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 and particulars (“s59 SGP”) was filed on 5 June 2020, with evidence in support (“EIS”) being completed on 7 December 2020. Evidence in answer (“EIA”) was completed on 20 July 2021, with evidence in reply (“EIR”) completed on 21 September 2021.
The evidence is summarised in the table below, with shorthand references provided in bold.

EIS	EIA	EIR
A declaration by Dr Nicholas Simon Hillier dated 7 December 2020 (Hillier), with supporting exhibits NH-1 to NH-3.	A declaration by Mr Hezekiah Russell Holland dated 9 July 2021 (Holland), with supporting exhibit HRH-1.	A declaration by Mr Ian Hugh Hamilton dated 16 September 2021 (Hamilton), with supporting exhibits IH-1 to IH-7.

On 8 October 2021, the Applicant informed the Commissioner that it considered the EIR was not properly in reply to the EIA. A Delegate considered the matter, and on 18 November 2021 (the “Delegate correspondence”), informed the parties that they were of the view that certain items of the EIR were not properly in reply, and intended to direct that these items were not in evidence. On 2 December 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 (“SIS”) on 31 January 2022. The Opponent filed submissions in answer (“SIA”) on 28 February 2022. The Applicant then filed submissions in reply (“SIR”) on 15 March 2022, meaning that the matter is now ready to be decided. I note that the Applicant’s SIS and SIR also comprise submissions for two other applications in the group, 2018201631 and 2018201633, while the Opponent has provided separate SIA for each of these applications. For convenience I have decided to write separate decisions for each of 2016219013 & 2018201633. I note that no decision is needed for 2018201631, as this application has lapsed in the meantime and the Applicant has expressly indicated that it does not intend on reviving that application.

The Challenge to the EIR

In the SIS, the Applicant argued that the entirety of the Hamilton declaration was not properly in reply to the EIA. However, that position appears to be predicated on certain parts of the EIR not being properly in reply with the effect that, as argued by the Applicant at [6] of the SIS, “… Hamilton becomes so bereft of content and meaning that it can be rejected entirely”.
Based on the SIS at [9] and [54] to [57], the particular passages of Hamilton challenged by the Applicant comprise, noting repetition of paragraphs in some cases:
·     Paragraphs [45], [47], [49], [58], [59], [75] first sentence and [78] first sentence– said not to rebut the Applicant’s case;
·     Paragraphs [81], [106] to [109], [123] and [125] – said to not be evidence at all, but submissions regarding the content of the Holland declaration; and
·     Paragraphs [35], [39] to [43], [45], [47], [58] to [66], [69] to [72], [79], [81] to [87], [97], [98], [101], [102], [107], [117], [120], [124] to [127], [135] and [137] – said to add evidence strengthening the Opponent’s case, in particular said to add material relevant to lack of inventive step and/or s40 issues.
·     Paragraphs [35], [39] to [43], [45], [47], [58] to [66], [69] to [72], [79], [81] to [87], [97], [98], [101] to [103], [107], [117], [120], [124] to [127], [135] and [137] – said to be not properly in reply.
·     Agrees with view expressed in the Delegate correspondence that paragraphs [23] to [29], [31], [32], [55], [56], [67], [68], [73], [74], [88] to [95], [101] last sentence, [113] to [115], [121] and [122] are not properly in reply.
·     In the alternative considers that paragraphs [35], [39] to [43], [45], [47], [58] to [66], [69] to [72], [79], [81] to [87], [97], [98], [101] to [103], [107], [117], [120], [124] to [127], [135] and [137] should not form part of the evidence as they are not properly in reply.

The Law

10. Principles regarding the nature of EIR in matters before the Commissioner 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)).”

11. 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 International Ltd v Buxton Hicarium Ltd [1993] APO 55 “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.”

12. 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 assessement (sic). I will go through the disputed paragraphs of the evidence in reply in turn.”

13. The above principles regarding EIR are well established, and as I understood it, were prima facie accepted by both parties; see the SIS at [22], the SIA at [5] and the SIR at [13]. Nevertheless, there are several matters of contention between the parties or issues raised in the submissions regarding the principles that I will consider before continuing.

14. The first of these relates to whether EIR can be said to be responsive to the EIA only where it is rebutting an applicant’s case, as put at [24] of the SIS, and repeatedly referred to throughout the SIS with respect to specific passages from the Hamilton declaration, for example at [54] and [55]. While urging a liberal approach to the EIR, the Opponent, at [14] of the SIA, essentially agreed, as I understand it, to the proposition that the EIR should rebut the Applicant’s case; see also the SIA at [25]. However, it did seem that the Applicant, in accepting the three-limbed assessment of Sonus at [13] of the SIR, as well as by the statements at [24] and [36] of the SIR, may have retreated from the proposition that the EIR is responsive only if it is directed at rebutting the Applicant’s case.

15. Whatever the position of the parties in my view one cannot ignore the words in Merial at [3], and in Sonus, that clearly refer to the EIR as rebutting or responding to the EIA not the Applicant’s case. And there is, of course, the no small matter that Reg 5.8(4), which sets out the time frame for filing EIR, and refers to this as “…evidence in reply to the evidence in answer...”. Clearly the EIR is directed to the EIA, not the Applicant’s case.

16. This leads to a second matter of how the EIR need be directed to the EIA in order to be considered properly in reply to the same. In that regard I note that Merial at [3] refers to the EIR as being restricted to “rebutting” the evidence in answer, while the three-limbed test from Sonus refers to responding to some matter in the EIA. I consider it helpful to canvass the meanings of “rebut”, “respond” and “reply” from the Macquarie Dictionary Online, 2022, Macquarie Dictionary Publishers, an imprint of Pan Macmillan Australia Pty Ltd, to understand what difference may exist here. These are:

·rebut:
o   “verb (t) (rebutted, rebutting)
1.  to refute by evidence or argument.
2.  to oppose by contrary proof.”
·respond:
o“verb (i) 1.  to answer; give a reply in words: to respond briefly to a question.
2.  to make a return by some action as if in answer: to respond generously to a charitable appeal.
3. (sometimes followed by to) to exhibit some action or effect as if in answer; react: nerves respond to a stimulus; *five epileptic children who had not responded to any other therapy. –FRANK CROWLEY AND LORNA CARTWRIGHT, 1977.
–verb (t) 4.  to say in answer; reply.
–noun 5. Architecture a half-pillar or the like engaged in a wall to support an arch.
6. Ecclesiastical
a.  a short anthem chanted at intervals during the reading of a lection.
b.  → responsory.
c.  → response (def. 4a).
–phrase 7. respond to, to correspond with.”

·reply:
o“–verb (i) 1.  to make answer in words or writing; answer; respond: I must reply to her letter at once.
2.  to respond by some action, performance, etc.: reply to the enemy's fire.
3.  to return a sound; echo.
4. Law to answer a defendant's plea.
–verb (t) 5.  to return as an answer: she replied that no consideration would induce her to accept.
–noun (plural replies)
6.  an answer or response in words or writing.
7.  a response made by some action, performance, etc.
8. Music → answer (def. 8).
[Middle English replye(n), from Old French replier fold again, turn back, reply, from Latin replicāre unfold, reply]
–replier, noun”

17. It can be seen that “rebutting” is of narrower remit than “responding”, such that there is at least a nominal conflict between indicating that the EIR must rebut the EIA and that it should respond to some matter in the EIA. For example, EIR which agrees with the EIA on some point is still responding to the EIA, although it is clearly not rebutting the same. What, if anything should be made of the difference?

18. Given the three-limbed test in Sonus, I am of the view that, notwithstanding the reference to “rebutting” in Merial, the plain language of the test as per Sonus is the correct way to approach the question of whether the EIR is properly in reply to the EIA. Notably the Delegate in Merial used the test from Sonus, as apparent at [17] of Merial, for example, where the evidence of Mr Pippia was said to be “generally responsive” to comments made by Dr Rowe in EIA. Similarly, the discussion, for example, of paragraphs 10 and 11 of the Kabalnov declaration in Sonus were considered to be properly in reply, based at least in part, on responding to an issue raised in the evidence in answer. Consideration of these examples from Sonus and Merial is suggestive that Dr Barker was using the concept of “responding to a matter raised by the evidence in answer” in the general sense of that phrase and was not viewing the EIR through the restrictive lens of whether it was literally rebutting the EIA. It also seems to me undesirable, at least in matters before the Commissioner, for the EIR to be strictly restricted to rebutting the EIA. To do so would, in my view, unnecessarily deprive EIR of nuance, particularly where an expert may wish to have qualified agreement with the EIA. Nor is there any reason to suppose that the EIR should be restricted in this way.

19. On the other hand, it is difficult to see how any type of evidence that is responsive to a matter raised in the EIA is necessarily properly in reply. For example, the EIA may point out a complete absence of evidence to make a point critical to an opponent’s case. While the supply of such evidence on the point concerned in the EIR would clearly be responsive to a matter raised in the EIA, it would be difficult to see how the introduction of evidence fundamental to making out a ground of opposition in the EIR can be said to be properly in reply, not least due to issues of procedural fairness. This point was clearly understood and canvassed in Sonus and is reflected in the three-limbed test established there, which would effectively hold such evidence as not being properly in reply by virtue of being evidence that should have been filed as EIS; see also Optech in this regard.

20. It may be that the reference to “rebutting” in Merial was a way of expressing that the EIR must respond to the EIA in some way without introducing material that should have been filed as EIS. Whatever the case, overall, I take the reference to “rebutting” in Merial to refer to principles commensurate with the three-limbed test from Sonus, those being the principles which I accept as being correct for assessing whether EIR is properly in reply.

21. The third matter comprises the liberal approach urged by the Opponent with regard to the EIR. This was predicated on, as I understand it:

(a) how the EIR should rebut the Applicant’s case and the “ephemeral” nature of the Applicant’s case (SIA at [25] to [27]; and
(b) the fact the application has been amended (SIA at [33] to [34]).

