CQMS Pty Ltd v Esco Group LLC - [2025] APO 18

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v Esco Group LLC [2025] APO 18
Patent:2021203036

Title:Wear part monitoring

Applicant:Esco Group LLC

Opponent:CQMS Pty Ltd

Delegate:Dr N. R. Madsen – Deputy Commissioner of Patents

Decision Date: 25 June 2025

Hearing Date: 11 April 2025, by videoconference

Catchwords: PATENTS - opposition under section 104 during section 59 matter – monitoring tool for wear parts on earth moving/excavating equipment – allowability under subsections 102(2)(a) considered – whether the amendments result in a claim that is not within the scope of the claims before amendment – amendment not allowable – costs awarded against applicant

Representation: Counsel for the applicant: Tom Cordiner KC
Patent attorney for the applicant: Minter Ellison
Counsel for the opponent: Peter Creighton-Selvay
Patent attorney for the opponent: James & Wells

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent:2021203036

Title:Wear part monitoring

Applicant:Esco Group LLC
Date of Decision: 25 June 2025
DECISION

The amendment results in claims that would not fall within the scope of the claims before amendment.
I refuse the amendment request of 13 May 2024 and award costs in accordance with Schedule 8 of the Patent Regulations against the applicant.
This decision constitutes advice that the amendments are refused. Evidence in reply in the section 59 matter is due in two weeks from the date of this decision.
REASONS FOR DECISION
BACKGROUND

Patent application AU 2021203036 in the name of Esco Group LLC (the applicant) was filed on 12 May 2021. It was examined and accepted in 2023, before it was opposed under section 59 by CQMS Pty Ltd (the opponent) on 11 August 2023. The opponent filed evidence in support of their opposition, and on 13 May 2024the applicant filed evidence in answer and amendments to the claims. A stay of the section 59 opposition was put in place to accommodate the consideration of these amendments which were opposed by the opponent on 27 August 2024. There is no evidence filed in respect of the consideration of these amendments before me. The matter I am deciding is limited to narrow issues in relation to scope of the claims before and after the proposed amendment.
SPECIFICATION
The specification is directed towards a system and tool for monitoring the status, health and performance of wear parts on various kinds of earth working equipment.[1] A range of embodiments are discussed but for present purposes it is sufficient to note that the invention relates to a monitoring system which uses a wireless device in some way attached to a digging bucket to remotely send sensed information to a processor. A general depiction of the invention is in Figure 9 which is a perspective view of a bucket with a monitoring system 25 installed on the bridge of the bucket.
[1] Specification at [02]
I need not discuss the description any further at this point for the purposes of this decision. As will be seen, the matter in dispute relates to narrow issues of claim construction and everyday English words. In short,…

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: [2025] APO 18
Decision Date: 25 June 2025

CaseChat Overview and Summary

The case of CQMS Pty Ltd v Esco Group LLC [2025] APO 18 involved a dispute over the validity of amendments to patent claims filed by Esco Group LLC in relation to their patent application for a wear part monitoring system. The patent was opposed by CQMS Pty Ltd under section 59 of the Patents Act 1990, which allows for opposition on various grounds including that the invention is not a patentable invention. The matter before the court was the allowability of amendments to the claims, which were proposed to clarify the location of the wireless device and electronic sensor in the monitoring system.

The court was tasked with determining whether the amendments proposed by Esco Group LLC resulted in claims that extended beyond the scope of the original claims, which would render the amendments non-allowable under subsections 102(1) and (2) of the Patents Act 1990. Specifically, the court considered whether the amended claims would not in substance fall within the scope of the claims before amendment, as required by subsection 102(2)(a).

In its reasoning, the court adopted a purposive approach to claim construction, considering the plain meaning of the terms used in the claims in their context. The court found that the term "located on a bucket" in the original claims was broad enough to encompass various positional or attachment configurations, including those where the wireless device was secured within the bucket wall. However, the court concluded that the amendment to claim 16, which specified the wireless device should be "secured in or on one of the walls [of a bucket]," introduced a narrower scope by implying contact with the surface of the wall. This amendment, the court found, created a potential for infringement that did not exist prior to the amendment, thereby failing the test under subsection 102(2)(a).

Consequently, the court refused the amendment request and awarded costs against the applicant, Esco Group LLC, in accordance with Schedule 8 of the Patent Regulations. The opposition to the patent application under section 59 of the Act was stayed pending the outcome of the amendment decision.

Orders