CQMS Pty Ltd v ESCO Group LLC
[2023] APO 28
•11 May 2023
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”) was filed on 6 October 2020, with evidence in support (“EIS”) being completed on 30 March 2021. Evidence in answer (“EIA”) was completed on 19 November 2021, with EIR completed on 21 January 2022. I also note that the claims were amended on 5 November 2021, as was the 720 SGP on 28 April 2022.
The evidence from the 720 opposition is summarised in the table below, with shorthand references provided in bold.
| 720 EIS | 720 EIA | 720 EIR |
| A declaration by Dr Nicholas Simon Hillier dated 30 March 2021 (720 Hillier), with supporting exhibits NH-1 to NH-12 (720 NH-1 to NH-12) | A declaration by Mr Rodney Keith Clarke dated 24 June 2021 (720 Clarke), with supporting exhibit RKC-1 (720 RKC-1) A declaration by Mr Hezekiah Russel Holland dated 9 July 2021 (720 Holland) with supporting exhibits HRH-1 to HRH-2 (720 HRH-1 to HRH-2) | A declaration by Dr Nicholas Simon Hillier dated 21 January 2022 (720 Hillier2) with supporting exhibits NH-13 to NH-18 (720 NH-13 to NH-18) |
On 2 February 2022, the Applicant informed the Commissioner that it considered the EIR for the 720 application was not properly in reply to the EIA. A Delegate considered the matter, and on 2 March 2022, informed the parties that they did not consider any of the EIR for the 720 opposition was not properly in reply to the EIA. On 24 March 2022, the Applicant formally objected to the Delegate’s position and requested to be heard.
Subsequently the matter was set for hearing by written submissions. The Applicant filed submissions in support (“720 SIS”) on 26 May 2022. The Opponent filed submissions in answer (“720 SIA”) on 23 June 2022. The Applicant then filed submissions in reply (“720 SIR”) on 7 July 2022.
On 5 June 2020, the Opponent filed a notice of opposition to the grant of the 714 application under s59 of the Act (the “714 opposition”). A statement of grounds and particulars (“ 714 SGP”) was filed on 7 September 2020, with evidence in support (“714 EIS”) being completed on 8 March 2021. Evidence in answer (“714 EIA”) was completed on 18 February 2022, with EIR (“714 EIR”) completed on 3 May 2022.
The evidence from the 714 opposition is summarised in the table below, with shorthand references provided in bold.
| 714 EIS | 714 EIA | 714 EIR |
| A declaration by Dr Nicholas Simon Hillier dated 8 March 2021 (714 Hillier), with supporting exhibits NH-1 to NH-10 (714 NH-1 to NH-10) | A declaration by Mr Rodney Keith Clarke dated 31 May 2021 (714 Clarke), with supporting exhibit RKC-1 (714 RKC-1) A declaration by Mr Hezekiah Russel Holland dated 17 February 2022 (714 Holland) with supporting exhibits HRH-1 to HRH-2 (714 HRH-1 to HRH-2) | A declaration by Dr Nicholas Simon Hillier dated 20 April 2022 (714 Hillier2) with supporting exhibit NH-11 to NH-18 (714 NH-11 to NH-18) |
10. On 2 June 2022, the Applicant informed the Commissioner that it considered the 714 EIR was not properly in reply to the EIA. A Delegate considered the matter, and without considering the merits of the matter, on 14 June 2022, informed the parties that the EIR question would be considered in an interlocutory hearing together with other members of the group of applications.
11. Subsequently the matter was set for hearing by written submissions. The Applicant filed submissions in support (“714 SIS”) on 29 July 2022. The Opponent filed submissions in answer (“714 SIA”) on 19 August 2022. The Applicant then filed submissions in reply (“714 SIR”) on 26 August 2022. I also note that the claims were amended on 4 February 2022, while a request to amend the SGP was filed on 2 June 2022 and was allowed on 28 April 2023.
