Caterpillar Inc v Esco Corporation - [2016] APO 76

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Caterpillar Inc v Esco Corporation [2016] APO 76

Patent Application: 2008251647

Title:Wear assembly for excavating equipment

Patent Applicant:                   Esco Corporation
Opponent:  Caterpillar Inc
Delegate:  O L Haggar
Decision Date:  1 November 2016
Hearing Date:  18 August 2016 in Canberra
Supplementary submissions completed on 17 October 2016

Catchwords: PATENTS – opposition under section 104 – whether the amendments contravene section 102(1) – specification as filed found to provide a substantial disclosure of the feature of a “generally planar extension” claimed in amended claims 45 to 48 –whether the amendments contravene section 102(2)(a) – scope of the claims immediately before amendment when compared with amended claims 1, 7, 8, 26, 27, 28, 45 and 47 found to be unchanged – whether the amendments contravene section 102(2)(b) – amended claims 45 to 48 found to be clear and fairly based – opposition does not succeed – amendments allowed – costs awarded against the opponent

Representation: Counsel for the applicant: Tom Cordiner
Patent attorney for the applicant: Wayne McMaster and Rebecca Dutkowski of Minter Ellison
Patent attorney for the opponent: Brett Connor and Jonathan Schnapp of Freehills

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2008251647

Title:Wear assembly for excavating equipment

Patent Applicant: Esco Corporation
Date of Decision: 1 November 2016
DECISION
I make the amendment to the statement of grounds and particulars requested by Caterpillar Inc.
The opposition under section 104 does not succeed. I allow the amendments proposed by Esco Corporation.
I award costs against Caterpillar Inc.
BACKGROUND

Patent application 2008251647 in the name of Esco Corporation (Esco) was advertised as accepted on 6 December 2012. An opposition by Caterpillar Inc (Caterpillar) to the grant of a patent on the application was upheld on a number of grounds (Caterpillar Inc v Esco Corporation [2014] APO 66) (the original decision), and Esco was allowed time in which to propose suitable amendments to overcome the delegate’s adverse findings.
On 19 December 2014 Esco duly filed a request for leave to amend the specification and a first statement of proposed amendments. Esco filed a second statement of proposed amendments on 2 April 2015 in response to an adverse examination report as a result of which leave to amend was granted and advertised on 14 May 2015. On 14 July 2015 Caterpillar filed a notice of opposition under section 104 to the allowance of the proposed amendments followed by a statement of grounds and particulars (SGP) on 14 August 2015.
THE OPPOSITION UNDER SECTION 104
Grounds of Opposition
Simply put, Caterpillar has opposed the allowance of the proposed amendments on all available grounds under section 102. I will explain the reasons underpinning Caterpillar’s opposition later in this decision.
Esco requested leave to amend after 15 April 2013, but requested examination of the application well before that date. As a result, substantive amendments of the Patents Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 do not apply.…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2016] APO 76
Decision Date: 1 November 2016

CaseChat Overview and Summary

Caterpillar Inc opposed the amendments proposed by Esco Corporation in respect of certain claims of a patent application for a wear assembly for securing a wear member to excavating equipment. The amendments were opposed under section 102 of the Patents Act 1990 on the basis that they contravened subsections (1) and (2) of that section. The delegate of the Commissioner of Patents, O L Haggar, dismissed the opposition and allowed the proposed amendments. The delegate found that the proposed claims 45 to 48 were clear and fairly based on the specification as filed. The proposed amendments did not contravene section 102(2)(a) because the scope of the proposed claims was not broadened. The proposed amendments did not contravene section 102(2)(b) because the specification as filed contained a real and reasonably clear disclosure of the feature of a “generally planar extension” claimed in the proposed claims 45 to 48. The proposed amendments also did not contravene section 102(1) because the feature of a “generally planar extension” was in substance disclosed in the specification as filed. The delegate awarded costs against Caterpillar Inc.

Orders