Brown & Watson International Pty Ltd v The Noco Company

Case •

[2022] APO 24

•

01 April 2022

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Brown & Watson International Pty Ltd v The NOCO Company [2022] APO 24

Patent Application:                2016269555

Title:Portable vehicle battery jump start apparatus with safety protection

Patent Applicant:                   The NOCO Company

Opponent:  Brown & Watson International Pty Ltd

Delegate:  S. E. Pearce

Decision Date:  01 April 2022

Hearing Date:  15th February 2022, Via Video Conference

Catchwords:  PATENTS – opposition to the allowance of an amendment – allowability under s 102(2)(a) – claims as proposed to be amended in substance fall within the scope of the claims before amendment – amendment allowed – costs awarded against the opponent

Representation:  Counsel for the applicant:  Ian Horak

Patent attorney for the applicant: Ray Tettman

Counsel for the opponent:  Sam Hallahan

Patent attorney for the opponent: Adrian Crooks

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                2016269555

Title:Portable vehicle battery jump start apparatus with safety protection

Patent Applicant:                   The NOCO Company

Date of Decision:                   01 April 2022

DECISION

The opposition is unsuccessful. The amendment is allowable. Subject to appeal, I allow the amendment.

I award costs according to Schedule 8 against Brown & Watson International Pty Ltd.

REASONS FOR DECISION

Background

  1. This matter relates to patent application 2016269555 (the application), filed in the name of The NOCO Company (the Applicant) on the 9th of December 2016 as a divisional application from 2015258229 (the parent application) which is in turn a divisional from PCT/US2014/045434.

  1. Following examination, the application was advertised as accepted on the 6th of December 2018. On the 6th of March 2019, Brown & Watson International Pty Ltd (the Opponent) filed a notice of opposition to the grant of the application under s59 of the Act (substantive opposition). A Statement of Grounds and Particular was filed on the 6th of June 2019 (s59 SGP). Evidence in Support (s59 EIS) was filed on the 6th of September 2019. Evidence in Answer (s59 EIA) was filed on the 10th of December 2019. Evidence in Reply (s59 EIR) was filed on the 11 of February 2020, completing the evidence for the substantive opposition.

  1. On the 4th of May 2020 the Applicant filed a request under s104 to amend the complete specification (the amendments). An examiner considered the amendments allowable and granted leave to amend, which was advertised on the 18th of June 2020. The Opponent filed a notice of opposition (‘s104 opposition’) to the proposed amendments on the 18th of August 2020. The Statement of Grounds and Particulars (‘SGP’) was filed on the 18th of September 2020. The Evidence in Support (‘EIS’) was filed on the 15th of December 2020. Evidence in Answer (‘EIA’) was filed on the 16th of February 2021. No Evidence in Reply was filed.

  2. The Opponent’s written submissions (Opponent’s written submissions) were filed on the 1st of February 2022, with the Applicant’s written submissions (Applicant’s written submissions) being filed on 8th of February 2022. The matter was heard via video conference on 15th of February 2022.

The Statement of Grounds and Particulars

  1. The SGP opposes the amendments under subsection 102(2)(a) of the Patents Act 1990 (‘the Act’) wherein an amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment, a claim of the amended specification would not in substance fall within the scope of the claims of the specification before the proposed amendments.

The Evidence

  1. The EIS consists of a declaration from Adrian Crooks (‘Crooks’) with supporting annexures AC-1 to AC-8 dated 15th of December 2020. EIA consists of a declaration from Bernard Charles Peter Berry (‘Berry2’) with annexures PB-1 to PB-3 and a declaration from Jonathan R. Wood (‘Wood’) with supporting annexures JRW-1 to JRW-9, both declarations dated the 13th of February 2021.

  2. The s59 EIS included a declaration by Max Dirnberger (Dirnberger1) dated 6th of September 2019 with Exhibits MD-1 to MD-7. The s59 EIA included a declaration by Bernard Charles Peter Berry (Berry1) dated 10th of December 2019 and supporting exhibits PB-1 to PB-9. The s59 EIR included a declaration by Max Dirnberger (Dirnberger2) dated 11th of February 2020. Declarations Dirnberger1, Dirnberger2 and Berry1 with supporting exhibits MD-1 to MD-7 and PB-1 to PB-9, as filed in the substantive opposition, were included as part of the EIS and EIA in the current s104 opposition.

