, Pettigrew 1 meets the requirements of integers (iii) to (vii) of claim 1.

   Integer (viii)

   (viii)wherein parameter set points are set in the system controller,

   The system controller described in Pettigrew 1 is able to be programmed with parameter set points associated with the electric motor and system generally. At page 7, lines 24-25, Pettigrew 1 states that:

   "... to monitor, control and adjust the power to the motor by numerous

   programmed parameters in the system controller."

   Therefore, Pettigrew meets the requirements of integer (viii) of claim 1.

   Integers (ix) and (x)

   (ix)and the system controller receives sensor signals and based on type of control selected - selected from fluid flow, fluid pressure and fluid level —

   (x)the system controller is configured and operable to control the AVR and/or the ECU to vary the speed of the generator engine and the alternator voltage output by the generator assembly so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and

   The system controller in Pettigrew 1 receives signals from sensors. At page 8, lines 19-25, Pettigrew 1 explains that:

   "The system controller interfaces with the throttle device and the excitation controller to monitor, control and regulate the desired operating parameters of the electric motor. The system controller adjusts the speed based on monitored readings and the desired operating conditions of the motor for any one particular drive unit application. The monitored readings can be from sensors at the motor or in the case of an electric submersible pump, at the pump itself"

   Pettigrew 1 does not place a limitation on the way that sensor signals are received and used for control purposes. For example, page 6, lines 9-10, Pettigrew 1 explains that:

   "... it is capable of accepting inputs from external sources to control the operation

   of the entire system."

   As I explained at paragraph 218 above, in my opinion, the system controller needs to be capable of being configurable to at least enable the selection between the fluid flow, fluid pressure and fluid level to meet the requirements of claim 1. The system controller in Pettigrew 1 is clearly capable of being configured to use standard pump control variables, such as pressure, level and flow.

   For example, at page 6, lines 10-12, Pettigrew 1 describes that in examples where the system is used to power electric submersible pumps, "current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings...". At page 2, lines 13-16, Pettigrew 1 provides context for the use of the described VSG system with respect to pumps for bores. Pettigrew 1 indicates that changes in fluid conditions can occur in a bore when being pumped by electric submersible pumps. Furthermore, line 20 on page 2 of Pettigrew 1 explains that changes in these fluid conditions can be "accommodated by varying the power supply frequency to the motor of the pump...". This indicates that the control type of the VSG can be varied based on measured pumping parameters, which includes level, pressure and flow.

   As I explained at paragraphs 297 and 304 above, the system controller in Pettigrew 1 is configured and operable to control the ECU (engine throttle) to vary the speed of the engine and therefore the alternator voltage output by the generator assembly so that the speed of the electric motor varied to maintain the operational set points.

   Therefore, Pettigrew 1 meets the requirements of integers (ix) and (x) of claim 1.

   Integer (xi)

   (xi)wherein alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed which maintains the speed to voltage relationship required to suit the motor or motors' electrical characteristics.

   Pettigrew 1 at page 7, lines 16-17, describes controlling the alternator voltage by the system controller and AVR "... to provide the appropriate voltage required by the motor" (i.e. the constant volts-to-Hertz requirements as detailed at paragraph 103 and 104 above). In my opinion, this is the required speed to voltage relationship referred to in integer (xi) of claim 1.

   Furthermore, Pettigrew 1 at page 6, lines 2-4, states that:

   "The system controller would be responsible for adjusting and monitoring the generator output, and would adjust the generator to any voltage and frequency required by the driven unit within the effective operational limits of the generator"

   Hence Pettigrew 1 clearly proposes an ability to not only maintain a constant volts-per-Hertz relationships, but also to vary the alternator voltage arbitrarily away from this relationship in response to a system controller command. Therefore, regardless of the type of speed to voltage relationship proposed in integer (xi) of claim 1 (referencing the clarity issue regarding the form of AVR control that I identified in paragraph 225 above), Pettigrew 1 meets the requirements of integer (xi) of claim 1.”

9. The Applicant disagreed that D1 discloses: the ECU, Parameter set-points, and types of control (fluid flow, fluid pressure and fluid level) as presently defined in the claims. These features are discussed in more detail below. I am satisfied that the uncontested features of claim 1 are disclosed in D1 as explained by Professor Holmes.

   ECU

10. The Applicant states in their submissions at paragraphs 123 to 125:

    “Properly understood, Pettigrew discloses an electronically controlled throttle not an ECU. Notwithstanding that the throttle can perform essentially the same function as an ECU (although not as precisely), it is a different device. The two devices perform similar functions in a different manner. This is fatal for each Opponent’s case.”

11. It is unclear what distinction the Applicant is drawing between an “engine control unit” and “electronic speed controller to control the speed of the engine”. As previously discussed in this decision in the construction, an ECU only requires some kind of electronic control of the engine speed; that is, not a purely mechanical control (e.g. valves controlling the rate of fuel and air).

12. D1 states at the second sentence of paragraph 15:

    “The throttle device is usually a combination of a throttle and electronic speed controller to control the speed of the engine, and thus control the turning frequency of the engine.”

13. It is clear from this sentence that D1 discloses an ECU.

    Parameter set-points

14. D1 states at paragraph 11:

    “The system controller would be responsible for adjusting and monitoring the generator output, and would adjust the generator to any voltage and frequency required by the driven unit within the effective operational limits of the generator. Not only can this equipment allow for desired steady-state operational parameters, it can be set up to allow for completely different parameters during start-up of high power draw electrical devices, such as electric motors, or to react to monitored inputs of the driven unit. The system controller of the variable frequency power system controls the generator speed and output voltage, it is capable of accepting inputs from external sources to control the operation of the entire system. In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed.”

15. The Applicant states in their submissions at paragraphs 128 to 129:

    “Waterreus gives evidence that the reference to “operational parameters” in the above passage is not a reference to the set-point control that is described and claimed. He makes the distinction between process sensors and equipment/load sensors. Process sensors measure conditions external to the equipment, such as the fluid pressure (which can be measured anywhere along an outlet pipe). Equipment sensors measure conditions of the equipment itself, such as current draw, voltage, temperature and the like.

    Pettigrew on page 8 lines 19 to 24 states:

    “The system controller interfaces with the throttle device and the excitation controller to monitor, control and regulate the desired operating parameters of the electric motor …The monitored readings can be from sensors at the motor or in the case of an electric submersible pump, at the pump itself”.

    Properly understood, Pettigrew is there [sic] describing monitoring of the condition of the motor and/or pump, with a view to maintaining the operation of the equipment within safe operating limits; that is, within a safe range for each operating parameter. In contrast, the invention described and claimed in the Opposed Application involves monitoring external parameters, (described in the opposed specification as being done by a ‘load environment sensor’) with a view to maintaining one of those parameters at a desired set-point

16. I consider that ‘desired steady-state operational parameters’ disclosed in D1 is equivalent to the ‘parameter set-point’ defined in the claim.

17. I agree with the Applicant that ‘desired steady-state operational parameters’ disclosed in D1 is a parameter of the pump/motor. However, the ‘parameter set-point’ defined in the claim can include both external parameters (such as the water level which the pump is controlling) and internal parameters (such as the condition of the pump/motor). This is made clear in claim 19 which provides a list of parameter set-points which includes internal parameters of the motor such as belt speed and torque.

18. D1 discloses the feature of a ‘parameter set-point’.

    Types of control (fluid flow, fluid pressure and fluid level)

19. The Applicant states in their submissions:

    “Anderson appears to contend that because Pettigrew refers to the ability to be programmed with “numerous programmed parameters” this in combination with CGK represents an enabling disclosure of the claimed limitation. The justification for this seems to be that Pettigrew “can be programmed” in the manner of the claimed invention. Again, this is an impermissible attempt to supplement what is disclosed in Pettigrew by adding features drawn from common general knowledge.”

20. D1 discloses at the last sentence of paragraph 3:

    “These varying fluid production conditions can be accommodated by the varying of the power supply frequency to the motor of the pump to maximize oil production from wells.”