12. As the written submissions are completed, both matters are now ready to be decided.
The Law
13. Principles regarding the nature of EIR in matters before the Commissioner are well established and were outlined in Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at [3]:
“It is well established that evidence in reply is restricted to evidence rebutting the applicant's evidence in answer. Evidence that merely bolsters the evidence in support or opens up new matters that should have been raised in evidence in support is not in reply (see Sonus Pharmaceuticals, Inc v Alliance Pharmaceutical Corp and Schering Aktiengesellschaft [2001] APO 13 (the Sonus decision)).”
14. It is perhaps worthwhile to quote some of the principles from Sonus as alluded to by the Delegate in Merial:
“Evidence in reply is clearly distinguished from evidence in support. Phipson on the Law of Evidence states that evidence in reply must be confined to rebutting the applicant’s case, and should not merely confirm the case in chief. Additionally, evidence in reply cannot raise matters that should have been raised in the evidence in support. This was emphasised by Graham J in Ernest Scragg & Sons Ltd’s Application [1972] FSR 219 at 223:
‘To my mind it is quite wrong in these cases that there should be any sort of skirmishing in regard to evidence, and if an opponent has a case he should straight away state what his case is and should put in declarations dealing with any evidence which he thinks may be relevant to that case. The applicant can then deal with the matter in the normal way, and a lot of time is saved, and the Office can get on with deciding the case. If the opponent does not do that and waits until he sees what the applicant says, then obvious difficulties will result and oppositions will inevitably be drawn out and never finished.’…
While this case was referring to the Patents Act in the United Kingdom, the principles are equally relevant to the present Australian Patents Act.
I note that there have been several decisions of the Commissioner that illustrate other principles of further evidence:
Optech International Ltd v Buxton Hicarium Ltd (1993) 28 IPR 649 [“Optech”]: evidence provided in an attempt to rectify deficiencies in the evidence in support is not evidence in reply.
Inax Corp v Caroma Industries Ltd [1994] APO 48: evidence that had no link to statements or opinions in the evidence in answer was not evidence in reply.
Emory University v Biochem Pharma Inc (1997) 39 IPR 603 [“Emory University”]: matter that should have been raised as evidence in support (because it was an essential part of a ground of opposition) was not properly evidence in reply.
I conclude that in general evidence in reply:
(i)is not evidence that should have been served as evidence in support
(ii)responds to some matter raised by the evidence in answer
(iii)does not merely confirm the evidence in support.”
15. It is also worthwhile repeating the following from Sonus:
“The only time that a final determination of whether the evidence is actually in reply is made is during the substantive hearing of the opposition. However, that does not mean that I cannot form a view of the question, and indeed it is essential for me to do so in order to decide the matter before me. However, it is only possible to form a preliminary view. If there is a reasonable basis for believing that evidence fits the definition of evidence in reply, then I believe that I should treat that evidence as reply evidence at this time unless Sonus can satisfy me that that conclusion is not appropriate. It may be that a different conclusion would be reached after detailed analysis of the declarations, such as during the substantive opposition. It clearly would have been easier to determine these issues as a part of the substantive opposition, but that option is not available. I am required to make a preliminary assessment, and to base my decision on that assessment (sic). I will go through the disputed paragraphs of the evidence in reply in turn.”
16. The above principles regarding EIR are well established, and as I understood it, were prima facie accepted by both parties; see the: 720 SIS at [7]; 720 SIA at [14]; the 714 SIS at [9] and the 714 SIA at [11]. Nevertheless, there are several matters of contention between the parties, or issues raised in the submissions for both applications, regarding the principles that are apparent. These include: whether the EIR is responsive only where it is rebutting the applicant’s case; how the EIR need be directed to the EIA to be properly in reply; whether a liberal approach to the EIR is appropriate; whether all three limbs of the test from Sonus need to be satisfied; the characterisation of each of the limbs from Sonus; the rules of evidence and how these do not apply to matters before the Commissioner; whether the EIR can “strengthen” an opponent’s case; the nature, conduct and effect of this matter; sections 60(3) and 60(3A) of the Patents Act and the Trans-Tasman code of conduct for Patent Attorneys. I note that all these issues were addressed at [14] to [51] of CQMS Pty Ltd v ESCO Group LLC [2023] APO 16, and I refer to my comments there in response to these matters.
