CQMS Pty Ltd v ESCO Group LLC - [2023] APO 28

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CQMS Pty Ltd v ESCO Group LLC [2023] APO 28

Patent Applications: 2018201714 & 2018201720

Title:Wear part monitoring (both)

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Dr W.E. Guinea

Decision Date: 11 May 2023

Hearing Date: 26 August 2022, by written submissions; 7 July 2022, by written submissions

Catchwords: PATENTS – evidence in reply – whether evidence in reply properly in reply – no evidence in reply clearly not properly in reply – costs awarded against Applicant

Representation: Counsel for the applicant: Tom Cordiner KC
Patent Attorney for the applicant: MinterEllison
Patent Attorney for the opponent: James & Wells

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Applications: 2018201714 & 2018201720

Title:Wear part monitoring (both);

Patent Applicant: ESCO Group LLC
Date of Decision: 11 May 2023

DECISION

I am not satisfied that any of the evidence in reply challenged by the Applicant in the opposition to 2018201714 is not properly in reply to the evidence in answer.

I am not satisfied that any of the evidence in reply challenged by the Applicant in the opposition to 2018201720 is not properly in reply to the evidence in answer.

I award costs against the Applicant, ESCO Group LLC, according to Schedule 8 of the Regulations in the challenge to the evidence in reply for 2018201714 .

I award costs against the Applicant, ESCO Group LLC, according to Schedule 8 of the Regulations in the challenge to the evidence in reply for 2018201720 .

REASONS FOR DECISION

Background

Patent applications 2018201714 (the “714 application”) & 2018201720 (the “720 application”), together the “applications”, were both filed on 9 March 2018 in the name of ESCO Corporation. By virtue of a request filed under s113 on 12 September 2018, the Applicant of record for the applications became ESCO Group LLC (the “Applicant”). By virtue of their divisional status to 2014262221, the applications have an earliest priority date of 25 November 2013.
The applications are a member of a broadly similar group of applications subject to opposition proceedings and challenges to evidence in reply (“EIR”) in the context of the same. Details concerning these applications can be found at annex A to CQMS Pty Ltd v ESCO Group LLC [2023] APO 16.
Examination was requested at filing for both applications. A first examination report for the 720 application issued on 7 May 2019, while the first examination report for the 714 application issued on 5 April 2019. The 720 application was accepted on 16 March 2020 and the 714 application accepted on 17 February 2020. The 720 application was advertised as accepted on 2 April 2020 and the 714 application was advertised as accepted on 5 March 2020.
On 2 July 2020, CQMS Pty Ltd (the “Opponent”) filed a notice of opposition to the grant of the 720 application under s59 of the Act (the “720 opposition”). A statement of grounds and particulars (“720 SGP”)…

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: [2023] APO 28
Decision Date: 11 May 2023

CaseChat Overview and Summary

The Australian Patent Office has ruled in the case of CQMS Pty Ltd v ESCO Group LLC [2023] APO 28 that none of the evidence in reply (EIR) challenged by the Applicant, ESCO Group LLC, in the oppositions to patent applications 2018201714 and 2018201720 were not properly in reply to the evidence in answer (EIA). The decision was made by Delegate Dr W.E. Guinea on 11 May 2023, following written submissions from both parties. The court found that the EIR provided in response to the EIA was relevant and did not merely confirm the evidence in support or open up new matters that should have been raised in the evidence in support. As a result, costs were awarded against the Applicant according to Schedule 8 of the Regulations. The decision provides guidance on the principles of evidence in reply in patent oppositions and the importance of ensuring that such evidence is properly in reply to the evidence in answer.

Orders