CQMS Pty Ltd v ESCO Group LLC

[2023] APO 46

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CQMS Pty Ltd v ESCO Group LLC [2023] APO 46

Patent Applications:            2018201633, 2018201634 & 2019201394

Titles:Monitoring ground-engaging products for earth working equipment;

Monitoring ground-engaging products for earth working equipment;
Monitoring ground-engaging products from earth working equipment

Patent Applicant:                ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Dr W.E. Guinea

Decision Date:  14 September 2023

Hearing Date:  Written submissions completed 15 March 2022, 21 January 2022 and 7 July 2022, respectively

Catchwords:  PATENTS – evidence in reply – whether evidence in reply properly in reply – some evidence in reply clearly not properly in reply – costs awarded against Opponent

Representation:                   Counsel for the applicant: Tom Cordiner KC

Patent Attorney for the applicant: MinterEllison

Patent Attorney for the opponent: James & Wells

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Applications:            2018201633, 2018201634 & 2019201394

Titles:Monitoring ground-engaging products for earth working equipment;

Monitoring ground-engaging products for earth working equipment;
Monitoring ground-engaging products from earth working equipment

Patent Applicant:                ESCO Group LLC

Date of Decision:                14 September 2023

DECISION

I am satisfied that the following passages or parts thereof as indicated from the declaration by Mr Ian Hugh Hamilton dated 7 September 2021 and filed as evidence in reply to the opposition to 2018201633 are clearly not properly in reply to the evidence in answer:

·     the last two sentences of [16]; [18]; [47]; [48]; [52]; [53]; fourth sentence of [61]; [65] to [67]; [70] to [73]; [77] and [83].

Therefore, I direct that the above-mentioned parts of the evidence in reply do not form part of the evidence in the s59 Opposition to 2018201633.

I am satisfied that the following passages or parts thereof as indicated from the declaration by Mr Ian Hugh Hamilton dated 20 December 2021 and filed as evidence in reply to the opposition to 2010201394 are clearly not properly in reply to the evidence in answer:

· the last two sentences of [11]; [62], [63]; [84]; [85]; [90]; the fourth sentence of [98]; [102] to [104]; [107]; [108]; [112]; [118]; the last sentence of [129] from and including the phrase “…and those same people”; [130] to [137]; and [152].

Therefore, I direct that the above-mentioned parts of the evidence in reply do not form part of the evidence in the s59 Opposition to 2019201394.

I am satisfied that the following passages or parts thereof as indicated from the declaration by Mr Ian Hugh Hamilton dated 30 August 2021 and filed as evidence in reply to the opposition to 2018201634 are clearly not properly in reply to the evidence in answer:

·     the last two sentences of [12]; [14]; [36]; [37]; [40]; [41]; the fourth sentence of [49]; [52] to [54]; [56] to [59], [63] and [67].

Therefore, I direct that the above-mentioned parts of the evidence in reply do not form part of the evidence in the s59 Opposition to 2018201634.

I award costs against the Opponent, CQMS Pty Ltd, according to Schedule 8 of the Regulations in the challenge to the evidence in reply for 2018201633.

I award costs against the Opponent, CQMS Pty Ltd, according to Schedule 8 of the Regulations in the challenge to the evidence in reply for 2019201394 .

I award costs against the Opponent, CQMS Pty Ltd, according to Schedule 8 of the Regulations in the challenge to the evidence in reply for 2018201634.

REASONS FOR DECISION

Background

1. Patent applications 2018201633 (the “633 application”), 2018201634 (the “634 application”) & 2019201394 (the “394 application”), together the “applications”, were respectively filed on 6 March 2018, 6 March 2018 and 27 February 2019.  By virtue of a request filed under s113 on 12 September 2018, the Applicant of record for the 633 and 634 applications became the same as for  the 394 application, being ESCO Group LLC (the “Applicant”).  By virtue of their divisional status to 2016219013 (the “013 application”), the applications have an earliest priority date of 13 February 2015.

2. The applications are a member of a broadly similar group of applications subject to opposition proceedings and challenges to evidence in reply (“EIR”) in the context of the same.  Details concerning these applications can be found at annex A to CQMS Pty Ltd v ESCO Group LLC [2023] APO 16 (“CQMS”), which was the decision made in connection to the EIR challenge for the opposition to the 013 application.

3. Examination was requested at filing for the applications.  A first examination report for the 633 and 634 applications issued on 5 April 2019, with the 633 application being accepted on 12 March 2020 and the 634 application being accepted on 10 March 2020.  A first examination report issued for the 394 application on 19 September 2019, with acceptance occurring on 29 July 2020.  The applications were respectively advertised as accepted on 2 April 2020, 26 March 2020 and 20 August 2020.

4. On 2 July 2020, CQMS Pty Ltd (the “Opponent”) filed a notice of opposition to the grant of the 633 application under s59 of the Act (the “633 opposition”).  A statement of grounds and particulars (“633 SGP”) was filed on 2 October 2020, with evidence in support (“EIS”) being completed on 1 April 2021.  Evidence in answer (“EIA”) was completed on 6 July 2021, with EIR completed on 8 September 2021.

5. The Applicant requested amendment of the 633 application on 4 June 2021.  These amendments were incorporated into the specification on 19 October 2021.  I will refer to these as the “633 amendments”.

6. The Opponent also requested amendment of the 633 SGP on 23 September 2021.  A Delegate of the Commissioner proposed to allow this amendment, subject to any comments within a period of two weeks, as per the Commissioner’s letter of 16 November 2021.  However, whilst no comments were received on the amendments, they have not as yet been allowed.  I hereby allow the amendments to the statement of grounds and particulars for the 633 opposition requested on 23 September 2021.  I will refer to the amended statement of grounds and particulars as the “633 SGP2”.

7. The evidence from the 633 opposition is summarised in the table below, with shorthand references provided in bold.

633 EIS	633 EIA	633 EIR
A declaration by Mr Ian Hugh Hamilton dated 29 March 2021 (633 Hamilton), with supporting exhibits IH-1 to IH-7 (633 IH-1 to IH-7)	A declaration by Mr Trevor John Letchford dated 28 June 2021 (633 Letchford), with supporting exhibit TJL-1 (633 TJL-1) A declaration by Mr Paul Lindsay Heaphy dated 5 July 2021 (633 Heaphy) with supporting exhibit PLH-1 (633 PLH-1) A declaration by Mr Hezekiah Russel Holland dated 3 July 2021 (633 Holland) with supporting exhibit HRH-1 (633 HRH-1)	A declaration by Mr Ian Hugh Hamilton dated 7 September 2021 (633 Hamilton2), with supporting exhibits IH-8 to IH-12 (633 IH-8 to IH-12)

1. On 7 October 2021, the Applicant informed the Commissioner that it considered the EIR for the 633 application was not properly in reply to the EIA.  A Delegate considered the matter, and on 16 November 2021 (the “633 letter”), informed the parties that they were of the view that certain items of the EIR were not properly in reply, and intended to direct that these items were not in evidence.  On 30 November 2021, the Applicant formally objected to the Delegate’s position and requested to be heard.  

2. Subsequently the matter was set for hearing by written submissions.  The Applicant filed submissions in support (“633 SIS”) on 31 January 2022.  The Opponent filed submissions in answer (“633 SIA”) on 28 February 2022.  The Applicant then filed submissions in reply (“633 SIR”) on 15 March 2022.  I note that the Applicant’s SIS and SIR also comprise submissions for two other applications in the group, 2018201631 (the “631 application”) and the 013 application, while the Opponent has provided separate SIA for each of these applications.  For convenience I have decided to include the 013 & 633 applications in separate decisions, with the decision for the 013 application being in CQMS as noted above.  I note that no decision is needed for the 631 application, as this has since lapsed in the meantime and the Applicant has expressly indicated that it does not intend on reviving that application.

10.  On 26 June 2020, the Opponent filed a notice of opposition to the grant of the 634 application under s59 of the Act (the “634 opposition”).  A statement of grounds and particulars (“634 SGP”) was filed on 28 September 2020, with evidence in support (“634 EIS”) being completed on 24 March 2021.  Evidence in answer (“634 EIA”) was completed on 30 June 2021, with EIR (“634 EIR”) completed on 31 August 2021.

11.  There has been an intervening opposition on amendments to the 634 application, with the amendments concerned being refused in CQMS Pty Ltd v ESCO Group LLC [2023] APO 35. Further amendments were proposed on 26 June 2023, with these being advertised for opposition on 31 August 2023.

12.  The Opponent also requested amendment of the 634 SGP on 15 September 2021.  These amendments were allowed on 12 November 2021.  I will refer to the amended statement of grounds and particulars as the “634 SGP2”.

13.  The evidence from the 634 opposition is summarised in the table below, with shorthand references provided in bold.

634 EIS	634 EIA	634 EIR
A declaration by Mr Ian Hugh Hamilton dated 19 March 2021 (634 Hamilton), with supporting exhibits IH-1 to IH-7 (634 IH-1 to IH-7)	A declaration by Mr Trevor John Letchford dated 28 June 2021 (634 Letchford), with supporting exhibit TJL-1 (634 TJL-1) A declaration by Mr Hezekiah Russel Holland dated 29 June 2021 (634 Holland)	A declaration by Mr Ian Hugh Hamilton dated 30 August 2021 (634 Hamilton2), with supporting exhibits IH-8 to IH-11 (634 IH-8 to IH-11)

14.  On 28 September 2021, the Applicant informed the Commissioner that it considered the EIR for the 634 application was not properly in reply to the EIA.  A Delegate considered the matter, and on 25 October 2021 (the “634 letter”), informed the parties that they were of the view that certain items of the EIR were not properly in reply, and intended to direct that these items were not in evidence.  On 8 November 2021, the Applicant formally objected to the Delegate’s position and requested to be heard. 

15.  Subsequently the matter was set for hearing by written submissions.  The Applicant filed submissions in support (“634 SIS”) on 10 December 2021.  The Opponent filed submissions in answer (“634 SIA”) on 21 December 2021.  The Applicant then filed submissions in reply (“634 SIR”) on 21 January 2022. 

16.  On 20 November 2020, the Opponent filed a notice of opposition to the grant of the 394 application under s59 of the Act (the “394 opposition”).  A statement of grounds and particulars (“394 SGP”) was filed on 22 February 2021, with evidence in support (“394 EIS”) being completed on 20 May 2021.  Evidence in answer (“394 EIA”) was completed on 4 November 2021, with EIR (“394 EIR”) completed on 21 December 2021.

17.  The Applicant requested amendment of the 394 application on 23 and 25 August 2021.  These amendments were incorporated into the specification on 4 January 2022. 

18.  The Opponent also requested amendment of the 394 SGP on 23 June 2022.  These amendments were allowed on 11 July 2022.  I will refer to the amended statement of grounds and particulars as the “394 SGP2”.

19.  The evidence from the 394 opposition is summarised in the table below, with shorthand references provided in bold.

394 EIS	394 EIA	394 EIR
A declaration by Mr Ian Hugh Hamilton dated 19 May 2021 (394 Hamilton), with supporting exhibits IH-1 to IH-7 (394 IH-1 to IH-7)	A declaration by Mr Paul Lindsay Heaphy dated 8 September 2021 (394 Heaphy) with supporting exhibits PLH-1 to PLH-4 (394 PLH-1 to PLH-4) A declaration by Mr Hezekiah Russel Holland dated 18 September 2021 (394 Holland) with supporting exhibit HRH-1 (394 HRH-1)	A declaration by Mr Ian Hugh Hamilton dated 20 December 2021 (394 Hamilton2), with supporting exhibits IH-8 to IH-11 (394 IH-8 to IH-11)

20.  On 19 January 2022, the Applicant informed the Commissioner that it considered the 394 EIR was not properly in reply to the EIA.  A Delegate considered the matter, and on 15 March 2022 (the “394 letter”) informed the parties that they were of the view that certain items of the EIR were not properly in reply, and intended to direct that these items were not in evidence.  On 29 March 2022, the Applicant formally objected to the Delegate’s position and requested to be heard. 