Consideration
17. I note that, in line with Sonus, if there is a reasonable basis, at this stage, to consider the EIR as being properly in reply, then I will do so. It is up to the Applicant to satisfy me otherwise. The fact that I may find certain passages from Hillier2 in either opposition as being not properly in reply does not prevent the delegate deciding those oppositions from making the same finding against other passages where I have declined to make that finding here.
18. I have not specifically addressed arguments relating to each contested passage where I have considered that it is not necessary to do so. This may be, for example, where the reasons why I differ from the views of one party or the other are apparent from the discussion I have provided above. Another example is where the parties’ views are based on principles that extend beyond those in Sonus, for example, arguments about the EIR rebutting the EIA or being responsive to the Applicant’s case, as discussed above. In either case reference may be made to CQMS Pty Ltd v ESCO Group LLC [2023] APO 16 where appropriate.
19. While I have considered each of the contested passages in line with the requirements in Sonus, I have generally restricted explicit discussion to what I consider are the relevant considerations in contest. If not all considerations from Sonus are discussed with regard to a passage I am unable to view as not being properly in reply, it may be taken that I am satisfied that that passage does not offend against those considerations not explicitly discussed.
20. I will now consider each of the passages of the EIR challenged by the Applicant from each of the 720 and 714 oppositions to determine whether these are not properly in reply to the relevant EIA. Whilst I have specified shorthand references to the declarations and written submissions from each of the oppositions above, I will simply refer to these without the numerical application/opposition identifier in most cases as discussion will proceed under separate headings for each application/opposition.
The 720 Opposition
21. Based on the SIS at [1], the particular passages of Hillier2 challenged by the Applicant are as follows: [7], [13] to [15], [17], [18], [20] to [22], [25], last sentence of [32], third sentence of [35], [61] to [64], [67], last sentence of [69], [72], [75] to [77], last four sentences of [100] and last four sentences of [101].
Paragraphs 7, 13 and 15
22. In paragraph [7], Dr Hillier defines what he means by the “Field” (i.e. of the invention) in Hillier2. Paragraph [13] responds to [3.3] of Clarke by referring to Dr Hillier’s understanding of the field, presumably as expressed at [7].
23. The Applicant’s difficulties with these paragraphs apparently stems from a belief that they re-define the “field” in a way that amounts to new evidence that should have been filed with the EIS. This much is apparent from the SIS at [11](a) to [11](c):
“The Opponent has introduced a definition of "Field" in paragraph [7] of Hillier2 which was not in Dr Hillier’s declaration dated 30 March 2021(Hillier1). Dr Hillier defines ‘the Field’ as ‘the technical field of systems and tools for monitoring the wear parts used on various kinds of earth working equipment’. Dr Hillier then refers back to this definition of the Field throughout Hillier2, attempting to recast statements in Hillier1 as being in the context of this Field.
This redefined Field has the effect of changing the position in the evidence in support as to who the relevant person skilled in the art is, and the common general knowledge known to such a person as relevant to the allegation of lack of inventive step.
