CQMS Pty Ltd v ESCO Group LLC - [2024] APO 40

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2024] APO 40
Patent Application: 2018201714

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Greg Powell

Decision Date: 27 September 2024

Hearing Date: 6 March 2024, via 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 –motivation can only be supplied with hindsight – claims are inventive – support – claims encompass within them subject matter which is not, or clearly beyond what is, the technical contribution disclosed or define a materially different invention – claims not supported – clear enough and complete enough disclosure – description does not enable all things that fall within the scope of the claims – no clear enough and complete enough disclosure – utility – required features to achieve promise of the invention missing – claims lack utility – subsection 60(3) – opposition successful – opportunity to amend – costs awarded

Representation: Counsel for the applicant: Tom Cordiner KC
Patent attorney for the applicant: Shyama Jayaswal and Rebecca Dutkowski of Minter Ellison, Wayne McMaster, Intellectual property counsel
Counsel for the opponent: Amy Surkis
Patent attorney for the opponent: Alexia Mayer of James & Wells Intellectual Property

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018201714

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC
Date of Decision: 27 September 2024
DECISION

The opposition is successful. Claims 1–12 lack support. The claims do not correspond to the technical contributions disclosed, extend to material that owes nothing to the disclosure, define a materially different invention and/or represent an undue burden on the PSA. Claims 1–12 do not comply with section 40(2)(a) as there is no clear enough and complete enough disclosure of the claimed invention. Furthermore, the claimed invention of claims 1–12 lacks utility as the claims do not have all the necessary features which would ensure that the promise of the invention is met.
The applicant has three (3) months from the date of this decision to file suitable amendments.
Costs are awarded against the applicant, ESCO Group LLC.
REASONS FOR DECISION

Background

Australian patent application 2018201714 (the application) in the name of ESCO Corporation, which later became ESCO Group LLC (the applicant), was filed on 9 March 2018 as a divisional of Australian application 2014262221 (the parent application). The application ultimately claims a priority date of 25 November 2013.
A request for examination was made on 9 March 2018. The application was accepted on 17 February 2020 and acceptance was advertised on 5 March 2020.
A Notice of Opposition was filed on 5 June 2020 by CQMS Pty Ltd (the opponent). A Statement of Grounds and Particulars (SGP) was filed on 7 September 2020 (5 September 2020 being a Saturday). Evidence in Support (EIS) was filed on 8 March 2021 following an extension due to the COVID pandemic.
Following the filing of…

Grounds of appeal

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

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

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

Consideration

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

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

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Details

Case: [2024] APO 40
Decision Date: 27 September 2024

CaseChat Overview and Summary

CQMS Pty Ltd opposed the grant of patent application 2018201714 filed by ESCO Group LLC. The application was for a system for monitoring earth working equipment. The invention claimed monitoring of earth working equipment by detecting characteristics of an earth working operation in each of a plurality of operational cycles and wirelessly transmitting such information. The invention also claimed determining the amount of earthen material received in the earth working equipment and the duration for the current operational cycle, and providing the determinations for the current operation cycle to an operator of the earth working equipment during use to allow for adjustment of the earth working operation. The opposition was heard on 6 March 2024, and the decision was handed down on 27 September 2024. The opposition was successful. The claims did not meet the requirements of ss 40(2)(a) and 18(1)(c) of the Patents Act 1990 (Cth). The claims did not correspond to the technical contributions disclosed, extended to material that owed nothing to the disclosure, defined a materially different invention and/or represented an undue burden on the person skilled in the art. The claims did not comply with s 40(2)(a) as there was no clear enough and complete enough disclosure of the claimed invention. Furthermore, the claimed invention lacked utility as the claims did not have all the necessary features which would ensure that the promise of the invention was met. The applicant had three months from the date of this decision to file suitable amendments. Costs were awarded against the applicant.

Orders