  1. Additionally, the Opponent has opposed grant of patent application 2019201559 (the divisional application) which claims divisional status from the current application. Evidence filed in opposition to the divisional application was filed as part of the EIS and EIA in the s104 opposition. This includes a declaration from Cory Seligman (Seligman) dated 23rd of November 2020 and supporting exhibit CS-1 to CS-6.

  1. The evidence filed in the s104 opposition is described in further detail below. I note that a large volume of evidence has been filed. I have only outlined the nature of, and provided a shorthand reference to, those items of evidence that I consider it appropriate to refer to for the purposes of this decision. Shorthand references to such evidence are provided in bold in the table below.

Evidence Declarant Annexures Associated Constituents
In Support

Declaration of Adrian Crooks dated 15th of December 2020

(‘Crooks’)

Annexure AC-1

 Max Dirnberger declaration dated 6th of September 2019 Dirnberger1
MD-1
MD-2
MD-3
MD-4
MD-5
MD-6
MD-7

Annexure AC-2

 Bernard Charles Peter Berry declaration dated 10th of December 2019 Berry1
PB-1
PB-2
PB-3
PB-4
PB-5
PB-6
PB-7
PB-8
PB-9

Annexure AC-3

 Max Dirnberger declaration dated 11th of February 2020 Dirnberger2

Annexure AC-4

 Cory Seligman declaration dated 23rd of November 2020 Seligman
CS-1
CS-2
CS-3
CS-4
CS-5
CS-6

Annexure AC-5

 Nook et al. US 9,007,015 B1

Annexure AC-6

US Patent Petition filed by Dongguan Juxing Power Co. Ltd.

Annexure AC-7

US Patent Petition filed by Shenzhen Carku Technology Co., Ltd.,

Annexure AC-8

 US District Court Decision
In Answer

Declaration of Bernard Charles Peter Berry dated 13th of February 2021

(‘Berry2’)

Annexure PB-1

Amendment Request

The amendments

Annexure PB-2

Statement of Grounds and Particulars

SGP
Annexure PB-3 Includes Crooks declaration and supporting annexures AC-1 to AC-8

Declaration of Jonathan R. Wood dated 13th of February 2021

(‘Wood’)

Annexure JRW-1

 Court Expert Evidence Note

Annexure JRW-2

The application as accepted AU2016269555 B2

The application

Annexure JRW-3

Amendment Request

The amendments

Annexure JRW-4

Statement of Grounds and Particulars

SGP
Annexure JRW-5 Includes Crooks declaration and supporting annexures AC-1 to AC-8

Annexure JRW-6

 Jonathon R. Wood Curriculum Vitae

Annexure JRW-7

 Excerpt of brochure

Annexure JRW-8

 Fairchild data sheet

Annexure JRW-9

 ON data sheet

Applicable Law

  1. The present opposition is governed by the Act as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (‘Raising the Bar Act’) as the request for examination was not filed before 15th of April 2013. Notably, the provisions of section 102(2)(a) have not changed with the Raising the Bar Act. The principles to be applied in assessing the allowability of amendments under this section are well established.

  1. The standard of proof that applies to section 104 opposition proceedings under the Raising the Bar Act has not been expressly stated in the Act. However, as reasoned by the delegate in Cytec Industries Inc v Nalco Company [2018] APO 4 at [18]: “it is a logical inference that the standard required is the balance of probabilities (consistent with the amendment to section 60(3A) that allows the Commissioner to refuse a patent application if satisfied on the balance of probabilities that a ground of opposition exists), and it is the opponent who carries the onus of proof.”

  1. Section 102 of the Act governs the allowability of amendments. Relevant to the s104 opposition section 102 provides:

“(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:

(a)   A claim of the specification would not in substance fall within the scope of the claims of the specification before amendment…”

  1. Subsection 102(2A)(a) states that the “relevant time” means after the specification has been accepted. As the present specification had been accepted when the amendments were requested, the requirements of subsection 102(2) apply.