The Applicant has not been provided an opportunity to respond to this evidence regarding this newly defined "Field" and its implications as to the person skilled in the art and common general knowledge. In this regard, it may be noted that the SOGP identified various persons who might be the person skilled in the relevant art and only a few of those persons were identified as having the knowledge of monitoring the wear parts used on various kinds of earth working equipment. Furthermore, only recently has the SOGP been amended to put forward a notional person skilled in the relevant art as having a skill set of all the persons identified previously as being possible persons skilled in the relevant art (see paragraphs [2.2] and [2.3] of the SOGP). (emphasis in original)
24. To assist discussion of the Applicant’s contentions, I have reproduced the relevant parts of Hillier at [17] and Hillier2 at [7]:
“As stated in paragraph 5 above, I have previously given evidence in relation to the '221 Application. In my first declaration in that opposition (First '221 Declaration), made on 11 December 2018, I commented on what was commonly known in the technical field of systems and tools for monitoring the status, health, and performance of wear parts used on various kinds of earth working equipment as at 25 November 2013. James & Wells has informed me that the Opposed Application is in the same technical field as the '221 Application and also has a priority date of 25 November 2013 (the Priority Date). Accordingly, I have repeated below the comments which I made in paragraphs 13 to 27 of my First '221 Declaration.” (Hillier at [17], emphasis added)
“As in my First Declaration, in this declaration, the ‘Field’ means the technical field of systems and tools for monitoring the status, health, and performance of wear parts used on various kinds of earth working equipment. As the reference to ‘various kinds of earth working equipment’ makes clear, the Field is not limited to the context of mining but rather extends to such monitoring systems and tools used for monitoring the status, health, and performance of wear parts used not only on various kind of earth working equipment used in mining but various kinds of earth working equipment generally, which would include, for example, those used on earth working equipment in civil engineering projects. (Hillier2, emphasis in bold added)
25. There is little difference in wording between Hillier at [17] and Hillier2 at [7] and there is no change in the field in the manner suggested by the Applicant, based on a comparison of these paragraphs.
26. In addition it is quite clear that the alleged CGK of the PSA as asserted by the SGP has not changed at all after amendment – the Opponent has merely decided to add that “In the alternative, the person skilled in the relevant art is a notional person with skillset of the people identified in paragraphs 2.2.1 to 2.2.7 inclusive”. Noting that the PSA prior to the SGP amendment was given as one or more of those specified at 2.2.1 to 2.2.7 any material difference the SGP amendment makes to the knowledge and identity of the PSA is cloaked in Delphic obfuscation. At best the Applicant appears to have indulged in some semantic filibustering over what seems to be little more than inconsequential shuffling of the deckchairs in the SGP, which does nothing to assist its assertions regarding the EIR.
27. The Applicant further cites [30] and [37] of Hillier at [11](d) of the SIS to support its contentions that Dr Hillier has changed the field to exclude those actually developing wear member products:
“(i) paragraph [30] of Hillier1: ‘I believe that the Tooth Fairy system was known to those developing wear member products and monitoring systems for such wear members, including us at LC Engineering (even though we were not involved in the Tooth Fairy trial).’ (emphasis added)
(ii) paragraph [37] of Hillier1: ‘I believe that monitoring systems such as the Tooth Fairy were indeed generally well known to people in the GET wear member industry in November 2013.’ (emphasis added)”
28. This is then contrasted with [15] of Hillier2 at [11](e) of the SIS:
Now, in paragraph [15] of Hillier2, Dr Hillier states:
‘I consider that the relevant field in relation to the Opposed Application is not the mining industry generally but rather the technical field of systems and tools for monitoring wear parts used on various kinds of earth working equipment, which I have defined in paragraph 7 above as ‘the Field’ … Whilst the Tooth Fairy system might not have been well known to those working in the mining industry as a whole at the Priority Date, I believe it was well-known to those working in the Field, especially those who might be interested in the patent literature of the Field, such as those developing products for the Field, including us at LC Engineering (even though we were not involved in the trial).’ (emphasis added)
This is new evidence from Dr Hillier that the relevant field for the Opposed Application is only a subset of those ‘developing wear member products and monitoring systems for such wear members’, namely only those ‘developing tools and systems for monitoring wear parts’ and excludes those ‘developing wear member products’. Paragraph [15] of Hillier2 thus changes the description of the skilled person and the associated common general knowledge and the Applicant has not been provided an opportunity to answer this new description.”
29. There is also this at [35](c) to [35](e) of the SIR:
“As to OS [44], [45] and [47], the Opponent refers to the fact that Dr Hillier makes a factual statement regarding his instructions in paragraphs [17], [21], [26] and [28] of Hillier1. The Opponent has not pointed to any explanation by Dr Hillier in Hillier 1 of his understanding of those instructions, in particular, his understanding of the word ‘field’ in those instructions. Further, the Opponent has not pointed to any statement in Hillier1 in which Dr Hillier ‘adopts’ or otherwise agrees that this is the field of the skilled person or otherwise provides his opinion regarding the person skilled in the art in the terms now used in paragraph [7] of Hillier2 The Opponent ought to have asked Dr Hillier whether he agreed with the description of the field in paragraph [17] of Hillier1 and included that in its evidence in support.
