CQMS Pty Ltd v ESCO Group LLC - [2023] APO 16

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CQMS Pty Ltd v ESCO Group LLC [2023] APO 16

Patent Application: 2016219013

Title:Monitoring ground-engaging products for earth working equipment

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Dr W.E. Guinea

Decision Date: 10 March 2023

Hearing Date: 15 March 2022, by written submissions

Catchwords: PATENTS – evidence in reply – whether evidence in reply properly in reply – principles from Sonus affirmed – some evidence not properly in reply – costs awarded against Opponent

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: 2016219013

Title:Monitoring ground-engaging products for earth working equipment

Patent Applicant: ESCO Group LLC
Date of Decision: 10 March 2023

DECISION

I am satisfied that the following paragraphs or parts thereof from the declaration by Mr Ian Hugh Hamilton dated 16 September 2021 are not properly in reply to the evidence in answer: [23] to [29]; the second to last sentences of [31]; the second to last sentences of [32]; [55]; [56]; [60]; [67] to [74]; [88] to [95]; last sentence of [101]; [114]; [121]; [122], [124]b; [126] and [137]. Therefore, I direct that the above-mentioned parts of the evidence in reply do not form part of the evidence in the s59 Opposition to this application.

I award costs against the Opponent, CQMS Pty Ltd, according to Schedule 8 of the Regulations.

REASONS FOR DECISION

Background

Patent application 20162019013 (the “application”) entered national phase on 11 September 2017 from PCT/US2016/017896. PCT/US2016/017896 was filed on 12 February 2016 in the name of ESCO Corporation. By virtue of a request filed under s113 on 12 September 2018, the Applicant of record became ESCO Group LLC (the “Applicant”). The application has an earliest priority date of 13 February 2015.
The application is a member of a group of broadly similar applications filed by the Applicant that deal with wear part monitoring for ground engagement tools (“GETs”), even though not all of the applications in this group are strictly family members. The group of applications has been the subject of extensive opposition proceedings before the Commissioner, and eleven applications of this group, including the application, have been the subject of challenges regarding whether evidence in reply (“EIR”) is properly in reply to the evidence in answer (“EIA”), the subject of the current decision. The relationships and key dates, such as filing, acceptance etc. of the broader family is given at Annex A to this decision.
Examination was requested on 6 March 2018. A first examination report issued on 25 March 2019, with the application being subsequently accepted on 19 November 2019. The application was advertised as accepted on 5 December 2019.
On 5 March 2020, CQMS Pty Ltd (the “Opponent”) filed a notice of opposition to the grant of the application under s59 of the Act (the “s59 opposition”). A statement of…

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 16
Decision Date: 10 March 2023

CaseChat Overview and Summary

The decision concerns a s59 opposition to patent application 2016219013 by ESCO Group LLC, in which CQMS Pty Ltd opposed the grant of the patent on various grounds. The Commissioner of Patents directed that certain parts of the evidence in reply (EIR) were not properly in reply to the evidence in answer (EIA) and should not form part of the evidence in the opposition. CQMS objected to this direction and requested a hearing by written submissions. The Commissioner, Dr W.E. Guinea, found that certain parts of the EIR were not properly in reply to the EIA. These parts related to, among other things, evidence of prior art, the relevance of certain documents cited in the EIR, and the sufficiency of the application's disclosure. Dr Guinea held that these parts of the EIR should not form part of the evidence in the opposition. The Commissioner also awarded costs against CQMS in accordance with Schedule 8 of the Regulations. The decision provides guidance on the principles that apply when determining whether evidence in reply is properly in reply to the evidence in answer. The Commissioner emphasised that evidence in reply must respond to some matter raised by the evidence in answer, but not necessarily by rebutting it. The Commissioner also noted that evidence in reply should not merely confirm the evidence in support or introduce new evidence that should have been raised in the evidence in support. The decision is a useful reminder of the importance of ensuring that evidence in reply is properly in reply to the evidence in answer, and the consequences of failing to do so. The decision also highlights the principles that apply when determining whether evidence is properly in reply, and the need for evidence in reply to be relevant, focused, and not merely confirmatory of the evidence in support.

Orders