  1. Relevant principles applying to s102(2)(a) are conveniently laid out by Yates J in Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814 at [40]:

“Consideration of the prohibition in s 102(2)(a) requires a comparison between the proposed new claims and the claims of the specification immediately before amendment. Once again the prohibition is conditioned on a state of affairs existing as a result of the amendment, namely that a claim would not in substance fall within the scope of the claims before amendment. Thus the identification of the amendment is, once again, an important first step. Moreover, the reference to “within the scope of the claims” before amendment is significant. The comparison is not between a particular amended claim and that claim before amendment. The expression “within the scope of the claims” directs attention to all the claims. For this reason a practical test is to ask whether an amendment makes anything an infringement which would not have been an infringement before the amendment…”

  1. Relevant to determining the scope, claim construction was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 (‘Lundbeck’) at [118]-[120]:

    “…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, including the claims, 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… construction of a specification, including the claims, is ultimately a question of law for the Court… 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… However, terms in the claim which are unclear may be defined or clarified by reference to the body of the specification...”

The nature of the amendments

  1. For the purposes of this decision, a marked-up version of the claims as proposed to be amended is provided below (with deletions indicated with strikethrough and additions indicated with underline):

1.   Apparatus for jump starting a vehicle engine, comprising:

an internal power supply;

an output port having positive and negative polarity outputs;

a vehicle battery isolation presence sensor connected in circuit with said positive and negative polarity outputs, configured to detect presence of a vehicle battery connected between said positive and negative polarity outputs;

a reverse polarity sensor connected in circuit with said positive and negative polarity outputs, configured to detect polarity of a vehicle battery connected between said positive and negative polarity outputs and to provide an output signal indicating whether that positive and negative terminals of said vehicle battery are improperly connected with said positive and negative polarity outputs of said output port;

a power switch connected between said internal power supply and said output port;

and a microcontroller configured to receive input signals from said vehicle isolation battery presence sensor and said reverse polarity sensor, and to provide an output signal to said power switch, such that said power switch is turned on to cause said internal power supply to be connected to said output port in response to signals from said sensors indicating the presence of a vehicle battery at said output port and proper polarity connection of positive and negative terminals of said vehicle battery with said positive and negative polarity outputs, and is not turned on when signals from said sensors indicate either the absence of a vehicle battery at said output port or improper polarity connection of positive and negative terminals of said vehicle battery with said positive and negative polarity outputs.

5.The apparatus of claim 1, wherein said vehicle isolation battery presence sensor and reverse polarity sensor comprise optically coupled isolator phototransistors.

19. The apparatus of claim 1, further comprising a manual override switch configured to activate a manual override mode to enable a user to connect jump start power to said output port when said vehicle battery isolation presence sensor is unable to detect presence of a vehicle battery.

Allowability of amendments

  1. The Opponent directed the s104 opposition towards the amendment to the output signal of the reverse polarity sensor in claim 1. In particular, the amendment changes the reverse polarity ‘output signal indicating whether positive and negative terminals of said vehicle battery are properly connected…’ to ‘an output signal indicating that positive and negative terminals of said vehicle battery are improperly connected’. The Opponent argued that, prior to the amendments, an apparatus which provides an indication of improper connection but does not provide indication of a proper connection was not within the scope of the original claims; however, following the amendments, such an apparatus would be within the scope and would infringe against the amended claims.

Scope of original claim 1

A.Construction of ‘reverse polarity sensor’

  1. At the hearing the Opponent argued that the Applicant’s construction of original claim 1 such as to include a reverse polarity sensor which indicates either a proper or improper connection relied on the presence of alleged ambiguity to permit reference to the preferred embodiment. They disagreed with Berry1 at [32]-[33] where Mr Berry claimed that ‘there appears to be an apparent contradiction in that the “reverse polarity sensor” provides an output signal indicating whether the terminals of the vehicle battery are properly connected’ (original emphasis); despite this, the Opponent submitted that labelling the sensor a ‘reverse polarity sensor’ does not contradict its functionality in terms of providing for an indication of proper connection. In support, the Opponent pointed to Wood at [37] which stated “the name of the reverse polarity sensor is not part of its attributes” and further Dirnberger2 at [6] which says ‘I do not consider there to be an inherent contradiction…The fact that a sensor is capable of providing an output which indicates whether the battery terminals are properly connected does not preclude it from being described as a reverse polarity sensor”.

  1. At the hearing the Applicant responded that as the witnesses came to a differing conclusion, therefore, in the interest of removing any ambiguity, the claims were amended. During oral submissions, they further submitted that both witnesses, Mr Berry and Dr Wood, determined that the reverse polarity sensor output signal of original claim 1 encompassed two possibilities when the claims are read within the context of the specification as a whole.