As to OS [47], the Opponent seeks to alter the express words of Dr Hillier in paragraphs [30] and [37] of Hillier1 so that they fit within the context of the Opponent's instructions recited in paragraphs [17], [21], [26] and [28] of Hillier1. The Applicant submits that this is improper. The words of paragraphs [30] and [37] of Hillier1 are clear on their face. When preparing its evidence in support, the Opponent ought to have asked Dr Hillier questions about his statements in paragraphs [30] and [37] of Hillier1 which clarified the position with respect to the ‘field’ proposed by the Opponent and included this in Hillier1 along with a definition of the ‘field’. It is not open to the Opponent to retrospectively and substantively alter Dr Hillier's evidence and thus deny the Applicant an opportunity to put on answering evidence on that issue.
As to OS [48] and [49], the Opponent does not address the fact that paragraph [15] of Hillier2 uses different words to paragraphs [30] and [37] of Hillier1 when describing the people who would have known about the Tooth Fairy system. The Opponent appears to be relying on its improper alteration of the clear words in paragraphs [30] and [37] of Hillier1 to align them with paragraph [17] of Hillier1.”
30. Altogether, the Applicant’s arguments here are much the same as those discussed in CQMS Pty Ltd v ESCO Group LLC [2023] APO 26 and I generally refer to my comments on those arguments at at [27] to [29] of that decision. Suffice to state here that whatever Dr Hillier’s understanding of his instructions, I am of the view that what he considers to be the field is otherwise reasonably clear, with any arguable discrepancies in this and the material effect thereof best left up to the delegate deciding the 720 opposition. I am not satisfied that these paragraphs are clearly not properly in reply to the EIA.
Paragraphs 13, 18 and last sentence of 32
31. The Applicant’s grievance with these paragraphs simply stems from their references to the allegedly changed “field” as discussed above. Given the above discussion, it follows that I am not satisfied that these paragraphs (or parts thereof) are clearly not properly in reply to the EIA.
Paragraph 14
32. The Applicant expresses two grievances with this paragraph. Firstly it refers to the allegedly changed “field” as discussed above. Secondly, it is said to fail the third limb of Sonus by simply repeating the evidence from the EIS (SIS at [17]).
33. The first argument is disposed by the discussion above concerning the field. While [14] is clearly refers back to the EIS, I do not consider that that this is simply bolstering the EIS. Rather, Dr Hillier has pointed to specific passages in the EIS as establishing his response to various points raised in the EIA by Mr Clarke. To me the contextualising of this as a response to Mr Clarke makes this new evidence in that Dr Hillier is telling us that he considers Mr Clarkes concerns are already answered by certain of the EIS. It seems to me that this is entirely appropriate. If an expert considers that their earlier evidence is an effective antidote to the EIA, such that there is nothing more for them to add, then it is not clear why an expert cannot refer back to the EIS. Indeed to suggest that doing so in such circumstances is not proper reply evidence is likely to lead to the rather absurd result of an expert simply avoiding any comment on certain of the EIA or attempting to discover something more to say so as to ensure the evidence is properly in reply. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
Paragraphs 17, 22 and 28
34. As apparent from [12](a) to [12](c) of the SIS, the Applicant’s grievance with paragraph [17] stems from the citing of certain products/systems not mentioned in the EIS:
“Dr Hillier gives evidence regarding his knowledge of ‘systems that provided wireless transmission from the machine over cellular or mesh networks of the results of on-board systems that monitored the amount of material in a bucket by weight (which I consider a similar product, though not the same as measuring bucket fill via line of sight) and real-time notifications to operators of earth working equipment being used commercially (amongst other functionalities)’ in paragraph [17] of Hillier2. This evidence would have been known to Dr Hillier when preparing his evidence in support, but was not included in it.
