Caterpillar Inc. v ESCO Corporation - [2016] APO 74

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Caterpillar Inc. v ESCO Corporation [2016] APO 74

Patent Application: 2013202355

Title:Wear assembly

Patent Applicant:                   ESCO Corporation
Opponent:  Caterpillar Inc.
Delegate:  R Subbarayan
Decision Date:  27 October 2016
Hearing Date:  10 August 2016, in Canberra;

Catchwords:  PATENTS - opposition to grant of patent – divisional application - whether claims are novel – whether claims are inventive - whether claims are clear - whether claims are fairly based - whether claims are to a manner of manufacture - whether claims are useful based on findings of Federal Court in an appeal against an earlier Office decision in respect of a grandparent application– some claims lack novelty – none of the other grounds made out - costs awarded against applicant

Representation: Counsel for the applicant: Adrian Ryan SC assisted by Tom Cordiner
Patent attorney for the applicant: Wayne McMaster and Rebecca Dutkowski of Minter Ellison
Patent attorney for the opponent: Bret Connor and Jonathan Schnapp of Freehills

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013202355

Title:Wear assembly

Patent Applicant: ESCO Corporation
Date of Decision: 27 October 2016
DECISION
Claims 1, 2, 3 and 5 are not novel. I allow the applicant two months from the date of this decision to propose amendments to overcome the adverse findings.
I award costs according to schedule 8 against the applicant.
REASONS FOR DECISION
BACKGROUND

Patent application 2013202355 in the name of ESCO Corporation (ESCO) was filed on 3 April 2013 as a divisional application of AU2013200095 and AU2013200107. AU2013200095 is itself a divisional application of AU2011201135 and through this grandparent application the present application claims an earlier priority date of 30 March 2006. AU2011201135 was also the subject of opposition and the Commissioner’s decision was issued as Ronneby Road Pty Ltd et al. v ESCO Corporation [2015] APO 3. This decision was appealed to the Federal Court which recently issued its decision Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588 (Ronneby Road) in which it held that all of the claims lack utility.
The present application was advertised as accepted on 2 October 2014. Grant of the patent was opposed under section 59 of the Patents Act 1990 by Caterpillar Inc. (Caterpillar) and CQMS Pty Ltd. CQMS Pty Ltd subsequently withdrew their opposition and hence the present decision relates only to the opposition by Caterpilllar.
ESCO proposed some minor amendments to the claims on 1 December 2014 which were advertised as allowed on 2 April 2015.
The matter was heard in Canberra on 10 August 2016.
GROUNDS OF OPPOSITION
Caterpillar’s Statement of Grounds and Particulars (SOGAP) filed on 2 April 2015 opposed the grant of the patent on the grounds of Novelty, Inventive Step, Clarity, Fair Basis and Manner of Manufacture. An amended SOGAP was filed on 3 July 2015 that included amendments to some of the particulars.
On 19 July 2016, Caterpillar filed another amended SOGAP which included the new ground of lack of utility based on the decision of…

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 74
Decision Date: 27 October 2016

CaseChat Overview and Summary

In the matter of Caterpillar Inc. versus ESCO Corporation, the Federal Court of Australia was called upon to determine the validity of a patent application. Caterpillar Inc. had filed a divisional application, seeking to secure patent protection for certain claims related to a manner of manufacture. ESCO Corporation opposed the grant of the patent, arguing that the claims lacked novelty, were not inventive, unclear, not fairly based, not a manner of manufacture, and not useful.

The central legal issues before the court involved the examination of whether the claims in the divisional application met the statutory requirements for patentability. This included assessing whether the claims were novel and inventive in light of prior art, whether they were clear and well-defined, whether they were fairly based on the disclosure in the application, whether they related to a manner of manufacture, and whether they were useful. The court also considered the findings of a previous Federal Court appeal concerning the grandparent application, which had implications for the assessment of novelty.

In its judgment, the court determined that some of the claims in the divisional application were not novel, as they were anticipated by prior art. However, the court found that the other grounds of opposition were not made out, as the claims were inventive, clear, fairly based, related to a manner of manufacture, and were useful. Consequently, the opposition was dismissed. The court further awarded costs against the applicant, Caterpillar Inc., reflecting its view that the opposition was not well-founded.

As a result of the court's decision, the patent application was upheld, allowing Caterpillar Inc. to proceed with securing patent protection for the valid claims. The outcome confirmed the importance of thorough prior art searches and careful drafting of patent applications to ensure compliance with the statutory requirements for patentability.

Orders