CQMS Pty Ltd v ESCO Group LLC
[2023] APO 26
•9 May 2023
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2023] APO 26
Patent Application: 2018201710 & 2018201735
Title:Wear part monitoring; Wear part monitoring
Patent Applicant: ESCO Group LLC
Opponent:CQMS Pty Ltd
Delegate:Dr W.E. Guinea
Decision Date: 9 May 2023
Hearing Date: both 20 January 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 Application: 2018201710 & 2018201735
Title:Wear part monitoring; Wear part monitoring
Patent Applicant: ESCO Group LLC
Date of Decision: 9 May 2023
DECISION
I am not satisfied that any of the evidence in reply challenged by the Applicant in the opposition to 2018201710 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 2018201735 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 2018201710.
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 2018201735.
REASONS FOR DECISION
Background
Patent applications 2018201710 (the “710 application”) & 2018201735 (the “735 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 both applications issued on 5 April 2019, with the 735 application being accepted on 27 February 2020 and the 710 application accepted on 10 March 2020. The 735 application was advertised as accepted on 12 March 2020 and the 710 application was advertised as accepted on 26 March 2020.
On 12 June 2020, CQMS Pty Ltd (the “Opponent”) filed a notice of opposition to the grant of the 735 application under s59 of the Act (the “735 opposition”). A statement of grounds and particulars (“735 SGP”) was filed on 14 September 2020, with evidence in support (“EIS”) being completed on 15 March 2021. Evidence in answer (“EIA”) was completed on 17 June 2021, with EIR completed on 10 August 2021.
The evidence from the 735 opposition is summarised in the table below, with shorthand references provided in bold.
| 735 EIS | 735 EIA | 735 EIR |
| A declaration by Dr Nicholas Simon Hillier dated 15 March 2021 (735 Hillier), with supporting exhibits NH-1 to NH-9 (735 NH-1 to NH-9) | A declaration by Mr Rodney Keith Clarke dated 15 June 2021 (735 Clarke), with supporting exhibit RKC-1 (735 RKC-1) A declaration by Mr Hezekiah Russel Holland dated 16 June 2021 (735 Holland) with supporting exhibit HRH-1 (735 HRH-1) | A declaration by Dr Nicholas Simon Hillier dated 9 August 2021 (735 Hillier2) with supporting exhibits NH-10 to NH-19 (735 NH-10 to NH-19) |
On 3 September 2021, the Applicant informed the Commissioner that it considered the EIR for the 735 application was not properly in reply to the EIA. A Delegate considered the matter, and on 16 September 2021, informed the parties that they did not consider any of the EIR for the 735 application was not properly in reply to the EIA. On 30 September 2021, 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 (“735 SIS”) on 9 December 2021. The Opponent filed submissions in answer (“735 SIA”) on 22 December 2021. The Applicant then filed submissions in reply (“735 SIR”) on 20 January 2022.
On 26 June 2020, the Opponent filed a notice of opposition to the grant of the 710 application under s59 of the Act (the “710 opposition”). A statement of grounds and particulars (“ 710 SGP”) was filed on 28 September 2020, with evidence in support (“710 EIS”) being completed on 24 March 2021. Evidence in answer (“710 EIA”) was completed on 30 June 2021, with EIR (“710 EIR”) completed on 30 August 2021.
The evidence from the 710 opposition is summarised in the table below, with shorthand references provided in bold.
| 710 EIS | 710 EIA | 710 EIR |
| A declaration by Dr Nicholas Simon Hillier dated 23 March 2021 (710 Hillier), with supporting exhibits NH-1 to NH-13 (710 NH-1 to NH-13) | A declaration by Mr Rodney Keith Clarke dated 24 June 2021 (710 Clarke), with supporting exhibit RKC-1 (710 RKC-1) A declaration by Mr Hezekiah Russel Holland dated 29 June 2021 (710 Holland). | A declaration by Dr Nicholas Simon Hillier dated 26 August 2021 (710 Hillier2), with supporting exhibit NH-14 (710 NH-14) |
10. On 23 September 2021, the Applicant informed the Commissioner that it considered the 710 EIR was not properly in reply to the EIA. A Delegate considered the matter, and on 14 October 2021, informed the parties that they did not consider any of the 710 EIR was not properly in reply to the EIA. On 28 October 2021, the Applicant formally objected to the Delegate’s position and requested to be heard.