In particular, Dr Hillier refers to only Motion Metrics, Shovel Metrics and Trimble in Hillier1, and there is no discussion of MineWare’s Argus and Pegasys products, LC Engineering’s Titan3330 and Max products, or Leica Geosystems in Hillier1. There is also no mention of AIMEX (Asia-Pacific International Mining Exhibition) at Sydney Olympic Park from 20-23 August, 2013 in Hillier1.
There is no apparent reason why Dr Hillier could not have included the evidence in paragraph [17] of Hillier2 in Hillier1.”
35. However, that evidence could have been filed as EIS is not what is stated in the first limb from Sonus: rather the question is whether the evidence is something that should have been filed as EIS. In this regard, I note that [57] of Hillier clearly discusses Dr Hillier’s views on the prevalence of wireless transmission of data in the art, including from sensors mounted on buckets. This is challenged, although without direct reference, at [3.5] of Clarke with the assertion that Mr Clarke was not aware of any wireless monitoring systems being used commercially before November 2013, with specific reference to bucket fill information and real time notifications. Mr Clarke’s views are then responded to by Dr Hillier referring to further examples (without, as I understood it, an assertion that these were CGK per se) of the use of wireless data transmission in the art before the priority date by reference to systems that measured bucket fill via weight and provided real time notifications. In my view, the arguments and context here is rather similar (but with respect to the use of wireless monitoring systems rather than placing sensors on a bucket as such) to that discussed at [43] to [46] of CQMS Pty Ltd v ESCO Group LLC [2023] APO 26, and I refer to my comments there as being equally applicable to paragraph [17]. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
36. The Applicant’s complaints regarding paragraph [22], at [12](e) to [12](g) are of a similar nature to those provided regarding paragraph [17]. Here the issue concerns the raising of systems where sensors were mounted on the bucket and wireless transmission from the same and the listing of the GET Trakka product as an example. The fact that the EIS discusses wireless transmission from sensors mounted on buckets is apparent from the above, with the specific attachment of sensors to buckets of the non-line of sight type present at [50] of Hillier. Mr Clarke challenges [50] of Hillier, and though without direct reference [57] as well, at [3.21] of his declaration. Dr Hillier again responds with examples to support his disagreement with Mr Clarke, which I did not take to be represented as CGK in the art. Consequently, for similar reasons as discussed with regard to [17], I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
37. The Applicant’s grievance with paragraph [28] simply stems from its references to the new systems or products as discussed at [22] of Hillier2. Given the above discussion, it follows that I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
38. The Applicant raised arguments, in both the SIS and the SIR that the SGP does not identify the “newly” introduced systems and that evidence of these being CGK should have appeared in the EIS; see for example the SIS at [12](d), [12](f) and [12](g) and the SIR at [36](f) to [36](h). However, as noted above, I did not take the discussion of the “new” systems to amount to allegations that these were CGK as such. The absence of these systems from the SGP tends to support that view.
Paragraphs 20, 21, 25, 61 to 64, 67, 72 and 75 to 77
39. The Applicant has generally objected to each of these paragraphs, at [17] of the SIS, as simply repeating the EIS and thereby not complying with the third limb from Sonus i.e. the same as the second criticism of paragraph [14] discussed above. Having considered each of these paragraphs, I am of the view that these are not clearly properly in reply to the EIA for the same reasons as discussed regarding paragraph [14].
Paragraphs 35, 69, 100 and 101
40. The Applicant has objected to the third sentence of paragraph [35] at [13] of the SIS as follows:
“In paragraph [35] of Hillier2, Dr Hillier refers for the first time to CR Digital's Titan 3330 with respect to digging cycle time. There is no mention of CR Digital's Titan 3330 product in the evidence in support.
The Opponent ought to have known that it would be necessary to establish that certain systems capable of reporting digging cycle time were part of the common general knowledge as part of its construction and lack of inventive step case and included this evidence in its evidence in support. This is further evidence in support and not proper evidence in reply.”
Similar arguments appear at [37] of the SIR (and for paragraphs [69], [100] and [101] as well).