22. Item (a) may be disposed of by referring to the discussion above regarding the fact that the EIR is in reply to the EIA, not the Applicant’s case per se.

23. With respect to item (b), the Opponent suggests that it is unjust, procedurally inefficient and against the public interest to restrict an Opponent’s EIR where amendments have been filed (SIA at [34]). However, even where amendments have been made that may significantly alter the nature of the opposition, the EIR still needs to be properly in reply to the EIA pursuant to the principles from Sonus. It is not clear to me that this requirement is unjust. The fact an applicant has amended after EIS is generally suggestive of a degree of success by an opponent in an opposition. An opponent may even decide that it need not pursue the opposition any further. But, in any case, to the extent an opponent is unable to properly address the specification as amended in the EIR, an opponent may make use of Reg 5.23, and thereby ensure that its own and the public interest is not unduly imperilled.

24. Procedural efficiency is, of course, generally desirable. However, this does not override notions of procedural fairness and other requirements that are built into the Act and Regulations that balance the various interests of different parties. That balance is reflected in the principles for EIR expressed in Sonus, and also by the fact that Reg 5.23 is available to allow the Commissioner to consult documents relevant to the opposition if appropriate to do so.

25. The fourth matter concerns the characterisation of the Opponent of the second limb from Sonus, at [22] to [24] of the SIA. Here the Opponent suggests that identification of a direct link between portions of the EIR and the EIA “…is a workable standard for addressing the second limb of the Sonus test” (SIA at [23]). However, I am of the view that such a direct link is not necessarily required by the second limb of Sonus. All that is needed is a response to some matter raised by the EIA. This can clearly lead to indirect relationships between the EIR and the EIA. Indeed, this is apparent in the discussion of the Kabalnov declaration in Sonus.

26. The fifth matter concerns the rules of evidence and how these do not apply to the current matter as alleged by the Opponent at [180] et seq of the SIA. It is trite to state that the technical rules of evidence, as expressed in the Evidence Act 1995 (Cth) do not apply to Federal tribunals exercising administrative powers, such as the Commissioner of Patents in hearing and deciding oppositions.

27. It is not the case, however, that simply anything goes in terms of evidence before the Commissioner. While the Commissioner may be able to canvass anything that is logically probative to a matter before her, such material must be introduced into the proceedings using appropriate powers and processes. To do otherwise, as apparently suggested by the Opponent, would almost certainly involve the Commissioner exercising power contrary to the Act and Regulations. It would also create a theoretically never ending and confusing melange of material for the Commissioner and the parties to deal with, whereby the conclusion of evidence becomes an ephemeral haze ever receding into the distance.

28. In this regard, notably, Regulations 5.7 and 5.8 provide for evidence in opposition matters and clearly indicate that this is EIS, EIA and EIR. There is no other mechanism for filing evidence as such in an opposition outside the periods allowed in Reg 5.8. Given this it is unsurprising that the nature of what is properly in reply to the EIA, given the EIR is, by definition in Reg 5.8(4) in reply to the EIA, is not simply whatever the Opponent would like it to be. Issues of procedural fairness necessarily limit the scope of EIR to some extent, and the proper nature of EIR is expressed in the test from Sonus. In this regard the Opponent appears to have overlooked Lord Denning M.R.’s words, quoted in the SIA at [182], from T.A. Miller Limited v Minister of Housing and Local Government [1969] RPC 91 at 93:

“A tribunal of this kind is master of its own procedure, provided that the rules of natural justice are applied.” (emphasis added)

There is, of course, the possibility of the Commissioner introducing further material into the opposition, potentially at the request of one party or the other, using Reg 5.23. But again, that is a power explicitly provided in the Regulations, with procedural fairness automatically “built in”.

29. I also note that the Applicant has argued, at various points, for example, that many paragraphs of the Hamilton declaration “…do not contain evidence at all and are simply submissions regarding the content of the Holland Declaration” (SIS at [55]). However, such arguments are misconceived. An expert commenting on the views of another expert is still clearly expert evidence in the sense this evidence is, by its very nature, typically an opinion provided by an expert in the relevant field. As long as such evidence is otherwise properly in reply, it does not fail to be proper evidence because it provides an opinion on another expert’s evidence.

30. The sixth matter concerns whether EIR can “strengthen” an opponent’s case. Both parties expended some words or referred to this in support of their contentions; see the SIS at [56] and [61] and the SIA at [58] to [63]. I tend to agree with the Opponent’s arguments, to the extent that labelling something as “strengthening” an opponent’s case seems to me to be little more than a semantic characterisation of EIR that does not necessarily shed much light on the desired nature of the EIR as expressed in Sonus. While I acknowledge what was said Optech regarding strengthening an opponent’s case, it may be said that EIR that is properly in response to the EIA could have the effect of strengthening an opponent’s case via an effective rebuttal of, or response to, the EIA. Really the point in Optech, as recognised by Dr Barker in Sonus, is that deficiencies in the EIS cannot be ameliorated using EIR. Nor can an Opponent, as noted in Emory University, strengthen its case by passing off material that is really EIS as EIR. Hence, in my view, the question to be asked is not so much whether an opponent’s case is strengthened per se, but the nature of the strengthening. As indicated in Sonus, this really boils down to whether the EIR is something that should have been filed as EIS. I understand this to be the Applicant’s final position on the issue based on [41] of the SIR.

31. The seventh matter concerns whether all three limbs from Sonus need to be satisfied for EIR to be properly in reply. The Opponent argued, at [7] to [9] of the SIA, that:

“In its written submissions (AWS) at paragraph [23] the Applicant suggests that the three limbs must each be satisfied, and it adds the word ‘and’ to the language used by Dr Barker in Sonus. There is no basis for that gloss.
Confusingly, having stated at paragraph [23] that ‘Sonus is the leading authority from the Australian Patent Office on what comprises evidence in reply’, at paragraph [27] of the AWS the Applicant asserts that Dr Barker was correct to invoke a three limb assessment but that having done so Dr Barker immediately ‘fell into error’ in applying his very own standard. With respect, it is the Applicant that has fallen into error. To suggest that an experienced delegate of the Commissioner of Patents did not follow his own rules in his own decision is a grossly unreasonable mischaracterisation of Sonus.
Instead the better view of Dr Barker’s approach in Sonus is that the three limbs are elements that the Commissioner may ‘in general’ take into consideration, and that specifically there is no requirement to meet all three standards. As held by Dr Barker in Sonus before determining
that the entirety of the Evidence in Reply was strictly in reply:
‘There are also some paragraphs that are merely confirmatory [a conclusion which would breach the third limb]. These paragraphs do not raise any issues that could not have been addressed during the evidence in answer. I have not sought to determine whether the evidence in answer addressed these specific matters.’”

Further in Sonus, Dr Barker confirmed that:
‘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’.” (emphasis in original)

32. Unsurprisingly, this was opposed to the Applicant’s views as expressed at [24] to [28] of the SIS:

“…it is not sufficient that something is literally in response to evidence in answer for it to be proper evidence in reply. It is also necessary that the evidence not be something that should have been served as evidence in support because ‘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’. Further, evidence is responsive to the evidence in answer only if it is ‘rebutting the applicant’s case’. It is not sufficient for the Opponent's evidence to be with respect to a topic addressed in the evidence in answer.”
Dr Barker’s introduction of the three-limb assessment for what properly constitutes reply evidence commences with the ‘in general evidence in reply…’. The words ‘in general’ do not mean that evidence that does not satisfy each of the three limbs may nevertheless be characterised as evidence in reply. As Dr Barker identified in Sonus after setting out the three limbs above:
‘I am also conscious of the fact that material that is filed as evidence may also include material which is not strictly evidence, for instance quotes from the specification, and submissions on matters of law. Such material cannot be characterised as evidence in reply, because it is not even evidence. However, it follows that such material would not require responding evidence (since there is no evidence in such reply material).’

Here, Dr Barker identifies specific situations where material that is filed as evidence in reply is not strictly evidence in reply, because it is not evidence at all. Dr Barker did not include that as a separate limb because ‘such material would not require responding evidence (since there is no evidence in such reply material)’.
While it appears that Dr Barker ultimately allowed evidence in reply that would appear ‘merely confirmatory’ because those paragraphs did not raise any issues that could not have been addressed during evidence in answer, the Applicant contends that in this respect, Dr Barker fell into error. Dr Barker was, apparently, here seeking to apply a discretionary approach to evidence in reply based on whether it was open to the applicant to respond to the evidence as it was first put in evidence in support. Inconsistently with that approach, Dr Barker then, quite rightly, stated: ‘In fact, reply evidence must raise new information, otherwise it is merely confirming existing evidence (which is inappropriate)’ (emphasis in the original). Reply evidence must not be merely confirmatory - if it were, that would be ‘inappropriate’. Indeed, post Raising the Bar, a stricter approach should be taken given the clear mandate to avoid wastage of time and cost (which is exactly what evidence that is merely confirmatory comprises).
Accordingly, evidence is not evidence in reply if it only satisfies one (or two) of the three limbs above. Even if Dr Barker did not fall into error as submitted above, it is clear that, at a bare minimum, Limb (i) must be satisfied and there is no discretion to be applied with respect to compliance with that limb, otherwise natural justice will not have been afforded to the patent applicant.” (emphasis in original)

33. There is some force to the arguments put by either party. However, notwithstanding any apparent inconsistencies of outcomes in Sonus, I consider the most natural reading of the three limbed test from Sonus is that each limb should be met for EIR to be characterised as being properly in reply to the EIA i.e. the limbs from Sonus denote the characteristics of EIR that is properly in reply. In this regard it is difficult to see how EIR that should have been filed as EIS but responds to some matter raised in the EIA and does not merely confirm the EIS could be properly characterised as EIR. If only the latter two limbs needed to be met this would have the effect of turning EIR into simply another round of EIS.

34. Similarly, if the EIR is not something that should have been filed as EIS and does not merely confirm the EIS but does not respond to some matter raised in the EIA, then it is not clear how this could be said to be in any way replying to the EIA. It might be that such evidence is of low relevance to the matter, but if so, it is not clear why an applicant or the Commissioner should have to expend time dealing with such material. It is clearly desirable to encourage EIR to be relevant to the matter to assist in its determination.