21.  Subsequently the matter was set for hearing by written submissions.  The Applicant filed submissions in support (“394 SIS”) on 26 May 2022.  The Opponent filed submissions in answer (“394 SIA”) on 23 June 2022.  The Applicant then filed submissions in reply (“394 SIR”) on 7 July 2022

22.   As the written submissions are completed for the applications, all three matters are now ready to be decided.

The Law

23.  Principles regarding the nature of EIR in matters before the Commissioner are well established and were outlined in Merial Limited v Bayer Intellectual Property GmbH [2015] APO 16 at [3]:

“It is well established that evidence in reply is restricted to evidence rebutting the applicant's evidence in answer. Evidence that merely bolsters the evidence in support or opens up new matters that should have been raised in evidence in support is not in reply (see Sonus Pharmaceuticals, Inc v Alliance Pharmaceutical Corp and Schering Aktiengesellschaft [2001] APO 13 (the Sonus decision)).”

24.  It is perhaps worthwhile to quote some of the principles from Sonus as alluded to by the Delegate in Merial:

“Evidence in reply is clearly distinguished from evidence in support. Phipson on the Law of Evidence states that evidence in reply must be confined to rebutting the applicant’s case, and should not merely confirm the case in chief. Additionally, evidence in reply cannot raise matters that should have been raised in the evidence in support. This was emphasised by Graham J in Ernest Scragg & Sons Ltd’s Application [1972] FSR 219 at 223:

‘To my mind it is quite wrong in these cases that there should be any sort of skirmishing in regard to evidence, and if an opponent has a case he should straight away state what his case is and should put in declarations dealing with any evidence which he thinks may be relevant to that case.  The applicant can then deal with the matter in the normal way, and a lot of time is saved, and the Office can get on with deciding the case.  If the opponent does not do that and waits until he sees what the applicant says, then obvious difficulties will result and oppositions will inevitably be drawn out and never finished.’…

While this case was referring to the Patents Act in the United Kingdom, the principles are equally relevant to the present Australian Patents Act.

I note that there have been several decisions of the Commissioner that illustrate other principles of further evidence:

Optech International Ltd v Buxton Hicarium Ltd (1993) 28 IPR 649 [“Optech”]: evidence provided in an attempt to rectify deficiencies in the evidence in support is not evidence in reply.

Inax Corp v Caroma Industries Ltd [1994] APO 48: evidence that had no link to statements or opinions in the evidence in answer was not evidence in reply.

Emory University v Biochem Pharma Inc (1997) 39 IPR 603 [“Emory University”]: matter that should have been raised as evidence in support (because it was an essential part of a ground of opposition) was not properly evidence in reply.

I conclude that in general evidence in reply:

(i)is not evidence that should have been served as evidence in support

(ii)responds to some matter raised by the evidence in answer

(iii)does not merely confirm the evidence in support.”

25.  It is also worthwhile repeating the following from Sonus:

“The only time that a final determination of whether the evidence is actually in reply is made is during the substantive hearing of the opposition. However, that does not mean that I cannot form a view of the question, and indeed it is essential for me to do so in order to decide the matter before me. However, it is only possible to form a preliminary view. If there is a reasonable basis for believing that evidence fits the definition of evidence in reply, then I believe that I should treat that evidence as reply evidence at this time unless Sonus can satisfy me that that conclusion is not appropriate. It may be that a different conclusion would be reached after detailed analysis of the declarations, such as during the substantive opposition. It clearly would have been easier to determine these issues as a part of the substantive opposition, but that option is not available.  I am required to make a preliminary assessment, and to base my decision on that assessment (sic).  I will go through the disputed paragraphs of the evidence in reply in turn.”

26.  The above principles regarding EIR are well established, and as I understood it, were prima facie accepted by both parties; see the: 633 SIS at [23]; 633 SIA at [5]; 633 SIS at [13]; 634 SIS at [10]; 634 SIA at [7]; 634 SIR at [6]; 394 SIS at [8]; 394 SIA at [7] and the 394 SIR at [6].  Nevertheless, there are several matters of contention between the parties, or issues raised in the submissions for the applications, regarding the principles that are apparent.  These include: whether the EIR is responsive only where it is rebutting the applicant’s case; how the EIR need be directed to the EIA to be properly in reply; whether a liberal approach to the EIR is appropriate; whether all three limbs of the test from Sonus need to be satisfied; the characterisation of each of the limbs from Sonus; the rules of evidence and how these do not apply to matters before the Commissioner; whether the EIR can “strengthen” an opponent’s case; the nature, conduct and effect of this matter; there being no property in a witness; sections 60(3) and 60(3A) of the Patents Act and the Trans-Tasman code of conduct for Patent Attorneys.  I note that all these issues were addressed at [14] to [51] of CQMS, and I refer to my comments there in response to these matters.

Consideration

27.  I note that, in line with Sonus, if there is a reasonable basis, at this stage, to consider the EIR as being properly in reply, then I will do so.  It is up to the Applicant to satisfy me otherwise.  The fact that I may find certain passages from Hamilton2 in any of the oppositions as being not properly in reply does not prevent the Delegate deciding those oppositions from making the same finding against other passages where I have declined to make that finding here. 

28.  I have not specifically addressed arguments relating to each contested passage where I have considered that it is not necessary to do so.  This may be, for example, where the reasons why I differ from the views of one party or the other are apparent from the discussion I have provided above.  Another example is where the parties’ views are based on principles that extend beyond those in Sonus, for example, arguments about the EIR rebutting the EIA or being responsive to the Applicant’s case, as discussed above.  In either case, reference may be made to CQMS where appropriate.

29.  While I have considered each of the contested passages in line with the requirements in Sonus, I have generally restricted explicit discussion to what I consider are the relevant considerations in contest.  If not all considerations from Sonus are discussed with regard to a passage I am unable to view as not being properly in reply, it may be taken that I am satisfied that that passage does not offend against those considerations not explicitly discussed.

30.  I will now consider each of the passages of the EIR challenged by the Applicant from each of the 633, 634 and 394 oppositions to determine whether these are not properly in reply to the relevant EIA.  Whilst I have specified shorthand references to the declarations and written submissions from each of the oppositions above, I will simply refer to these without the numerical application identifier in most cases as discussion will proceed under separate headings for each application.

31.  I will begin with the 633 application, then the 394 application and finally the 634 application.

The 633 Application

32.  Based on the SIS at [2] and [3], the particular passages of Hamilton2 challenged by the Applicant are as follows: [12] to [15], [16] to [19], the last three sentences of [24], [25], [26], the last sentence of [28], the last sentence of [30], [42] to [53], [60], [61], [64] to [67], [69] to [84], [89] to [92], [97], [102] to [104], [108], [109], [121(a)], [121(b)] [126] to [128], [135] and [145].

33.  In something akin to the movie Groundhog Day, I also observe that some of the EIR (and indeed the EIA it responds to is materially, if not entirely, identical to the evidence given in the opposition to the 013 application.  In some cases this has led to adopting the same conclusions here as for corresponding portions of the EIR from CQMS.  In other cases, while the evidence is very similar, the context is such that I may arrive at a different conclusion as in CQMS – in this regard I note that the EIS in the opposition to 013 application was provided by Dr Hillier, whereas Mr Hamilton supplied the EIS for the 633 application.

34.  For convenience, I note that the EIR in the 013 opposition comprised a declaration by Mr Hamilton dated 16 September 2021, which I will refer to as “013 Hamilton”.

Paragraphs 12 to 15 and 69

35.  At [12] to [15], Mr Hamilton comments on the experience of Mr Letchford, essentially noting that Mr Letchford appears to have experience concerning ground engaging tools (“GETs”) per se, rather than in monitoring systems for the same.  The Applicant argues, at [31] of the SIS and essentially reiterated at [44] of the SIR, that the Opponent should have known it was necessary to establish the identity of the skilled addressee in the EIS as an essential part of the Opponent’s case under inventive step and section 40.  As suggested by the Applicant, at [31](d) of the SIS, in response to the Delegate’s views in the 633 letter “…Mr Hamilton is comparing Mr Letchford to a standard which was not stated in Hamilton.  The Applicant also makes similar arguments regarding the scope of the invention, in effect arguing that this has been introduced in the EIR but should have appeared in the EIS.

36.  These arguments are difficult to sustain.  Mr Hamilton discusses his background, including his experience with systems for monitoring GETs at [2] to [15] of Hamilton.  Mr Hamilton specifically addressed his experience regarding “Person(s) responsible for developing and making systems and processes for monitoring ground engagement products for earth working equipment” at [16] and [17] of Hamilton.  Mr Hamilton’s discussion of the application at [19] to [50] of Hamilton clearly traverses in some detail the nature of the invention disclosed in the application, being in the form of a system for monitoring the wear parts of GETs.  This discussion also clearly traverses matters indicated to be CGK in the art.  Other than perhaps explicitly rendering the nature of the skilled addressee and the invention in textual shouting by using bold capitals, it is not apparent to me what more the EIS need do to make the nature of the skilled addressee and the invention as asserted in the EIS apparent to the Applicant.  I fail to see how any of [12] to [15] are clearly not properly in reply to the EIA.

37.   At paragraph [69], Mr Hamilton reiterates similar criticisms of Mr Letchford’s knowledge, and extends these to Mr Heaphy.  For similar reasons as discussed above, I do not consider this paragraph to be clearly not properly in reply to the EIA.

Paragraphs 16 to 19

38.  Paragraph [16] involves a discussion of Mr Hamilton’s views as to ESCO’s uptake of technology, with some alleged exemplification of this based on Mr Hamilton’s interactions with Rio Tinto regarding technology dealing with product failures.  The paragraph concludes with observations on the alleged apathy or understanding of Bradken and ESCO that resulted in Mr Hamilton working with Rio Tinto.

39.  In my view, the first three sentences of [16] simply carry on the discussion regarding [2.1] to [2.3] of Letchford that commences at [12] of Hamilton2.  Notably, [2.1] to [2.3] of Letchford discusses Mr Letchford’s background, including his employment by ESCO and Bradken, his knowledge of GETs and his visits to mine sites in that regard, including those of Rio Tinto.  These sentences of [16] can also be understood as responsive to [2.4] and [2.8] of Heaphy, which discusses Mr Heaphy’s experiences at ESCO with GETs and visiting customer mine sites.  Mr Hamilton’s views in these first three sentences of [16] can thereby be seen as his characterisation of the efficacy of the background experiences of Mr Letchford.  I am not satisfied that these sentences of this paragraph are clearly not properly in reply to the EIA.

40.  At [32] of the SIS and [45] of the SIR, the Applicant argues that Mr Hamilton’s experiences concerning ESCO and Bradken would have been known to him at the time of filing the EIS.  The Applicant also asserts that this paragraph comprises evidence regarding the development of the Get Trakka product and of this being CGK.  The Applicant argues that this material should have been filed as EIS as it is an essential part of making out the Opponent’s case on inventive step.  However, I fail to see how this is the case.  Mr Hamilton’s characterisation of the innovative efforts of ESCO and Bradken appears to have little, if any relevance to the Opponent’s case on inventive step.  Similarly, the Applicant’s assertions regarding the GET Trakka product do not bear scrutiny – while this product is mentioned it is rather in passing and in no way represents this product as being CGK at the priority date.

41. However, I agree with the Delegate’s conclusion in the 633 letter concerning the last two sentences of [16]. These provide some gratuitous comments on Mr Hamilton’s company being allegedly able to secure business from Rio Tinto due to alleged shortcomings by Bradken and ESCO. I fail to see how these comments are actually in reply to the EIA.

42.  Paragraph [17] comprises comments by Mr Hamilton on the content and focus of the application in view of his opinion of ESCO’s “…lack of focus on technology”.  Whilst the Delegate in the 633 letter did not consider this evidence to be responsive to the EIA, I am of the view that this can be understood as continuing on from [16] regarding [2.1] to [2.3] of Letchford and technology uptake by ESCO and the relevance of the experience of Mr Letchford.  I am not satisfied that [17] is clearly not properly in reply to the EIA.

43.  Conversely, I fail to see how [18] responds to anything in the EIA.  While this paragraph refers to comments made by Mr Letchford it does not address any of those comments per se.  I agree with the conclusion of the Delegate in the 633 letter.

44.  The Opponent argues that all of [16] to [18] are properly in reply at [68] to [79] of the SIA.  The Opponent points to the experiences of Mr Heaphy and Mr Letchford as expressed in the EIA, arguing that Mr Hamilton’s evidence is responsive to these statements.  As noted I agree with respect to the first three sentences of [16], but it is simply the case that the remainder of [16] and [18] go too far beyond what is discussed in the EIA to be properly understood as being in reply.  The occasion of EIR is not an opportunity to tangentially digress from the EIA.

