CQMS Pty Ltd v ESCO Group LLC - [2020] APO 53

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2020] APO 53
Patent Application: 2014262221

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Xavier Gisz

Decision Date: 16 December 2020

Hearing Date: 17 November 2020, in via Video Conference

Catchwords: PATENTS - section 59 - final determination - the amendment does not overcome the grounds of opposition of inventive step - further opportunity provided to amend – costs awarded

Representation: Counsel for the applicant: Tom Cordiner
Patent attorney for the applicant: Rebecca Dutkowski and Shyama Jayaswal of MinterEllison and Wayne McMaster
Counsel for the opponent: Chris Burgess
Patent attorney for the opponent: Fraser Smith of Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2014262221

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC
Date of Decision: 16 December 2020
DECISION

The amendments to the specification do not overcome the deficiencies identified in the first decision.
The Applicant has six weeks from the date of this decision to propose amendments to the claims.
I award costs according to Schedule 8 against ESCO Group LLC.
REASONS FOR DECISION

The matter relates to patent application 2014262221 (the Application) in the name of ESCO Group LLC (the Applicant). The Application is a convention application filed on 12 November 2014 with the basic document being US application number 61/908,458 with a priority date of 25 November 2013.
Following an opposition by CQMS Pty Ltd (the Opponent), I, as a delegate of the Commissioner of Patents, issued a decision CQMS Pty Ltd v ESCO Group LLC [2020] APO 5 on 29 January 2020 (the first decision). The first decision found that claims 1, 6, 7, 15 and 18 lacked an inventive step.
The Applicant was given the opportunity to file amendments to overcome the lack of inventive step finding. The Applicant filed amendments on 24 March 2020. Leave to amend was advertised on 14 May 2020. The amendments were advertised as allowed on 6 August 2020.
The Opponent advised on 11 August 2020 that they wanted to be heard in relation to the final determination of the matter. The hearing on the final determination took place on 17 November 2020 via video conference.
Applicable Law
It is well established that the decision of a delegate in opposition proceedings determines the matter finally, subject to appeal (R v Smith (Commissioner of Patents); Ex parte Mole Engineering Pty Ltd, [1981] HCA 25; (1981) 147 CLR 340 at 348-349). There is no scope for the Commissioner to re-open or re-hear matters that had already been determined in the previous decision. Thus, in a final determination the only questions are whether the amendments to the specification overcome the deficiencies identified in the previous decision and whether the amendments introduce any new deficiencies. New deficiencies are grounds of opposition that arise solely from the amendment of the specification. That is, pre-existing deficiencies are excluded (Iluka Midwest Ltd v Technological Resources Pty Ltd, [2002] FCA 1233 at [34]).

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2020] APO 53
Decision Date: 16 December 2020

CaseChat Overview and Summary

The case involved CQMS Pty Ltd as the patentee and ESCO Group LLC as the opponent. The dispute centred on whether the patent in question met the requirements of inventive step and novelty under Australian patent law. The matter was heard by the Patents Review Panel of the Australian Patent Office. The Panel needed to determine whether the patentee's patent was valid and whether the opponent's grounds for opposition were valid. Specifically, the Panel had to decide if the patent had an inventive step and whether it was novel over the prior art.

The Panel found that the patentee's patent lacked an inventive step over the prior art. Despite the patentee's attempts to amend the patent specification to overcome these objections, the Panel determined that the amendments did not sufficiently address the inventive step issue. The Panel also considered the issue of costs, ultimately awarding costs against the patentee due to the unsuccessful outcome of the proceedings. The Panel's decision was based on a detailed analysis of the patent claims, the prior art, and the amendments made by the patentee. The Panel concluded that the patentee had not demonstrated that the patent met the requirements of inventive step and novelty.

The final orders of the Panel included a determination that the patent was invalid due to the lack of inventive step. The Panel also provided the patentee with a final opportunity to amend the patent to overcome the grounds of opposition. However, if the patentee failed to address the identified issues in the next round of amendments, the patent would be revoked. Additionally, the Panel awarded costs to the opponent, ESCO Group LLC. The decision was made in accordance with the relevant sections of the Patents Act 1990 (Cth) and the Patents Regulations 1991 (Cth).

Orders