35. Likewise, if the EIR is not something that should have been filed as EIS and responds to some matter raised by the evidence in answer, but is merely confirmatory of the EIS, then it is not new evidence. Being merely confirmatory means the EIR is largely equivalent to simply agreeing or reiterating with the EIS i.e. it is merely an echo of the EIS. That is not to say that all EIR that refers to the EIS is necessarily merely confirmatory. It is quite possible that a declarant will refer to the EIS and expand on points made there in response to some matter raised with the EIS in the EIA.

36. I can accept that the use of “general” in Sonus provides some scope for alternative bases to assess whether EIR is properly in reply. I do not agree that with the Applicant’s suggestion that the principles from Sonus must be followed with no discretion available to the Commissioner to do otherwise irrespective of the factual circumstances concerned. However, absent any compelling reasons otherwise, I am of the view that each of the limbs from Sonus need apply to EIR for it to be characterised as being properly in reply. In the present case I do not consider that any such reasons are present, given the discussion concerning procedural fairness and the rules of evidence above.

37. I also note the Applicant’s suggestions, reproduced at [33] above, that Dr Barker fell into error in Sonus, and the Opponent’s response to this reproduced at [32]. I have already provided reasons why I am of the view that, unless there are good reasons to the contrary, EIR need satisfy all three limbs of the Sonus test to be characterised as being properly in reply.

38. In that regard it is important to keep in mind that Sonus was concerned with determining whether the EIR was properly in reply in the context of whether a request for filing further evidence by Sonus should be allowed. Sonus supported their request for further evidence, in part, by pointing to some of the EIR as not being properly in reply. On reading and understanding Sonus in context it can be seen that, Dr Barker refers to EIR that is merely confirmatory or being “observations” as not requiring responding evidence or raising issues that could not have been addressed in the evidence in answer. The fact that Dr Barker states he did not seek to determine whether the EIA addressed the matters concerned suggests that the analysis was undertaken at a very prima facie level. All of this indicates to me that the important point for Dr Barker was whether the EIR was such that it supported Sonus’s further evidence request, and not whether each of the three limbs from Sonus was strictly met by the EIR. In this light the apparent contradictions in Sonus are understandable and are of less significance than either party makes of them. Ultimately this position makes sense, noting that Sonus was about determining whether further evidence should be allowed, not whether certain of the EIR should actually be struck from the evidence for not being properly in reply.

39. The ability to file further evidence has been abolished with the repeal of previous Reg 5.10, as it was, with the changes to the Regulations made in association with the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (“Raising the Bar”) via the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) (Cth). The inability to file further evidence post Raising the Bar, as well as the thrust of those reforms in the oppositions space in terms of reducing delays and improving efficiency, particularly in connection with evidence, supports, in my view, the conclusion I have reached about the general need for EIR to meet all three limbs of Sonus to be considered properly in reply; see the Explanatory Statement to the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) at page 1 “second purpose” and Schedule 3, Item 2. This is because meeting all three limbs as a general proposition, will ensure procedural fairness and meet the Raising the Bar aims, by ensuring EIR does not blindside an Applicant, but also in that it is focused and relevant in deciding the opposition.

40. None of this should be taken to detract from the view that I should not, at this point in the opposition, seek to strike EIR from the evidence if there is a reasonable basis to view it as being properly in reply.

41. The eighth matter concerns suggestions by the Opponent regarding the Applicant’s conduct and motivations in opposing the EIR, in filing amendments and the alleged atypical nature of filing amendments during opposition proceedings. For example, at [33] of the SIA the Opponent argues that:

“The Applicant also seems determined to require the Commissioner to prematurely determine the admissibility of the evidence against the clear direction in Sonus that any determination will only be preliminary in any event, and that parties should save the debate until the substantive hearing. That conduct should weigh against any determination in favour of the Applicant.” (SIA at [33], emphasis in original)

Further arguments concerning the Applicant’s alleged conduct and motivations are provided in the SIA at [36] to [41] of the SIA.

42. In view of [33] of the SIA, it should not be taken that any conclusions I reach regarding EIR not being properly in reply are in some way non-binding. Any passages that I direct as not being properly in reply will not be available as evidence in the opposition, and such a decision is final unless appealed.

43. In this regard it should be kept in mind what is meant by the use of “preliminary” in Sonus. As observed above, Sonus involved assessing the EIR for the purposes of determining whether further evidence should be admitted – it was not for the purposes of determining whether any of the EIR was in fact not properly in reply and should be struck from the evidence. Consequently, Dr Barker’s views on the EIR in Sonus were entirely preliminary in the sense there was no actual determination to be made on the fate of the EIR at all.

44. This is fundamentally a different task from what is before me in this decision where I need determine whether any of the EIR is not properly in reply and should be removed from the evidence. My assessment is only preliminary in the sense that if there is a reasonable basis for determining that the EIR is properly in reply, then I will not strike it from the opposition as part of this decision, but that does not prevent the delegate deciding the opposition from concluding otherwise. Put another way, I should only strike from evidence, in the context of a procedural hearing outside of hearing the substantive opposition, material that is clearly not properly in reply to the EIA, but this does not mean any passages that I do not strike from the evidence are definitively established as being properly in reply.

45. Putting all of the above together, while ideally it would be better to decide the fate of the EIR within the bounds of the opposition per se, that in no way prevents me from making appropriate determinations on the EIR in this matter. Nor does the occasion of this arising prior to hearing the opposition somehow lead to conduct that should necessarily weigh against the Applicant in determining this matter, as asserted by the Opponent. Rather, in my view, the parties’ shared enthusiasm for conflict over EIR has created the present quagmire of procedural issues concerning evidence across multiple applications which is unprecedented in recent office (and perhaps not so recent) history. It is to be hoped that this situation is singular and does not repeat.

46. The remainder of the Opponent’s assertions concerning the Applicant’s behaviour appear to be little more than speculation largely, if not wholly, irrelevant to my considerations in this matter.

47. The ninth matter concerns the nature and effect of this hearing. At [46] to [49] of the SIA the Opponent comments on the alleged rarity of determining the admissibility of evidence at the interlocutory stage. The Opponent also argues that, in view of there being submissions in support, answer and reply:

“…it is reasonable to infer as a matter of procedural fairness that the Opponent is not defending the currently held view of the Commissioner in relation to the admissible paragraphs. Instead, the onus is on the Applicant to convince the Commissioner that the earlier decision is wrong.” (at [47])

48. I am not convinced that this view is correct. The Applicant clearly needs to demonstrate that the impugned passages are clearly not properly in reply to the EIA. This may be by reference to the passages and/or arguments put before the Delegate. Ultimately, however, the parties are not necessarily constrained to whatever was put before the Delegate as the issue of EIR has come before me for determination.

49. In this regard the Opponent states, at [48] and [49] of the SIA, that it reserves the right under Reg 22.22 to:

“…(a) formally contest any decision made in line with the proposed direction stated above before it is made, and

(b) formally contest any reversal of any component of the Commissioner’s earlier views that would be adverse to the Opponent’s interests, before any such reversal occurs.
At this stage we would envisage any such hearing being held concurrently with the substantive hearing, in line with Sonus.”

These arguments are misconceived. As explained earlier in this decision, any passages that I consider are not properly in reply to the EIA will be struck from the evidence and not available in the opposition. I note that the Opponent has already been advised to this effect by a Delegate of the Commissioner by letter dated 13 April 2022.

50. The tenth matter concerns some arguments made by the Applicant, throughout its submissions, regarding matters being first raised in the application, rather than in the EIA; see for example [67](e) of the SIS. The suggestion by the Applicant is that such issues should thereby have been commented upon in the EIS. I consider that such arguments are generally misconceived. The mere fact that some pre-existing issue or contention in the application was not commented upon in the EIS does not necessarily mean such evidence should have appeared in the EIS to begin with. The Applicant’s position seems to demand that every point of contention from the application that could be raised in the EIA must be first raised in the EIS. This is placing too high an expectation on the EIS. In that regard a key consideration is whether the EIR is putting into evidence for the first time something that is the fundamental basis for making out a ground of opposition. As long as this is not traversed, and the other limbs from Sonus are met, an opponent is otherwise free to respond to some new point or issue from the specification first raised in the EIA as it pleases in the EIR.

51. Finally, I note that there were some statements in the submissions concerning various matters that appear largely, if not entirely, irrelevant to determination of this matter. Some of these include submissions on submissions made in connection with challenges to EIR in other members of the broader family. Some included arguments regarding there being no property in a witness, the operation of s60(3) and s60(3A) and stated duties to provide the Commissioner with pertinent information and the Code of Conduct for Trans-Tasman Patent and Trade Marks attorneys. Whilst the desire to access additional ammunition is understandable in highly contested litigation, some of these efforts are so far removed from relevance to the matter at hand as to merely constitute a needless taxation of the alphabet. I have not considered any such arguments in any detail.

Consideration

52. I note that, in line with Sonus, if there is a reasonable basis, at this stage, to consider the EIR as 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 Hamilton as being not properly in reply does not prevent the delegate deciding the opposition from making the same finding against other passages where I have declined to make that finding here. I will now consider each of the passages of the EIR challenged by the Applicant to determine whether these are clearly not properly in reply to the EIA.

53. 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. 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, being responsive to the Applicant’s case or any of the other matters as discussed above. In some cases no specific comments on certain passages have been provided.

54. 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. I have taken the same approach where mere assertions of non-compliance with one or more of the limbs is provided. 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.

Paragraphs 23 to 29

55. These paragraphs begin, in [23], with Mr Hamilton commenting on Mr Holland’s views as to it being unusual to place a monitoring device on an exterior surface of GETs. Mr Hamilton then supports his views in this regard by reference to a product he identifies as LAWs by Team Lujan Design. Mr Hamilton goes on to extensively discuss the LAWs product in these paragraphs. These discussions involve the citing of a version of the product as annexed at IH-7 and Mr Hamilton’s views as to whether the features of the claims are disclosed by the product.