11. Subsequently the matter was set for hearing by written submissions. The Applicant filed submissions in support (“710 SIS”) on 9 December 2021. The Opponent filed submissions in answer (“710 SIA”) on 22 December 2021. The Applicant then filed submissions in reply (“710 SIR”) on 20 January 2022
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: 735 SIS at [7]; 735 SIA at [15]; the 710 SIS at [7] and the 710 SIA at [14]. 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; there being no property in a witness; 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 710 and 735 opposition 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 identifier in most cases as discussion will proceed under separate headings for each application.
The 710 Application
21. Based on the SIS at [1] and [13], the particular passages of Hillier2 challenged by the Applicant are as follows: [6], [9] to [13], [15], [47], [60] and [70] to [75] and NH-14.
Paragraphs 6 and 11
22. In paragraph 11, Dr Hillier defines what he means by the “Field” (of the invention) in Hillier2. Paragraph 11 responds to [3.3] of Clarke by referring to Dr Hillier’s understanding of the field as expressed at [6].
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 [12](a) to [12](c):
“The Opponent has introduced a definition of "Field" in paragraph [6] of Hillier2 which was not in Dr Hillier’s declaration dated 23 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 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.”
Further, in paragraph [11] of Hillier2, Dr Hillier now 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 6 above as "the Field". (emphasis added)
This is further 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" despite this latter group being part of the evidence in Hillier1. The skilled person in the Hillier1 is someone "developing wear member products and monitoring systems for such wear members" and it is this evidence which the Applicant answered. Paragraph [11] of Hillier2 therefore changes the description of the skilled person and thus the associated common general knowledge and the Applicant has not been provided an opportunity to answer this new description.” (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 [6]:
“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)
“In this declaration, the "Field" means the technical field of systems and tools for monitoring the wear parts used on various kinds of earth working equipment.” (Hiller2 at [6])
While there is a difference in wording between Hillier at [17] and Hillier2 at [6], it is hard to see what material difference this makes, let alone changing the field in the manner suggested by the Applicant.
25. The Applicant further cites [29] of Hillier at [12](d) of the SIS to support its contentions that Dr Hillier has changed the field to exclude those actually developing wear member products. Hillier at [29] reads as follows:
“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).”
26. There is also this at [12](e) of the SIS:
“The Delegate also refers to paragraph [17] of Hillier1. However, paragraph [17] of Hillier1 quotes Dr Hillier's evidence from his First '221 Declaration, with paragraph 13 stating:
‘I was not at that time provided with a copy or any details of the patent application (or any part of the specification), nor was I told the name of the patent applicant. The only information I was given at that time was that the patent application (which I will hereafter refer to as the "Opposed Application") relates to 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’.
Further, paragraph [17] of Hillier1 states that ‘James & Wells has informed me that the Opposed Application is in the same technical field as the '221 Application’. In addition, the Delegate refers to paragraph [27] of Hillier1 which again explains that Dr Hillier was asked to comment on a field defined by the Opponent's patent attorneys. At no point in Hillier1 does Dr Hillier provide evidence that he agrees that the field defined by the Opponent's patent attorneys is the relevant field for the Opposed Application. To the contrary, when defining the group of people relevant to the alleged common general knowledge in his own words, Dr Hillier has included those ‘developing wear member products’ as in paragraph [29] of Hillier1.”
I note that similar arguments as at [12] of the SIS were provided at [29] to [33] of the SIR.
