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 completed described. Prior to the hearing the Statement was amended to only be directed to the ground that a claim was not within the scope of claims before amendment.
THE RELEVANT LAW
The application for the patent was filed in 2018, and the amendments of the Patents Act 1990 (the Act) brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 therefore apply to the present patent.
The requirements for the allowability of amendments are governed by subsections 102(1) and (2) which state that:
(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
(a)the complete specification as filed;
(b)other prescribed documents (if any).
(2) An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment;
(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b)the specification would not comply with subsection 40(2), (3) or (3A).
Notably the legislation requires that the failure to meet the requirements of subsections 102(1) and (2) must be the result of the amendment, the relevant time being acceptance of the application.
Relevant to this matter is paragraph 102(2)(a).
A useful test for the allowability of amendments under s102(2)(a) is:
"…would the amendment make anything an infringement which would not have been an infringement before the amendment?"
This test was suggested in relation to s31(1) of the British Act in The Distillers Co. Ld.'s Application[1]. Although the wording of s102(2)(a) differs from the wording of the then s31(1) of the UK Patents Act 1949, the Commissioner in W.J. Voit Rubber Corp.'s Application[2], when considering the corresponding provision of the Patents Act 1952 said:
"…the test as to whether a proposed amendment would have the effect of causing infringement when none existed before, seems to me a perfectly reasonable one".
[1] (1953) 70 RPC 221 at page 223
[2] (1965) AOJP 1752 at page 1754
The Federal Court accepted the continuing relevance of this approach in Boehringer Ingelheim International GmbH v Commissioner[3].
[3] [2000] FCA 1918
Clearly critical to the present matter is construction of the claims before and after amendment. The correct approach to the construction of claims was discussed by Bennett J in H Lundbeck A/S v Alphapharm Pty Ltd[4]:
“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear ... while the claims define the monopoly claimed in the words of the patentee's choosing, the specification should be read as a whole ... it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification ... terms in the claim which are unclear may be defined or clarified by reference to the body of the specification”
[4] [2009] FCAFC 70 at [118] – [120]
THE INVENTION
The specification[5] notes that:
The present invention pertains to a device and system for identifying and monitoring
characteristics such as part identification, presence, condition, usage and/or performance of ground-engaging products such as ground engaging tools, wear plates, buckets, truck trays, and the like used on various kinds of earth working equipment.
[5] Specification at [02]
It adds[6] that during use:
…ground-engaging products for earth working equipment can encounter heavy loading and highly abrasive conditions, which leads to wear or damage to the products, less remaining wear life of the products, and reduced efficiency for the earth working equipment. Moreover, a ground engaging product will occasionally encounter a material that is harder than the surrounding material being mined (e.g., a rock), subjecting the product to impact and/or higher loading that may lead to deformation, cracking, and/or a higher wear rate of the product than would otherwise be expected.
[6] Specification at [04]
Systems are said to exist[7] to monitor wear parts, and while the specification is not clear on the nature of the problem to be solved by the present invention, it appears at least that the presently claimed invention seeks to monitor wear parts in an improved manner. For a little more context I provide below FIGs 1-4 which show an earth working machine with a bucket 3 upon which are mounted ground-engaging teeth 7. I also provide FIG. 5A which shows a view of an end portion of ground-engaging tooth being item 15 that engages directly with the ground and houses a monitoring device 25.
[7] Specification at [06] – [08]
The invention is ultimately rather simple to understand at least in the context of the depicted and claimed invention.
The Claims as Proposed to be Amended
The basis for the opposition to the presently amended claims relates to the changes made to claim 1. Claim 1 as proposed to be amended on 28 September 2021 is as follows (with underlining for added features and strikeout for deleted features):
A monitoring system comprising:
a ground-engaging product secured to an earth working machine at a worksite;
a monitoring device secured to the ground-engaging product to monitor the ground-engaging product and wirelessly transmit information pertaining to ~~the use~~ at least one characteristic of the ground-engaging product ~~by the earth working machine~~;
a database with geology information pertaining to different characteristics of ground material; and
at least one remote device to receive the transmitted information and the geology information from the database and use programmable logic to process the transmitted information and the geology information to map the worksite with at least one characteristic associated with the ground being worked by the earth working machine.
The invention is directed to monitoring a ground-engaging product that is secured to an earth working machine at a worksite. The monitoring device is secured to the ground-engaging product and data regarding the ground engaging product is wirelessly transmitted to a remote device where geological information from a database may be combined with the monitoring of the ground engaging product to map a worksite being worked. The opposition to the amendment focusses fundamentally on the potential difference between:
· Information pertaining to the use of the ground-engaging product by the earth working machine; and
· Information pertaining to at least one characteristic of the ground-engaging product.