21. D1 discloses at paragraph 11 controlling ‘pump operating pressure’; the last 3 sentences of paragraph 11 state:

    “In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed. The variable frequency power system can also include a human-machine interface. The human-machine interface can include a display screen and input buttons to allow an operator the ability to select desired operational and startup routines, monitor operating system parameters, or to modify operational parameters as needed without requiring in-depth knowledge of the underlying hardware and code of the system controller.”

22. In light of the following sentence which states: “In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed.” it could be inferred that ‘external sources’ includes parameters from the pump/motor.

23. D1 discloses the measure of ‘pump operating pressures’. The question is whether measuring pump pressure is the same as measuring ‘fluid pressure’ as claimed. I consider the “pump operating pressures” is inherently referring to both the inlet pressure and the outlet pressure since measuring only one of inlet and outlet pressure provides inadequate information to determine how the pump is operating. The Applicant accepts that outlet pressure is a measure of fluid pressure (see paragraph 128 of their submissions). D1 therefore discloses the feature of fluid pressure being used as a control input.

    D1 – US 2005/0146221 (Pettigrew) – conclusion – independent claims

24. D1 discloses all the features defined in claims 1 and 20. Therefore, claims 1 and 20 are not novel in light of D1.

    D2 – WO2015/041805 (Torrey)

25. D2 relates to a generator to provide power to a motor. The electrical power to the motor is ‘converterless’ and adjusted to meet the requirements of the motor, without the use of a variable speed drive (VSD) between the generator and the motor. D2 shows a depiction of the prior art in figure 1 and the invention in figure 2:

26. Professor Holmes states in Holmes 1 at paragraph 352 to 371:

    Integers (i) and (ii)

    (i)A starting and control system for an assembly having an electric motor or motors, the system comprising:

    (ii)a generator assembly comprising an engine coupled to an alternator;

    As I explained at paragraph 170 above, in principle, Torrey describes the same basic VSG concept as Pettigrew 1 (i.e. control the prime mover speed to vary the output AC frequency). Similarly to Pettigrew 1, Torrey describes controlling the generator excitation (AVR) to control the output voltage to match the requirement of the pump motor (i.e. the expected constant voltage to frequency ratio). In my opinion, Torrey describes the application of established electrical engineering knowledge to a particular area of electrical motor control (i.e. the oil and gas industry).

    The VSG in Torrey is suitable for operating an electric motor (34 in Figure 3) on a variable speed basis. Similar to Pettigrew 1, the motor in Torrey is an electric submersible pump (26 in Figure 3). The VSG in Torrey includes a prime mover (21 in Figure 2) that drives an AC generator (22 in Figure 2). For example, at paragraph [0006] Torrey states that:

    "According to one embodiment, a con verterless motor-driven pump system comprises: at least one off-grid prime mover ... at least one electric power generator driven by the at least one off-grid prime mover to generate AC power... "

    Therefore, Torrey meets the requirements of integers (i) and (ii) of claim 1.

    Integers (iii) to (vii)

    (iii)an automatic voltage regulator (AVR) for controlling voltage output of the alternator;

    (iv)an engine control unit (ECU) for controlling an operation of the generator engine;

    (v)a system controller connected to the AVR and operable to control the AVR,

    (vi)the system controller controlling the manner in which the AVR controls the alternator voltage output,

    (vii)the system controller being connected to the ECU and operable to control the manner in which the ECU controls the generator engine speed and therefore frequency of the voltage output from the alternator,-

    The VSG in Torrey includes an exciter (39 in Figure 3) which controls the output voltage of the AC generator 22. This corresponds to the AVR described in claim 1. At paragraph [0020], Torrey explains that the system controller 36 "... commands the generator exciter 39 of the synchronous generator 22...".

    As is explained in paragraph [0006] of Torrey, the prime mover 21 includes a throttle control (38 in Figure 3) and operates in response to "... a throttle control command to control a rotation speed of the rotational driveshaft...". This corresponds to the ECU described in claim 1. Throttle control is provided by a system controller 36. Therefore, the functionality of the ECU is provided by the system controller. As I explained at paragraph 210 above, claim 1 includes a situation where the system controller also includes the functionality of the ECU.

    The system controller 36 adjusts the prime mover 21 speed to, in turn, vary the voltage and frequency that is supplied by the generator 22 to the connected electric motor 34. For example, at paragraph [0022], Torrey explains that:

    "According to another aspect, the system controller 36 monitors the voltage, frequency and current being supplied to the motor 34, and generates the prime mover throttle control command in response to the monitored information to modify control of the prime mover 21."

    Therefore, Torrey meets the requirements of integers (iii) to (vii) of claim 1.

    Integer (viii)

    (viii)wherein parameter set points are set in the system controller,

    The system controller 36 in Torrey monitors operating conditions and controls the VSG to maintain operating set points. For example, at paragraph [0020], Torrey states that:

    "The programmable system controller 36 is responsible for monitoring the pump operating conditions, including without limitation input and output pressures, pump temperature(s), pump vibration levels, and pump rotational speed, and commanding the throttle position control 38 of the prime mover 1 that will drive the pump 26 output to the desired pump operating point in response to one or more of the monitored operating conditions. According to one aspect, the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly."

    At para. [0029], Torrey further explains that "[t]he monitored operating data is acquired by a system controller 36 that determines whether the prime mover driveshaft should be rotating at a different speed."

    Therefore, Torrey meets the requirements of integer (viii) of claim 1.

    Integers (ix) and (x)

    (ix)and the system controller receives sensor signals and based on type of control selected - selected from fluid flow, fluid pressure and fluid level —

    (x)the system controller is configured and operable to control the AVR and/or the ECU to vary the speed of the generator engine and the alternator voltage output by the generator assembly so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and

    The VSG in Torrey is connected to sensors that monitor operating conditions associated with the pump 26. For example, at para. [0029], Torrey states that:

    "A sensor package 28 that may comprise, without limitation, various pressure sensors, temperature sensors, vibration sensors, and speed sensors associated with the submersible well pump 26 function to monitor operating conditions including without limitation, pump inlet pressure, pump vibration levels, pump rotational speed, and temperatures at desired points associated with the submersible well pump 26, as represented in block 46. The monitored operating data is acquired by a system controller 36 that determines whether the prime mover driveshaft should be rotating at a different speed."

    Therefore, the system controller 36 in Torrey is able to be configured to maintain set points. Torrey specifically states that there is no limitation placed on the types of operating conditions that may be monitored and maintained, and thus control types that could be selectively configured into the system controller. For example, at para. [0020] Torrey states that "[t]he programmable system controller 36 is responsible for monitoring the pump operating conditions, including without limitation ...". Torrey also explains that the operating conditions may include fluid pressure (see, for example, paras. [0006], [0007], [0014-16], [0020] and [0029-30]).

    As I explained at paragraph 218, in my opinion, the system controller needs to be capable of being configurable to enable the selection between the fluid flow, fluid pressure and fluid level to meet the requirements of claim 1. The system controller in Torrey is clearly capable of being configured to operate with standard pump control parameters, such as pressure, level and flow.

    Furthermore, as I explained above at paragraphs 356 to 357 and 359, the system controller in Torrey is configured and operable to control the ECU (engine throttle) to vary the speed of the engine and therefore the alternator voltage output by the generator assembly so that the speed of the electric motor varied to maintain the operational set points.

    Therefore, Torrey meets the requirements of integers (ix) and (x) of claim 1.

    Integer (xi)

    (xi)wherein alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed which maintains the speed to voltage relationship required to suit the motor or motors' electrical characteristics.

    The generator exciter 39 in Figure 3 of Torrey, which is controlled by the system controller 36, supports the output voltage of the generator 22 increasing and decreasing in proportion to changes in engine speed. For example, at paragraph [0015] Torrey explains that the respective speeds of the prime mover 21 and generator 22 may be matched.