27. In my view, the Applicant is grasping at ephemeral straws in referring to Hillier at [29]. Firstly, the fact that mention is made in this paragraph of those developing wear member products does not mean that Dr Hillier is necessarily redefining the field here to include such persons. Secondly, while I consider a definitive conclusion on this is up to the Delegate deciding the 710 opposition, it seems rather more likely to my mind that the field of “systems and tools for monitoring the wear parts used on various kinds of earth working equipment” is liable to inherently overlap with and incorporate those developing such wear members. Thirdly, to the extent there is a difference in the “field”, and I reiterate I am of the view that there probably is not, as argued by the Applicant, it is by no means clear how this makes a material difference to the case the Applicant has to answer – the difference nominally amounts to narrowing the field to a subset from that the Applicant allegedly addressed in the EIA. Hence the Applicant has had an opportunity to address whichever version of the field it considers is applicable.
28. In addition, the suggestion that Dr Hillier has not necessarily indicated explicit agreement with the field in Hillier as put by the Opponent’s Patent attorneys is another straw blowing in the wind. It appears tolerably clear to me what Dr Hillier considers to be the “field” in Hillier, and any failure to express overt agreement with the Opponent’s patent attorney’s does not change that. The fact that Dr Hillier included those developing wear member products as part of his survey of the common general knowledge simply reinforces, in my view, the second point made in the preceding paragraph – that is the field likely extends to those developing wear members even if not explicitly stated as such.
29. In my view, the Applicant’s contentions regarding these paragraphs, at best, are based on highly arguable characterisations of various parts of Hillier and Hillier2 that do not appear to amount to any material difference to its ability to answer the case before it via the EIA, rather than on any genuine defect in the EIR as such. I am not satisfied that these paragraphs are clearly not properly in reply to the EIA.
Paragraphs 9, 10, 12, 13 and 60
30. 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 are clearly not properly in reply to the EIA.
Paragraph 15
31. The Applicant’s difficulties with this paragraph again appears to stem from reference to the allegedly changed “field”. However, the Applicant also made the following comments in connection with this paragraph, at [12](g) and [12](h) of the SIS:
“Further, the discussion of the skilled person varies between paragraphs in Hillier2. In the first sentence of paragraph [15] of Hillier2, Dr Hillier refers to ‘skilled persons in the Field, including those employed by industry to develop wear member products and monitoring systems for such wear members (whose job would include keeping up to date with the types of systems being trialled and developed by others in the Field)’ (emphasis added). The reference to the Field in this context is confusing in light of paragraphs [6] and [9] to [13] of Hillier2 because it appears to expand the definition in paragraph [6] of Hillier2 to include ‘those employed by industry to develop wear member products and monitoring systems for such wear members’. The first sentence of paragraph [15] of Hillier2 is consistent with the Applicant's understanding of the case it was to answer in Hillier1.
However, in the second sentence of paragraph [15] of Hillier2, Dr Hillier further states ‘I maintain my view that monitoring systems such as the Tooth Fairy system were indeed generally well-known to skilled persons in the Field prior to the Priority Date’. It is not clear whether this sentence is using the broader definition of the Field as per the first sentence or whether it is using the narrow definition in paragraph [6] of the Hillier2. If the latter, then this is again new evidence because Dr Hillier stated in paragraph [36] of Hillier1 that ‘I believe that monitoring systems such as the Tooth Fairy were indeed generally well known to people in the GET [Ground engagement tools e.g. as used on excavator buckets] wear member industry in November 2013.’ Dr Hillier has again changed the skilled person and relevant common general knowledge between Hillier1 and Hillier2. This is changing the case which the Applicant had to answer.” (emphasis in original)
32. However, as discussed above, while there is some nominal inconsistency of wording regarding the field, I do not consider this necessarily leads to a material inconsistency whereby the EIR is not properly in reply to the EIA. If anything, again, the changes in the literal expressions in the text (and indeed, Dr Hillier’s discussion of the field across both of his declarations) is highly suggestive that he meant the field to inherently incorporate those making wear parts even if not explicitly expressed as such. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
Paragraph 47
33. The Applicant’s difficulties with this paragraph again appears to stem from reference to the allegedly changed “field”. However, the Applicant also made the following comments in connection with this paragraph, at [12](i) of the SIS:
“In paragraph [47] of Hillier2, Dr Hillier states ‘[i]n the Field, bucket fullness is measured in a heaped manner’. With all the variation between the paragraphs, it is not clear whether the Opponent means for this reference to the Field to be limited to the Field as defined in paragraph [6] of Hillier2 or ‘people in the GET wear member industry’ as this latter group would be aware of the standards referenced in paragraph [47] of Hillier2. With the description of the skilled person changing between paragraphs, it is difficult for the Applicant to know the scope of the case against it and thus the case which it needs to answer.”