The opponent points out two elements of the relevant feature before amendment that they suggest are important to appreciate. First, they suggest that the information transmitted by the monitoring device pertains to “the use of the ground engaging product”, and second, the information pertains to the use of the ground-engaging product “by the earth working machine”. This is clearly in contrast to information pertaining to at least one characteristic of the ground-engaging product. Before amendment, information transmitted must pertain to use of the product by the machine. After amendment, information transmitted need not in any way, at least strictly linguistically in terms of this feature in isolation, pertain to use (my emphasis). It is thus useful to lay out clear meaning to the terms “pertain” and “use”.
The Macquarie Dictionary[8] defines “pertains” as:
1.  to have reference or relation; relate: documents pertaining to the case.
2.  to belong or be connected as a part, adjunct, possession, attribute, etc…
and defines “use” (noun) as:
11.  the act of employing or using, or putting into service: the use of tools.
12.  the state of being employed or used: this book is in use.
13.  an instance or way of employing or using something: each successive use of the tool...
[8] The Macquarie Dictionary, 8^th ed. 2022, >
There is nothing particularly interesting about these definitions in the context of the present matter, the words are rather common, and their meanings well understood. Clearly the information transmitted in the claimed invention prior to amendment must relate to/be connected to the employment/operation of the ground-engaging product by the earth working machine. The information should be an attribute of use. I read this as requiring the information be a rationally founded representation of the employment of the ground-engaging product by the earth working machine. The specification describes such characteristics which on my understanding may describe the operational parameters, condition, or performance of the ground engaging product[9].
[9] Specification at [71]
This necessary connection of information to use is contrasted with a mere characteristic of the ground-engaging product. The specification describes such characteristics which on my understanding may include information such as part ID, product number, customer number, or brand name[10], all of which do not have a connection as an attribute of the employment of the ground-engaging product. There is clearly a strict linguistic difference in scope of the wording at the relevant part of the claim. However, I must consider whether this difference bears on the claim when considered in context of the claim and the specification as a whole, and ultimately whether the scope of claim 1 travels to a place in which it did not sit prior to amendment.
CONSIDERATION
[10] Specification at [71]
s102(2)(a) – Amended claim within scope?
The opponent put forward a number of supporting reasons for a contravention of s102(2)(a). For simplicity I will generally follow the approach of the opponent and discuss the applicant’s submissions where necessary at each point.
Ordinary English: Use vs Characteristic
In accordance with my discussion above as to the ordinary English meaning of words, the opponent submits the following regarding “use” and “characteristic”:
“…the terms “use” and “characteristic” are not co-extensive. As set out above, the Macquarie Dictionary, 8 th edition, defines “use” to mean “to employ for some purpose; put into service; turn to account”. In contrast, the Macquarie Dictionary, 8 th edition, defines “characteristic” to mean “relating to, constituting, or indicating the character or peculiar quality; typical; distinctive” or “a distinguishing feature or quality”.
Plainly enough, as a matter of ordinary English usage, information can pertain to a “characteristic” of a thing (such as a ground-engaging tool), without also pertaining to the “use” of that thing. For example, in the context of a ground-engaging tool, the colour, weight, size, price or manufacturer of a ground-engaging tool could all readily be described as information pertaining to a “characteristic” of that ground-engaging tool, but could not be described as information pertaining to the “employment”, “putting into service” or “turning to account” (i.e. “use”) of that ground-engaging tool.
For this reason alone, the proposed amendments to claim 1 must be rejected.”
Clearly the observations made by the opponent as to the strict linguistic difference in scope between the relevant words before and after amendment is correct. Information pertaining to a characteristic will, by mere logic, include information that does not pertain to the use of the ground-engaging product by the earth working machine. However, I cannot arrive at a conclusion as to the scope of the claims before and after amendment without considering the manner in which these words appear in the claim as a whole, and by also considering whether there is some content in the specification that otherwise defines the meaning of terms in the claim. In this process I must be careful to avoid gloss from the specification regarding these otherwise clear terms.
The Specification: Use vs Characteristic
The opponent raises a number of points by reference to the description of the invention to support their position that the terms “use” and “characteristic” are fundamentally different. These include:
·     “…there is nothing in the Application which suggests that the terms ‘use’ or ‘characteristic’ ought to be given anything other than their ordinary English meanings”. They submit it is clear that paragraph [71] does not purport to confine or define these words.
