CQMS Pty Ltd v ESCO Group LLC - [2024] APO 17

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2024] APO 17
Patent Application: 2018201710

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Greg Powell

Decision Date: 8 May 2024

Hearing Date: 20 September 2023, by Video Conference
Further submissions filed 25 January 2024, 13 February 2024 and 27 February 2024

Catchwords: PATENTS – opposition to the grant of the patent under s 59 – novelty – claims have novelty – inventive step – conventional thought teaches away from the invention – “technical prejudice” – claims are inventive – support – claims encompass within them subject matter which is clearly beyond what is disclosed – claims not supported – clear enough and complete enough disclosure – not clear how teaching of the specification could be extended across 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: Peter Creighton-Selvay
Patent attorney for the opponent: Adam Luxton and Alexia Mayer of James & Wells

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018201710

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC
Date of Decision: 8 May 2024
DECISION

The opposition is successful. Claims 5, 6, 7, 9, 10, and 12–14 lack support. These claims include arrangements that are not contemplated by the specification. The claims do not comply with section 40(2)(a) as there is no clear enough and complete enough disclosure of the claimed invention. The invention of claims 1–14 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 awarded against the applicant, ESCO Group LLC.

REASONS FOR DECISION
Background

Australian patent application 2018201710 (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 priority from US provisional application 61/908458 with a priority date of 25 November 2013.
A request for examination was made on 9 March 2018. The application was accepted on 10 March 2020 and acceptance was advertised on 26 March 2020.
A Notice of Opposition was filed on 26 June 2020 by CQMS Pty Ltd (the opponent). A Statement of Grounds and Particulars (SGP) was filed on 28 September 2020 (26 September 2020 being a Saturday). Evidence in Support (EIS) was filed on 24 March 2021 following an extension due to the COVID pandemic. Evidence in Answer (EIA) was filed on 30 June 2021. Evidence…

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 17
Decision Date: 8 May 2024

CaseChat Overview and Summary

CQMS Pty Ltd opposed the grant of a patent for a monitoring system for wear parts of excavating equipment in Australian patent application 2018201710. The opposition was heard on 20 September 2023. The decision was handed down on 8 May 2024. The decision was that the opposition was successful. Claims 5, 6, 7, 9, 10, and 12–14 lacked support, were not fully disclosed, and lacked utility. The applicant had three months from the date of the decision to propose suitable amendments. Costs were awarded against the applicant. The opposition was successful because the claims contained arrangements not contemplated by the specification, lacked clear enough and complete enough disclosure, and lacked utility. The invention promised to enable the monitoring of wear parts of excavating equipment, but the claims did not include features to protect the sensors from damage and ensure that the monitoring occurred over an extended period. The applicant's submission that the person skilled in the art would add the missing features was not supported by the case law.

Orders