56. While in reply to Mr Holland, I am of the view that these paragraphs clearly comprise EIS filed out of time, as they introduce and discuss what appears to be a new citation nominally relevant for the purposes of novelty. Indeed, the Opponent effectively confirms this at [70] of the SIA. I am satisfied that these paragraphs are clearly not properly in reply to the EIA.

Paragraphs 31 and 32

57. These paragraphs largely follow on from [30] in responding to Mr Holland’s views on the nature of a hole in terms of GETs. In this regard I am of the view that I can reasonably consider the first sentence of each of these paragraphs to be properly in reply as they merely appear to extend from the arguments Mr Hamilton has made in [30]. However, the remainder of each of these paragraphs refers to the LAWS/Team Lujan Design product the subject of paragraphs 23 to 29. I am therefore of the view that both of these paragraphs, excepting the first sentence of each, are clearly not properly in reply to the EIA.

Paragraph 35

58. This paragraph is clearly responding to, and commenting on, comments Mr Holland made in the EIA on an earlier declaration by Mr Hamilton in the opposition to 2018201632. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

59. The Applicant has objected to this paragraph, at [58] of the SIS, on the basis that various paragraphs of Mr Hamilton’s declaration from the 2018201632 opposition are objected as not being properly in reply in the 2018201632 opposition. Even assuming the passages discussed by Mr Holland from Mr Hamilton’s declaration in the 2018201632 opposition were ruled not to be properly in reply in that opposition, I fail to see how that means Mr Hamilton’s response to Mr Holland in this opposition is necessarily not properly in reply. If the EIA discusses evidence from a different matter, then the discussion of that evidence in the EIA is open to reply in the matter in question.

60. I note that the Applicant, at [65] of the SIR, appears content to drop its objection on the understanding that Mr Hamilton’s declaration from the 2018201632 EIR challenge is not in evidence in this matter. As that declaration has not been filed in evidence in this matter, there is no doubt to my mind that that is the case. Of course, any passages quoted within Mr Holland’s declaration for this application form part of his evidence for this matter. In any case, as noted above, I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

Paragraphs 39 to 43

61. Mr Holland comments, at [4.4] of his declaration, on the use of a wearable resistor ladder and how the use of this is interesting to him in locating the sensor near the outside of the wear part. Similar comments are repeated at [5.22] and [5.23] of Holland. Such comments are pointed out by Mr Hamilton at [38] of his declaration, and it is quite clear that [39] to [43] are provided in response to Mr Holland’s views on the placement and robustness of the sensor. I am not satisfied that any of these paragraphs are clearly not properly in reply to the EIA.

62. The Applicant has suggested, at [59] of the SIS, that the issues discussed in these paragraphs relate to issues in the specification, rather than anything raised by Mr Holland. I fail to see how that is the case. If Mr Holland wishes to provide commentary regarding his views on the placement and robustness of the sensor, then it appears reasonable that Mr Hamilton can respond in kind. The reference to the GET Trakka product by Mr Hamilton, made much of by the Applicant at [59] of the SIS and [66] of the SIR, is simply to outline his experience regarding the forces imposed on GETs whilst developing that product. It is not evidence regarding that product per se. I fail to see how any of these paragraphs should have been filed as EIS.

Paragraph 45

63. Here Mr Hamilton provides his characterisation of, and agreement with, paragraph [3.10] from Mr Holland’s declaration concerning the development of new monitoring systems. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

64. The Applicant argues, at [60] of the SIS and [67] of the SIR, that some or all of this paragraph amounts to something that should have been filed as EIS. There may be some force to this argument if not for the introduction of the basis for this paragraph of EIR at [3.10] of Holland. It seems rather academic to me to argue that something should have been introduced in the EIS, and therefore cannot form part of the EIR, when it was first introduced into evidence via the EIA. This is for two principal reasons.

65. Firstly, the prohibition from the EIR of material that should have been raised as EIS is to ensure an applicant is afforded natural justice by having all the evidence that forms the fundamental basis of the case against it presented in the EIS for it to respond to via EIA. If an applicant decides to newly introduce, via EIA, evidence that assists the basis of an opponent’s case, then this is no longer a matter of procedural fairness so much as voluntary acceptance by an applicant of the danger this evidence might pose to its position. If EIA fills a hole in the EIS, then that is that – an opponent may respond to that evidence as long it does not fill any other holes, regarding material essential to make out a ground of opposition, that has already been filled by the EIA. I do not consider that there has been any additional hole filling in connection with the impugned paragraph.

66. Secondly, once the material concerned is in EIA, it is thereby available to an opponent to use in presenting its case. Restricting an opponent from putting on EIR that is responsive to such EIA and that merely incorporates the “new” evidence will not remedy this and is ultimately pointless. I note that the use of merely is meant to denote the fact that the EIR should at least be able to refer and discuss evidence that amounts to an applicant shooting itself in the foot. The act of an applicant in doing so is not an opportunity for an Opponent to extend that hole by bringing in further material or issues that should otherwise appear in the EIS.

Paragraph 47

67. The first sentence of this paragraph provides a characterisation of, and agreement with, paragraph [4.4] from Mr Holland’s declaration regarding known problems in the art concerning buckets and wear parts and the monitoring of the same. On the face of it this is clearly responsive to the EIA. It is not merely confirming the EIS, nor does it appear to be something that should have been filed as EIS. I do not consider that this is clearly not in reply to the EIA.

68. The second sentence, however, presents some difficulties. I repeat it below:

“Indeed many solutions to addressing these problems were well known (I refer to at least the documents Dl, D2, and D5) and solutions were indeed already commercially available.” (I note Mr Hamilton has not explicitly stated which documents each of D1, D2 and D5 refer to, but I have operated on the assumption that these refer to D1, D2 and D5 as discussed in the EIS and the EIA, and made similar assumptions throughout this decision)

There seems to be some ambiguity as to the import of this sentence. It could be taken that D1, D2 and D5 exemplify the sorts of solutions that were well known, or that these documents themselves were CGK as such. The former is not objectionable, particularly noting Dr Hillier’s statements at 1.1 and 1.8 of NH-1, while the latter, in my view, clearly is objectionable.

69. The Delegate’s letter considered that this sentence was using D1, D2 and D5 to exemplify the CGK, rather than providing evidence of these documents being CGK per se. The Opponent appears to agree with the position of the Delegate at [89] and [90] of the SIA. However, the final sentence of the SIA at [90] appears to contend that the documents themselves were CGK, which seems to be supported by the Opponent’s misconceived notions of replying to the Applicant’s case in this regard at [92] and [93] of the SIA. Unsurprisingly, the Applicant considered, at [61] of the SIS, that the sentence conveys each of the documents being CGK per se. The Applicant also noted the apparent assertions by the Opponent, at [90] of the SIA, of these documents being CGK at [68] of the SIR.

70. The fact that both parties consider that the sentence is evidence of the documents being CGK is of some weight. Against this are the views of the Delegate to the contrary. My own views are sufficiently clouded by the unfortunate ambiguity of the sentence, which one may take one way or the other with relative ease. Given the ambiguity, which is not easily resolvable, it is difficult to be entirely satisfied that this sentence is clearly not properly in reply to the EIA. I also observe that to the extent these passages could be taken to evidence that D1, D2 and D5 are CGK, the ability of the Opponent to make use of this appears to be constrained by the s59 SGP. I therefore consider it appropriate to leave it at that. I am not satisfied that these paragraphs are clearly not property in reply to the EIA.

Paragraph 49

71. I am of the view that this paragraph simply agrees with Holland at [4.4] that it is well known that the condition of the ground engaging product was important in assessing the effectiveness of the wear part. This paragraph is thus generally responsive to the EIA. I do not consider that this paragraph is clearly not in reply to the EIA.

Paragraphs 55 and 56

72. These paragraphs discuss tyre pressure monitoring systems (“TPMS”) as being widely known before 2015, and that TPMSs with wireless sensors were known as early as 2007. Such TPMSs are considered relevant to the specification by Mr Hamilton at [56], based, as I understand it, on his interpretation of what is meant by a GET at [50] to [54] of his declaration. I am unable to identify any part of the EIA that these paragraphs could be said to be in response to. Additionally, the discussion of TPMSs being relevant to the specification appears to open an entirely new line of attack on inventive step grounds that was completely absent in the EIS. I am satisfied that these paragraphs are clearly not properly in reply to the EIA.

73. At [94] to [99] of the SIA, the Opponent argues that these paragraphs are properly in reply as the EIS discussed tyres being GETs. The Opponent also argues that the ambiguity in the term GET and Mr Holland’s response to the same justifies these passages. While I see little difficulty with Mr Hamilton expressing his views on whether a tyre is a GET, bringing entirely new evidence as to the relevance of TPMSs to the specification is a significant departure from merely opining on constructional issues, particularly where there is no discussion of the relevance of TPMSs to the application in the EIA. If the Opponent believed TMPSs were relevant to patentability, they should have raised that in EIS.

Paragraph 58

74. The first part of this paragraph essentially agrees with statements made in Holland at [4.4] concerning the harsh conditions locks are subject to during removal and insertion of the lock from the wear part. There is some commentary on Mr Hamilton’s experiences as to how locks are subjected to such conditions. The paragraph then states that there is nothing in the application that indicates these problems have been solved, that is there is no new lock design that would avoid harsh conditions or high loads. As best understood the application does not deal with developing locks to avoid high loads or harsh conditions per se, so Mr Hamilton’s statement would seem uncontroversial and immaterial to making out a ground of opposition. I do not consider that this paragraph is clearly not properly in reply to the EIA.

75. The Applicant has objected to this paragraph as making general observations on the lack of disclosure in the application to work the invention in all locks. Hence this paragraph is said, by, the Applicant, to comprise material that should have been filed as EIS; see the SIS at [62] and the SIR at [70]. It is also said to introduce other evidence concerning locks that should have been filed as EIS. I fail to see how either of these assertions are true, for reasons as noted above.