34. For reasons discussed above, I am of the view that it is highly likely that the field as expressed by Dr Hillier incorporates those who develop wear parts. Hence those in the “GET wear member industry” appear to simply form a subset of the field as expressed by Dr Hillier. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
Paragraphs 70 to 74
35. Although listing these amongst the offending paragraphs at [1] of the SIS, no actual submissions were provided by the Applicant regarding these paragraphs in the SIS or the SIR. It is not otherwise apparent how these paragraphs are not properly in reply to the EIA. I am not satisfied that these paragraphs are clearly not properly in reply to the EIA.
Paragraph 75 and NH-14 (US 2010/0142759 A1)
36. The Applicant’s criticism of this evidence is perhaps best expressed by [13](a) to [13](d) of the SIS, although I note the further comments at [33] of the SIR:
In paragraph [75] and Annexure NH-14 of Hillier2, Dr Hillier introduces US 2010/0142759A1 (Ridley) for the first time in this Opposition. Any evidence regarding Ridley is new evidence in this opposition. Ridley is not listed as relevant prior art in the Statement of Grounds and Particulars, before or after amendment. Ridley was also not mentioned in Hillier1.
The Delegate states that ‘[t]he Applicant appears to accept that this evidence responds to the evidence in answer’. The Applicant does not make any concession to this effect. Paragraph [75] of Hillier2 does not refer to the Holland Declaration while paragraph [74] of Hillier2 refers to paragraph 11.25 of the Holland Declaration and paragraph [76] refers to paragraph 11.26 of the Holland Declaration.
As Ridley has been raised for the first time in the Opponent's evidence in reply, the Applicant has not been able to answer this evidence. For example, the Applicant may have challenged the choice of Ridley as exemplary of the information which the skilled person would have required at the Priority Date or the Applicant may have challenged that the skilled person would require any of the additional information disclosed in Ridley.
The Applicant submits that this evidence is entirely new evidence in this opposition which should have been included in the evidence in support and which the Applicant has not had an opportunity to answer. If this evidence is considered to be evidence in reply, then the Applicant will have been denied natural justice in the opposition process.”
37. The fact that it may be new evidence does not mean such EIR is not properly in reply. As noted, in Sonus:
“The mere fact that the evidence introduces new information does not mean it is not in reply. In fact, reply evidence must raise new information, otherwise it is merely confirming existing evidence (which is inappropriate).”
It would be something of a truism to state that an applicant would also want to be able to respond to EIR if it could, but again, this desire does not mean the impugned evidence is not properly in reply.
38. In my view, the Opponent is correct in arguing, at [56] of the SIA, that this evidence is in response to [11.23] to [11.25] of Holland. In these passages, Mr Holland answers the suggestions from [82] to [87] of Hillier regarding the effort needed to implement certain image detection algorithms, and edge detection algorithms in particular. Dr Hillier directly responds to these passages of Holland at [71] to [74] of Hillier2, and [75] is clearly carrying on with that response.
39. The question here comes down to whether [75] of Hillier2 and NH-14 are something that should have been filed as EIS. Hillier2 at [75] clearly refers to NH-14 to support Dr Hillier’s contentions that a significant amount of work goes into edge detection algorithms, in contrast to assertions at [11.25] of Holland, and provides NH-14 as exemplifying the effort asserted by Dr Hillier. Dr Hillier had already provided evidence in his first declaration concerning the difficulty with implementing an edge detection algorithm, and the impugned evidence does not, in my view, appear to open up fundamentally new lines of attack per se that the Applicant should be able to respond to in evidence. Rather, it appears to be simply directly responding to criticisms by Mr Holland of the fundamental line of attack first raised by Dr Hillier in EIS. I am not satisfied that any of this evidence is clearly not properly in reply to the EIA.
