CQMS Pty Ltd v ESCO Group LLC - [2023] APO 26

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…

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 26
Decision Date: 9 May 2023

CaseChat Overview and Summary

CQMS Pty Ltd opposed the grant of two Australian patent applications 2018201710 and 2018201735 filed by ESCO Group LLC. The delegate of the Commissioner of Patents decided that the evidence in reply filed by CQMS Pty Ltd in relation to these applications was properly in reply to the evidence in answer filed by ESCO Group LLC. ESCO Group LLC objected to the delegate’s decision, and the matter was set for a hearing by written submissions. The delegate found that none of the evidence in reply filed by CQMS Pty Ltd was not properly in reply to the evidence in answer filed by ESCO Group LLC. The delegate awarded costs against ESCO Group LLC in accordance with Schedule 8 of the Regulations.

The legal issues considered by the delegate were whether evidence in reply is restricted to evidence rebutting the applicant's evidence in answer, and whether evidence in reply can introduce new matters that should have been raised in the evidence in support. The delegate referred to established principles from previous cases and found that evidence in reply must respond to some matter raised by the evidence in answer and must not merely confirm the evidence in support. However, the mere introduction of new evidence does not necessarily mean that evidence in reply is not properly in reply.

In relation to the 710 application, the delegate found that the evidence in reply relating to the "field" of the invention and the skilled person did not amount to new evidence that should have been filed in the evidence in support. The delegate also found that the citing of bucket mounted sensors in evidence in reply was properly in reply to the evidence in answer.

In relation to the 735 application, the delegate found that the evidence in reply relating to the "field" of the invention and the skilled person was properly in reply to the evidence in answer. The delegate also found that the citing of bucket mounted sensors in evidence in reply was properly in reply to the evidence in answer.

The delegate awarded costs against ESCO Group LLC in each of the challenges to the evidence in reply. The delegate found that there was no justification to deviate from the usual award of costs in the present circumstances, which is that costs usually follow the event.

Orders