Paragraph 59

76. This paragraph begins with Mr Hamilton opining that it was difficult to modify locking pins because of the high loads they were subjected to. This appears to be generally responsive to Mr Holland’s statements at [4.4] about developments in locks so that they bore less loads during use.

77. The remainder of this paragraph segues into a discussion on difficulties Mr Hamilton faced incorporating a strain gauge sensor in a bolt for incorporation into earth working equipment, said to be similar to a locking pin. Mr Hamilton notes that while bolt/strain gauge systems exist for determining loads in bridges, the generally static or slowly changing loads experienced by bridges are different to the dynamic forces discussed in the specification at [99]. In my view this simply details Mr Hamilton’s experiences with the sort of issues discussed at [4.4] of Holland and appears to be in response to the same. I do not consider that any of this paragraph is clearly not in reply to the EIA.

78. At [62] of the SIS and [70] of the SIR, the Applicant suggests that this paragraph is EIS filed out of time and relates to evidence on how the embodiments of the specification would not work. I fail to see how this is the case, as it is merely reiterating or specifying experience regarding a class of problems already identified in the EIA.

Paragraph 60

79. This paragraph provides Mr Hamilton’s opinion on how the application fails to deal with the problems he discusses at [59] of his declaration. Given my views above, this is not, in my opinion, objectionable per se. However, Mr Hamilton goes further and characterises the application as being theoretical or conceptual or that information has been withheld in drafting the application. Of note is the suggestion that the application does not provide any example showing how a lock incorporating a monitoring device can perform even one of the functions the application alleges it can. In my view these statements go beyond a legitimate response to the problems discussed by Mr Holland, to providing evidence that is fundamentally material to putatively making out matters of support and s40(2)(a). I have been unable to find any discussion in the EIS that is relevant to matters under support or s40(2)(a) of the kind discussed here by Mr Hamilton. I am of the view that this paragraph should have been filed as EIS and is therefore clearly not properly in reply.

Paragraphs 61 to 63

80. Paragraph [61] reproduces text from Holland at [4.4], concerning making locks as small as possible, and how this presents some issues in terms of incorporating a monitoring device. Paragraph [62] responds to these statements, as does [63] in view of what Mr Hamilton considers the skilled addressee would do in terms of making a lock as small as possible. On the face of it these paragraphs are clearly responsive to the EIA.

81. At [62] of the SIS, the Applicant suggests that Mr Hamilton, in giving evidence at [62] and [63], was “…addressing an assumed assertion that the skilled person ‘reading AU'013 would necessarily want to create a lock that was as small as possible’ when working the invention of the Opposed Application”, or that he has assumed that the application is addressing a desire to use a small lock. Because of this, the Applicant argues that Mr Hamilton’s statements are not properly in reply to Mr Holland. To the extent this could be said to be true, they appear to be reasonable assumptions made by Mr Hamilton based on Mr Holland’s evidence. In any case, however one wishes to characterise his evidence here, Mr Hamilton is clearly responding to matters concerning the lock size put on the table by Mr Holland.

82. There are also general assertions at [70] of the SIR that these paragraphs make general observations on the lack of disclosure in the application and that this should have been filed as EIS. I fail to see how any of these paragraphs should have been included in the EIS – there is nothing fundamental here to making out a ground of opposition.

83. I am not satisfied that these paragraphs are clearly not properly in reply to the EIA.

Paragraphs 64 to 66

84. Paragraph [64] reiterates Mr Holland’s statements at [4.4] of his declaration about there not generally being room in a lock for a monitoring device, including the battery. Mr Hamilton responds to this in [65] by providing information on various sizes of locks used in the art, and how he disagreed with Mr Holland’s views as to there not being enough room for a monitoring device and battery. At [66] Mr Hamilton simply states that figure 16 of the application shows a lock that is “…a relatively standard system for fixing”. These paragraphs are clearly in response to Mr Holland. I am not satisfied that these paragraphs are clearly not properly in reply to the EIA.

85. At [62] of the SIS and [70] of the SIR, the Applicant suggests that this paragraph is EIS filed out of time and relates to evidence on how the embodiments of the specification would not work. However, I fail to see how this is the case. Mr Hamilton’s comments are confined to responding to Mr Holland’s comments on lock size and do not go, in my opinion, to anything to do with the sufficiency of the application. I fail to otherwise see how any of these paragraphs should have been filed as EIS.

Paragraphs 67 and 68

86. Paragraph [67] carries on from [64] to [66] but goes further than just responding to Mr Holland’s comments on lock size. Here Mr Hamilton suggests that if the application is directed to:

“…all locks capable of use with ground engaging products of all shapes and sizes, then there is no disclosure of how to miniaturise the monitoring device such that it would fit in a lock of 12 mm size and still be capable of wireless transmission.”

Mr Hamilton expends the remainder of paragraph [67] and paragraph [68] elaborating on his reasons for this. In my view, these paragraphs are providing evidence that is clearly fundamental to establishing grounds under s40(2)(a) or support. They should have been filed as EIS.

87. At [105] to [109] of the SIA, the Opponent disagrees with the Delegate’s view that these paragraphs are not properly in reply. The Opponent argues that, as Mr Holland has discussed the matter of lock size and how the application would be approached with that view by the skilled addressee, then these paragraphs are properly in reply. This is misconceived. Mr Hamilton is entitled to respond to Mr Holland’s comments on lock size, but that does not provide an opportunity to open a new line of attack relevant to making out a ground of opposition in that reply. That line of attack should have appeared in the EIS.

Paragraphs 69 to 72

88. Paragraph [69] refers to statements made by Mr Holland, in his evidence for 2018201633, concerning whether the sensor must be battery powered. Mr Hamilton thereby goes to explain why the inclusion of a battery is essential in the application.

89. These paragraphs are in reply to evidence made in the 2018201633 opposition. I have not been able to identify anything in the EIA for this matter that these passages could be said to be in reply to. I consider that these paragraphs are not in fact in reply to some matter in the EIA. They also appear to have the character of EIS filed out of time, noting that Mr Hamilton appears to be representing that the inclusion of a battery is essential and thereby would likely amount to a new line of attack under grounds of support that was not present in the EIS. I am satisfied that these paragraphs are clearly not properly in reply to the EIA.

90. I have been unable to find any specific comments regarding these paragraphs in the SIA, other than the fact the Opponent agrees with the Delegate’s view that [69] to [72] are properly in reply; see the SIA at [100]. It should be apparent that I hold different views to the Delegate, for the reasons provided above.

Paragraphs 73 and 74

91. These paragraphs respond to the benefit put forward by Mr Holland at [5.17] of his declaration. Here Mr Holland suggests that:

“The benefit of a monitoring system as described in the Opposed Application is that the system can capture data that cannot be monitored by an individual, or would be difficult to monitor by an individual. It also allows for continuous monitoring, and the collection, storage and retrieval of data at different points over time, which can be analysed to improve operations.”

92. Mr Hamilton’s response to this is to suggest that the benefit “…would be severely limited in the monitoring device locations and formats that have been depicted in the Figures - particularly the lock (and locations of similar size) by the practicalities of power supply and sensor size.” This line of reasoning is expanded upon in the remainder of [73] and [74]. Paragraph [74] reads as follows:

“So in summary, either the minimum size of the lock should be specified for a limited set of particular characteristics that can practically be measured due to the limitations of the power supply, or AU’013 should have disclosed how these real challenges have been overcome by describing the electronic and engineering solutions that the authors have devised. In my view, many of the advantages asserted in AU’013 have not been realised.”

93. These paragraphs can be understood as responding to the “benefit” discussed by Mr Holland in the EIA. The difficulty for the Opponent, as recognised by the Delegate, is that they open entirely new matters fundamental to making our grounds under s40 that should have appeared in the EIS. The Opponent appears to concede this at [113] of the SIA:

“This evidence speaks directly to the section 40 grounds of opposition that will be relied on by the Opponent. If the content of [73] and [74] really do provide a ‘new basis’, as the delegate suggests seems to be the case, then this new basis is the product of statements made by Mr Holland as outlined above. That is permissible and precisely contemplated by Dr Barker in Sonus when he held ‘reply evidence must raise new information’ (emphasis added).”

These arguments are misconceived. Replying to the EIA with new evidence is not a license to introduce completely new information fundamental to making out a ground of opposition, for which an applicant should rightly have been able to respond to in the EIA. I am satisfied that these paragraphs are clearly not properly in reply to the EIA.

Paragraph 75

94. This paragraph simply introduces Mr Holland’s evidence at [4.4] of his declaration, for subsequent discussion. In this context I fail to see how any of this is clearly not properly in reply to the EIA.

Paragraph 78

95. This paragraph responds to [4.4] of Holland regarding the locating of the sensor in view of wear to the GET. It does not appear to contain anything that should have been filed as EIS. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

Paragraph 79

This paragraph carries on from [78] in responding to [4.4] of Holland. Specifically, Mr Hamilton responds to some comments Mr Holland has made regarding the use of a wearable resistor ladder.
At [63] of the SIS, the Applicant argues that Mr Hamilton provides evidence of CGK, i.e. that wearable resistor ladders were well known in the art, and that this was not in the EIS. The Applicant also points out that the reference to [3.10] of Holland by Mr Hamilton does not comprise any mention of a wearable resistor ladder.
It is true that [3.10] of Holland does not comprise any mention of a wearable resistor ladder. This error, however, is of no material effect. Paragraph [4.4] of Holland, which is referred to by Mr Hamilton at [77] of his declaration, comprises a long quote from Mr Holland’s evidence in the 632 opposition. Wearable resistor ladders are mentioned twice in this quote, and one of these refers to wearable resistor ladders in a manner that suggests they were CGK before the priority date. In these circumstances it is difficult to see how this paragraph is clearly not properly in reply.

