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…

Grounds of appeal

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

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

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

Consideration

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

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

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Details

Case: [2023] APO 46
Decision Date: 14 September 2023

CaseChat Overview and Summary

The case of CQMS Pty Ltd v ESCO Group LLC involves the assessment of evidence in reply (EIR) filed by CQMS Pty Ltd in opposition to patent applications 2018201633, 2018201634, and 2019201394, held by ESCO Group LLC. The dispute centred on whether certain parts of the EIR were properly in reply to the evidence in answer (EIA) provided by ESCO Group LLC. The decision was made by Dr W.E. Guinea, a delegate of the Commissioner of Patents, who concluded that specific parts of the EIR were not properly in reply and thus should not form part of the evidence in the opposition. The decision also involved the awarding of costs against CQMS Pty Ltd in accordance with Schedule 8 of the Regulations for each of the three applications. The delegate's reasoning was based on established principles regarding EIR, which must respond to the EIA and cannot merely bolster the evidence in support or introduce new matters that should have been raised earlier. The decision provides clarity on the nature and scope of EIR in patent opposition proceedings and the consequences of filing improper evidence in reply.

Orders