  1. As summarised in Lundbeck at [118]-[120] as recited above, the words of the claims are to be given the meaning which a person skilled in the art would attach to them, having regard to common general knowledge and the body of the specification, although it is impermissible to vary or qualify the words of the claims by reference to the body of the specification, in the absence of ambiguity. I accept that the witnesses Dr Wood, Mr Berry and Mr Dirnberger, as relied on by both the Opponent and the Applicant, have the relevant expertise to comment as persons skilled in art given their extensive experience in the field of power electronics and, in particular, battery systems.[1]

    [1] See Applicant’s written submissions at [18]-[22]. See also Dirnberger1 at [1]-[3], Berry1 at [4]-[8], and Wood at [5]-[19].

  1. Turning to the construction of ‘reverse polarity sensor’. Mr Berry’s first declaration indicates a possible contradiction between an ordinary understanding of the term ‘reverse polarity sensor’ and its attributes as defined in the claim. However, in Berry1 at [32] he states, based on the wording of original claim 1, the sensor could be understood to provide an output signal indicating either that the battery is properly or improperly connected. Mr Berry clarified, in Berry2 at [13]-[15], that a reverse polarity sensor configured to indicate either a proper or an improper connection was supported by the specification and that he considered the claim to encompass both options. I note, while Mr Berry discusses a possible contradiction, he does not suggest a ‘reverse polarity sensor’ must be assumed to provide an indication of one of either a proper or improper connection.[2]   Furthermore, as noted above, both Dr Wood and Mr Dirnberger did not consider the label to be part of the sensor’s attributes.

    [2] See Berry2 at [13]. See also Berry1 at [32]

  1. It is evident that the scope of the ‘reverse polarity sensor’ of original claim 1 should be determined by the attributes as claimed since there is no special technical meaning, or otherwise, attributed to the label of the sensor. I also accept, a ‘reverse polarity sensor’ may be configured to indicate either a proper or improper connection, particularly in view of the use of “whether” in the context of the claim, as will be discussed in detail below. Therefore, there is no ambiguity or inconsistency if the words of the claim limit the output signal to either of those options. The limitations placed upon the output signal should thus be decided by construing the attributes of the sensor as defined by the words of original claim 1.

B.Scope of the reverse polarity sensor output signal as originally claimed

  1. During the hearing, the Opponent submitted that a reverse polarity sensor indicating a proper connection is an essential integer when original claim 1 is construed according to its plain and ordinary meaning. They referenced Dirnberger2 at [9]-[10], where Mr Dirnberger argued that, while the reverse polarity sensor may indicate improper connection, it must indicate a proper polarity based on the wording of original claim 1. The Opponent further referenced Seligman [108] to argue the similarly drafted divisional application was also construed to require an indication of proper polarity.

  2. The Applicant responded that the use of the term ‘whether’ in original claim 1 provides important context. They submitted that ‘whether’ sets up a binary situation where there are two possibilities for the output signal of the reverse polarity sensor. They also pointed out that the broad term ‘whether’ was not present in claim 1 of the divisional application. They further argued that the wording of original claim 1 does not require the signal to have a specific nature, provided it functionally indicates whether or not a connection is made via the polarity.

  1. It is clear there is no explicit reference to an output signal indicating an improper connection within original claim 1. Therefore, in order for this feature to be considered within the scope, it must be implied or understood to form part of the claim when properly construed. The Applicant considers this to be achieved via the use of ‘whether’ in original claim 1.  

  1. The Macquarie Dictionary provides relevant interpretations on ‘whether’.[3] I have provided the most relevant interpretations below:

1.Used in dependent clauses or the like, to introduce the first of two or more alternatives, and sometimes repeated before the second or later alternative and used in correlation with (for example, it matters little whether we go or whether we stay); or

2.Used to introduce a single alternative, the other being implied or understood, and hence some clause or element not involving alternatives (for example, whether he has come (or not); I doubt whether we can do any better).

[3] Macquarie Dictionary (Web Page) <

  1. In this instance, I consider the second description more relevant for construing original claim 1 since only a single alternative was explicitly introduced, that being a proper connection. From this, it is evident that the term ‘whether’ is to be construed broadly such that it introduces a second implied alternative. Consequently, I consider the essential integers of original claim 1 to include a reverse polarity sensor configured to provide an output signal indicating whether or not positive and negative terminals of said vehicle battery are properly connected. In other words, the output signal must indicate that there is either a proper connection or no proper connection. The question now being whether or not ‘no proper connection’ is understood to be an improper connection within the context of original claim 1.