Paragraphs 81 to 83

These paragraphs respond to Mr Holland’s statements, as outlined at [4.4] of his declaration, that he had “…not seen a system that uses data like this before in a mining operation”. Mr Hamilton points to some statements from [12.21] of Mr Holland’s declaration, regarding Mr Holland’s stated knowledge of software that was able to manipulate data from sensors and combine it with data before the priority date, that he argues are suggestive to the contrary.
At [82] of his declaration, Mr Hamilton further responds to [4.4] and [12.21] of Holland regarding knowledge of sensors and the use of GPS to track the location of mining equipment before February 2015, and thereby how wear rate and digging force of GETs was tied to location using wireless technology. This appears to be rather relevant to the inventiveness of the invention. However, Dr Hillier has made general statements, at [21] of his declaration, regarding the application locating “...a well-known sensor and communication device configuration toward the outside surface of a GET…”. This presumably extends to the use of GPS as discussed at [121] of the application. In this light, Mr Hamilton’s statements about GPS do not comprise something that should have been raised was in the EIS, and in the context of replying to Mr Holland, is not merely bolstering the EIS.
Paragraph [83] continues from Mr Hamilton’s statements at [81] and [82] of his declaration. Here Mr Hamilton provides his views as to what software was available in terms of mine mapping, planning and management that were commonly used before the priority date. It is thus further in response to Mr Holland’s statements about his comments on [121] of the application at [4.4] of his declaration. Like paragraphs [81] and [82], I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
While the Applicant argues, at [64] of the SIS and [72] of the SIR, that these paragraphs should have been supplied as EIS, if the Opponent considers the matters traversed relevant to establishing lack of inventive step, I am unconvinced that this evidence is essential to making out the Opponent’s inventive step case or to the extent it does, it does not raise anything that in my opinion materially goes beyond matters already in the EIS.
There is also an argument, at [64](c) of the SIS, that Mr Hamilton was “…replying to an assumed assertion that there was no mine mapping software before the priority date”. Because of this these paragraphs are said, as I understand it, to not be responsive to the EIA. It is not clear to me that such an assumption is apparent. In any case, I am of the view that these paragraphs are responsive to Mr Holland’s comments concerning his views on the system of the application and software used to manipulate data from sensors and combine it with other data. I am not satisfied that any of these paragraphs are clearly not properly in reply to the EIA.

Paragraph 84

This paragraph does not directly refer to any part of the EIA, but comments on [24] of the application regarding contour style mapping of wear rates. While it thus appears to be not in reply to the EIA, I am of the view that the discussion of contour mapping is a continuation of Mr Hamilton’s arguments in response to Mr Holland’s comments regarding software being available that was able to manipulate data from sensors to generate mine site characteristics. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
The Applicant has made similar comments at [65] of the SIS and [73] of the SIR as those given regarding [81] to [83] of the EIR at [64] of the SIS and [72] of the SIR, and I refer to my comments in response to those paragraphs from the SIS and SIR above.

Paragraph 85

This paragraph refers to the Engine Control Unit (ECU) at [76] of the opposed application. While it thus appears to be not in reply to the EIA, I am of the view that the discussion of the ECU is a continuation of Mr Hamilton’s arguments in response to Mr Holland’s comments regarding software being available that was able to manipulate data from sensors to generate mine site characteristics. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
The Applicant has made similar comments at [65] of the SIS and [73] of the SIR as those given regarding [81] to [83] of the EIR at [64] of the SIS and [72] of the SIR, and I refer to my comments in response to those paragraphs from the SIS and SIR above.

Paragraph 86

This paragraph directly responds to [5.37] of Holland, where Mr Holland opines on the ability of the PSA to implement the invention and the unique approach of the monitoring system of the invention. Mr Hamilton reiterates that he considers the application “…overstates is capabilities and does not explain how the challenges that I have discussed above (including power supply and exposure to wear on an external surface) have been addressed.” These statements do not extend, in my view, to EIS filed out of time for similar reasons as discussed regarding paragraph [58]. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

Paragraph 87

This paragraph carries on from [86] in responding to [5.37] of Holland. Mr Hamilton opines on activities being included in a mine maintenance system, and the sort of data that would be available, such as usage/wear data from a monitoring device, and points to D1 to D5 as exemplifying this. He also argues that such data was incorporated into planning software together with information about the mine (e.g. hardness).
At [66] of the SIS and [74] of the SIR, the Applicant argues that the Opponent should have provided EIS that D1 to D5 were CGK. However, I consider that this paragraph is not actually providing evidence that D1 to D5 were CGK per se, but rather that these exemplified the sort of monitoring capabilities that were well known. It is not clear to me that these statements are something that should have been filed as EIS, however, as pointed out by the Opponent at [124] of the SIA, the EIS at item 1.1 of annexure NH-1 discusses monitoring systems in such a way that is indicative of these being CGK. It is not apparent to me that this paragraph is clearly not properly in reply to the EIA.

Paragraphs 88 to 95

These paragraphs carry on, in a rather nominal sense, from Mr Hamilton’s discussions at [86] of his declaration, and in this sense could be seen as being responsive to [5.37] of Holland. However, these paragraphs introduce Modular Mining’s DISPATCH product in some detail. No discussion of this product is apparent in the EIS. The Delegate, in her letter of 18 November 2021, characterised these paragraphs as follows:
“Mr Hamilton introduces the suite of mine management systems produced by Modular Mining, and goes on to discuss the capabilities of the Modular DISPATCH product, and the enhancement of the system by Rio Tinto by introduction of an IMU. While I accept that evidence concerning the Modular Mining system and use of IMUs is in some respects responsive to the evidence in answer, to the extent that Mr Hamilton considers Mr Holland’s evidence suggests a lack of awareness on the part of mining companies, it is also evidence which appears to go to the Opponent’s case in chief. The Modular DISPATCH system produced by “a very significant player in the mine management sector” and use of IMUs is not referred to in the evidence in support, despite the statement of grounds and particulars identifying various systems for monitoring of wear and other conditions, and the use of electronic sensors associated with wear parts as forming part of the common general knowledge. In this regard, I consider that the Applicant’s reference to the statement of Graham J in Ernest Scragg & Sons Ltd’s Application [1972] FSR 219 is apposite, and on balance, my preliminary view is that this evidence is not properly in reply.”

I agree with this reasoning. I am satisfied that these paragraphs are clearly not properly in reply to the EIA.

The Opponent provides some cursory, and rather confusing, statements regarding these paragraphs at [123] of the SIA:
“In the Opposition Correspondence dated 18 November 2021 the delegate of the Commissioner formed the preliminary view that paragraphs [88] to [95] are not Evidence in Reply. We agree with the delegate that at least those parts of the evidence are admissible.”

It may be that the Opponent considers these paragraphs are properly in reply merely because they could be characterised as being responsive to the EIA. That is simply not sufficient where the passages concerned have the character of EIS filed out of time. It might also be that the Opponent, based on [124] and [125] of the SIA, considers the general statements in the EIS regarding monitoring systems being known is sufficient to justify bringing in an entirely new basis relevant to the grounds of inventive step. That is clearly erroneous.

Paragraphs 97 and 98

These paragraphs do not directly refer to any part of the EIA, but can be seen as an extension of Mr Hamilton’s comments at [81] to [83] of his declaration i.e. they carry on from Mr Holland’s comments at [12.21] of his declaration regarding monitoring software, in that they discuss allegedly typical techniques for managing GETs in the context of earth working/mining and what would be done in view of mine site characteristics and known or suspected issues with the GET. I am of the view that these paragraphs are generally responsive to the EIA and do not have the character of EIS filed out of time.
While the Applicant argues, at [64] of the SIS and [72] of the SIR, that these paragraphs should have been supplied as EIS, if the Opponent considers the matters traversed relevant to establishing lack of inventive step, I am unconvinced that this evidence is essential to making out the Opponent’s inventive step case and should have been supplied as EIS. I do not see anything here that fundamentally changes the case the Applicant needs to answer. I am not satisfied that any of these paragraphs are clearly not properly in reply to the EIA.

Paragraph 101

This paragraph responds to some comments said to be made by Mr Holland (at [9.2] of Holland) regarding the existence of a gap of three to four millimetres between parts in use, as well comments at [4.4] concerning placement of the monitoring device closer to the external part of the wear part to reduce signal blocking. In the first sentence Mr Hamilton agrees with Mr Holland’s (apparent) views as to such a gap being CGK. Mr Hamilton then goes on to support this in the second and third sentences by pointing to the GET Trakka system as developed by Mr Hamilton, and specific passages from this as embodied in D4. The remainder of the paragraph segues into asserting, because of the previous disclosure discussed in D4, that the difficulties outlined at [11] of the specification, in terms of providing for better signal strength and reliability by defying the conventional wisdom regarding the survivability of monitoring devices located on the outside of a ground engaging product, are overstated and that the GET Trakka system was CGK prior to the priority date.

The Applicant objects to this paragraph at [67] of the SIS and [75] of the SIR. At [67](d) of the SIS, it seems the Applicant appears to suggest that Mr Holland did not make statements about a 3-4mm gap at [9.2] of Holland, as quoted at [99] of Hamilton, with respect to there being a gap “…which would continuously exist to transmit RF signals”. However, inspection of the EIA indicates that Mr Hamilton has correctly quoted Mr Holland’s declaration and has responded to that evidence as it stands. There is no basis to suggest that his evidence in the first sentence is not properly in reply to the EIA because it was responding to non-existent EIA. The Applicant’s grievance appears to be that Mr Hamilton has gone on to discuss how this gap allows for transmission of RF signals. Given the discussion of signal attenuation by Mr Holland at [4.4] and of the gap per se at [9.2], I fail to see how these statements by Mr Hamilton are not responsive to something in the EIA.
The Applicant also suggests, at [67](a) to [67](c) of the SIS and [75](c) to [75](f) of the SIR, that evidence of how the GET Trakka system worked and of this being CGK should have been provided in the EIS. I consider Mr Hamilton’s discussion of the GET Trakka system in the second and third sentences to simply point out something in that system, which was already in evidence as D4, in response to Mr Holland’s comments regarding the gap and signal blocking. I do not consider that these sentences should have been filed as EIS. The same cannot be said for the last sentence, which asserts that D4 was, per se, CGK. Such an assertion in these circumstances, where D4 was particularised in the SGP for the purposes of novelty and inventive step and filed as EIS, clearly belongs in EIS. I am satisfied that the last sentence is clearly not properly in reply to the EIA.
In terms of the second last sentence, the Applicant appears to argue, at [67](e) of the SIS, that the issues raised there existed prior to comment on them by Mr Holland at [4.4] of his declaration, and thereby the issues of signal transmission were said by the Applicant to be raised by the application and not Mr Holland. I refer to my discussion of this sort of argument earlier in this decision. I note that I do not see this sentence as clearly not being properly in reply to the EIA, particularly since Mr Hillier also generally raised the issue of signal strength and sensor position at [21] of his declaration in support.