    At paragraph [0020], Torrey states that:

    "According to one aspect, the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly." (emphasis added)

    At paragraph [0029], Torrey states that:

    "According to one embodiment, the system controller 36 also monitors the rotational speed of the prime mover driveshaft via one or more speed sensors 25 associated with the driveshaft of the prime mover 21, and commands the exciter 39 of a generator 22 to supply an appropriate level of excitation to the generator 22 when the generator 22 is a synchronous generator, as represented in block 50." (emphasis added)

    As I explained at paragraph 170 above, it is my understanding (as was the case when I first considered Torrey before considering the 650 Patent Application) that the purpose of controlling the generator excitation (AVR), as is described at paragraphs [0020] and [0029], is to ensure that the genset output voltage matches the electrical requirement of the pump motor (i.e. a constant volts-per-Hertz ratio).

    Torrey describes controlling the alternator voltage by the system controller and AVR to achieve this objective. Therefore, regardless of the type of speed to voltage relationship proposed in integer (xi) of claim 1 (referencing the clarity issue regarding the form of AVR control that I identified in paragraph 225 above), Torrey meets the requirements of integer (xi) of claim 1.”

1. The Applicant disagreed that D2 discloses: the AVR, ECU, Parameter set-points, and types of control (fluid flow, fluid pressure and fluid level) as presently defined in the claims. These features are discussed in more detail below. I am satisfied that the uncontested features of claim 1 are disclosed in D2 as explained by Professor Holmes.

   AVR

2. D2 states at paragraph 20:

   “According to one aspect, the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly.”

3. D2 states at paragraph 29:

   “According to one embodiment, the system controller 36 also monitors the rotational speed of the prime mover driveshaft via one or more speed sensors 25 associated with the driveshaft of the prime mover 21, and commands the exciter 39 of a generator 22 to supply an appropriate level of excitation to the generator 22 when the generator 22 is a synchronous generator, as represented in block 50.”

4. D2 states at paragraph 32:

   “Since some applications may employ a permanent magnet generator that does not require excitation, it can be appreciated that a generator exciter will not be required in such applications. The use of a permanent magnet generator further simplifies the converterless ESP system 30 without sacrificing performance, as stated herein.”

5. The Applicant states:

   “Torrey describes a non-automatic voltage regulator which controls excitation based on rotational speed of the drive shaft, that is, engine speed. There is broad agreement that an AVR measures and controls output voltage, rather than setting excitation based on engine speed. However, there is no evidence that the excitor of Torrey works in this fashion, and no obvious reason why an AVR would be used instead of a simple regulator.

   Spirovski, Rosewarne, Holmes and Islam all refer to the abovementioned passages as disclosing an AVR. This evidence is contradicted by Waterreus who explains the differences between the non-automatic voltage regulator disclosed in Torrey and the automatic voltage regulator (AVR) of the present invention. As Waterreus explains, the key difference is that the AVR of the invention controls excitation based on measured output voltage (a feedback loop using a voltage setpoint), whereas the non-automatic voltage regulator of Torrey controls excitation based on engine speed. The AVR of the invention provides more precise control than Torrey’s non-automatic voltage regulator.

   Mr Spirovski does not address the difference between the non-automatic voltage regulator of Torrey and the AVR of the invention. Mr Rosewarne “understands” the generator excitor of Torrey to be an AVR but provides no basis for this assertion. Prof Holmes posits that “the system controller must include the functionality of an AVR”, although it is not clear on what basis he makes that assertion. This is no evidence that the exciter disclosed in Torrey is an AVR as claimed.”

6. The Opponent states in their submissions:

   “LAA submits that the voltage regulator system disclosed in D1 comprises an exciter that varies the alternator output voltage based solely on the generator engine speed and does not regulate the output voltage by automatically measuring and adjusting that voltage. LAA relies on the evidence provided in Waterreus 1 at [20(i)] in support of this contention. In that evidence, Mr Waterreus only offers a construction of the term “generator excitor” as claimed in D1. He does not appear to appreciate that the excitor forms part of the broader voltage regulator system disclosed in D1. Mr Waterreus does not address any of the information given in the description or drawings of D1 and reaches his conclusion without any consideration of such information.

   The system disclosed by the `650 Application operates on the basis that the frequency of the AC power produced by the alternator is the same as the frequency of the generator’s rotating drive shaft (i.e., the generator’s speed). This fundamental premise forms an essential integer of claim 1 of the `650 Application, which reads: “the ECU controls the generator engine speed and therefore frequency of the voltage output from the alternator”. A voltage regulator system that varies alternator output voltage based on the speed/frequency of a connected generator engine also, therefore, necessarily varies the output voltage based on the alternator’s voltage frequency. D1 discloses that the system controller in D1 commands the exciter based on the engine/alternator frequency to control the alternator output voltage and, therefore, pump speed. On this basis, the system controller and exciter disclosed in D1 together function as, and amount to, an AVR as claimed.”

7. I previously found that an AVR is a feedback control system, whereas a voltage regulator does not rely on feedback (and instead on a reference voltage).

8. I consider that the excitor generator is under a feedback control system (for example, last sentence of paragraph 29). I am satisfied that D2 discloses an AVR.

   ECU

9. The Applicant states in their submissions:

   “As submitted above in relation to Pettigrew, an electronically controlled throttle may perform essentially the same function as an ECU but it is not the same device as an ECU. The two devices perform a similar function in different manner. This is fatal to the Opponents’ case.”

10. I have found an ECU is electronically controlled. I am satisfied that the control of the engine is electronic, therefore this feature is disclosed in D2.

    Parameter set-points

11. D2 states at paragraph 20:

    “The programmable system controller 36 is responsible for monitoring the pump operating conditions, including without limitation input and output pressures, pump temperature(s), pump vibration levels, and pump rotational speed, and commanding the throttle position control 38 of the prime mover 1 that will drive the pump 26 output to the desired pump operating point in response to one or more of the monitored operating conditions. According to one aspect, the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly.”

12. D2 states at paragraph 29:

    “A sensor package 28 that may comprise, without limitation, various pressure sensors, temperature sensors, vibration sensors, and speed sensors associated with the submersible well pump 26 function to monitor operating conditions including without limitation, pump inlet pressure, pump vibration levels, pump rotational speed, and temperatures at desired points associated with the submersible well pump 26, as represented in block 46. The monitored operating data is acquired by a system controller 36 that determines whether the prime mover driveshaft should be rotating at a different speed. The system controller 36 then transmits an appropriate throttle control command 38 to the prime mover 21, causing the prime mover driveshaft to rotate faster or slower as necessary to ensure the submersible well pump 26 is operating at the desired operating point, as represented in block 48. According to one embodiment, the system controller 36 also monitors the rotational speed of the prime mover driveshaft via one or more speed sensors 25 associated with the driveshaft of the prime mover 21, and commands the exciter 39 of a generator 22 to supply an appropriate level of excitation to the generator 22 when the generator 22 is a synchronous generator, as represented in block 50.”

13. The Applicant states in their submissions:

    “As in the case of Pettigrew, Torrey is describing monitoring the condition of the equipment, with a view to maintaining the operation within safe parameters. The present invention proposes monitoring external parameters, with a view to maintaining one of these parameters at a desired set-point. Tellingly, Torrey does not disclose constant adjustment of the driveshaft speed in response to any change in operating conditions (that is, set-point control). Rather, the language of Torrey is “should the speed be changed”. This is strongly suggestive of monitoring for operation within safe ranges rather than set-point control.”

14. I consider that the “desired pump operating point” is equivalent to the parameter set point defined in the claims. D2 discloses the feature of parameter set-points.

    Types of control (fluid flow, fluid pressure and fluid level)

15. Torrey discloses monitoring the pump outlet pressure. As found previously in this decision, outlet pressure is equivalent of fluid pressure. Therefore, this feature is disclosed in D2.

    D2 – WO2015/041805 (Torrey) – conclusion - independent claims

16. D2 discloses all of the features defined by claims 1 and 20. Therefore, claims 1 and 20 are not novel in light of D2.