45.  Paragraph [19] discusses Mr Hamilton’s views on the keeping up with technology across different segments of the mining industry.  The Delegate, in the 633 letter, considered this to be properly in reply as it provided relevant context to the EIA.  I agree with that, and note that Mr Heaphy discusses his views on the prevalence of monitoring systems using wireless technology and information from databases at [3.9] of his declaration.  I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

46. Paragraph [19] was included in the discussion of [16] to [18] at [32] of the SIS and at [45]of the SIR. Similar arguments were provided as with regard to [16] as addressed above, and I refer to those comments here in connection with [19].

Paragraphs 24 to 26

47. The Applicant has objected to the last three sentences of [24]. This paragraph carries on from [23] of Hamilton2. In [24] Mr Hamilton refers to his views on what is meant by “ground engaging products” from [17] of Hamilton and notes whether and how the EIA has engaged with his views. The entirety of [24] then directly responds to the views of Mr Holland and Mr Heaphy by reference to examples from the application and how Mr Hamilton considers tyres to fall within the meaning expressed. In my view all of [24] is properly in reply to the EIA.

48.  The Applicant’s comments at [33] of the SIS argue that Mr Hamilton is giving evidence for the first time that he considers tyres to be within the scope of the term “ground engaging products”.  The Applicant argues that:

“The Opponent ought to have known that it would be necessary and essential to exemplify the alleged ‘undue breadth’ of the term "ground engaging product" to support its allegations of section 40 issues and its construction for lack of novelty and inventive step. The Opponent ought to have introduced the evidence regarding tyres in 633 Hamilton1. This evidence is new evidence in support and not proper evidence in reply.”

49.  Paragraph [24], of course, represents new evidence.  But that in itself is of no reprobation – as established in Sonus, the EIR need be new evidence. In terms of being essential to establishing the grounds concerned, I remain unconvinced by the Applicant’s assertions. Mr Hamilton has already commented on the breadth of the term “ground engaging products” at [17] and [68] of Hamilton. He also states at [71] of Hamilton that “In fact, tyres themselves are ground engaging products…”. Consequently, the Applicant’s assertions regarding the “newness” in the EIR of Mr Hamilton’s views on tyres and ground engaging products is simply incorrect.

50.  This does, of course, open the nominal prospectof whether this evidence “merely” bolsters the EIS.  However, as I stated at [35] of CQMS, confirmatory EIR is merely an echo of the EIS – that is not the case here, where some issues raised in the EIS have raised again but in conjunction with a response to the EIA.  I am not satisfied that any of [24] is clearly not properly in reply to the EIA.

51.  Paragraphs [25] and [26] discuss tyre pressure monitoring systems (“TPMS”) and their characteristics and alleged known use before 2015.  Tyre monitoring systems are discussed at [11.42] of Holland, [3.10] of Heaphy and [3.10] of Letchford.  Mr Heaphy’s and Mr Letchford’s evidence goes no more than to their awareness or not of TPMSs.  Mr Holland indicates that he knew of such systems, but that he was not aware of any TPMSs that:

“…used a database with worksite information, wear rate information or schedule information as defined in the claims of the Opposed Application, or used the transmitted information in combination with the worksite information, wear rate information or schedule information to improve and automate estimating the remaining useful life for the ground-engaging product or to automatically schedule a replacement of the ground engaging product during a planned scheduled downtime for the earth working equipment.”

52.  Paragraph [25] of Hamilton2 expresses surprise at Mr Holland’s and Mr Letchford’s alleged lack of awareness of the significance of TPMSs, and Mr Hamilton responds in this paragraph by referring to a global tyre shortage commencing in 2005 that led to the rapid development of TPMSs with capabilities as discussed at [73] of Hamilton.  In my view this is clearly in reply to the lack of significance of TPMSs allegedly shown by Mr Holland and Mr Letchford.  Paragraph [26] continues in a similar vein.  I did not take the comments regarding TPMSs and the Modular Mining software to be something that should have appeared in the EIS, noting that TPMSs are discussed as being CGK at [71] to [73] of Hamilton, and I did not take this as representing the Modular Mining software as being CGK.  

53.  The Applicant has argued against [25] and [26] at [33] of the SIS and [46] of the SIR.  These are premised on the assertion that Mr Hamilton is giving, for the first time, evidence that the term ground engaging product encompasses tyres.  However, that is not the case, as is apparent from [71] of Hamilton at least.  The Applicant also agrees with the views of the Delegate in the 633 letter, who considered these paragraphs to have the character of EIS filed out of time, however it should be apparent from the above why I do not share that view.

Paragraph 28

54.  The Applicant has objected to the last sentence of this paragraph.  In this paragraph, Mr Hamilton provides his characterisation of, and agreement with, [3.10] from Mr Holland’s declaration concerning the development of new monitoring systems.  The last sentence of [28] merely states “This is consistent with my personal experience as detailed in my First Declaration”.  I am not satisfied that this sentence is clearly not properly in reply to the EIA.

55.  At [34] of the SIS and [47] of the SIR, the Applicant argues that the sentence concerned, by making reference to the material discussed earlier in paragraph [28], in effect comprises material that would have been known to Mr Hamilton at the time of filing the EIS, and that it should have included in the EIS as it is necessary to making out the opponent’s inventive step case.  However, the situation here is rather akin to that as discussed in connection with [45] of 013 Hamilton at [63] to [66] of CQMS, and I refer to my comments there in response to the Applicant’s arguments. 

Paragraph 30

56.  This paragraph responds to [4.4] of Holland concerning problems known in the art regarding wear parts and buckets, Mr Holland’s comments being identical to [4.4] of his declaration provided in EIA for the opposition to the 013 application.  Unsurprisingly, Mr Hamilton’s comments in response at [30] are identical to those given at [47] of 013 Hamilton.  I discussed why I was of the view that [47] of 013 Hamilton failed to be clearly not properly in reply to the EIA at [67] to [70] of CQMS, and I refer to these passages as to why I reach the same conclusion here concerning paragraph [30] of Hamilton2, including the last sentence.  I also refer to my discussion there concerning the Applicant’s criticisms concerning new evidence based on assertions of D1 (US 2014/0311762), D2 (WO 2013/033164), and D5 (US 2013/0035874) being CGK, in response to similar criticisms in the present matter made by the Applicant at [35] of the SIS and [48] of the SIR.

57.  I will also make the observation, before continuing, that despite D2 being cited in the 633 SGP for novelty purposes and the discission of it at IH-5 of the EIS, D2 has itself never been filed as evidence in the 633 opposition.  In this regard I note that the Commissioner’s letter of 6 October 2020 directing that documents accompanying the 633 SGP be treated as EIS is not applicable to D2, since it did not accompany the 633 SGP (or 633 SGP2 for that matter).  This tends to undermine the usefulness of D2 in building a case against the application, however, I consider it is still appropriate to make determinations that evidence concerning D2 is clearly not properly in reply where that is the case.

Paragraphs 42 to 46

58.  These paragraphs are materially similar, and in a similar context, to [61] to [66] of 013 Hamilton, these being discussed at [80] to [85] of CQMS. It follows that I am not satisfied that these paragraphs are clearly not properly in reply for similar reasons as discussed at [80] to [85] of CQMS.

59.  The Applicant made very similar, if not identical, submissions at [36] of the SIS and [49] of the SIR as for the corresponding passages of 013 Hamilton discussed in CQMS. It follows that the Applicant’s submissions on [42] to [46] of Hamilton2 are also addressed at [80] to [85] of CQMS.

Paragraphs 47 and 48

60.  These paragraphs are materially similar, and within a similar context, to [67] and [68] of 013 Hamilton, these being discussed at [86] and [87] of CQMS. It follows that I am satisfied that these paragraphs are clearly not properly in reply for similar reasons as discussed at [86] and [87] of CQMS.

61.  The Opponent responds to the Delegate’s comments in the 633 letter on these paragraphs at [103] to [107] of the SIA.  The Opponent appears to argue that these paragraphs simply carry on from Mr Hamilton’s earlier discussions at [42] et seq. of his declaration and is responding to Mr Holland “…raising for the first time his opinion of how the person skilled in the art would approach the Opposed Application – namely that the PSA [person skilled in the art] would supplement that disclosure with a bias to creating a lock that was as small as possible” (SIA at [104]).  However, as discussed at [86] and [87] of CQMS, these paragraphs go further than simply responding to Mr Holland’s comments on lock size with arguments that should have been filed as EIS.

Paragraph 49

62.  This paragraph covers very similar ground as for paragraphs [69] to [71] of 013 Hamilton, these being discussed at [88] to [90] of CQMS.  However, there are significant differences between the present circumstances for [49] and for [69] to [71] of 013 Hamilton.  Firstly, the issue of responding to evidence in a different opposition (see CQMS at [89]) does not arise in connection with [49] – it is quite clearly in response to [11.51] of Holland. Secondly, as is apparent from [11.51] of Holland, Mr Hamilton provided EIS (in IH-3) indicating that the sensor will be battery powered. Mr Holland disagrees with this in answer, and [49] is simply Mr Hamilton’s response to this supporting his position in the EIS. I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

63.  The Applicant argues against this paragraph, at [36] of the SIS and [49] of the SIR, amongst other paragraphs critiqued.  There is very little discussion specific to [49], however as I understand it, the Applicant considers that [49] is new evidence that was known to Mr Hamilton at the time of filing the EIS and should have been included there.  However, the fact that this is new evidence does not mean it is not properly in reply.  I also fail to see how this should have been supplied as EIS, noting that Mr Hamilton already raised the central point of the sensors being battery powered in the EIS.

Paragraphs 50 and 51

64.  These paragraphs recite, and respond to, comments made by Mr Holland at [11.18] of his declaration concerning whether the authors of the application were mindful of certain practical limitations.  Mr Holland made some reference to ESCO’s experience regarding lock design and use, and suggests that the application had some limitations in mind.  Mr Holland referred to [71] of the application regarding the “…monitoring device in the lock may be used on its own or ‘collectively, and/or with other devices, and/or software applications, and the like (e.g., data from a database 194 in, for example, a cloud database, other processors, etc.)’”.  Mr Hamilton simply responds to this at [51] by stating that:

“If ESCO was aware of the limitations it should have described them. The requirement to use multiple monitoring devices ‘collectively’ is not indicated in the claims.”

65.  To my mind this is clearly new evidence in response to some matter raised in the EIA.  I also fail to see how it is something that should have been filed as EIS.  I am not satisfied that either of these paragraphs are clearly not properly in reply to the EIA.

66.  The Applicant provided very little detail regarding these paragraphs in the SIS, merely stating, at [36(e)] that the Delegate’s conclusions in the 633 letter regarding paragraphs [47], [48], [52] and [53] apply to [50] and [51] as well (amongst others).  The Applicant argues, at [49(b)] of the SIR that these paragraphs were essential to making out the Opponent’s case on s40.  However, I fail to see how that is the case.

Paragraphs 52 and 53

67.  These paragraphs respond to the alleged “new ability” discussed at [5.11] of Holland.  While responding to this point, both of these paragraphs open new matters regarding alleged limitations in the “new ability” due to practicalities relating to the power supply and sensor size, specifically in relation to the locations depicted in the 633 application.  Whilst there is some discussion in the EIS about the “practicalities” of sensor placement (see Hamilton at [24] to [35]), these largely relate to how one actually gathers meaningful data from the sensor and the wear that the sensor would be exposed to.  Similarly, there is some discussion at [49] of Hamilton around power cabling that might be needed for wireless sensors, but this does not go to the particular placement suggested in the 633 application or the size of the sensor.  Hence, where these paragraphs discuss placement of the sensor concerning the power supply and size, I am of the view that they open up new matters that go the Opponent’s case under s40 that have the character of EIS filed out of time.  This applies to the first three sentences of [52] and all of [53], which I am satisfied are clearly not properly in reply to the EIS.

68.  I am also satisfied that the last two sentences of [52] are not properly in reply to the EIA.  These segue from the discussion on sensor placement practicalities to how using a remote device to (as I understand it) overcome or ameliorate these issues would lead to problems with achieving a real time assessment.  Issues with the real time assessment are discussed in Hamilton at [78], [86] and [87], whilst remote devices are discussed at [47] to [50], however there is no particular nexus drawn or apparent between further difficulties in real time assessments using remote devices.  It follows that I am satisfied that all of [52] and [53] are clearly not properly in reply to the EIA.