40. In Summary I am not satisfied that any of the EIR from the 710 opposition is not properly in reply to the EIA.
The 735 Application
41. Based on the SIS at [1], the particular passages of Hillier2 challenged by the Applicant are as follows: [9], [66], [68] to [70] and [88].
Paragraphs 9, 66 and 68, 69 and 88
42. The Applicant’s criticisms of these paragraphs at [13] to [27] of the SIS and [31] to [32] of the SIR are essentially identical to those made with regard to paragraphs [6], [9] to [13], [15], [47] and [60] of the EIR for the 710 opposition, and in materially the same context. Consequently, my reasons above regarding paragraphs [6], [9] to [13], [15], [47] and [60] from the EIR for the 710 opposition are equally applicable here. It follows that I am not satisfied that any of paragraphs 9, 66, 68, 69 and 88 from the EIR for the 735 opposition are not clearly in reply to the EIA.
Paragraph 70
43. As apparent from [28] to [30] of the SIS, the Applicant’s grievance with this paragraph stems from the citing of the Trimble and Motion Metrics systems that comprised bucket mounted sensors. The Applicant argues, at [30]of the SIS:
“There is no apparent reason why Dr Hillier could not have included the statements in paragraph [70] of Hillier2 in his evidence in support dated 15 March 2021. The Applicant has not been provided an opportunity to respond to this evidence identifying the use of sensors on buckets. The onus was on the Opponent to put forward its best case in its evidence in support. These statements in paragraph [70] of Hillier2 are further evidence in support and are not proper evidence in reply.”
44. However, as discussed above, the fact that the EIR comprises new evidence does not mean that it is not properly in reply to the EIA. The Applicant’s arguments about an Opponent needing to put its “best case” in the EIS appears, in these circumstances, to be inherently suggesting that any response to the EIA with new evidence in the EIR somehow means that an Opponent has failed to provide its best case; if so this would seem to render EIR completely otiose.
45. In any case, I do not agree with the suggestion that the citing of certain instances of bucket mounted sensors should have been presented in the EIS. It seems clear from the EIS at [50] that Dr Hillier considered that putting electronic sensors on a GET, other than those associated with GET loss or wear for example to measure cycle time or fill, would have been more complicated than simply putting these on a bucket or boom. Dr Hillier also considered that there would have been no commercial motivation to place such sensors on GETs, as GETs were designed to be expendable and thus placing electronic sensors on the GET would be undesirable (other than those directed to GET loss or wear per se). As observed above, Mr Clarke states at [3.10] that he “…would not have considered attaching a sensor to a bucket for use during commercial operation before November 2013”.
46. In my view the general citing of the LC Engineering, Trimble and Motion Metrics systems is to simply refute Mr Clarke’s suggestions regarding there being no commercial motivation to place sensors on a bucket in a general sense. The systems are not cited as being CGK per se. It is also the case that the EIS is indicative of it being commercially known that some kinds of sensors were mounted on buckets; see Hillier at [54]. The citing of the “new” systems at [70] does not appear to provide new evidence fundamental to making out a ground of opposition, particularly noting that the claims as they stand are directed towards electronic sensors incorporated in the wear part (i.e. the GET) rather than the bucket per se. Consequently, I do not consider that [70] should have appeared in the EIS. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
47. In Summary I am not satisfied that any of the EIR from the 735 opposition is not properly in reply to the EIA.
Regulation 5.23
48. 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 are not properly in reply to the EIA.
COSTS
There was some skirmishing in the submissions for both applications concerning costs, however, I do not consider these to justify deviation from the usual award of costs in the present circumstances, which is that 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