    D3 – US 2014/0209289 (Boot)

17. The abstract of D3 provides a useful summary of the invention:

    “An independent power system provides electrical power to an electric Submersible pumping system positioned in a well that produces petroleum products. The independent power system includes a generator and an engine connected to the generator. The engine is preferably provided with combustible gases from the petroleum products of the well. The independent power system further includes an integrated control system that is connected to the electric Submersible pumping system and the generator. The independent power system is configured to balance the loads created by the electric submersible pumping system with the output from the electrical generator.”

18. The invention of D3 is best illustrated in Figure 2:

19. Professor Holmes explains in Holmes 1 at paragraphs 400 to 416 where he believes the integers of claim 1 are disclosed in D3:

    “Integers (i) and (ii)

    (i)A starting and control system for an assembly having an electric motor or motors, the system comprising:

    (ii)a generator assembly comprising an engine coupled to an alternator;

    As I explained at paragraph 162 above, the second embodiment that Boot describes is a VSG whereby the functionality of a VSD is incorporated into the prime mover alternator system. Within the limits of the description given in Boot, this is much the same VSG concept as in Pettigrew 1, My Solution and Torrey.

    As was the case in Pettigrew 1 and Torrey, Boot describes a VSG that is suitable for use with electric submersible pumps. Although not described in detail, the VSG necessarily must include some form of start-up functionality, to support the start-up sequence described in para. [0030].

    The VSG in Boot includes an engine coupled to an alternator (112 and 142 in Fig. 3 of Boot). At para [0029], Boot explains that:

    "In the alternate embodiment depicted in FIG. 3, the variable frequency drives 126 have been removed and replaced with a variable frequency alternator 142. The variable frequency alternator 142 is configured to provide current at an output frequency that is dependent on the speed at which the engine 112 is operated."

    Therefore, Boot meets the requirements of integers (i) and (ii) of claim 1.

    Integers (iii) to (vii)

    (iii)an automatic voltage regulator (AVR) for controlling voltage output of the alternator,

    (iv)an engine control unit (ECU) for controlling an operation of the generator engine;

    (v)a system controller connected to the AVR and operable to control the AVR,

    (vi)the system controller controlling the manner in which the AVR controls the alternator voltage output,

    (vii)the system controller being connected to the ECU and operable to control the manner in which the ECU controls the generator engine speed and therefore frequency of the voltage output from the alternator;

    The control module 122 of the VSG in Boot includes an AVR 134. At paragraph [0024] Boot explains that:

    "The automatic voltage regulator 134 and filter 136 are used to condition the power supplied by the genset 102 and to remove or diminish the voltage waveform distortions and harmonics within the independent power system 100."

    It is clear by comparing Figure 2 and Figure 3 of Boot that the second embodiment of the VSG does not include a VFD and instead directly connects the AVR controlled output of the generator to the load system. Although not described, in this embodiment, the AVR therefore must be controlled to maintain the genset output voltage magnitude at a value to suit the load system as the speed and output frequency change (i.e. a constant volts-per-Hertz relationship).

    The control module 122 in Boot also includes the functionality of an ECU. For example, at paragraph [0013] Boot explains that the control system 106 of the control module 122 monitors and adjusts the output of the genset 102. At paragraph 0029], Boot also explains that "... to increase the speed of the electric submersible pumping systems 116, the speed of the engine 112 is increased, which in turn increases the frequency of the current supplied by the alternator 142." The control module 122 in Boot adjusts the engine 112 speed to, in turn, vary the frequency that is output by the alternator 142. At paragraph [0029], Boot states that:

    "The variable frequency alternator 142 is configured to provide current at an output frequency that is dependent on the speed at which the engine 112 is operated. To increase the speed of the electric submersible pumping systems 116, the speed of the engine 112 is increased, which in turn increases the frequency of the current supplied by the alternator 142."

    Therefore, Boot meets the requirements of integers (iii) to (vii) of claim 1.

    Integer (viii)

    (viii) wherein parameter set points are set in the system controller,

    The reference to US Patent 8,347,943 relating to the operation and monitoring of electric submersible pumping systems and the identification of "Customer-specific inputs ..." in paragraph [0030], in my opinion make it clear that in operation the VSG described in Boot would necessarily use parameter set points (as is the case with all industrial control systems).

    The VSG in Boot utilises sensors that provide operational measurements associated with the system. The operational measurements include flowrate and pressure measurements relating to a pump powered by the VSG (paragraph [0019] of Boot). The control system 106 receives inputs that represent the operational measurements (paragraph [0027] of Boot). The control system 106 is configured to "... balance the power produced by the genset 102 with the demands of the electric submersible pumping systems 116" (see paragraph [0027] of Boot) in response to the inputs. This would include at least level, pressure and flow set points, as would be required by a system with a submersible pump. Thus, it is clear that parameter set points are required to enable the described control methodology take place.

    Therefore, Boot meets the requirements of integer (viii) of claim 1.

    Integers (ix) and (x)

    (ix)and the system controller receives sensor signals and based on type of control selected - selected from fluid flow, fluid pressure and fluid level —

    (x)the system controller is configured and operable to control the AVR and/or the ECU to vary the speed of the generator engine and the alternator voltage output by the generator assembly so that the speed of the electric motor or motors is appropriately varied to maintain the parameter set points, and

    The VSG in Boot is connected to sensors that monitor operating conditions associated with the pumping system 116. For example, at paragraph [0019], Boot states that:

    "The electric submersible pumping system 116 further includes a series of sensors that output signals representative of various operational characteristics, including, for example, flowrate, temperature, pressure..."

    As was the case with Torrey, Boot specifically indicates that there is no limitation (i.e. use of the phrase "... including, for example..." in paragraph [0019]) placed on the types of operating conditions that may be monitored and maintained, and thus control types that could be selectively configured into the system controller. As I explained at paragraph 218, in my opinion, the system controller needs to be capable of being configurable to enable the selection between the fluid flow, fluid pressure and fluid level to meet the requirements of claim 1. The system controller in Boot is clearly capable of being configured to operate with standard pump control parameters, such as pressure, level and flow.

    Furthermore, as I explained above at paragraph 405, the system controller in Boot is configured and operable to vary the speed of the engine and therefore the alternator voltage output by the generator assembly so that the speed of the electric motor is varied to maintain the operational set points.

    Therefore, Boot meets the requirements of integers (ix) and (x) of claim 1.

    Integer (xi)

    (xi)wherein alternator voltage is controlled by the system controller and the AVR to increase or decrease in proportion to changes in engine speed which maintains the speed to voltage relationship required to suit the motor or motors' electrical characteristics.

    With respect to Boot's second embodiment in Figure 3 (which describes a VSG that otherwise meets the requirements of claim 1), control of the AVR is not explicitly discussed. Based on the generally accepted knowledge that I described at paragraphs 103 to 104 above, it is my opinion that the AVR in this embodiment would have to be controlled similarly to Pettigrew 1, Torrey, My Solution and the 650 Patent Application, to ensure that a constant volts-per-Hertz supply is provided to the pump(s) as the genset frequency is varied, at least to the level of maintaining a constant volts-per-Hertz characteristic as described in paragraph 225. Therefore, in my opinion, Boot implicitly meets the requirements of integer (xi).

    On the basis of my analysis set out at paragraphs 400 to 415 above, I am of the opinion that the Boot discloses each of the features of claim 1 of the 650 Patent Application.”

20. The Applicant disagreed that D3 discloses: the ECU, Parameter set-points, and types of control (fluid flow, fluid pressure and fluid level) as presently defined in the claims. These features are discussed in more detail below. I am satisfied that the uncontested features of claim 1 are disclosed in D3 as explained by Professor Holmes.