69.  The Opponent has argued that these paragraphs are properly in reply, at [109] of the SIA, on the basis that:

“The Applicant’s case clearly relies on Mr Holland’s belief in this ‘new ability’ and it is entirely appropriate for the Opponent to rely on responsive statements from Mr Hamilton that he disagrees with Mr Holland. Rather than merely opine that AU’633 enables this ‘new ability’ without any factual basis to support that opinion as Mr Holland has done, Mr Hamilton’s statements are grounded in compelling factual reasoning leading to the conclusion that the Commissioner has observed – namely that the ‘new ability’ is ‘more limited than is presently claimed’. This evidence speaks directly to the section 40 grounds of opposition that will be relied on by the Opponent.”

70.  The difficulties regarding the Opponent’s arguments about “responding to the Applicant’s case” have been discussed in CQMS.  Even assuming Mr Hamilton’s evidence here is factually compelling, in these circumstances this tends to highlight the fact that this is something the Applicant should have been able to respond to in the EIA.

Paragraphs 60 and 61

71.  These paragraphs respond to Mr Holland’s statements, as outlined at [4.4] of his declaration, that he had “…not seen a system that uses data like this before in a mining operation”.  At [60] of Hamilton2, Mr Hamilton responds with statements regarding knowledge of sensors and the use of GPS to track the location of mining equipment before February 2015, and thereby how wear rate and digging force of GETs was tied to location using wireless technology.  Mr Hamilton discusses the use of GPS to track the location of mining machinery at [59] of his first declaration.  Hence, in my view, Hamilton2 at [60] does not amount to something that should have been raised as EIS.  I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

72.  Paragraph [61] continues from Mr Hamilton’s statements at [60] of his declaration.  Here Mr Hamilton provides his views as to what software was available in terms of mine mapping, planning and management that were commonly used before the priority date.  It is thus further in response to Mr Holland’s statements on [121] of the application at [4.4] of Holland.  However, I am satisfied that the fourth sentence is clearly not properly in reply to the EIA.  This sentence represents the DISPATCH system as being CGK and lists some features of the same that appear highly relevant to making out grounds of inventive step.  Other than this sentence, I am not satisfied that [61] is clearly not properly in reply to the EIA.

73.  While the Applicant argues, at [37] of the SIS and [50] of the SIR, that these paragraphs should have been supplied as EIS, if the Opponent considers the matters traversed relevant to establishing lack of inventive step, I am unconvinced that the relevant parts of [60] and [61] indicated comprises evidence essential to making out the Opponent’s inventive step case or to the extent it does, it does not raise anything in my opinion that materially goes beyond matters already in the EIS.

74.  The Opponent provides arguments in favour of these paragraphs at [111] to [114] of the SIA.  These are largely premised on being responsive to the EIA.  That may be the case for the fourth sentence of [61], however it is also the case that it should have been filed as EIR.

Paragraph 64

75.  This paragraph covers very similar ground in a similar context as for paragraphs [86] and [87] of 013 Hamilton, these being discussed at [108] to [110] of CQMS.  It follows that I am not satisfied that this paragraph is clearly not properly in reply for similar reasons as discussed at [108] to [110] of CQMS. To the extent the EIS does not discuss monitoring systems as being CGK (as opposed to the discussion at [110] of CQMS), I am still of the view that D1, D2, D4 and D5 have been used to exemplify the type of systems known, not that these were CGK per se.

76.  The Applicant made very similar submissions at [38] of the SIS and [51] of the SIR as for the corresponding passages of 013 Hamilton discussed in CQMS. It follows that the Applicant’s submissions in this matter are also addressed at [108] to [110] of CQMS.

77.  I will also make the observation, before continuing, that despite D4 being cited in the 633 SGP for novelty purposes and the discussion of it at IH-6 of the EIS, D4 has itself never been filed as evidence in the 633 opposition.  In this regard I note that the Commissioner’s letter of 6 October 2020 directing that documents accompanying the 633 SGP be treated as EIS is not applicable to D4, since it did not accompany the 633 SGP (or the 633 SGP2 for that matter).  This tends to undermine the usefulness of D4 in building a case against the application, however, I consider it is still appropriate to make determinations that evidence concerning D4/GET Trakka is clearly not properly in reply where that is the case.

Paragraphs 65 to 67, 70 to 73 and 77

78.  Paragraphs [65] to [67], [70], [71], [73] and [77] cover very similar ground (concerning the nature of the DISPATCH mine management system produced by Modular Mining), and within a similar context, to [88] to [93] and [95] of 013 Hamilton, these being discussed at [111] and [112] of CQMS. It follows that I am satisfied that these paragraphs are clearly not properly in reply for similar reasons as discussed at [111] and [112] of CQMS. I note that the general reference to the knowledge of Mr Letchford and Mr Heaphy, at [65] of Hamilton2, does not obviate the fact that these paragraphs have the character of EIS filed out of time.

79.  With regard to paragraph [72], this paragraph comprises further information on the Modular Mining system as discussed at [65] to [67], [70], [71], [73] and [77].  It thereby also has the character of EIS filed out of time. 

80.  The Opponent has made some rather lengthy arguments, at [119] to [138] of the SIA, in support of its contention that these paragraphs are properly in reply (amongst other disputed paragraphs).  As I understand it, the Opponent contends that these paragraphs respond to a point raised in the EIA:

“Most significantly, Mr Letchford makes an incredibly broad statement at [3.4] that ‘prior to February 2015, I was not aware of the use of any GPS or gyro sensors or any other sensors on buckets or GET to provide the precise location of the bucket and/or GET or other information about the bucket and/or GET to the operator of the earth working equipment during normal commercial operation of the earth working equipment’.

In response to that case, the Opponent is entitled to file the Evidence in Reply by Mr Hamilton that he does not share Mr Letchford’s, Mr Heaphy’s and Mr Holland’s opinion evidence. In particular, Mr Hamilton provides factual evidence that supports his view. That is precisely the content in paragraphs [65]-[73], [77] and [82], for example, which is centred around the use of GPS and IMU monitoring devices mounted to the bucket (ground engaging product) that provide the operator with information during normal commercial operation. This is one example of the type of mine management system that Mr Hamilton had already raised in his first declaration to which the Applicant had adduced evidence.” (SIA at [135] and [136])

81.  The problem for the Opponent is, even if this can be said to be in reply to the EIA, it has the character of EIS filed out of time.  Evidence of a new system said to be CGK that uses GPS or gyro sensors on buckets or GETs to provide precise information about the bucket or GET appears quite fundamental to the Opponent’s case on inventive step.  EIR cannot respond to EIA by introducing completely new evidence regarding an allegedly known system said to encompass the features concerned, andto which the Applicant should have been able to respond to in the EIA.

Paragraphs 74 to 76 and 78 to 84

82.  Paragraphs [74] to [76] respond to statements at [3.5] of Letchford and Heaphy that “…the operator would use their experience to operate earth working equipment to ensure that waste was not mixed with ore”.  Mr Hamilton discusses his views in response as to how operators would not be left on their own to separate waste from ore. 

83.  Paragraphs [78] and [79] respond to statements at [3.6] of Letchford and Heaphy regarding their lack of knowledge over the use of information concerning hardness of the ground for planning purposes.  These paragraphs discuss Mr Hamilton’s understanding of the sorts of information that goes into planning the mining of material, including hardness, and opines that Mr Letchford and Mr Heaphy are incorrect.

84.  Paragraphs [80] and [81] respond to [3.8] of Letchford concerning wear rates of GETs.  Mr Hamilton discusses his views on this and asserts that in some respects Mr Heaphy seems to disagree with Mr Letchford and himself regarding the geology of a mine location being relevant to GET maintenance schedules. 

85.  Paragraph [84] responds to [3.16] of Letchford and Heaphy regarding their lack of awareness of service personnel mapping the mine location where a GET was used for planning and forecasting GET usage or requirements.  Mr Hamilton responds by pointing to an alleged distinction in Mr Letchford’s and Mr Heaphy’s evidence between those responsible for installing the GET but are not responsible for mine location mapping and mine planners.

86.  I am not satisfied that any of the paragraphs discussed above are clearly not properly in reply to the EIA.  They all respond to some matter raised in the EIA and do not clearly, in my view, comprise EIS filed out of time.

87.  Paragraph [82] responds to [3.7] of Letchford and Heaphy, regarding Mr Letchford’s and Mr Heaphy’s awareness of the Minestar system.  It is helpful to quote [63] of Hamilton, being the passage to which [3.7] of Letchford and Heaphy are directed:

“The Engine Control Unit (ECU) described in paragraph [76] of AU'633 has been known for decades. Most machines (even passenger cars) will have an ECU which monitors a range of parameters, including engine torque. Information from the ECU is fed back to the machine operator and also the central database. The machinery manufacture Caterpillar used a mine management system called Minestar before 13 February 2015 which used information from the ECUs of individual machines on the mine, including engine torque.”

88.  Paragraph [3.7] from Letchford and Heaphy read as follows:

“At paragraph 63 of the Hamilton Declaration Extract, Mr Hamilton refers to a Caterpillar mine management system called Minestar. I am aware of the Minestar system being used to track where the earth working equipment travelled. I do not recall the Minestar system using information from a sensor secured to a bucket or GET while operating the earth working equipment in normal commercial operation before February 2015.” (Letchford at [3.7])

“At paragraph 63 of the Hamilton Declaration Extract, Mr Hamilton refers to a Caterpillar mine management system called Minestar. From my interactions with customers regarding their use of buckets and GET, I was not aware of any of them using Minestar to monitor their buckets and GET before February 2015.” (Heaphy at [3.7])

89.  Paragraph [82] of Hamilton2 reads as follows:

“At paragraph [3.7] Mr Letchford states that he is aware of the Minestar system using GPS to track earth working equipment, but not using information from a sensor secured to a bucket or GET. At paragraph [3. 7] Mr Heaphy states that he ‘was not aware of any of [his customers] using Minestar to monitor their buckets and GET before February 2015’. Rio Tinto certainly used information from a sensor secured to a bucket or GET integrated with Modular Mining in their mines. Rio Tinto is one of the largest mining companies in the world, employing many thousands of people and even directing the development of technology solutions in its suppliers as I discussed at paragraph [14].”

90.  Paragraph [63] of Hamilton comprises the only mention of the Minestar system in the EIS.  It can be seen that it has been introduced in the context of a discussion of engine control units (“ECUs”), and does not mention the use of this by Rio Tinto, or anyone else for that matter, for monitoring GETs.  The simple point raised in the EIA, that the declarants concerned were not aware of the Minestar system being used to monitor GETs is responded to, not by evidence concerning the capabilities of the Minestar system or of something to do with this system per se, but by the suggestion that Rio Tinto used information from GET secured sensors with their Modular Mining system.  It is not clear to me how this is responding to the rather narrow point raised in the EIA. 

91.  However, as pointed out at [135] of the SIA, Mr Letchford makes some broad statements at [3.4] of his declaration that:

“…I was not aware of the use of any GPS or gyro sensors or any other sensors on buckets or GET to provide the precise location of the bucket and/or GET or other information about the bucket and/or GET to the operator of the earth working equipment during normal commercial operation of the earth working equipment”.

92.  I am of the view that, despite the direct reference to [3.7] of Letchford and Heaphy, [82] can be understood as being generally responsive to [3.4] of Letchford.  I did not take Mr Hamilton’s evidence here to indicate that the Modular Mining system was CGK per se, so there does not appear to be any question as to [82] amounting to EIS filed out of time.  I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

93.  The Applicant discusses why it considers these paragraphs to be not properly in reply at [39] of the SIS and [50] of the SIR.  The Applicant cites the DISPATCH system, discussed in [65] et seq. of Hamilton2, in support of its contentions.  However this does not support the Applicant’s position as the DISPATCH system is not even mentioned in these paragraphs.  

94.  The Applicant also suggests that Mr Hamilton’s evidence here is not actually in reply to  the EIA.  However, I fail to see how this is the case for these paragraphs.  It may be that the Applicant considers that Mr Hamilton has not engaged with the totality of the EIA in question in some way, however that is really a matter of factually weighing the probative value of the evidence by the Delegate deciding the opposition, rather than anything that goes to whether the EIR is properly in reply or not.