Is an ‘improper connection’ the implied alternative to a ‘proper connection’?

  1. The Opponent submitted that to include an improper connection within the scope would require a binary option for the output signal wherein the only alternatives were either a proper or improper connection. The Opponent submitted that the output signal of the ‘reverse polarity sensor’ in the preferred embodiment was not capable of distinguishing between a proper connection or no battery; therefore, there are more than two alternatives.  To demonstrate this, the Opponent directed attention to the truth table discussed in Berry1 at [35]-[36], reproduced below. Note that CBCON refers to the ‘isolation sensor’ and the CBREV refers to the ‘reverse polarity sensor’.

  1. At the hearing the Opponent referenced Berry2 at [22]-[23] and Wood at [36]-[37], to argue that both Mr Berry and Dr Wood erroneously assumed that the vehicle battery is present when construing the reverse polarity sensor of original claim 1 to conclude that the sensor could indicate either a proper or improper connection. They submitted the battery cannot be assumed to be present and therefore it cannot be assumed that the alternative to a proper connection is an improper connection. The Opponent pointed out that the invention as defined in original claim 1 is an apparatus which does not include a vehicle battery – it is to be used on a vehicle battery that is not assumed to be present. Furthermore, they submitted that the isolation sensor would be redundant if the battery was always assumed to be connected.  

  1. The Applicant argued that the claim drafter has clearly set up the reverse polarity sensor to operate where the battery is connected. This is evident from the wording of the claim where the reverse polarity sensor is ‘configured to detect polarity of a vehicle battery connected between said positive and negative polarity outputs’. The Applicant further argued that the claimed output signal does not have to have a particular nature; for example, the signal could be true or false as both tell you they are properly connected.[4]

    [4] Wood at [57].

  1. Turning to the relevant parts of original claim 1, I agree with the Applicant that there is no requirement for the output signal to be of a particular nature. There is no explicit mention of the signal needing to be true/false or 1/0; the wording just requires that the output signal indicates whether (or not) there is a proper connection. Furthermore, the claim states that the reverse polarity sensor is ‘configured to detect polarity of a vehicle battery connected between said positive and negative polarity outputs’. While the battery is not necessarily always connected to the apparatus per se, the claimed language dictates that the reverse polarity sensor, itself, only detects polarity of a connected vehicle battery. Furthermore, the “FALSE” reading from the CBREV* sensor when no battery is connected is not indicating anything to do with the polarity, thus this signal cannot be considered an alternative to a proper polarity connection. Therefore, the output signal of the reverse polarity sensor can only indicate either a proper or, alternatively, an improper polarity of a connected vehicle battery.

C.Summary

  1. In conclusion, the reverse polarity sensor of original claim 1 detects the polarity of a connected vehicle battery and provides an output signal indicating that the positive and negative terminals of said vehicle battery are either properly or improperly connected.

Scope of amended claim 1

  1. The scope of amended claim 1 was not in dispute. Regardless, I have summarised the scope of the reverse polarity sensor as follows. The reverse polarity sensor is connected in circuit with the positive and negative polarity outputs of an output port of the apparatus, wherein the reverse polarity sensor is configured to detect polarity of a connected vehicle battery and to provide an output signal indicating an improper connection of the connected vehicle battery.

Allowability of the proposed amendment - summary

  1. It is clear that the amended claim 1 seeks to limit the scope to a reverse polarity sensor configured to provide an output signal indicating an improper connection. Since original claim 1 provided an output signal indicating either a proper or improper connection, it follows that the amended claim 1, in substance, falls within the scope of original claim 1.

  2. Therefore, I conclude that the amended claims do not make anything an infringement which would not have been an infringement before the amendment, hence the requirements of s102(2)(a) are satisfied. Since no other grounds are advanced, the Opponent has not established that the proposed amendment is not allowable.

Conclusion

  1. The opposition is unsuccessful. The proposed amendment is allowable under s102(2)(a) of the Act.

  2. The amendment should be allowed.

Costs

  1. I see no reason to depart from the usual practice that costs follow the event. I will accordingly award costs in accordance with Schedule 8 of the Patents Regulations 1991 against the Opponent, Brown & Watson International Pty Ltd.

Stephanie Pearce
Delegate of the Commissioner of Patents


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Cytec Industries Inc. v Nalco Company [2018] APO 4
Bristol-Myers Squibb Company v Apotex Pty Ltd [2010] FCA 814