    ECU

21. Professor Holmes states in Holmes 1 at paragraph 406:

    The control module 122 in Boot also includes the functionality of an ECU. For example, at paragraph [0013] Boot explains that the control system 106 of the control module 122 monitors and adjusts the output of the genset 102. At paragraph [0029], Boot also explains that "... to increase the speed of the electric submersible pumping systems 116, the speed of the engine 112 is increased, which in turn increases the frequency of the current supplied by the alternator 142." The control module 122 in Boot adjusts the engine 112 speed to, in turn, vary the frequency that is output by the alternator 142. At paragraph [0029], Boot states that:

    "The variable frequency alternator 142 is configured to provide current at an output frequency that is dependent on the speed at which the engine 112 is operated. To increase the speed of the electric submersible pumping systems 116, the speed of the engine 112 is increased, which in turn increases the frequency of the current supplied by the alternator 142."

22. I consider it to be inherent that the control of the engine speed is electronic. Thus D3 discloses an ECU.

    Parameter set-points

23. D3 discloses at paragraph 19:

    “The electric submersible pumping system 116 further includes a series of sensors that output signals representative of various operational characteristics, including, for example, flowrate, temperature, pressure, vibration and unintended leakage within the electric Submersible pumping system 116.”

24. D3 discloses at paragraph 27:

    The integrated control system 106 receives inputs representative of the operational characteristics of the electric Submersible pumping systems 116. The integrated control system 106 also receives inputs from the genset 102 and other components within the independent power system 100. In response to these inputs, the integrated control system 106 is configured to balance the power produced by the genset 102 with the demands of the electric Submersible pumping systems 116 and other loads within the independent power system 100.

1. Professor Holmes states in Holmes 1 at paragraphs 408 and 409:

   “The reference to US Patent 8,347,943 relating to the operation and monitoring of electric submersible pumping systems and the identification of "Customer-specific inputs ..." in paragraph [0030], in my opinion make it clear that in operation the VSG described in Boot would necessarily use parameter set points (as is the case with all industrial control systems).

   The VSG in Boot utilises sensors that provide operational measurements associated with the system. The operational measurements include flowrate and pressure measurements relating to a pump powered by the VSG (paragraph [0019] of Boot). The control system 106 receives inputs that represent the operational measurements (paragraph [0027] of Boot). The control system 106 is configured to "... balance the power produced by the genset 102 with the demands of the electric submersible pumping systems 116" (see paragraph [0027] of Boot) in response to the inputs. This would include at least level, pressure and flow set points, as would be required by a system with a submersible pump. Thus, it is clear that parameter set points are required to enable the described control methodology take place.”

2. I am satisfied that parameter set-points as defined in the claims are inherent in D3. There is no explanation by the Applicant or any of the experts as to how D3 could operate without parameter set-points.

   Types of control (fluid flow, fluid pressure and fluid level)

3. Boot discloses at paragraph 15:

   “Demand from the loads 108 can be predicted by the integrated control system 106 based on scheduled operational changes, historic patterns of operation or from variation in operational characteristics. For example, if the load 108 is an electrical pump, the power demand for the electrical pump can be predicted based on the flowrate of the discharge from the pump. As the flowrate increases or decreases, the integrated control system 106 can be configured to predict an upcoming change in demand for the electric motor and adjust the output of the genset 102 accordingly.”

4. The flow rate of the outlet of the pump is sensed and the data fed back into the control of the system. Thus, the feature of controlling on the basis of fluid flow, fluid pressure or fluid level is disclosed in D3.

   D3 – US 2014/0209289 (Boot) – Conclusion - independent claims

5. D3 discloses all the features defined in claims 1 and 20, thus claims 1 and 20 lack novelty in light of D3.

   Dependent claims

   Claims 2 and 15

6. Claim 2 states:

   A starting and control system as claimed in claim 1, wherein the system controller is controlled by a human machine interface (HMI) coupled to the system controller.

7. Claim 15 states:

   The starting and control system of claim 2 wherein the type of control and the parameter set point levels to be controlled are programmable through the HMI of the system controller.

8. D1 discloses a human machine interface HMI (for inputting parameter set point levels) at paragraph 11:

   “The variable frequency power system can also include a human-machine interface. The human machine interface can include a display screen and input buttons to allow an operator the ability to select desired operational and startup routines, monitor operating system parameters, or to modify operational parameters as needed without requiring in-depth knowledge of the underlying hardware and code of the system controller.”

9. D2 discloses a human machine interface HMI (for inputting parameter set point levels) at paragraph 21:

   “The system controller 36 may communicate with a remote operations center 37 that is able to monitor system operation and modify system operating objectives without requiring action of a local operator”

10. Professor Holmes states in Holmes 1 at paragraph 418:

    “While I expect [an HMI] to be part of the system described in Boot (as is the case with most industrial control systems), Boot does not explicitly refer to an HMI that enables an operator to interact with the system controller for control purposes.”

11. I consider that the claimed HMI (for inputting parameter set point levels) is inherently disclosed in D3.

    Claims 3, 4 and 10

12. Claim 3 states:

    A starting and control system as claimed in claim 1, wherein the system controller is controlled by a remote control centre.

13. Claim 4 states:

    A starting and control system as claimed in claim 3, further comprising a network interface, the network interface connecting the system controller to the remote control centre via a network.

14. Claim 10 states:

    The starting and control system of claim 1 wherein the system controller is a microprocessor and/or microcontroller system which receives instructional input from a human machine interface and/or a remote control centre.

15. D1 discloses at paragraph 11:

    “The variable frequency power system can also include a human machine interface. The human-machine interface can include a display screen and input 15 buttons to allow an operator the ability to select desired operational and startup routines, monitor operating system parameters, or to modify operational parameters as needed without requiring in-depth knowledge of the underlying hardware and code of the system controller.”

16. D2 discloses at paragraph 21:

    “The programmable system controller 36 may comprise, without limitation, one or more computers and/or data processors/devices and associated display devices. The data processors/devices may comprise one or more CPUs, DSPs and associated data storage devices, data acquisition devices and corresponding handshaking devices that may be integrated with the system controller 36 and/or distributed throughout the converterless ESP system 30. The system controller 36 may communicate with a remote operations center 37 that is able to monitor system operation and modify system operating objectives without requiring action of a local operator.”

17. D3 discloses at paragraph 30:

    “Under both embodiments depicted in FIGS. 2 and 3, the integrated control system 106 is preferably programmed to ensure that devices within the independent power system 100 and the electric submersible pumping systems 116 are started in an optimal order. The integrated control system 106 waits until one device in the start-up chain is operating correctly before starting the next device. The integrated control system 106 also ensures that pumps are started in sequence without putting too high a start-up load on the independent power system 100 and to minimize harmonics and reactive power issues. Customer-specific inputs can also be included within the integrated control system 106. For example, the integrated control system 106 can be programmed to activate electric Submersible pumping systems 116 on a priority basis to ensure that certain higher priority pumps are operational before lower priority pumps are brought online.”

18. I consider that the system controller interface defined in claims 3, 4 and 10 are disclosed in D1, D2 and D3.

    Claim 5

19. Claim 5 states:

    The starting and control system of claim 1 further comprising a circuit breaker connected between the generator assembly and the motor or motors, wherein the circuit breaker prevents the motor or motors from drawing too high a current from the generator assembly.

20. I consider a circuit breaker is inherent in the switchboard in D1 at paragraph 12:

    "The switchboard provides the stop/start function of the motor and is usually rated for the highest voltage and amp capacity required."

21. D2 discloses a circuit breaker at paragraph 6:

    "…and protection equipment comprising circuit breakers to ensure safety to personnel around the system, and provide protection to the prime mover, generator, and variable speed motor"

22. I consider a circuit breaker is inherent in the switchboard in D3 disclosed at paragraph 24:

    “In a particularly preferred embodiment, the central control module 122 includes a switchboard 132, an automatic voltage regulator 134 and a filter 136. The switchboard 132 is used to direct power supplied by the genset toward a designated load, such as the electric submersible pumping systems 116 or the loadbanks 110.”

    Claim 6

23. Claim 6 states in relation to D1:

    The starting and control system of claim 1 further comprising an I/O (Input/output) module which receives sensor signals which are sent to the system controller.