Paragraph 102

This paragraph carries on from paragraph [101]. It discusses Mr Hamilton’s views on Mr Holland’s knowledge on how RF systems work in the context of GETs, with reference to Holland at [11.30] and [12.3]. This leads to Mr Hamilton making further criticisms of Mr Holland’s views on the “main benefit” of the specification. To me this appears to be responding to matters raised in the EIA and does not have the character of EIS filed out of time. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
The Applicant’s criticisms of this paragraph are entwined with those for paragraph [101] at [67] of the SIS and [75] of the SIR. I therefore refer to my comments in response to those paragraphs from the SIS and SIR above.

Paragraph 103

This paragraph carries on from [101] and [102] in responding to matters raised in the EIA by Mr Holland concerning gaps between parts in use and signal blocking. It covers similar matters as discussed at [101]. Mr Hamilton does state that the GET Trakka system had been sold commercially since before 2015, but this is not evidence, per se, of CGK. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
The Applicant’s criticisms of this paragraph are entwined with those for paragraph [101] at [67] of the SIS and [75] of the SIR. I therefore refer to my comments in response to those paragraphs from the SIS and SIR above.

Paragraphs 106 to 109

These paragraphs are commenting on, and responding to, Mr Holland’s understanding and interpretation of what is meant by “characteristics” at different points in his evidence. I am of the view that Mr Hamilton’s evidence here is clearly responsive to the EIA. There are some statements at [107](a) and [107](b) concerning certain characteristics, discussed by Mr Holland, discussed as being CGK by Mr Hamilton and it being well known to actively monitor the same. Mr Hamilton follows this up with an indication that such monitoring systems were exemplified in D2, D3 or D4 (as applicable) and that such systems were well known before 2015. I do not see these statements on CGK as necessarily extending to something that should have been filed as EIS, in the sense of being essential to making out a ground of opposition. This is particularly so, noting Dr Hillier’s comments at 1.1 and 1.8 of NH-1, which already provide evidence which I understood to go to monitoring devices or systems and the characteristics they monitor being CGK. I am not satisfied that these paragraphs are clearly not properly in reply to the EIA.
The Applicant argues, at [68] of the SIS, that the last sentences of [107](a) and [107](b) provide evidence that D2, D3 and D4 were CGK per se before the priority date. However, I do not consider that these sentences actually provide evidence to that effect. They do state that certain systems were CGK and then provides D2, D3 and D4 are being examples of those sorts of systems – not that D2, D3 or D4 were CGK as such.
The Applicant also cavils with the statements of the systems and characteristics being CGK, however, as discussed above, I am not satisfied that such statements are clearly not properly in reply to the EIA.

Paragraphs 113 to 115

These paragraphs carry on from Mr Hamilton’s comments at [112] regarding Mr Holland’s statements at [12.7] of his declaration that he was:
“…not aware of any monitoring systems before February 2015 using sensors on the ground-engaging products to provide operational data regarding a characteristic of the ground engaging product as defined in the claims of the Opposed Application” (emphasis added)
At [112], Mr Hamilton refers to [68] and [71] of the application and discusses his views on the distinction between “data” and “information”. He then goes on to state that:
“In this case, the claims specifically refer to the characteristic of the ground engaging product, and information about the characteristic, so I assume that the information must relate to the ground engaging product as well. I assume that is why Mr Holland is referring to operational data at [12.7], which would make sense.”
Mr Hamilton then goes on, at [113], to provide wear as an example of operational data from the application and to assert that certain means of estimating this wear were well known before February 2015. None of these means deal with the use of sensors on the GET to actually provide operational data. Mr Hamilton then concludes, at [114], that “…in contrast to Mr Holland's statement at [12.7] I understand the system claimed in AU'013 to broadly refer to a system that was well known”. The difficulty here, as noted by the Delegate in her letter, is that nowhere in [113] to [115] does Mr Hamilton actually engage with the fact that Mr Holland’s evidence is specifically to the point of sensors on the GET not being used to provide operational data – not that there were systems more generally of estimating wear or other operational characteristics. On this basis the Delegate concluded that [113] to [115] were not properly in reply.
There is some force to that argument. However, the statements at [113] and [115], which discuss means of determining wear based on inspections, historical data, worksite geology and hardness data and the use of software in connection with this largely reiterate what has already been said at [81] to [84] of Hamilton. Based on this I consider that [113] and [115] can be seen to be properly in reply to [4.4] and [12.21] of Holland, even if they are somewhat off point regarding Holland at [12.7]. I am therefore of the view that these paragraphs are not clearly not properly in the reply to the EIA for similar reasons as discussed regarding paragraphs [81] to [84].
Paragraph [114] is based on the discussion at [113] and squarely responds to [12.7]. As can be understood, the conclusion that the system claimed in the application broadly refers to a system that was well known clearly refers to the systems as discussed at [113], which, as noted, do not deal with the use of sensors on the GET to actually provide operational data. The context and direct reference to [12.7] of Holland make it difficult to consider this paragraph as being potentially directed to anything but that passage from the EIA. As observed by the Delegate this is not actually in response to the point made by Mr Holland at [12.7]. I am satisfied that this paragraph is clearly not properly in reply to the EIA.
The Opponent, at [150] to [154] of the SIA, argues that paragraph [114] is properly in reply as it responds to Mr Holland’s comments about being “not aware of any [such] monitoring systems” (at [154]). However, these arguments overlook the fact that Mr Holland was specifically referring at [12.7] to a lack of awareness of such monitoring systems using sensors on the GET, not of such systems more generally that might be used to estimate wear or other operational data.
The Applicant has argued against [113] and [115] being properly in reply at [69] of the SIS and [77] of the SIR. The Applicant concurs with the views of the Delegate and suggests that these should have been provided as EIS. Reasons why I disagree with those views should be apparent from the above and the discussion regarding [81] to [84] of Hamilton above.

Paragraph 117

This paragraph continues on from Mr Hamilton’s discussion of [12.7] of Holland at [116] (and earlier paragraphs) in his declaration. At [116] Mr Hamilton further discusses “operational data” and “characteristic of the ground engaging product” as outlined at [12.7] of Holland. Mr Hamilton again discusses his views on the broad nature of “characteristic” and refers back to “characteristics” as discussed at [5.14] of Holland as those that were “conventionally monitored”. Mr Hamilton provides his views on what was conventionally monitored and proceeds to give what I understand are examples of what was conventionally monitored, including by reference to D1, D2, D4 and D5, before February 2015. This largely mirrors statements made in [47] and [81] to [84] of Hamilton. I am not satisfied that [117] is clearly not properly in reply to the EIA.
The Applicant argues, at [70] of the SIS and [78] of the SIA, that this paragraph comprises evidence of CGK that forms an essential part of establishing lack of inventive step, and thereby should have appeared in the EIS. However, I disagree with these views for reasons as discussed regarding paragraphs [47] and [81] to [84] of Hamilton. There is also the suggestion, at [70](a) of the SIS, that this paragraph amounts to evidence that D1, D2, D4 and D5 were CGK before the priority date. I fail to see how this is the case – Mr Hamilton’s evidence here merely cites these documents as examples of things that were allegedly done before the priority date.

Paragraph 120

This paragraph responds to [5.14] of Holland, where Mr Holland discusses characteristics that might be monitored and how this might be done. Mr Hamilton opines on the breadth of the characteristics discussed by Mr Holland, and how this does not seem to go beyond existing systems, or to the extent it does, there needed to be “…more detail to enable the production of some innovative information”. This is clearly responsive to the EIA, and I do not see these arguments as being something that should be in the EIS, particularly given the comments regarding the invention and the prior art at [21] of Hillier. I am not satisfied that this is clearly not properly in reply to the EIA.
The Applicant has argued that, at [70](b) of the SIS, that “There is no evidence in the Opponent's evidence in support that the existing scheduling systems made use of such data.” Similar arguments are made at [78] of the SIR. To the extent this could be said to be true, it does not necessarily mean that Mr Hamilton’s statements here are not properly in reply. In my opinion, how existing systems allegedly make use of such data is at least implicitly apparent at [16] and [21] of Hillier and NH-1.