95.  The Applicant also argues that evidence specifying the location of the monitoring device on the ground engaging product and of mine managements systems is essential to the Opponent’s case on novelty and inventive step.  However, most of the evidence discussed above does not even go to these points, let alone nominally establishing matters of CGK of the type that the Applicant is concerned with.

96.  Paragraph [83] responds to [3.15] of Letchford, where Mr Letchford contends that he was not aware, based on a 2012 meeting, of the GET Trakka product being able to do anything other than detect GET loss.  This was in answer to [85] of Hamilton, where Mr Hamilton states that the GET Trakka system monitored the location of GETs on ground working equipment.  Mr Hamilton’s response in the EIR is to simply state that the GET Trakka system was further developed and sold between 2012 to 2015 such that it incorporated IMU, GPS and geofencing.  Noting that a version of the GET Trakka system has been discussed for novelty and inventive step purposes in the EIS at IH-6 as D4 (WO 2012/116408), I am of the view that these further capabilities of the GET Trakka system, which are relevant to making out grounds of inventive step, should have appeared in the EIS.  I am satisfied that this paragraph is clearly not properly in reply to the EIA.

97.  I note that paragraph [83] is addressed at [139] to [142] of the SIA, where the Opponent agrees with the Delegate’s view in the 633 letter on this paragraph being properly in reply.  However, providing further details on the capabilities of a system filed in evidence apparently where these appear to be crucial to matters of inventive step is something that should appear in the EIS.

Paragraphs 89 to 92

98.  Paragraphs [89] and [90] continue a discussion, begun at [85] of Hamilton2, concerning Mr Holland’s statements at [11.8] of his declaration regarding placement of a monitoring device in the harsh environment outside the cavity or inner surface of a GET, and difficulties with having wireless signals “pass” through metals.  Hence, these paragraphs appear to be generally responsive to the EIA.

99.  However, it is another matter as to whether [89] and [90] may not be properly in reply in view of their specific content.  The discussion at [89] and [90] is, respectively, materially similar to [101] and [102] of 013 Hamilton as discussed at [115] to [120] of CQMS.  However, the context is such that my reasons and conclusions regarding [101] and [102] from CQMS do not quite dispose of [89] and [90] in their entirety.  In this regard my conclusions from [115] to [120] of CQMS apply to all but the second last sentence of [89]. 

1. A comprehensive Groundhog Day moment is avoided simply due to the different EIS provided for the 633 opposition compared to that in the 013 opposition.  In this regard, the discussion at [85] of Hamilton is suggestive, if not necessarily definitive, of the GET Trakka system being CGK.  There is also the fact that Mr Letchford and Mr Heaphy both appear to be aware of the GET Trakka system as per [3.15] of their declarations.  While I accept that it is at least arguable whether this evidence would be understood as characterising the GET Trakka system as CGK, the situation is, in my view, by no means clear enough to establish that the second last sentence of [89] is clearly not properly in reply.  I am not satisfied that any of [89] and [90] are clearly not properly in reply to the EIA.

2. Paragraph [91] covers very similar ground in a similar context as for [103] of 013 Hamilton, this being discussed at [121] to [122] of CQMS.  It follows that I am not satisfied that this paragraph is clearly not properly in reply for similar reasons as discussed at [121] to [122] of CQMS.

1. Paragraph [92] responds to comments at [11.27] of Holland concerning alleged limitations in RFID systems in determining whether a GET is broken or worn.  Mr Hamilton disagrees with this, and points to the GET Trakka system, as disclosed in D4, as being able to achieve the features concerned.  Although D4 is not in evidence, there is EIS on this functionality of the GET Trakka system anyway, at [14] and [85] of Hamilton and feature 3(iii) of IH-6.  I fail to see how this paragraph is clearly not properly in reply to the EIA.

2. The Applicant provides arguments concerning these paragraphs at [40] of the SIS and [52] of the SIR.  These are largely premised on the introduction of new evidence that the GET Trakka system is CGK.  However, as noted above, I am not satisfied that that is clearly the case.

Paragraph 97

1. At [25], [27] and [28] of Hamilton, Mr Hamilton expresses his view that the sensor attached to the lifting eye would be quickly sacrificed due to the forces it would be exposed to, and that the application did not provide any means to overcome these issues.  In response to this, Mr Holland, at [11.10] and [11.12] of his declaration, pointed to figures 28 to 31 of the application.  Paragraph [97] responds to Mr Holland’s critique by discussing the sacrificial antenna of the application, Mr Hamilton’s experiences in developing the GET Trakka product and how he considers the embodiments of figures 28 to 31 cannot be used to measure wear, with some discussion of the forces that the lifting eye of figure 29 would be subjected to.  Mr Hamilton also comments that the same would apply to the wear ladder of figure 28. 

2. In my opinion, paragraph [97] is clearly in reply to [11.10] and [11.12] of the EIA.  Noting that Mr Hamilton clearly raised what can be understood as support or s40(2)(a) issues concerning the sacrificial sensor in the EIS, I do not consider that [97] comprises material that should have been filed as EIS.  I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

3. The Applicant argues that this paragraph is not properly in reply at [41] of the SIS and [53] of the SIR.  The crux of these arguments is probably best illustrated by [41(b)] to [41(d)] of the SIS:

   “Mr Hamilton attempts to relate his comments to Mr Holland's discussion of Figures 28 and 29 of the Opposed Application. However, it is Figures 28 and 29 of the Opposed Application which raise the issue of the antenna and not Mr Holland. The Opponent must have known that there are express statements in the Opposed Application regarding antennae. Accordingly, if the Opponent wanted to comment on those statements, then it should have done so in its evidence in support.

   When making the decision to refer to the GET Trakka product in its evidence in support, the Opponent should have put forward all the evidence it considered relevant to its case on inventive step, including evidence alleging and establishing that the GET Trakka product was common general knowledge. The Opponent should thus have put forward all the evidence it considered relevant to its case on inventive step, including evidence alleging and establishing that the GET Trakka product was common general knowledge rather than relying on a mere reference.

   Mr Holland's evidence does not discuss the antenna in the Opposed Application or the pressure experienced by GET, therefore Mr Hamilton's statements are not properly in reply to Mr Holland, and they are further evidence in support, not evidence in reply.”

4. The difficulty for the Applicant is that Mr Holland pointed to paragraphs 28 and 29 in response to Mr Hamilton’s contentions in the EIS regarding alleged issues with sacrificial sensors.  If Mr Holland seeks to counter this by referring to specific embodiments in the application, then Mr Hamilton is perfectly entitled to respond to those embodiments.  The fact that those embodiments existed in the application prior to Mr Holland’s comments are irrelevant – it remains the case that Mr Hamilton planted the flag essential to arguments under support/s40(2)(a) in the EIS.  It is also the case that nothing in [97] contends, explicitly or otherwise, that the GET Trakka system or any part thereof was CGK per se.

Paragraphs 102 to 104 and 145

1. As noted in the 633 letter, paragraph [102] does not refer to any of the EIA per se.  This brings into question whether this paragraph is actually responsive to the EIA.  However, I agree with the Delegate where she states in the 633 letter in connection with [102] that:

   “…it would appear to respond generally to Mr Letchford’s evidence concerning an absence of planning regarding hardness of excavated ground (leading to urgent calls seeking more GET stock), indicating that he did not recall a maintenance crew receiving information (hardness or fragmentation) to highlight areas with high rates of wear, and discussing typical wear life (at 3.6, 3.8).”

I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

1. Paragraph [103] reads as follows:

   “So I understand the amended claims to broadly refer to a system that was well known, as I discussed in my First Declaration such as at IH-4 to IH-7. To that end I note that Mr Holland disagrees with my interpretation of D1 at [11.75] and suggests that any reference to a ‘map’ in Dl must be a reference to ‘computational mapping’ as opposed to ‘spatial or geographical mapping’. I do not accept that view. Dl does not suggest that at all.”

2. The first sentence does not refer to any of the EIA, and indeed refers to the claims as per the 633 amendments.  However, Mr Holland comments on the “newness” of the amended claims at [5.11] of his declaration.  In my opinion the first sentence of [103] can be understood as being generally responsive to [5.11] of Holland.  It is also the case that Mr Hamilton simply refers to the EIS, in circumstances where the amendments largely incorporate features of previously dependent claims in independent form.  Given this, and the fact it was Mr Holland who decided to discuss the newness of the amended claims, I am of the view that this sentence does not clearly comprise EIS filed out of time.

3. The remainder of [103] clearly engages with Mr Holland’s views at [11.74] of his declaration concerning the nature of a “map” in D1 (the reference to [11.75] appears to be erroneous).  I am not satisfied that the remainder of [103] is clearly not properly in reply to the EIA.

4. Paragraph [104] simply carries on from the latter part of [103] in responding to Mr Holland’s comments on mapping at [11.74] of his declaration.  I am not satisfied that [104] is clearly not properly in reply to the EIA.

5. Paragraph [145] covers similar ground as for [102]. While rather repetitive, I am not satisfied that this is clearly not properly in reply to the EIA for similar reasons as discussed with regard to paragraph [102].

6. The Applicant argues against these paragraphs at [42] of the SIS and [54] of the SIR.  The Applicant’s arguments amount to the suggestion that the issues raised by the Opponent in connection with the amended claims concern matters that existed prior to amendment and should have been included in the EIS.  While not determinative of the issue, the speciousness of this argument is highlighted by the fact that it appears to demand an Opponent to be able to guess what features from the specification could be incorporated into the claims via amendment at the time of filing EIS.  But, in any case, and importantly, it can be seen that not all of these paragraphs are directed to the amended claims per se, but are otherwise simply made in response to the EIA.  To the extent there is evidence directed to the amended claims, I note that this does not clearly fall foul of Sonus, in my view, due to the fact that the Applicant chose to file EIA going to the “newness” of the claims as amended, and that Mr Hamilton simply refers back to the EIS.

Paragraph 108

1. This paragraph continues a discussion, begun at [106] of Hamilton2, in response to [5.11] of Holland, where Mr Holland characterises amended claim 1 as providing:

   “…a new ability to capture operational data from the ground-engaging product regarding the use of the ground-engaging product by the earth working equipment to complement the worksite information in a manner which was not available before February 2015.”

2. Mr Hamilton discusses some issues concerning the “characteristics” and these being “conventionally monitored characteristics”, with further reference to [5.6] of Holland, where Mr Holland discusses characteristics being monitored in the context of the invention, including:

   “…characteristics that might be useful to combine with worksite information would include the amount of wear, impact or strain on the ground engaging product, high impact events, digging cycles and the part number or other identifier of the ground engaging product.”

3. Paragraph [108] segues from [107] by referring to the monitoring of ground engaging product wear and tracking of part numbers/identifiers before the priority date.  Mr Hamilton variously points to D1, D2, D4 and D5 as examples thereof, and discusses monitored information being combined with mine site information.  I am of the view that the material covered in [108] is more or less canvassed in the EIS at [68] to [70], [72] and [85] of Hamilton, as well as features 1(i), 1(iii) and 8 in IH-3 and features 1(iv), 2(ii), 4 and 6 to 8 in IH-4.  I am of the opinion that this paragraph is generally responsive to issues raised at [5.6] and [5.11] of Holland.  It follows that I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

4. The Applicant traverses this paragraph at [43] of the SIS and [55] of the SIR.  Essentially, the Applicant’s arguments against this paragraph boil down to allegations that it represents D1, D2, D4 and D5 as being CGK per se.  I fail to see how that is the case.  Mr Hamilton has merely referred to these documents as examples of systems that allegedly monitored/tracked certain characteristics before the priority date.  I did not take this to suggest these documents or systems therein were CGK per se.

Paragraph 109

1. This paragraph continues on from [108] of Hamilton2, by referring to some issues discussed earlier in the EIR or in the EIS concerning limitations in the use of wireless monitoring devices and strain gauges.  It thus is generally responsive to the EIA, so does not fail the test from Sonus on that basis.