24. D1 discloses a device to receive sensor signals at paragraphs 11 and 12.

25. D2 discloses a device to receive sensor signals at paragraphs 16, 29 and Figure 3.

26. D3 discloses a device to receive sensor signals at paragraph 13.

    Claim 7

27. Claim 7 states:

    The starting and control system of claim 1 further comprising sensors for providing the system controller with indications of the current levels of respective parameters for comparing with the parameter set points,

28. D1 discloses at paragraph 11:

    "The system controller of the variable frequency power system controls the generator speed and output voltage, it is capable of accepting inputs from external sources to control the operation of the entire system. In the case of electric submersible pumps, current draw and pump operating pressures can be monitored and generator frequency and voltage can be automatically adjusted due to changes in those readings, including emergency shutdown of the pump, if needed."

29. D1 discloses the system comparing the current parameters with the parameter set points at paragraph 15:

    “The system controller adjusts the speed based on monitored readings and the desired operating conditions of the motor for any one particular drive unit application. The monitored readings can be from sensors at the motor or in the case of an electric submersible pump, at the pump itself.”

30. D2 discloses comparing current levels to parameter set points at paragraphs 20:

    " ... system controller 36 is responsible for monitoring the pump operating conditions, including without limitation input and output pressures, pump temperature(s), pump vibration levels, and pump rotational speed, and commanding the throttle position control 38 of the prime mover 1 that will drive the pump 26 output to the desired pump operating point in response to one or more of the monitored operating conditions."

31. D3 discloses comparing current levels to parameter set points at paragraph 27:

    “The integrated control system 106 receives inputs representative of the operational characteristics of the electric submersible pumping systems 116. The integrated control system 106 also receives inputs from the genset 102 and other components within the independent power system 100. In response to these inputs, the integrated control system 106 is configured to balance the power produced by the genset 102 with the demands of the electric Submersible pumping systems 116 and other loads within the independent power system 100. As the output from the genset 102 is adjusted to satisfy the demands of the Submersible pumping systems 116, the integrated control system 106 also manipulates other components within the independent power system 100 to increase the power factor of the independent power system 100 and to optimize the performance of the electric submersible pumping systems 116. As noted above, in certain circumstances it will be desirable for the integrated control system 106 to activate the loadbanks 110. The loadbanks 110 can be used to buffer changes in the overall demand on the genset 102.”

    Claims 8 and 13

32. Claim 8 states:

    The starting and control system of claim 1 wherein the system controller can send a signal to the AVR to start or stop excitation of the alternator.

33. Claim 13 states:

    The starting and control system of claim 1 wherein the system controller is connected to the generator assembly and can send instructions to start the generator and stop the generator.

34. D1 states at paragraph 17:

    "After a given period of time elapses, the system controller instructs the excitation controller to ramp up the voltage to achieve the required volts to hertz ratio to be delivered to the motor based on the driven device."

35. D2 discloses at paragraph 20:

    "…the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly"

36. D2 discloses at paragraph 29:

    "…the system controller 36 also monitors the rotational speed of the prime mover driveshaft via one or more speed sensors 25 associated with the driveshaft of the prime mover 21, and commands the exciter 39 of a generator 22 to supply an appropriate level of excitation to the generator"

37. Professor Holmes states in Holmes 1 at paragraph 424:

    “Claim 8 describes that the system controller is able to output an instruction to the AVR to start or stop its regular operation (i.e. excitation of the alternator). As I explained above at paragraph 405, the system controller described in Boot is connected to the excitation controller to control excitation of the alternator. In my opinion the system controller would have to be configured to also output instructions to the AVR that could implement start/stop functionality and therefore meets the requirements of claim 8.”

38. Professor Holmes states in Holmes 1 at paragraph 432:

    “Claim 13 describes that the system controller able to control the starting and stopping of the generator, which is a standard function of a control system for a generator. It is clear that Boot would operate in this way and therefore Boot meets the requirements of claim 13.”

39. I consider that D1, D2 and D3 each disclose a system controller which sends a signals to the AVR and the generator; these control signals inherently include start and stop signals.

    Claim 9

40. Claim 9 states:

    The starting and control system of claim 1 wherein the ECU controls an operation of the engine including engine idle speed, and engine speed and thus alternator frequency, based on instructions received from the system controller.

41. D1 discloses an ECU controlling the operation of the engine based on instruction from the system controller to be disclosed at paragraph 13:

    "A system controller is used to control the frequency output of the electrical generator by controlling the engine throttle device, speed control settings and also controls the on-off function of the switchboard."

42. D2 discloses an ECU controlling the operation of the engine based on instruction from the system controller at paragraph 20:

    “The programmable system controller 36 is responsible for monitoring the pump operating conditions, including without limitation input and output pressures, pump temperature(s), pump vibration levels, and pump rotational speed, and commanding the throttle position control 38 of the prime mover 1 that will drive the pump 26 output to the desired pump operating point in response to one or more of the monitored operating conditions. According to one aspect, the system controller 36 also monitors the shaft speed of the prime mover 21 and commands the generator exciter 39 of the synchronous generator 22 accordingly.”

43. Professor Holmes states at paragraphs 426 and 427:

    “As I explained at paragraph 405 above, Boot includes a system controller that controls the speed of the engine that drives the electric generator (i.e. an ECU). When the engine speed in Boot varies, the frequency of the electrical output of the VSG necessarily also varies.

    Similar to Torrey, Boot does not explicitly state that the system controller controls the idle speed of the engine. However, given that the system controller is able to control the speed of the engine generally, it is clear that the system controller is capable of controlling, and could control, the idle speed of the generator. Therefore, Boot meets the requirements of claim 9.”

44. I consider that an ECU controlling the operation of the engine based (and inherently including engine idle speed) on instruction from the system controller is disclosed in D3.

    Claim 11

45. Claim 11 states:

    The starting and control system of claim 1 wherein the system controller receives sensor signals from a load environment sensor, a flow meter, a pressure transmitter, or a speed sensor.

46. D1 discloses a pressure sensor signals at paragraph 11. D2 discloses outlet pressure signals at paragraph 20.

47. D3 discloses the system controller receiving sensor signals such as flow rate at paragraph 19:

    “The electric submersible pumping system 116 further includes a series of sensors that output signals representative of various operational characteristics, including, for example, flowrate, temperature, pressure, vibration and unintended leakage within the electric Submersible pumping system 116.”

    Claim 12

48. Claim 12 states:

    The starting and control system of claim 1 wherein the system controller outputs instructions to the AVR and the ECU in the form of a reference voltage, an analogue signal, a digital signal, machine code, or packetized data.

49. Although the type of electronic signal is not specified, I consider that D1, D2 and D3 must inherently be either an analogue or digital signal, since these are the only types of electronic signals.

    Claim 14

50. Claim 14 states:

    The starting and control system of claim 1 further comprising a step up transformer connected between the starting and control system and a high voltage (HV) load system to step up the output voltage from starting and control system to the voltage required by the HV load system.

51. D1 discloses a transformer between the generator and electrical motor at paragraph 16:

    “The generator can be set up with a single set of output voltage taps as shown in FIG. 3 or with multiple sets of output voltage taps as shown in FIG. 2. The use of multiple sets of output voltage taps at the generator eliminates the need for a separate transformer, which can be bulky and expensive, and yet allows for a wide range of output voltages to be produced. The operating voltage range of a generator with multiple sets of output voltage taps can be from several hundred volts to several thousand volts and can be generated at any frequency within the effective functional speed range of the motor-generator combination. Again, generator output is manipulated by the excitation controller, which allows the system controller to control and monitor the output voltage of the generator anywhere within the effective operational range of the selected output tap of the generator or transformer. A generator with multiple sets of output voltage taps can have a tap selection such as 1810, 2600 & 3640 volts or other suitable range of low, medium & high volts as is convenient to arrange during the manufacture of a given generator unit, which can be fine tuned by the excitation controller to supply the correct voltage in a range from 900-4200 volts to the motor for the operation conditions of the motor required by the drive unit. Also, a generator with multiple sets of output voltage taps can be fed into an external multiple tap transformer to achieve an even broader range of operational voltages, if required.”