·     “…the application expressly and repeatedly teaches that ‘characteristic’ has a quite different, and broader, meaning than ‘use’. They broadly submit that characteristics include part ID, usage, condition, performance and/or presence, and that part ID relates to information such as product number, customer number, brand name etc…
·     “…the application makes clear that the characteristics of a ground engaging product are not confined to the ‘employment’ [of] that ground engaging tool… The ‘operational relationship’[has] been removed by the proposed amendments.”
On the first point above I agree with the opponent. Paragraph [71] is reproduced below with my emphasis.
The remote device 38 and the monitoring device 25 may on their own, 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.) store, process and/or communicate information related to characteristics such as part ID, usage, condition, performance and/or presence of the ground engaging product on earth working equipment (Fig. 12). Information related to the part ID of ground engaging product can include such things as ground engaging product type, product number, customer number, brand name, trademark, manufacturer, bill of materials, etc. Information related to usage of the ground engaging product can include such things as the kind of machine using the ground engaging product, time the ground engaging product went into service, how many digging cycles the ground engaging product has experienced, average time of the digging cycle, location of the ground engaging product on the machine, impact events, etc. The part ID may be used as search criteria in order to retrieve additional information regarding the specific ground engaging product. The search criteria may be used to query one or more relational databases and/or broader data structures. Information related to condition of the ground engaging product can include such things as wear, strain in the ground engaging product, etc. Information related to performance can include such things as the rate of digging, force needed to penetrate the ground, tons moved per each increment of wear, etc. These characteristics could also be used in connection with information regarding the mine geology, material fragmentation and/or other information for, e.g., determining timetables for excavating material, replacement schedules for ground engaging products, etc. Devices 25 can also be used to detect ground engaging product loss (i.e., presence of the ground engaging product). These monitored characteristics are given as examples only and are not intended to be limiting. Information may be shared with, i.e. sent to and received from, various other machines including programmable logic, other networks, and used with various software applications, and routines.
Paragraph [71] is the key paragraph in the specification for outlining the nature of transmitted information. Nothing in this paragraph is presented as a definition that is to apply to the entirety of the specification. Instead, what is presented are examples of information, or “characteristics”, that may be transmitted. Part ID, usage, and condition are presented as characteristics in the general sense. In other words, what I see present in paragraph [71] is somewhat of a laundry list of data that may be monitored and transmitted. Some of the data in the list clearly pertains to the employment/operation of a ground-engaging product by an earth working machine, and some doesn’t.
On the second point I also agree with the opponent that the term “characteristic” is used broadly, and seemingly more broadly than the term “usage”. This is consistent with the plain meaning of the term “characteristic” as being distinct from the term “use”, reinforcing that there is no basis in the specification from which construction of the relevant feature should depart from a plain meaning. Furthermore, I have no doubt that the feature before amendment was directed to information representing an attribute of employment of ground-engaging product by the earth working machine. The wording of the claim as it currently stands simply describes a (and for that many “any”) characteristic of the ground-engaging product.

As the opponent notes:
“Put simply, the Application at [71] makes crystal clear that information, such as “product number, customer number, brand name, trademark, manufacturer, bill of materials”, is all “information pertaining to at least on (sic) characteristic of the ground-engaging product” within the meaning of proposed amended claim 1. However, none of that information could conceivably be described as information “pertaining to the use of the ground-engaging product by the earth working machine” within the meaning of claim 1, before amendment. It follows that claim 1, following the proposed amendments, encompasses a system with a monitoring device which might only reports information pertaining to the “product number, customer number, brand name, trademark, manufacturer, bill of materials”, whereas such a system did not fall within the scope of claim 1 before the proposed amendments.”
The plain meaning of the words of the claim is not disturbed by any content in the body of the specification. As discussed earlier, there is a clear logical linguistic difference in scope between the phrases “information pertaining to the use of the ground-engaging product by the earth working machine” and “information pertaining to at least one characteristic of the ground-engaging product”.
To formalise such logic, one could consider a Venn diagram wherein there exist two circles, one representing the relevant phrase prior to amendment and one representing the relevant phrase after amendment. Clearly there is an area of that diagram wherein “at least one characteristic of a ground-engaging product” is not contained within the representation of the data pertaining to use. In this context there is some discussion in the submissions of the applicant that the term “characteristic” is a narrower and more specific term than “use”. I can see a degree of merit to this submission only to the extent that data “pertaining to use” can consist of data that is descriptive of the ground-engaging product or can consist of data that is descriptive of the environment of the ground engaging product. On the other hand, a “characteristic of the ground-engaging product” appears limited to information about the ground-engaging product itself. However, while the feature relating to a characteristic of the ground-engaging product may be potentially more specific a term in the absolute sense, the question remains as to whether some of the scope of the feature after amendment lies outside that before amendment.