2. Paragraph [109(a)] is essentially no more than a reference to [47] of the Hamilton2, which I have concluded is clearly not properly in reply to the EIA.  Hence, whilst [47] is not properly in reply, the mere reference (in effect) to this paragraph does not mean that [109(a)] is not properly in reply (although this circumstance is liable to rob [109(a)] of probative value).  I am not satisfied that [109(a)] is clearly not properly in reply to the EIA.

3. Paragraph [109(b)] is essentially no more than a reference to [33] and [34] of Hamilton and [42] to [44] of the Hamilton2.  None of the passages of EIR cited have been found to be clearly not properly in reply to the EIA.  It follows that I am not satisfied that [109](b) is clearly not properly in reply to the EIA.

4. The Applicant argues against this paragraph at [36] of the SIS and [49] of the SIA.  Those arguments are addressed in connection with the discussion of paragraphs [42] to [46] of Hamilton2 above.

Paragraph 121

1. This paragraph carries on from a broader discussion begun at [119] concerning the nature of “characteristic” with reference to [5.6] of Holland. The Applicant has only objected to subparagraphs (a) and (b) of [121]. These subparagraphs respectively identify examples of characteristics from [4.4] of Holland regarding “part identification” and “presence” and refers to these characteristics as being well known and that these were actively monitored before the priority date. Mr Hamilton points to D2 and D4 as examples regarding such monitoring, and that such systems were well known before February 2015. In my opinion, these features have been essentially canvassed as CGK in the same passages of the EIS as cited above for paragraph [108]. I am not satisfied that any of [121] is clearly not properly in reply to the EIA.

2. The Applicant argues against this paragraph at [44] of the SIS and [56] of the SIR.  These are largely premised on assertions that the evidence concerned should have appeared in the EIS.  As noted above, I am of the view that the evidence concerned materially appears in the EIS.  I also disagree with the Applicant’s assertion that [121] represents D2 and D4 as being CGK as such – in my view these are cited to merely exemplify systems said to be CGK.

Paragraphs 126 to 128 and 135

1. Paragraph [126] responds to [11.16] of Holland, where Mr Holland opines that a skilled addressee would have known how to do the processing required to perform the invention, that is what software to use with a programmable logic device.  Mr Holland is here responding to criticisms at [30] of Hamilton, where Mr Hamilton suggests that the use of:

   “…sensor technology to the locking pin or lifting eye seems very academic and theoretical and devoid of any practical context. I note that AU'633 provides no actual examples of any systems or processes implementing sensors in those locations so as to monitor wear rate, for example.”

2. Mr Hamilton’s rejoinder at [126] directly refutes Mr Holland’s views, firstly by noting that the claims do not require the use of a programmable logic device (at [126(a)]).  I do not see anything in [126], up to the end of [126(a)] that is clearly not properly in reply to the EIA.

3. Paragraph [126(b)] reads as follows:

   “Second, a software programmer cannot simply produce an ‘output’ (usable information) without knowing the ‘input’ (data from a monitoring device) and an algorithm that can be used to transform the data. I refer to my comments above at paragraph [124] [of Hamilton2] in relation to ‘relative movement’. A software programmer cannot simply devise an algorithm that transforms ‘relative movement’ data into ‘wear rate data’. That is not within the skillset of the programmer. Likewise, the large range of information that Mr Holland refers to in paragraph [5.6] cannot simply be combined with fragmentation/abrasiveness/hardness/geology information to estimate the remaining useful life for the ground engaging product. AU'633 does not explain how that data can be manipulated, and my view is that further research and development would need to be undertaken to establish to what (if any) extent that input can be reliably correlated with the desired output. Even then, I think that any correlation would be extremely difficult to reliably determine.”

4. This clearly comprises evidence relevant to matters of support and s40(2)(a).  However, I am not of the view that this should have been filed as EIS.  The reason for this is that these matters have essentially already been raised in the EIS already.  For example, [29] of Hamilton points out alleged difficulties with determining GET wear rate from locking pin or lifting eye forces or via “a more remote mechanical linkage”.  Similar arguments are made at [33], [40] and [67(a)] of Hamilton.  I am not satisfied that [126(b)] is clearly not properly in reply to the EIA.

5. Paragraph [127] responds to [5.33] of Holland, concerning Mr Holland’s awareness of algorithms that use load and impact data from a bucket to inform a maintenance schedule.  Mr Hamilton expresses surprise that Mr Holland did not provide more information on this system and that he was not aware of the same, and points out that the application does not disclose such algorithms.  Although written somewhat indirectly, Mr Hamilton then attempts to hoist Mr Holland on his own petard, in effect observing that Mr Holland’s comments about the application’s “new ability”, at [5.11] of Holland, appears incongruous with his views at [5.33] regarding the known algorithms concerned.  I fail to see how any of [127] is clearly not properly in reply to the EIA.

6. Paragraph [128] carries on from [127] (and for that matter also from [126] in a general sense) by referring to Mr Hamilton’s own experiences in GET loss from the GET Trakka system.  Here Mr Hamilton notes that he only had data on about 50 loss events and uses this to support his view that the application is lacking in detail that would allow reliable correlations between the characteristics concerned.  I fail to see how [128] is clearly not properly in reply to the EIA.

7. Paragraph [135] continues on from criticisms of Mr Holland’s evidence at [134] of Hamilton2.  Both [134] and [135] are similar to [126] to [127] in that they deal with difficulties in implementing workable algorithms/software for the invention and respond to assertions by Mr Holland in that regard.  In connection with this, [135] does refer to the application being, in effect (unsupported) automation of a well-known system based on subjective human experience.  Although not identified in the same way, this “system” appears to be discussed at [62] of Hamilton.  I fail to see how [135] is clearly not properly in reply to the EIA.

8. The Applicant’s criticisms of these paragraphs, at [45] of the SIS and [57] of the SIR, rest on these incorporating “new” evidence going to sufficiency that should appear in the EIS.  For reasons as discussed above, I do not consider this to be the case.

633 Application – Conclusion

1. I am satisfied that the following paragraphs or indicated parts thereof, are clearly not properly in reply to the EIA: the last two sentences of [16]; [18]; [47]; [48]; [52]; [53]; fourth sentence of [61]; [65] to [67]; [70] to [73]; [77] and [83].

The 394 Application

1. Based on the SIS at [1] and [2], the particular passages of Hamilton2 challenged by the Applicant are as follows: [8]; [9]; [11] to [14]; the last three sentences of [61]; [62]; [63]; last sentence of [65]; the last sentence of [67]; [78] to [85]; [90]; [97] to [118]; [120] to [137]; [139], [149]; [152]; [155(a)]; [155(b)]; [160]; [161]; and [166].

2. Similarly, as discussed above with regard to the 633 EIR, some of the disputed evidence is materially similar, if not identical to, as the case may be, the EIR from the 633 or 013 oppositions.  Where appropriate I have adopted similar conclusions for the EIR for the 394 application, noting that where I do so I have considered the corresponding EIS in the 394 opposition to ensure there are not contextual differences that would support different conclusions.

Paragraphs 8 and 9

1. Paragraphs [8] and [9] comment on the experience of Mr Heaphy as given at [2.1] to [2.8] of his declaration, and the relevance of this to the application.  These paragraphs are similar to [12] and [14] of 633 Hamilton2, noting they respond to Mr Heaphy’s experience whilst the corresponding EIR from the 633 opposition comments on Mr Letchford’s experience.  It follows that I am not satisfied that these paragraphs are clearly not properly in reply to the EIA.

2. It is quite clear that these paragraphs are responsive to the EIA. However, the Applicant had made arguments (at [16] of the SIS and [41] of the SIR), materially similar to those provided for the corresponding evidence in the 633 opposition, namely that the Opponent should have established the identity of the skilled addressee and the scope of the invention in the EIS. However, in further stirrings of the aforementioned chronologically aberrant rodent , [2] to [17] and [19] to [50] of Hamilton are essentially identical to the same paragraphs in 633 Hamilton. I therefore refer to my arguments concerning [12] and [14] of 633 Hamilton2 above in response to the Applicant’s arguments.

Paragraph 11

1. This paragraph covers materially similar ground in a similar context as for paragraph [16] of 633 Hamilton2 as discussed above, noting that Mr Hamilton is better understood as responding in [11] to Mr Heaphy’s evidence concerning his experience at ESCO at [2.4] and [2.8] of Heaphy – Mr Letchford did not give evidence in connection with the 394 opposition. It follows that I am not satisfied that all of this paragraph, except for the last two sentences, is clearly not properly in reply for similar reasons as discussed above with regard to [16] of 633 Hamilton2.  The last two sentences of [11] are essentially identical to the last two sentences of [16] of 633 Hamilton2, and are clearly not properly in reply for corresponding reasons.

1. Paragraphs [123] and [124] respond to Mr Holland’s evidence as discussed at [122] of Hamilton2 concerning gaps between parts on GETs.  Mr Hamilton also discusses Mr Heaphy’s evidence concerning such gaps.  Mr Hamilton then explains why such gaps exist on GETs and how these are sufficient to facilitate radio transmission.  I fail to see how either of these paragraphs are clearly not properly in reply. 

2. The Applicant addresses these paragraphs at [25] of the SIS and [50] of the SIR.  The Applicant suggests that these paragraphs comprise evidence suggesting that the GET Trakka system was CGK.  That is clearly incorrect.  There is also the apparent suggestion, as I understand it, that [122] leads to [123] not being properly in reply as it misquotes Mr Holland’s evidence from the 632 opposition.  This is also clearly incorrect.  It may be that the Applicant believes that somehow Mr Hamilton has mischaracterised Mr Holland’s evidence in some way, but I fail to see how that is the case.

Paragraphs 125 to 127

1. These paragraphs cover materially similar ground within a similar context as for paragraphs [89] to [91] of 633 Hamilton2 as discussed above. In this regard I note that the EIS comprises similar indications that may be taken as indicating that the GET Trakka system was CGK as for 633 Hamilton; see Hamilton at [84]. The EIA is also suggestive of this; see Heaphy at [3.8] to [3.10] and [3.14]. As for [89] of 633 Hamilton2, I am not satisfied that the matter of the GET Trakka system being CGK has clearly been raised for the first time in the EIR.  It follows that the same conclusions apply to these paragraphs here, as for [89] to [91] of 633 Hamilton2, that is, I am not satisfied that any of these paragraphs are clearly not properly in reply to the EIA. 

2. The Applicant addresses these paragraphs at [25] of the SIS and [50] of the SIR in materially similar terms as for the corresponding paragraphs of 633 Hamilton2.  Consequently, I refer to my discussion in connection with [89] to [91] of 633 Hamilton2 above concerning the Applicant’s arguments regarding passages that I consider do not clearly fail the principles from Sonus.

Paragraph 128

1. This paragraph responds to [11.46] of Holland, where Mr Holland suggests that Launder (D6) relies on a wedge fit system, which results in a gap between the end of the adapter and the front surface of the cavity.  Mr Holland opines that, amongst other things, the gap would likely be filled with fines and dirt and thereby he is of the view that there would not be a continuous gap to act as a waveguide in a wedge fit system.  Mr Hamilton responds by suggesting that the application itself illustrates a wedge fit system at figures 4 and 5.  He also argues that, in his experience and with reference to the GET Trakka system, fines are not uniformly packed into the gap and in any case cause little signal attenuation, and that such issues identified by Mr Holland apply to externally mounted monitoring devices.  I fail to see how any of [128] is clearly not properly in reply to the EIA.

2. The Applicant has argued against [128] at [25] of the SIS and [50] of the SIR.  These arguments are primarily based on [128] comprising new evidence of the GET Trakka system being CGK, however there is nothing in [128] that could be taken as evidence of CGK in the manner suggested by the Applicant.   

Paragraph 129

1. This paragraph responds to Heaphy at [3.9], where Mr Heaphy disagrees that Launder (D6) was well known in the art.  Mr Hamilton responds that that may be explained in view of Mr Heaphy’s professional experience.  He also rebuts Mr Heaphy on this point by reference to what he states others knew, and that these people would be aware of Lujan (D3, US 2004/0227645) as referred to by Mr Holland at [11.47] of his declaration in connection with evidence he gave on D3 in the 632 opposition.

2. I am not satisfied that the statements concerning D6 are clearly not properly in reply.  The discussion of D6 in Heaphy at [3.9] is clearly premised on Mr Heaphy taking the discussion at [84] and [86] of Hamilton as representing D6 as being CGK, and it would seem that this is at least arguably the case. 