52. D2 discloses a transformer between the generator and electrical motor load at paragraph 18:

    “It can be appreciated that there may be reasons to retain a transformer between the generator 22 and the motor driven pump 26 …. one aspect, the decision to retain or remove the transformer from the system 20 may be made on the basis of system optimization rather than conceptual operation of the system 20”

53. D3 discloses a transformer between the generator and electrical motor load at paragraphs 22 and 25.

    Claim 16

54. Claim 16 states:

    The starting and control system of claim 15 wherein protections are programmable to provide warnings or shutdowns on any of the sensor inputs.

55. D1 discloses programmable protections to provide emergency shutdown at paragraph 11:

    "The variable frequency power system can be programmed with startup, steady-state operation, and emergency shutdown parameters for the driven unit."

56. D2 discloses providing emergency shutdown at paragraph 30:

    "For reasons of safety and system protection, system elements may be included that are responsible for monitoring the operation of the system equipment, with means to instruct the controller 36 to shut down the system 30 if a failure or external event causes an exception to intended operation ... "

1. Professor Holmes states in Holmes 1 at paragraph 435:

   “Claim 16 describes that protections are programmable to provide warnings or shutdowns on any of the sensor inputs. Boot explains at para. [0016] that "[s]hould an overdrive event occur, the integrated control system 106 can be configured to send a warning that the independent power system 100 is experiencing a generation shortfall." This would be based on protections that are programmed into the system controller and dependent on sensor inputs, as is standard practice for industrial control systems. Therefore, Boot meets the requirements of claim 16.”

2. I consider this feature to be disclosed in D3.

   Claim 17

3. Claim 17 states:

   An assembly comprising the starting and control system of claim 1 and a load system including the motor or motors.

4. D1, D2 and D3 each disclose the load system to include motors throughout each specification.

   Claim 18

5. Claim 18 states:

   The assembly of claim 17 wherein the electric motor or motors operates a borehole pump or pumps, and the load system includes one or more load environment sensor or sensors including a borehole water level, pressure sensor or speed monitor, which provides an output to the system controller.

6. D1 discloses potential uses including submersible pumps throughout the specification. D1 also discloses sensing pressure as previously discussed in relation to the features of the independent claims.

7. D2 discloses use of the system with pumps and include the monitoring of pressure at paragraph 16:

   "A sensor package 28 is attached to the motor-driven pump 26 that may comprise, for example, one or more temperature sensors and one or more pressure sensors to provide an indication of various pump operating temperatures and pressures."

8. D3 discloses borehole pumps with sensors at paragraph 19.

   Claim 19

9. Claim 19 states:

   The assembly of claim 18 wherein the parameter set points include a predetermined water level, a predetermined water head, a predetermined belt speed, a predetermined pressure rating, a predetermined torque and/or a predetermined fan speed

10. D1 discloses parameter set points such as generator output at paragraph 11. I consider it to be inherent that the parameter set point of the generator output would include parameters such as torque.

11. D2 discloses parameter set points such as pressure at paragraph 29.

12. D3 discloses parameter set points at paragraph 27. Although D3 does not explicitly disclose the parameter set points listed in the claim, these are considered inherent to D3.

    Conclusion novelty

13. Claims 1-20 lack novelty in light of D1, D2 and D3.

    Inventive step

    D1 - US2005/0146221A1 (Pettigrew), D2 - WO2015/041805 (Torrey), and D3 – US 2014/0209289 (Boot)

14. I have found the invention defined in claims 1-20 is not novel in light of D1 ‑ US2005146221A1 (Pettigrew), D2 ‑ WO2015/041805 (Torrey) and D3 - US 2014/0209289 (Boot), it follows that the claims also lack inventive step in light of these documents.

    Inventive step in light of the CGK alone

15. The Opponent states in their submissions:

    “The claimed system includes all the components of a genset that were common general knowledge at the Priority Date (e.g., a prime mover, an alternator, a system controller, an AVR, an ECU, etc). Further, the claimed control types (pressure, level, flow) were common general knowledge control types for bore pumps used for mining applications at the Priority Date.

    Therefore, the only difference between the invention “so far as claimed” and the common general knowledge is the manner in which the claimed, and otherwise well-known and generally accepted, genset is controlled. The claimed genset does not provide a fixed output. Rather, it provides a variable output. The solution involves the removal of a VSD from the typical power supply system, and rather using the existing components and controller of a genset to directly control the speed of a connected motor. The invention “so far as claimed” is nothing more than a routine application of the common general knowledge that a genset could be controlled to provide a variable output rather than a fixed output. This was an obvious thing to do.

    The obviousness of the claimed system is underscored by Professor Holmes’ evidence concerning the hypothetical task he was set. Professor Holmes was provided with some background information regarding the typical power supply system for a bore pump at the Priority Date, along with three common general knowledge problems associated with the typical power supply system for bore pumps. Without prior exposure to the Opposed Patent, D1, D2 or D3, Professor Holmes was asked to explain what (if any) power supply system for a bore pump he would propose if, at the Priority Date, he was asked to design a power supply system that addresses any those problems.

    In response, Professor Holmes immediately identified a system that embodies the claims applying only the common general knowledge before the Priority Date in a routine manner. No barrier or difficulty lay between the CGK and the claimed invention at the Priority Date. As Professor Holmes stated:

    “A more straightforward solution [to re-designing the VSD], and one that came to me immediately upon being given the Hypothetical Task and the information … above, would be to remove the VSD, to directly connect the generator to the bore pump and then to control the output of the generator to control the speed of the connected pump.”

    After confirming further information regarding standard features of a typical diesel engine used in a genset and associated bore pump, Professor Holmes commented that:

    “… I would propose to solve the problems outlined … above by removing the VSD and directly connecting the generator to the bore pump, instead of controlling the bore pump using a VSD. Such a solution would be relatively straightforward to implement and I set out the detail of my implementation, below.”

    Professor Holmes then provided a detailed explanation of his proposed solution. Professor Holmes’ solution is summarised in a schematic provided copied below for convenience:
    

    As Professor Holmes identifies, each of the components included in his solution were standard components that were “well known by electrical engineers prior to 16 August 2016 and used in a manner which is conventional and I would expect to work with standard trial and error investigations”. These are the same components of the system that is described and claimed in the Opposed Application, combined in the same way. Professor Holmes provides a detailed explanation of the control methodology that would be implemented to control the genset during start-up, and typical operation.”

    Professor Holmes states in Holmes 1 at paragraph 123:

    “MinterEllison explained to me that a typical power supply system for a bore pump prior to August 2016 as described in paragraphs 121 and 122 above was associated with the following problems prior to August 2016:

    (a) the VSD and associated equipment required a purpose-built air-conditioned enclosure, as Australian mine sites are commonly hot and dusty environments;

    (b) both trailers needed to be transported to the mine site and then moved on unsealed roads while at the mine site; and

    (c) the VSD is relatively sensitive electronic equipment and transporting the VSD to, and on, site can adversely affect the VSD.”

16. Asking an expert what they (as a person skilled in the art) would have done at the priority date when posed with a particular problem is fraught with difficulty. The expert must attempt to empty their mind of any information they have acquired after the priority date. The expert must then attempt to answer the question only in terms of what would have been a matter of routine without using any inventive faculty. It is difficult to eliminate the possibility that, in answering the question posed, the expert inadvertently utilised inventive reasoning.

17. In this case it is unnecessary to decide whether Professor Holmes utilised inventive reasoning in arriving at the claimed invention. By framing the question in terms of the difficulties associated with a VSD in conventional generator systems, a hint to the answer had been provided to Professor Holmes.

