CQMS Pty Ltd v ESCO Group LLC - [2024] APO 43

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2024] APO 43
Patent Application: 2018201720

Title:Wear part monitoring

Patent Applicant:                   ESCO Group LLC
Opponent:  CQMS Pty Ltd
Delegate:  Andrew Burgess
Decision Date:  28 October 2024
Hearing Date:  19 December 2023, by Video conference

Catchwords: PATENTS – opposition to the grant of the patent under s 59 – novelty – no clear and unmistakeable directions - claims have novelty – inventive step – common general knowledge combined with prior art – claims do not comprise an inventive step – support – claimed invention extends beyond the technical contribution to the art – claims not supported – clear enough and complete enough disclosure – claims not enabled across whole scope – subsection 60(3) – opposition successful – opportunity to amend – costs awarded

Representation: Counsel for the applicant: Mr. Tom Cordiner KC
Patent attorney for the applicant: Shyama Jayaswal and Rebecca Dutkowski of Minter Ellison
Counsel for the opponent: Mr. Peter Creighton-Selvay and Ms Amy Surkis
Patent attorney for the opponent: Alexia Mayer of James & Wells.

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018201720

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC
Date of Decision: 28 October 2024
DECISION
The Opposition is successful. Claims 1-11 lack support and do not comply with subsection 40(3). The invention of claim 1-11 has not been disclosed in a clear and complete enough manner and does not comply with subsection 40(2)(a). Claims 1, 5, 6, and 9 do not involve an inventive step.
The applicant has three (3) months from the date of this decision to file suitable amendments.
I award costs according to Schedule 8 against the Applicant, ESCO Group LLC.
REASONS FOR DECISION
Background

Patent application 2018201720 (the application) was filed by ESCO Group LLC (the Applicant) on 9 March 2018, being a further complete application under s 79B of the Patents Act 1990 (the Act) claiming priority from AU2014262221, itself having an earliest priority date of 25 November 2013 (the priority date or relevant date).
Acceptance of the application was advertised on 2 April 2020. CQMS Pty Ltd (the Opponent), filed a notice of opposition under section 59 the Act on 2 July 2020. Concurrently with the opposition to the present application, the Opponent also filed notices of opposition to eight other applications, being 2018201710, 2018201714, 2018201733, 2018201634, 2018201633, 2018201735, and 2019201394 (collectively, the other opposed applications/other oppositions). Subsequently, the oppositions against 2018201733 and 2018201735 were withdrawn, and applications 2018201633, 2018201634, 2018201635, and 2019201394 were withdrawn.
The first statement of grounds and particulars (SGP) was filed on 2 October 2020. On 8 March 2022 the Opponent requested to amend the SGP, which was allowed on 28 April 2022. All further references to the SGP in this decision are to the SGP after amendments.
On 5 July 2021, the Applicant filed amendments to the claims under S104, and requested a stay of the opposition pending determination of the amendments. On 28 July…

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: [2024] APO 43
Decision Date: 28 October 2024

CaseChat Overview and Summary

CQMS Pty Ltd v ESCO Group LLC involved an opposition to the grant of a patent for a monitoring system for earthworking equipment. The application was opposed by CQMS Pty Ltd on grounds of lack of novelty, lack of inventive step, and failure to comply with sections 40(2) and 40(3) of the Patents Act 1990. The Commissioner of Patents, Andrew Burgess, allowed the opposition. The invention involved a system for monitoring earthworking equipment, using at least one electronic sensor to detect information about the amount of earthen material in a bucket and a truck tray. The Commissioner found that claims 1-11 lacked support under section 40(3) and were not sufficiently enabled under section 40(2)(a). Additionally, claims 1, 5, 6, and 9 did not involve an inventive step. The Commissioner allowed the applicant three months to propose suitable amendments and awarded costs to the opponent.

Orders