CQMS Pty Ltd v Esco Group LLC - [2023] APO 35

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
CQMS Pty Ltd v ESCO Group LLC [2023] APO 35
Patent application: 2018201634

Title:Monitoring ground-engaging products for earth working equipment

Applicant:Esco Group LLC

Opponent:CQMS Pty Ltd

Delegate:Dr N. R. Madsen – Deputy Commissioner of Patents

Decision Date: 16 June 2023

Hearing Date: 28 April 2023 via videoconference

Catchwords: PATENTS - opposition under section 104 – monitoring ground engagement devices on earth working machines and mapping a worksite – allowability under subsection 102(2) considered – whether the amendments result in a claim that is not within the scope of the claims before amendment – amendment not allowable – costs awarded against applicant

Representation: Counsel for the applicant: Tom Cordiner
Patent attorney for the applicant: MinterEllison
Counsel for the opponent: Peter Creighton-Selvay
Patent attorney for the opponent: James & Wells

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent application: 2018201634

Title:Monitoring ground-engaging products for earth working equipment

Applicant:Esco Group LLC
Date of Decision: 16 June 2023
DECISION

As a result of the amendment requested on 28 September 2021, the claimed invention would not in substance fall within the scope of the claims before amendment. The opposition is successful.
I refuse the amendment request of 28 September 2021. I award costs against the applicant.
REASONS FOR DECISION
BACKGROUND

Patent application 2018201634 in the name of Esco Group LLC (the applicant) was filed on 6 March 2018 as a divisional application of application 2016219013. It was examined and accepted in March of 2020, before an opposition was filed by CQMS Pty Ltd (the opponent). Evidence in support, answer and reply were filed and completed in 2021, before the applicant filed a request to amend the specification under section 104 on 28 September 2021. The opponent took the opportunity to comment on the amendments and a delegate of the Commissioner granted leave to amend the specification thus so advertised on 25 November 2021. The opponent filed an opposition to the proposed amendments on 25 January 2022.
Directions were made by a delegate of the Commissioner facilitating the filing of evidence for the section 104 matter. The evidence is comprised of declarations from Mr Ian Hugh Hamilton in support dated 26 May 2022 and reply dated 21 August 2022 (with exhibits IH-1 to IH-4 and exhibits IH-5 and IH-6 respectively), and a declaration from Hezekiah Russel Holland in answer dated 30 July 2022 (with exhibit HRH-1). I have read all of the evidence and found it of little assistance in the present matter. The present matter essentially involves issues of construction and application of legal principles lying fundamentally in the remit of the decision maker.
The Statement of Grounds and Particulars initially filed by the opponent outlined grounds of opposition to the amendment being that: the amendments extend beyond the disclosure as filed; they result in a claim that is not within the scope of the claims before amendment; and that as a result of the amendment the claims are not clear or supported, and the invention is not clearly and…

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.

Keep reading for free

Create a free CaseChat account to read CQMS Pty Ltd v Esco Group LLC and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2023] APO 35
Decision Date: 16 June 2023

CaseChat Overview and Summary

The matter before the court was an opposition by CQMS Pty Ltd to amendments proposed by Esco Group LLC to their patent application for "Monitoring ground-engaging products for earth working equipment". The court was required to decide whether the proposed amendments to the claims of the patent application were allowable under the relevant provisions of the Patents Act 1990. The key legal issue was whether the amendment resulted in a claim that was not within the scope of the claims before amendment, in contravention of subsection 102(2)(a) of the Act.

The court found that the amendment did result in a claim that was not within the scope of the claims before amendment. The amendment changed the relevant feature of claim 1 from "information pertaining to the use of the ground-engaging product by the earth working machine" to "information pertaining to at least one characteristic of the ground-engaging product". This change expanded the scope of the claim to include information that did not pertain to the use of the ground-engaging product by the earth working machine, which was not within the scope of the original claim. The court found that the plain meaning of the amended claim was broader than the original claim, and that this broader scope would result in infringement of a system that did not infringe before the amendment. The court therefore refused the amendment request and awarded costs against the applicant.

The court's decision hinged on its construction of the claims before and after amendment, and the meaning of the relevant terms in the context of the claims as a whole. The court found that the plain meaning of the amended claim was not limited by any other features in the claim, and that the amendment expanded the scope of the claim beyond that of the original claim. This decision reinforces the importance of carefully considering the scope of patent claims and the effect of any proposed amendments.

Orders