18. Overall, I am not satisfied that the claims lack an inventive step in light of CGK alone.

    Clear enough and complete enough disclosure and Best Method

    Clear enough and complete enough disclosure - legal principles

19. Subsection 40(2)(a) of the Act requires that a complete specification disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

20. In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 the delegate adopted a three-step test for determining whether the specification provided a clear enough and complete enough disclosure of the claimed invention as follows:

    • What is the scope of the invention as claimed?
    • What does the specification disclose to the skilled person?
    • Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims?

21. An expanded approach was taken in Evolva SA [2017] APO 57 The third consideration of enablement set out in CSR was assessed according to the following criteria:

    • Is it plausible that the invention can be worked across the full scope of the invention?
    • Can the invention be performed across the full scope of the claims without undue burden?

22. In general, the extent of the disclosure necessary to make the patent sufficient will depend upon the nature of the invention, the scope of the claims and the art in which the invention is made.

    Best Method legal principles

23. Section 40(2)(aa) of the Patents Act requires that a complete specification must:

    “disclose the best method known to the applicant of performing the invention.”

24. In American Cyanamid Company v Ethicon Limited [1979] RPC 215 at page 269, it was stated:

    “The Act is intending to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention.”

25. In Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) (Expo-Net) [2011] FCA 710 Bennett J stated:

    “it must be established that there was a better method known to the applicant at the date of filing the patent than the one described in the specification. This is clearly a subjective question.” (Expo-Net at [15])

    “To that end it is necessary first to understand what the invention is. Indeed, this is perhaps the first question that needs to be answered”. (Expo-Net at [16])

    Clear enough and complete enough disclosure and Best Method of the present invention

26. The Opponent states in their submissions:

    Importantly, and as Professor Holmes identifies, no detailed description of any such “sophisticated algorithms”, or indeed any algorithms, are included in the body or claims of the Opposed Application. The detail with which Mr Waterreus identifies the types of algorithms used in the GMC the subject of the Opposed Application, but not disclosed in it, show that he must be basing those statements on information directly from the original patent applicant, UON, who he was a consultant for. As Professor Holmes observes, after identifying the scarce detail given in the Opposed Application regarding how the system operates:

    “Each of these statements provide a general description of how the system described in the 650 Patent Application operates, but do not describe in any detail the algorithms that may have been implemented to achieve this functionality. It therefore appears to me that when Mr Waterreus is referring to "sophisticated algorithms" relating to such descriptions provided in the 650 Patent Application, he must be aware of the details of these algorithms from information that has been available to him outside what is provided in the 650 Patent Application.”

27. Professor Holmes states in his second declaration at paragraph 79:

    “At paragraph 67 of the Waterreus Declaration, Mr Waterreus states that “voltage must be increased and decreased as frequency increased or decreased”. I understand this to be the well-known constant volts-per-Hertz relationship that I describe in paragraphs 103 to 104 of my First Declaration. Mr Waterreus then states that this relationship “is carried out by an optimising algorithm in the system controller". As I discuss in paragraph 225 of my First Declaration and in paragraphs 22 above, the 650 Patent Application is silent with respect to this optimising algorithm and I consider it to be unclear to what level the algorithm implemented in the 650 Patent Application deviates away from the constant volts-per-Hertz relationship that is well-known in electrical engineering literature.”

28. Professor Holmes states at paragraph 103 of his first declaration:

    “For example, at start-up of the electrical motor, the supply conditions for the motor to achieve maximum start-up torque, is a low voltage low frequency electrical supply. Then, as the motor begins to rotate, the supply voltage and frequency can be gradually increased to maintain maximum motor torque all the way to full speed operation. Various control strategies have been developed to optimise this type of motor control, ranging from a simple "constant volts-per-Hertz" type approach, to more complex field orientated motor control (often termed Vector control). Maintaining a constant volts-per-Hertz type supply is important for induction motors, to avoid either over-fluxing (i.e. saturating) the machine or producing a reduced torque output, as the motor speed varies.”

29. The Applicant states in their submissions at 291 to 300:

    The Opponents’ case in relation to sufficiency, lack of support and failure to disclose best method has since been addressed in Mr Waterreus’ second declaration which is the subject to consideration under Reg 5.23.

    Each Opponent’s case depends critically on the evidence given by Mr Waterreus in his evidence in answer that in order to perform the invention it is necessary to program the system controller with a “sophisticated” algorithm. Based on this evidence, it is asserted that claim 1 of the Opposed Application defines a system which includes the use of “sophisticated” or “extremely complex” algorithms and there is no enablement in the specification of any such algorithms.

    The evidence in Mr Waterreus’ second declaration is a complete answer to each Opponent’s case in relation to sufficiency, lack of support and failure to disclose the best method.

    In his first declaration, Mr Waterreus refers to “sophisticated algorithms”. Contrary to the Opponents’ contentions, he did not describe these algorithms as “extremely complex”. Moreover, contrary to the submission of Taranis, it was not his evidence that “the modifications and algorithms necessary were outside the experience of the common electrical engineer or technician.”

    In his first declaration, Mr Waterreus was differentiating between the set-point control of the present invention (including precise and active control of both an ECU and an AVR) and the less precise control of the cited prior art. Mr Waterreus described the set-point control algorithms as “sophisticated”. Even on the evidence in Mr Waterreus’ first declaration, it is a simplistic overreach to contend that the algorithms necessary to perform the invention were “extremely complex” and beyond the normal design capabilities of a skilled person working in the field.

    In any event, the matter is directly addressed by Mr Waterreus in his second declaration where he explains that his reference in his first declaration to “algorithms” was a reference to the embedded logic within the system controller. His evidence is clear. It would be within the normal capability of a process engineer to construct suitable system control logic to control both the ECU and the AVR concurrently based on suitable sensor inputs, once they were aware that such concurrent control was required.

    This is consistent with Prof Holmes’ evidence that it would have been well within his abilities to design the control algorithms for his solution and he routinely did such work.

    Mr Rosewarne’s evidence is to the same effect. He says that “[he] would have been able to adapt a controller … to control the engine and alternator to supply the required load and frequency”.

    Contrary to the submissions of Taranis, the evidence of Mr Keogh that UON spent a lengthy period developing the claimed invention, cannot sustain a finding that it was beyond the capabilities of an engineer to design the algorithms necessary to perform the invention.

    The evidence of Mr Waterreus establishes that the disclosure of the Opposed Application coupled with common general knowledge enables the person skilled in the art to perform the invention over the full scope of the claim without invention or undue experimentation

30. I have construed the feature that the speed to voltage relationship required to suit the motor excludes from the scope of the claim any voltage and frequency that goes beyond the limits of the motor. The claimed invention does not require the voltage and frequency relationship to be optimised.

31. I consider that in its most basic form, there is sufficient information to allow a person skilled in the art to perform the invention. Although the invention can be optimised with more complex algorithms (as explained by Mr Waterreus), the claimed invention is not specific to the optimisation of the system. Consequently, I am satisfied that sufficient detail has been provided.

32. The best method requirement is assessed on the basis of the applicant’s knowledge at the time of filing the complete specification. There is insufficient evidence to show that at the time of filing the applicant was aware of another, better, method of achieving the claimed invention. Consequently, I am furthermore satisfied that this is satisfies the best method requirements.

    Conclusion

33. Claims 1-20 lack novelty and inventive step in light of D1 ‑ US2005146221A1 (Pettigrew), D2 ‑ WO2015/041805 (Torrey) and D3 - US 2014/0209289 (Boot). The invention meets the requirements of providing a clear enough and complete enough disclosure and best method provided.

34. I am unable to identify any feature in the specification which could be used as the basis to amend the claims such they define a novel and inventive claim. However, such a feature may exist. I will provide the applicant a period of two months to propose amendments to overcome the identified deficiencies.

    Costs

35. It is normal in matters before the Commissioner that costs should follow the event. I see no reason to depart from that approach in the present case. I will award costs according to Schedule 8 against the Applicant.

    Xavier Gisz

    Delegate of the Commissioner of Patents