41. However, it is quite clear that [35] of Hillier2 is simply responding to [5.9] of Holland, regarding what forms part of the “digging cycle”. Dr Hillier simply cites the CR Digital Titan 3330 product as supporting his refutation of Mr Holland’s views on the digging cycle. The CR Digital Titan 3330 product is not represented, as far as I can tell, as CGK by Dr Hillier, and it otherwise does not appear to comprise material that is essential to making out a ground of opposition, notwithstanding the Applicant’s assertions on construction. In any case I note that Dr Hillier appears to have provided his views on what is meant by a “digging cycle” at [73] and [96] of Hillier. I am not satisfied that any of paragraph [35] is clearly not properly in reply to the EIA.
42. Very similar arguments are provided at [14] of the SIS concerning the last sentence of [69] and the citing for the first time of various systems by Dr Hillier, such as the Trayscan product. Again it is by no means clear to me that Dr Hillier considers these products to be CGK before the priority date, but even if this is the case it is not apparent that his evidence here is not properly in reply to the EIA.
43. In this regard paragraph [69] carries on from [68] of Hillier2 in responding to Holland at [11.24] regarding whether the invention determines the amount of fill by a single (i.e. one dimensional) distance measurement or multiple distance measurements (i.e. multi-dimensional). Dr Hillier agrees with Mr Holland that the method of the 720 application could be extended to multi-dimensional data, but states there are no details provided as to how to do this because doing so is straightforward or where there are “non-obvious elements” those details come from the prior art as exemplified by the products/systems mentioned. While the use of “non-obvious” is rather curious and Dr Hillier has not actually identified any such elements, it seems to me that the EIR here goes to questions specifically relevant to s40 of the Act.
44. The impugned passages from [69] may also be nominally relevant to matters of inventive step. However, as noted, the point here seems to be a narrow one about performing the invention in view of the disclosure of the 720 application, rather than anything going to whether the claimed invention is obvious. It is by no means clear to me that the last sentence of [69] is something essential for making out lack of inventive step and should have appeared in the EIS. I am not satisfied that any of paragraph [69] is clearly not properly in reply to the EIA.
45. Very similar arguments, as for those for [35] and [69], are provided for the last four sentences of [100] at [15] of the SIS. Again the issue raised is the new citing of products not mentioned in the EIS, which the Applicant asserts are items of CGK that should have been provided in the EIS. I note that the offending products cited by the Applicant only appear in the last three sentences of [100]; the fourth last sentence simply discusses AU 2005227398 B1 (“D9”) which was already introduced for novelty and inventive step purposes in the EIS. It is not otherwise apparent how the fourth last sentence of [100] is clearly not properly in reply to the EIA. Consequently I have restricted my analysis to the last three sentences of [100].
46. I am unconvinced that the last three sentences of [100] are clearly not properly in reply to the EIA. Dr Hillier, in the EIS at NH-9, indicates that he considers it obvious to modify US 7832126 B2 (“D1”) such that transmitted information from a current digging/operational cycle and past digging/operational cycles are used to determine performance of the earth working equipment as per claims 4, 5 and 10 (as they were at the time the EIS was filed). In responding to this at [11.68] of his declaration, Mr Holland appears to agree with Dr Hillier on this point, but proceeds to outline how the system as defined in the amended claims amounted to a “unique approach” to detecting the data, as follows:
“While someone with experience in the area would have known how to do the processing (i.e. what software to use in the programmable logic device) at November 2013 once the system for monitoring earth working equipment as claimed in the Opposed Application was installed, I consider that the system as claimed is a unique approach to detecting the data which also provides information for use as described in the Opposed Application as well as enabling operators to further develop how the data is used. I am not aware of any monitoring systems for earth working equipment before November 2013 which used at least one electronic sensor for detecting the load in a bucket and detecting the load in a truck, a database to store the transmitted information for each of the plurality of digging cycles and a programmable logic device to determine performance of an operation of the earth working equipment using the transmitted information from one or more of the plurality of digging cycles. I am also not aware of any system for monitoring earth working equipment before November 2013 having at least one electronic sensor for detecting the load in a truck and detecting the duration of an operational cycle to fill the truck tray, database to store the transmitted information for each of the plurality of digging cycles and a programmable logic device using transmitted information from a current operational cycle and past operational cycles to determine a performance for the filling of the truck tray.”