Paragraphs 121 and 122

Both these paragraphs nominally respond to, respectively, [5.33] and [5.28] of Holland. However, neither of these paragraphs appear to be actually responding to a matter raised by Mr Holland in either of these paragraphs. At [5.33] Mr Holland discusses his understanding of “performance” of the GET by reference to a passage in the application that makes mere reference to “material fragmentation”. Mr Holland has not discussed “material fragmentation” in any way. Despite this, Mr Hamilton expends all of [121] discussing material fragmentation and how it can be measured. This is not responsive to the EIA. I am satisfied that this paragraph is clearly not properly in reply to the EIA.
Similar can be said for [122]. At [5.28] Mr Holland discusses his views on the application providing “…a unique mechanism for gaining a meaningful understanding of wear from forces experienced by a locking pin or lifting eye”. Mr Holland refers to [99] of the application, which mentions “abrasiveness” but is not commented upon by Mr Holland at all. Mr Hamilton then discusses abrasiveness and how it can be measured. This is not responsive to the EIA. I am satisfied that this paragraph is clearly not properly in reply to the EIA.
At [161] to [169] of the SIA, the Opponent argues that these paragraphs are properly in reply. In connection with [121] it is argued (at [163] to [165]):
“Paragraph [121] begins with reference to Mr Holland’s declaration at paragraph [5.33] in which Mr Holland links his broad understanding of ‘performance’ to paragraph [71] in AU’031 and the concept of ‘material fragmentation’.
The Evidence in Reply responds to some matter raised by the evidence in answer as required by Sonus and a direct link to the Applicant’s evidence has been established as per Inax. On that basis this part of Mr Hamilton’s declaration is admissible.
The ‘point’ being made in the evidence is that ‘material fragmentation’ is a complex concept, and is not one that could simply be used as ‘information’ ‘in connection’ with ‘characteristics’ to do with ‘performance’. Mr Hamilton confirms that AU’013 does not provide sufficient disclosure of how to implement such a system.” (emphasis in original)
I disagree with these contentions. The point being made at [5.33] concerns Mr Holland’s understanding of what performance of the GET means. Hamilton at [121] in no way addresses this, but rather latches onto a phrase merely quoted to gratuitously expand on that phrase in a manner that is entirely tangential to the EIA. Similar can be said for the Opponent’s arguments regarding [122].

Paragraph 123

The only argument put against this paragraph, at [55] of the SIS, is that it comments on the EIA. As indicated above, this does not mean EIR is not properly in reply. I do not see this paragraph as otherwise offending the principles from Sonus. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

Paragraph 124

This paragraph responds to [5.37] of Holland, where Mr Holland expresses his opinion as to the application providing enough information for the PSA to make and use the monitoring system claimed. Mr Holland appears to consider that the processing would be undertaken by a programmable logic device (“PLD”). Mr Hamilton responds suggesting that Mr Holland’s views are “overly simplistic” and then makes some comments on the use of PLDs (at [124]a) and what the programming concerned would entail (at [124]b). Mr Hamilton then ends with:
“AU'013 does not explain how that data can be manipulated, and my view is that further research and development would need to be undertaken to establish to what (if any) extent that input can be reliably correlated with the desired output. Even then, I think that any correlation would be extremely difficult to reliably determine.”
There is little doubt that this evidence is essential to making out grounds of support and s40(2)(a). There is some evidence in NH-1 (at 10.2) concerning whether the application provides enough information to be able to measure tons moved per increment or digging force needed to penetrate the ground, but there does not appear to be anything in the EIS that goes to the data manipulation points made by Mr Hamilton. I consider that [124]b is something that should have been filed as EIS.
I am not so convinced regarding the parts of [124] preceding [124]b. The introductory sentences clearly contextualise the response to [5.37] of Holland and provide a response on the same. Similarly [124]a merely points out a logical consequence of Mr Hamilton’s characterisation of Mr Holland’s comments on PLDs, even if that characterisation is arguable. I am not satisfied that these parts of [124] are clearly not properly in reply to the EIA.
The Applicant argues, at [71] of the SIS and [80] of the SIR, that all of 124 is new evidence relevant to s40 arguments. It should be apparent why I agree or disagree with those arguments.

Paragraph 125

This paragraph responds to comments at [12.21] of Holland concerning manipulation of data from sensors and combining it with data in databases. Mr Hamilton suggests that it is difficult to comment on what Mr Holland is referring to and that the application does not provide guidance on the software concerned. I am not satisfied that this is clearly not properly in reply to the EIA.
At [71] of the SIS and [80] of the SIR, the Applicant argues that this is evidence going to s40 matters that should have appeared in the EIS. However, I do not consider that this is the case. Mr Hamilton merely comments on what is said by Mr Holland and indicates that the application does not offer any guidance on the software concerned. These statements themselves are not necessarily indicative that the application is wanting under s40. I am unconvinced that this evidence essential to making out s40 grounds and so should have been included in the EIS.

Paragraph 126

This paragraph carries on from [125] and discusses the knowledge of GET loss using wireless sensors and sensor data by Mr Hamilton’s company, GET Trakka, from about 2014 onwards. Mr Hamilton goes on to argue that:
“…the description in AU'013 is lacking and/or ESCO has withheld information that is critical to determining the various characteristics and/or the alleged invention cannot achieve what it is described as being capable of.”
In my view this paragraph comprises evidence crucial to making out grounds under support, s40(2)(a) and s40(2)(aa). It should have been included in the EIS. I am satisfied that this paragraph is clearly not properly in reply to the EIA.

Paragraph 127

This paragraph continues on from [126] and provides evidence about difficulties in correlating one input with an output. An example is provided of where a lock is retained but a tooth is partially removed. In this case Mr Hamilton argues that in connection with catastrophic failure in the context of tooth loss “…the impact threshold for prompting any automated inspection would have to be set so low that the automation of the well-known, manual, routine inspection system would provide no practical benefit”. I am of the view that this evidence can be understood as generally responsive to [5.37] of Holland. I do not clearly see anything about this evidence that indicates it should have been filed as EIS.
I am not convinced by the Applicant’s arguments, at [71] of the SIS and [80] of the SIR, that this paragraph comprises new evidence essential to s40 grounds. I tend to view this paragraph as commentary in response to [5.37] of Holland about the general difficulties of correlating inputs with outputs, rather than specifically going to alleged deficiencies in the disclosure of the application.

Paragraph 135

This nominally responds to comments Mr Holland made at [5.14] of his declaration for the 632 application. I am unable to identify where Mr Holland cites or quotes this paragraph in his declaration for this application. This is of no material effect, as Mr Holland quotes [22.12] of his declaration for the 221 application, which comprises essentially identical text on PLDs as [5.14] of his 632 declaration. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.
I am not convinced by the Applicant’s arguments, at [71] of the SIS and [80] of the SIR, that this paragraph comprises new evidence essential to s40 grounds. There is nothing at all in this paragraph essential to making out s40 grounds.

Paragraph 137

Paragraph [137] is repeated below:
“I believe that the implementation of the system in AU'013 is far beyond the field of programmable logic, and more the domain of data analytics - namely how to generate an algorithm in order to generate an output.”
This paragraph appears to be responding to [5.35] to [5.37] of Holland, which comprise comments on the use of PLDs in connection with the processor of claim 11 and the use of processing and PLDs more generally. It does, however, raise questions as to the actual field of the invention which are clearly vital to considerations of inventive step and grounds under s40 i.e. does the abilities of the PSA extend to PLDs or beyond this into the field of data analytics. In my view this should have been raised in the EIS.
The Opponent argues, at [172] and [173] that:
It is reasonable to infer that the Applicant will rely on the evidence from Mr Holland at [11.16] (I believe [5.37] is meant, but nothing turns on this) that the disclosure is clear enough and complete enough since it can be supplemented with the expertise of the PSA which would include ‘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)’.
And so, the use of a ‘programmable logic device’ rises to prominence for the first time in this proceeding due to Mr Holland. Neither Dr Hillier nor the Opponent could have predicted that it would be significant from the disclosure in AU’013 since it is not in the claim language and the only reference to it is in paragraph [80] where it merely says it can be ‘utilized to manipulate data’ without explaining how. By not including that feature in the claim language, the claims are not as limited as Mr Holland appears to suggest that they need to be.”
The degree of importance placed on PLDs by Mr Holland is arguable. However, even if the PLD is important, it seems to me the nature of the PSA and the field in question, being a construct vital to all grounds of opposition, is something that should have been countenanced in EIS. I am satisfied that this paragraph is clearly not properly in reply to the EIA.

Regulation 5.23

In the SIS and SIR, 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. I do not consider that directing a formal period to make such a request is necessary (if that is what the Applicant intended). The Commissioner would typically write to the parties with a further pre-hearing check at some point after this decision issued, which would allow the Applicant to indicate that it desired to make such a request.
I reiterate, however, the intent and purpose of the Raising the Bar changes to the Regulations in terms of reducing delays and improving efficiency in oppositions, particularly in connection with evidence. The Explanatory Statement also makes it quite clear that Reg 5.23 is not meant as a substitute for the now repealed further evidence provisions. In line with this, the Commissioner has adopted suitably stringent criteria concerning when to admit material under Reg 5.23; see Reflex Instruments Asia Pacific Pty Ltd v Minnovare Limited [2017] APO 8; 128 IPR 173 at [50] and in particular Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at [24]. While any future Reg 5.23 request will need to be considered on its merits, the fact that such a request might be made simply to incorporate EIR that has been stuck from the evidence clearly tends to weigh against allowing any such request, and it is clearly desirable that no further delays to resolving the s59 opposition (and the large number of related oppositions) occur at the hands of material of marginal relevance.

CONCLUSION

I am satisfied that the following paragraphs or parts thereof of the Hamilton declaration are clearly not properly in reply to the EIA and will therefore not form part of the evidence in deciding the opposition to this application under s59 of the Act:
[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].

COSTS

Costs usually follow the event. I see no reason to do otherwise here. I award costs against the Opponent according to Schedule 8 of the Regulations.

Dr W.E. Guinea
Delegate of the Commissioner of Patents

Annex A – Patent Family

Application	Parent	Filing Date	First Examination Report Date	Accepted Date
2016219013	N/A	12/02/2016	25/03/2019	19/11/2019
2018201631	2016219013	06/03/2018	05/04/2019	27/02/2020
2018201632	2016219013	06/03/2018	05/04/2019	16/01/2020
2018201633	2016219013	06/03/2018	05/04/2019	12/03/2020
2018201634	2016219013	06/03/2018	05/04/2019	10/03/2020
2018201710	2014262221	09/03/2018	05/04/2019	10/03/2020
2018201714	2014262221	09/03/2018	05/04/2019	17/02/2020
2018201720	2014262221	09/03/2018	07/05/2019	16/03/2020
2018201726	2014262221	09/03/2018	15/05/2019	13/01/2020
2018201735	2014262221	09/03/2018	05/04/2019	27/02/2020
2019201394	2016219013	27/02/2019	19/09/2019	29/07/2020