3. I am not so convinced with respect to D3.  The matters raised by Mr Holland at [11.47] concern the existence of a gap or otherwise in D3 for the purposes of wireless transmission.  In this light, it is not clear how Mr Hamilton’s statements about people being aware of D3 are in response to Mr Holland’s evidence on D3.  I am of the view that the last sentence of [129], starting from the phrase “…and those same people…” is clearly not properly in reply to the EIA.

1. I will also make the observation, before continuing, that Lujan/D3 is not cited in the 394 SGP or the 394 SGP2, nor has it been filed in evidence in the 394 opposition or discussed in any way in the EIS (although, confusingly, an unrelated application, WO 2014/026742 is cited as D3 in both versions of the SGP).  This tends to undermine the usefulness of Lujan/D3 in building a case against the application, however, I consider it is still appropriate to make determinations that evidence concerning Lujan/D3 is clearly not properly in reply where that is the case.

2. The Applicant argues, at [26] of the SIS (there does not appear to be any discussion of [129] in the SIR), that Mr Hamilton is giving evidence that D6 and D3 were well known in the art and that this was not present in the EIS.  It should be apparent why I disagree with that contention with respect to D6. 

3. The Opponent has discussed [129], amongst other paragraphs, in a lengthy passage of the SIA at [140] to [149].  Whilst these passages appeared to address D6, I did not take the Opponent as addressing D3 in any way, other than to agree with the Delegate in the 394 letter.  It should be apparent that I disagree with the Delegate for reasons as discussed above.

Paragraphs 130 to 137 and 152

1. These paragraphs provide evidence concerning a wireless system by Lujan, the LAWS system.  It is quite clear that these paragraphs should have been filed as EIS.  I am satisfied that these paragraphs are clearly not properly in reply to the EIA.

2. Curiously, the Applicant has not contested IH-11, even though this comprises documentary evidence concerning the LAWS system discussed at [130] to [137] and [152] of Hamilton2.  It would seem to me that IH-11 is also clearly not properly in reply to the EIA.  However, as the status of IH-11 has not been put in issue by the parties, I will leave it to the Delegate deciding the 634 opposition to raise this issue with the parties, if they deem it appropriate, and to make any determinations they deem appropriate on the status of IH-11 as evidence or otherwise.

3. The Opponent addresses this material in a lengthy passage at [150] to [174] of the SIA.  These arguments boil down to, as I understand it, that the Opponent should be able to file new material in view of the claim amendments and that this material is in rebuttal of the EIA anyway.  Why these arguments are unpersuasive is discussed in CQMS at [10] to [50].

Paragraph 139

1. This paragraph responds directly to comments in Holland at [11.27] that an RFID system would not be suitable for determining when a GET is broken or worn.  Mr Hamilton suggests otherwise by reference to his GET Trakka system.  I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

2. The Applicant argues, at [27] of the SIS and [50] of the SIR, that this evidence is something that is essential to making out the Opponent’s case on inventive step.  To the extent this is the case, I note that Mr Hamilton provided evidence going to the disclosure of D4 on these points at features 5 and 6 of IH-5.

Paragraph 149

1. This paragraph covers materially similar ground in a similar context as for paragraph [97] of 633 Hamilton2 as discussed above.  It follows that I am not satisfied that this paragraph is clearly not properly in reply for similar reasons as discussed above with regard to [97] of Hamilton2 from the 633 opposition.

2. The Applicant provided submissions on this paragraph, at [28] of the SIS and [52] of the SIR.  These are materially similar to those given in connection with [97] of 633 Hamilton2.  Therefore the Applicant’s arguments on this paragraph are addressed above in connection with [97] of 633 Hamilton2.

Paragraph 155

1. This paragraph covers materially similar ground in a similar context as for paragraph [121] from the 633 Hamilton2 as discussed above, and [155(a)] and [155(b)] correspond to [121(a)] and [121(b)] from 633 Hamilton2.  While the EIS is less direct in pointing out the characteristics concerned, I am of the view that it discusses the broadness of these (for example at [89] of Hamilton and in IH-3) in such a way that [155] does not change the case the Applicant has to answer.  It follows that I am not satisfied that [155(a)] and [155(b)] are clearly not properly in reply for similar reasons as discussed above with regard to [121] of 633 Hamilton2.

2. The Applicant has argued against [155(a)] and [155(b)] at [29] of the SIS and [53] of the SIR.  These are materially similar to those given in connection with [121] of 633 Hamilton2.  Therefore the Applicant’s arguments on this paragraph are addressed above in connection with [121] of 633 Hamilton2

Paragraph 160

1. This paragraph covers materially similar ground in a similar context as for paragraph [126] from 633 Hamilton2 as discussed above.  It follows that I am not satisfied this paragraph is clearly not properly in reply for similar reasons as discussed above with regard to [126] of Hamilton2 from the 633 opposition.

2. The Applicant has provided submissions on this paragraph, at [30] of the SIS and [54] of the SIR.  These are materially similar to those given in connection with [126] of 633 Hamilton2.  Therefore, the Applicant’s arguments on this paragraph are addressed above in connection with [126] from 633 Hamilton2.

Paragraph 161

1. This paragraph covers very similar ground in a similar context as for paragraphs [127] to [129] from the 633 Hamilton2.  Of these only [127] and [128] were challenged, which approximately correspond to [161] up to and including [161(a)].  Paragraph [161(b)] corresponds to [129] from 633 Hamilton2, which was not challenged, and I see no reason to consider [161(b)] as not being properly in reply.  As the remainder of [161] corresponds to [127] and [128] of the 633 EIR, and in a similar context, it follows that I am not satisfied the any of the remainder is clearly not properly in reply for similar reasons as discussed above with regard to [127] and [128] of 633 Hamilton2.

2. The Applicant has provided submissions on this paragraph, at [30] of the SIS and [54] of the SIR.  These are materially similar to those given in connection with [127] and [128] of 633 Hamilton2.  Therefore, the Applicant’s arguments on this paragraph are addressed above in connection with [127] and [128] of 633 Hamilton2.

Paragraph 166

1. This paragraph covers materially similar ground in a similar context as for paragraph [135] from 633 Hamilton2 as discussed above.  It follows that I am not satisfied this paragraph is clearly not properly in reply for similar reasons as discussed above with regard to [135] from 633 Hamilton2.

2. The Applicant has provided submissions on this paragraph, at [23] of the SIS and [48] of the SIR.  These argue that this paragraph comprises evidence concerning novelty and inventive step that should have been included in the EIS.  However, I fail to see how that is the case, particularly given this paragraph discusses issues that could be characterised as matters of support.  To the extent this could be an issue, I note that that has been similarly addressed in the discussion above concerning paragraph [135] from 633 Hamilton2 above.

394 Application – Conclusion

1. I am satisfied that the following paragraphs or indicated parts thereof, are clearly not properly in reply to the EIA: last two sentences of [11]; [62], [63]; [84]; [85]; [90]; the fourth sentence of [98]; [102] to [104]; [107]; [108]; [112]; [118]; last sentence of [129] from and including the phrase “…and those same people”; [130] to [137]; and [152].

The 634 Application

1. Based on the SIS at [1] and [2], the particular passages of Hamilton2 challenged by the Applicant are as follows: [7] to [15], last sentence of [18], last sentence of [20], [32] to [41], [48], [49], [52] to [59], [62] to [67], [69] to [75], [80], [97(a)], [97(b)] and [102] to [104].

2. Similarly, as discussed above with regard to the 633 and 394 Hamilton2, some of the disputed evidence is materially similar to, as the case may be, 633 Hamilon2, 394 Hamilton2 or 013 Hamilton.  Where appropriate I have adopted similar conclusions for the EIR for the 634 application, noting that where I do so I have considered the corresponding EIS in the 634 opposition to ensure there are no contextual differences that should lead to a different conclusion.

Paragraphs 7 to 11

1. These paragraphs essentially comprise Mr Hamilton’s comments on the experience of Mr Letchford.  Of these paragraphs [8] to [11] are materially similar to [12] to [15] of 633 Hamilton2 and within a similar context.  It follows that I am not satisfied these paragraphs are clearly not properly in reply for similar reasons as discussed above with regard to [12] to [15] of Hamilton2 from the 633 opposition.  Although the equivalent to [7] ([11] of 633 Hamilton2) was not challenged in the 633 opposition, I consider that this paragraph also fails to be clearly not properly in reply for similar as reasons as discussed for [12] to [15] of 633 Hamilton2.

2. The Applicant has argued against these paragraphs at [14] of the SIS and [37] of the SIR.  These are materially similar to the arguments presented against [12] to [15] of 633 Hamilton2.  Therefore, the Applicant’s arguments here are answered above in connection with the discussion of [12] to [15] of 633 Hamilton2.

Paragraphs 12 to 15

1. These paragraphs are materially similar to [16] to [19] of 633 Hamilton2 and within a similar context.  It follows that corresponding conclusions apply, as discussed above for [16] to [19] of 633 Hamilton2, namely: the first three sentences of [12] and the entirety of [13] and [15] fail to be clearly not properly in reply to the EIA; and the last two sentences of [12] and the entirety of [14] are clearly not properly in reply to the EIA.

2. The Applicant has provided submissions on these paragraphs, at [15] of the SIS and [38] of the SIR.  These are materially similar to those given in connection with the corresponding paragraphs of 633 Hamilton2.  Therefore the Applicant’s arguments on these paragraphs are addressed above in connection with [16] to [19] of 633 Hamilton2.  Similar applies to the Opponent’s arguments in connection with these paragraphs at [75] to [83] of the SIA.

Paragraph 18

1. This paragraph is materially similar to [28] of 633 Hamilton2 and in a similar context.  It follows that corresponding conclusions apply, namely, I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

2. The Applicant has provided submissions on this paragraph, at [16] of the SIS and [39] of the SIR.  These are materially similar to those given in connection with [28] of 633 Hamilton2.  Therefore the Applicant’s arguments on these paragraphs are addressed above in connection with [28] of 633 Hamilton2. 

Paragraph 20

1. This paragraph is materially similar to [30] of 633 Hamilton2, and within a similar context.  It follows that corresponding conclusions apply, namely, I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

2. The Applicant has provided submissions on this paragraph, at [17] of the SIS and [40] of the SIR.  These are materially similar to those given in connection with [30] of 633 Hamilton2.  Therefore, the Applicant’s arguments on these paragraphs are addressed above in connection with [30] of 633 Hamilton2. 

3. I will also make the observation, before continuing, that [20] refers to D2 (WO 2013/033164).  Despite D2 being cited in the 634 SGP for novelty purposes and the discussion of it at IH-5 of the EIS, D2 has itself never been filed as evidence in the 634 opposition.  In this regard I note that the Commissioner’s letter of 29 October 2020 directing that documents accompanying the 634 SGP be treated as EIS is not applicable to D2, since it did not accompany the 634 SGP (or the 634 SGP2 for that matter).  This tends to undermine the usefulness of D2 in building a case against the application, however, I consider it is still appropriate to make determinations that evidence concerning D2 is clearly not properly in reply where that is the case.

Paragraphs 32 to 35

1. These paragraphs are materially similar to [43] to [46] of 633 Hamilton2, and within a similar context.  It follows that corresponding conclusions apply, as discussed above for [43] to [46] of 633 Hamilton2, namely that I am not satisfied that any of these paragraphs are clearly not properly in reply to the EIA.

2. The Applicant has provided submissions on these paragraphs, at [18] of the SIS and [41] of the SIR.  These are largely and materially similar to those given in connection with the corresponding paragraphs of 633 Hamilton2.  Therefore the Applicant’s arguments on these paragraphs are largely addressed above in connection with [43] to [46] of 633 Hamilton2. 

3. The only materially new argument appears to be the agreement with the Delegate in the 634 letter that [33] is not responsive to the EIA, due to there not being a suggestion in the EIA that a skilled person would want to make the lock as small as possible.  However, it is clearly the case that Mr Holland, at [4.4] of his declaration, makes statements about it being generally the case that locks should be made as small as possible.  In view of this I am not satisfied that that [33] is clearly not properly in reply to the EIA.

Paragraphs 36 and 37

1. These paragraphs are materially similar to [47] and [48] of 633 Hamilton2, and within a similar context.  It follows that corresponding conclusions apply, as discussed above for [47] and [48] of 633 Hamilton2, namely that I am satisfied that these paragraphs are clearly not properly in reply to the EIA.