47. Paragraph [100] is directed to refuting these somewhat generalised assertions by Mr Holland, and cites the allegedly offending products as general level exemplars in this regard. There is no specific discussion of each of the products and, in my view, Dr Hillier is not representing these products as being CGK or is specifically citing them for novelty or inventive step purposes. I am unconvinced that the last three sentences of [100] are something that should have been included in the EIS. I am not satisfied that any of paragraph [100] is clearly not properly in reply to the EIA.
48. The last four sentences of paragraph [101] are objected to at [16] of the EIS. I note that this paragraph only comprises four sentences, so I have taken the Applicant as objecting to this paragraph in its entirety. As for paragraphs [35], [69] and [100] the Applicant’s issue with this paragraph stems from discussion of things allegedly not present in the EIS. In this case it is the discussion of monitoring systems that store video feeds.
49. Mr Holland, at [11.73] of his declaration, challenges Dr Hillier’s arguments from the EIS, at NH-10 with respect to claims 3, 4, 5 and 10 as they were at that time, that “…it would have been straightforward and routine to store the information regarding fill by, for example, connecting a video recorder to the system of D4 [US 2020/0110185 A1]”. In response to this, Hillier2 at [101] refers back to the relevant EIS and provides further examples that allegedly utilise storage of video feeds to bolster Dr Hillier’s views on the issue. Again, there is no detailed discussion of each of the products and, in my view, Dr Hillier is not representing these products as being CGK or specifically citing them for novelty or inventive step purposes. I am unconvinced that any of paragraph [101] comprises something that should have been included in the EIS. I am not satisfied that any of paragraph [101] is clearly not properly in reply to the EIA.
50. In summary I am not satisfied that any of the EIR from the 720 opposition is not properly in reply to the EIA.
The 714 Application
51. Based on the SIS at [1], the particular passages of Hillier2 challenged by the Applicant are as follows: [7], [22(d)], [38] to [41], [44], [57], [67], [69], [78], [92], and the last sentence of each of paragraphs [48] to [50], [52] and [75].
Paragraphs 7, 22(d), 38 to 40, 57, 67, 69, 78 and 92
52. The Applicant’s criticisms of these paragraphs, at [13] of the SIS and [36] of the SIR, regard allegations that Dr Hillier has changed the “field” in his EIR. The arguments and context are very similar to those addressed regarding the 720 application at [23] to [30] above and at [27] to [29] of CQMS Pty Ltd v ESCO Group LLC [2023] APO 26. It follows that for similar reasons I am not satisfied that any of these paragraphs or parts thereof are clearly not properly in reply to the EIA. Suffice to state, for completeness, the mere mention of “civil engineering” as an example to which the field extends makes no material difference to the nature of the field per se.
Paragraphs 41, 44, 48 to 50, 52 and 75
53. The Applicant objects to these paragraphs, or parts thereof, at [14] of the SIS and [37] of the SIR. The Applicant’s arguments and the context here are both very similar, if not quite identical as that discussed above in connection with paragraphs [17], [22] and [28] from 720 Hiller2. It follows that I am not satisfied that any of these paragraphs are clearly not properly in reply to the EIA for similar reasons as discussed with regard to paragraphs [17], [22] and [28] of 720 Hillier2.
54. In Summary I am not satisfied that any of the EIR from the 714 opposition is not properly in reply to the EIA.
Regulation 5.23
55. In the SIS and SIR for both applications, the Applicant has requested a period to consider filing a request pursuant to Reg 5.23 in the event the EIR challenged remained in evidence. In response to this, I refer to my comments at [158] and [159] of CQMS Pty Ltd v ESCO Group LLC [2023] APO 16.
CONCLUSION
I am not satisfied that any of the passages challenged by the Applicant in the 720 or 714 oppositions are not properly in reply to the EIA.
COSTS
Costs usually follow the event. I therefore award costs against the Applicant in each of the challenges to the EIR according to Schedule 8 of the Regulations.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
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