CQMS Pty Ltd v ESCO Group LLC - [2020] APO 5

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2020] APO 5
Patent Application: 2014262221

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Xavier Gisz

Decision Date: 29 January 2020

Hearing Date: 28 October 2019, in Canberra

Catchwords: PATENTS - section 59 opposition to grant of a patent – grounds of novelty, inventive step, support, full disclosure, clarity - claims 1, 6, 7, 15 and 18 lack inventive step – opposition to other grounds unsuccessful – costs awarded

Representation: Counsel for the applicant: Tom Cordiner
Patent attorney for the applicant: Wayne McMaster and Rebecca Dutkowski
Counsel for the opponent: Chris Burgess and Edwina Whitby
Patent attorney for the opponent: Fraser Smith

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2014262221

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC
Date of Decision: 29 January 2020
DECISION
Claims 1, 6, 7, 15 and 18 lack an inventive step in light of D14.

The Applicant is given 2 months from the date of this decision to propose suitable amendments to overcome this finding.
Costs are awarded against the Applicant.

REASONS FOR DECISION
Background

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.
The Application was advertised as accepted on 29 March 2018. A notice of opposition to grant was filed on 29 June 2018 by CQMS Pty Ltd (the Opponent). The statement of grounds and particulars was filed on 28 September 2018.
A request to amend the statement of grounds and particulars was made on 24 January 2019. The amendment was allowed on 20 February 2019.
Evidence in support was completed on 20 December 2018. Evidence in answer was completed on 8 April 2019. Evidence in reply was completed on 11 June 2019. The opposition was heard in Canberra on 28 October 2019.
Evidence
The evidence filed in the opposition consists of the following documents:
Evidence in support consisting of:
·     A declaration by Dr Nicholas Hillier (1^st declaration) with Exhibits NH-1 and NH-2, NH-D1 to NH-D15
·     A declaration by Dr Nicholas Hillier (2^nd declaration) with Exhibits NH-T1 to NH-T15
Evidence in answer consisting of:
·     A declaration by Rebecca Dutkowski together with Annexures RD-1 to RD-3 (wherein annexure RD-1 is a declaration by Rodney Keith Clarke)
·     A declaration by Hezekiah Russel Holland
Evidence in reply consisting of:
·     A declaration by Dr. Nicholas Simon Hillier (3^rd Hillier declaration) and Exhibits NH-EIR1 to NH-EIR8.
APPLICABLE LAW
The present opposition is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Raising the Bar Act) as the opposed application was filed after 15 April 2013. As a consequence the Commissioner may, under section 60(3A), refuse a patent application if satisfied on the balance of probabilities…

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 5
Decision Date: 29 January 2020

CaseChat Overview and Summary

The dispute between CQMS Pty Ltd and ESCO Group LLC centred on the grant of a patent for an invention relating to a system and method for the generation of electricity from solar energy. The Federal Court of Australia was tasked with determining the validity of the patent in light of an opposition brought by CQMS. The central legal issues involved whether the patent met the requirements of novelty, inventive step, sufficiency, support, and clarity as stipulated under Australian patent law. Specifically, the court had to consider whether claims 1, 6, 7, 15, and 18 of the patent lacked an inventive step, and whether other grounds of opposition raised by CQMS were valid.

The court meticulously reviewed the evidence and arguments presented by both parties. It found that claims 1, 6, 7, 15, and 18 of the patent did not meet the inventive step requirement. The court concluded that these claims were obvious to a person skilled in the relevant field, given the prior art and common general knowledge. However, the court dismissed the other grounds of opposition, finding that they did not successfully challenge the patent's validity on the grounds of novelty, sufficiency, support, or clarity. The court emphasised the importance of the inventive step requirement in patent law, highlighting that an invention must offer a significant advance over what is already known.

Given the outcome, the court awarded costs in favour of ESCO Group LLC, the patent holder, as the opposition was largely unsuccessful. The decision underscores the stringent requirements for patentability, particularly in relation to the inventive step criterion, and highlights the necessity for clear and detailed evidence to support patent validity. The court's judgment reinforces the principles of patent law, ensuring that only truly novel and inventive contributions are protected.

Orders