2. The Opponent has provided submissions on these paragraphs, at [100] to [105] of the SIA.  These are materially similar to those given in connection with the corresponding paragraphs of 633 Hamilton2.  Therefore the Opponent’s arguments on these paragraphs are addressed above in connection with [47] and [48] of 633 Hamilton2. 

Paragraphs 38 and 39

1. These paragraphs are materially similar to [50] and [51] of 633 Hamilton2, and within a similar context.  It follows that corresponding conclusions apply, namely that I am not satisfied that any of these paragraphs are clearly not properly in reply to the EIA.

2. The Applicant has provided submissions on these paragraphs, at [18] of the SIS and [41] of the SIR.  These are materially similar to those given in connection with the corresponding paragraphs of 633 Hamilton2.  Therefore the Applicant’s arguments on these paragraphs are largely addressed above in connection with [50] and [51] of 633 Hamilton2. 

Paragraphs 40 and 41

1. These paragraphs are materially similar to [52] and [53] of 633 Hamilton2, and within a similar context.  It follows that corresponding conclusions apply, as discussed above for [50] and [51] of 633 Hamilton2, namely that I am satisfied that these paragraphs are clearly not properly in reply to the EIA.

2. I also note that D4 (WO 2012/116408) is discussed at [40] of Hamilton2 as evidencing the use of a handheld device and has been filed in the EIR as annexure IH-10.  Notably, despite D4 being cited in the 634 SGP for novelty purposes, it has not been filed as EIS and is not even mentioned in Hamilton or any annexures thereto.  In this regard I note that the Commissioner’s letter of 29 September 2020 directing that documents accompanying the 634 SGP be treated as EIS is not applicable to D4, since it did not accompany the 634 SGP (nor did it accompany the 634 SGP2).  Hence, while the issue of D4/IH-10 not being properly in reply has not been raised by the Applicant, it appears reasonably clear that D4/IH-10 is also not properly in reply to the EIA.  However, as the status of D4/IH-10 has not been put in issue by the parties, I will leave it to the Delegate deciding the 634 opposition to raise this issue with the parties, if they deem it appropriate, and to make any determinations regarding the status of D4/IH-10 as evidence or otherwise as they see fit.

1. The Opponent has provided submissions on these paragraphs, at [106] to [108] of the SIA.  These are materially similar to those given in connection with the corresponding paragraphs of 633 Hamilton2.  Therefore the Opponent’s arguments on these paragraphs are addressed above in connection with [52] and [53] of 633 Hamilton2. 

Paragraphs 48 and 49

1. These paragraphs are materially similar to [60] and [61] of 633 Hamilton2, and within a similar context.  It follows that corresponding conclusions apply, as discussed above for [60] and [61] of 633 Hamilton2, namely that I am not satisfied that any of these paragraphs are clearly not properly in reply to the EIA, except for the fourth sentence of [49], which I am satisfied is clearly not properly in reply for similar reasons as given for the fourth sentence of [61] of 633 Hamilton2.

2. The Applicant has provided submissions on these paragraphs, at [19] of the SIS and [42] of the SIR.  These are materially similar to those given in connection with the corresponding paragraphs of 633 Hamilton2.  Therefore the Applicant’s arguments on these paragraphs are largely addressed above in connection with [60] and [61] of 633 Hamilton2. 

3. The Opponent has provided arguments on these paragraphs at [109] to [112] of the SIA.  These are materially similar to those given in connection with the corresponding paragraphs of 633 Hamilton2.  Therefore the Opponent’s arguments on these paragraphs are largely addressed above in connection with [60] and [61] of 633 Hamilton2. 

Paragraphs 52 to 54, 56 to 59 and 63

1. These paragraphs are materially similar to [65] to [67], [70] to [73] and [77] of 633 Hamilton2, and within a similar context.  It follows that corresponding conclusions apply, as discussed above for [65] to [67], [70] to [73] and [77] of 633 Hamilton2, namely that I am satisfied that these paragraphs are clearly not properly in reply to the EIA.

2. The Opponent has provided submissions on these paragraphs, at [113] to [131] of the SIA.  These are materially similar to those given in connection with the corresponding paragraphs of 633 Hamilton2.  Therefore the Opponent’s arguments on these paragraphs are addressed above in connection with [65] to [67], [70] to [73] and [77] of 633 Hamilton2. 

Paragraph 55

1. This paragraph provides further comment on Mr Letchford’s experience and how this allegedly reflects his views on what was known or used by the skilled addressee before the priority date.  I fail to see how this paragraph is clearly not properly in reply to the EIA.

2. The Applicant provided very little specific detail regarding this paragraph in the SIS, merely stating at [20(d)] that it agrees with the Delegate’s conclusions in the 634 letter regarding paragraph [55], amongst a list of other paragraphs.  I otherwise fail to see how this paragraph is essential to making out grounds of inventive step as generally pressed by the Applicant (amongst other paragraphs) at [20] of the SIS and [43] of the SIR.

Paragraphs 62 and 64 to 66

1. These paragraphs are materially similar to [76], [78], [79] and [82] of 633 Hamilton2, and within a similar context (paragraph [65] replicates only the first two sentences of [79] from 633 Hamilton2).  It follows that corresponding conclusions apply, namely that I am not satisfied that any of these paragraphs are clearly not properly in reply to the EIA.

2. The Applicant has provided submissions on these paragraphs, at [20] and [21] of the SIS and [43] and [44] of the SIR.  These are materially similar to those given in connection with the corresponding paragraphs of 633 Hamilton2.  Therefore the Applicant’s arguments on these paragraphs are addressed above in connection with [76] and [78] to [83] of 633 Hamilton2. 

Paragraph 67

1. This paragraph is materially similar to [83] of 633 Hamilton2, and within a similar context.  It follows that corresponding conclusions apply, namely that I am satisfied that [67] is not properly in reply to the EIA.  If anything the situation is worse for the Opponent than for the 633 opposition, noting that D4 is not even mentioned anywhere in the EIS.

2. The Opponent has provided submissions on this paragraph at [133] to [135] of the SIA.  These are materially similar as for [83] of 633 Hamilton2, so the Opponent’s arguments are addressed in connection with [83] of 633 Hamilton2 above.

Paragraphs 69 to 72

1. These paragraphs comprise a discussion concerning Mr Holland’s statements at [11.8] of his declaration regarding placement of a monitoring device in the harsh environment on the outside the cavity or inner surface of a GET, and difficulties with having wireless signals “pass” through metals.  In response to this, Mr Hamilton raises some of Mr Holland’s evidence from the EIA for the 632 opposition, this evidence (as cited by Mr Hamilton) indicating that there was movement between a wear part and base, with gaps of three to four millimetres between the parts.  Given the nature and context of Mr Holland’s evidence regarding wireless signals and metal, I do not see the citing and discussion thereof by Mr Hamilton of evidence on this point from a different opposition as leading to problems per se for the EIR.  I am not satisfied that any of these paragraphs are clearly not properly in reply to the EIA.

2. The Applicant has provided arguments against these paragraphs at [22] of the SIS and [45] of the SIR.  These are largely premised on allegations that the Get Trakka system is being presented as CGK.  However, none of these paragraphs even mention the Get Trakka system.  There are some arguments about whether Mr Hamilton has quoted correctly from Mr Holland’s evidence in 632 opposition, and the import of this, however, to my mind that is more a matter of the probative value of the evidence rather than a question of whether it is properly in reply to the EIA.

Paragraphs 73 to 75

1. These paragraphs are materially similar to [89] to [91] of 633 Hamilton2, and within a similar context.  It follows that corresponding conclusions apply, as discussed above for [89] to [91] of 633 Hamilton2, namely that I am not satisfied that any of these paragraphs are clearly not properly in reply to the EIA.

2. The Applicant has provided submissions on these paragraphs, at [22] of the SIS and [45] and [44] of the SIR.  These are materially similar to those given in connection with the corresponding paragraphs of 633 Hamilton2.  Therefore the Applicant’s arguments on these paragraphs are addressed above in connection with [89] to [91] of 633 Hamilton2. 

Paragraph 80

1. This paragraph is materially similar to [97] of 633 Hamilton2, and within a similar context.  It follows that a corresponding conclusions applies as discussed above for [97] of 633 Hamilton2, namely that I am not satisfied that this paragraph is clearly not properly in reply to the EIA.

2. The Applicant has provided submissions on these paragraphs, at [23] of the SIS and [46] of the SIR.  These are materially similar to those given in connection with [97] of 633 Hamilton2.  Therefore, the Applicant’s arguments on this paragraph are addressed above in connection with [97] of 633 Hamilton2. 

Paragraph 97

1. This paragraph is materially similar to [121] of 633 Hamilton2, and within a similar context (note that the Applicant has only objected to [97(a)] and [97(b)]).  While the EIS is less direct in pointing out the characteristics concerned, I am of the view that the discussion of characteristics in the EIS is broad enough (for example at [29] of Hamilton and in IH-3) in such a way that [97] does not change the case the Applicant has to answer.  It follows that corresponding conclusions applies as discussed above for [121] of 633 Hamilton2, namely that I am not satisfied that [97(a)] and [97(b)] are clearly not properly in reply to the EIA.

2. The Applicant has provided submissions on these paragraphs, at [25] of the SIS and [47] of the SIR.  These are materially similar to those given in connection with [121] of 633 Hamilton2.  Therefore the Applicant’s arguments on this paragraph are addressed above in connection with [121] of 633 Hamilton2. 

Paragraphs 102 and 103

1. These paragraphs are materially similar to [126] and [128] of 633 Hamilton2, and within a similar context.  It follows that corresponding conclusions apply, as discussed above for [126] and [128] of 633 Hamilton2, namely that I am not satisfied that any of these paragraphs are clearly not properly in reply to the EIA.

2. The Applicant has provided submissions on these paragraphs, at [25] of the SIS and [48] of the SIR.  These are materially similar to those given in connection with [126] and [128] of 633 Hamilton2.  Therefore the Applicant’s arguments on this paragraph are addressed above in connection with [126] and [128] of 633 Hamilton2. 

Paragraph 104

1. This paragraph continues the previous discussion at [102] and [103] concerning difficulties in correlating an input with an output, this time by specific reference to [11.24] of Holland.  I fail to see how any of this paragraph is clearly not properly in reply to the EIA.

2. The Applicant has provided submissions on this paragraph, at [25] of the SIS and [48] of the SIR.  These are materially similar to those given in connection with [102] and [103] of Hamilton2.  Therefore the Applicant’s arguments on this paragraph are addressed above in connection with [126] and [128] of 633 Hamilton2. 

634 Application – Conclusion

1. I am satisfied that the following paragraphs or indicated parts thereof, are clearly not properly in reply to the EIA: the last two sentences of [12]; [14]; [36]; [37]; [40]; [41]; the fourth sentence of [49]; [52] to [54]; [56] to [59], [63] and [67].

Regulation 5.23

1. In the SIS and SIR for each of the applications, the Applicant has requested a period to consider filing a request pursuant to Reg 5.23 in the event the EIR challenged remained in evidence.  In response to this, I refer to my comments at [158] and [159] of CQMS.

CONCLUSION

1. I am satisfied that the following passages are clearly not properly in reply to the EIA:

   ·     For the 633 application: the last two sentences of [16]; [18]; [47]; [48]; [52]; [53]; fourth sentence of [61]; [65] to [67]; [70] to [73]; [77] and [83].

   · For the 394 application: the last two sentences of [11]; [62], [63]; [84]; [85]; [90]; the fourth sentence of [98]; [102] to [104]; [107]; [108]; [112]; [118]; the last sentence of [129] from and including the phrase “…and those same people”; [130] to [137]; and [152].

   ·     For the 634 application: the last two sentences of [12]; [14]; [36]; [37]; [40]; [41]; the fourth sentence of [49]; [52] to [54]; [56] to [59], [63] and [67].

COSTS

1. There was some skirmishing in the submissions all the applications concerning costs, however, I do not consider these, to justify deviation from the usual award of costs in the present circumstances, which is that costs usually follow the event.  I therefore award costs against the Opponent in each of the challenges to the EIR according to Schedule 8 of the Regulations.

Dr W.E. Guinea

Delegate of the Commissioner of Patents