To ultimately answer the question as to whether the claim after amendment lies outside of the claim before amendment I turn to construction of the claim as a whole to investigate whether the manner of processing data in the claim has the effect of limiting scope of the otherwise plain meaning of the feature in question. Before I do this, I will briefly address an issue arising in the submissions as to the term “usage” vs the term “use”.
The Specification: Usage vs Use
Before moving to consideration of the relevant feature in the context of the claims as a whole, I note that there is some skirmish in the submissions and the evidence as to a potential difference between the meaning of terms “usage” and “use”, in the specification. In appearing to suggest potential for the term “use” in the claim prior to amendment to encompass the term “characteristic” after amendment, the applicant suggests that:
“…the word ‘use’ in claim 1 and the body of the specification is broader that the defined term ‘usage’ in the specification.
Firstly, it is clear that the term “usage” is not presented so as to provide a limiting definition in the specification. To the extent that the term is used in the specification in the manner shown in the listing of characteristics at paragraph [71] then I appreciate that it is fair to say that the instance of the word “usage” is presented as narrower than the word “use” in the claim. For example, “usage” is listed as distinct from condition, performance and/or presence of the ground engaging product. However, I cannot see how characteristics of condition, performance and/or presence of the ground engaging product cannot themselves also pertain to the “use” or “usage” of a ground engaging product. At best there appears some drafting of examples that are somewhat rough and ready, and imprecise with language. Regardless, I cannot see how the manner of occasional use of the word “usage” in the body of the specification in an exemplary sense could displace the plain meaning of the term “use” that should be immediately applied to claim 1 prior to amendment.Any attempted distinction is somewhat of a distraction to the question at hand.
Claims Read as a Whole:
As I noted above, I must now turn to the claims to decide whether when considered as a whole, the plain meaning of the relevant words is limited by the presence of any other features describing the operation of the monitoring system. In this regard, the applicant argues that:
“…claims 14-20 make clear that “the information pertaining to use of the ground- engaging product” can be information regarding wear, impact, strain, loads, duration of loading and digging cycles, and the number of passes through the ground, which are all “characteristics” of the ground engaging product identified in the specification, in particular at paragraph [71]”,
and that:
“…the characteristic of the ground-engaging product identified in claim 14 is “wear” which is a “condition” rather than “usage” characteristic of the ground-engaging product, as identified in paragraph [71] of the specification.”
In light of these observations, the applicant submits that the claims pre-amendment where not limited to “usage” as defined in the specification and encompassed information pertaining to the characteristics (as defined in the specification) of the ground engaging product.
I do not see the above submissions as assisting the applicant. Firstly, the specification provides no definitions for terms in the claim, and I have already noted that any distinction between the meanings of “usage” and “use” is a distraction to the question at hand. In any event, clearly claim 1 pre-amendment does not include the word “usage”, and it is also the case that the claim pre-amendment included characteristics of the ground-engaging product. It is perfectly logical that information regarding the “use” or “usage” of a ground-engaging product can also be a characteristic of a ground-engaging product. However, it is the case that the characteristics in the claim prior to amendment were themselves limited to information “pertaining to the use of the ground-engaging product by the earth working machine”. Present now in the claims is the envisaging of information of characteristics that do not pertain to use. The claim post amendment thus clearly appears to wander into a region not bounded by the original scope.
It appeared to me at the hearing that the applicant’s focus as arguing for the allowability of the amendment lies in the following proposition.
“…the ‘information pertaining to at least one characteristic of the ground engaging product’ will necessarily only be information that could be processed together with ‘geology information pertaining to different characteristics of ground material’ to product a worksite map as to one such geological characteristic of the ground material. That information will necessarily exclude the Opponent’s examples of, inter alia, colour, price and manufacturer name as relevant ‘characteristics’ of the ground engaging products for the purposes of claim 1 after the Proposed Amendment.”
In other words, I understand the applicant to suggest that a person skilled in the art reading the claim and specification in context would only consider it sensible to combine information characteristics that are limited to the use of the ground-engaging product by the earth working machine with geology information to produce a map. Returning to claim 1 as proposed to be amended, present in addition to information pertaining to at least one characteristic of the ground-engaging product are relevant features to the applicant’s argument being:
· geology information pertaining to different characteristics of ground materials
· programable logic to process the transmitted information (i.e. information pertaining to at least one characteristic of the ground-engaging product) and the geology information to map the worksite with at least one characteristic associated with the ground being worked by the earth working machine
I cannot see how these features have an effect so as to limit the claim after amendment to the exclusion of characteristics of the ground-engaging product that do not pertain to use. Importantly, the programable logic simply receives the information characteristic of the ground-engaging product from the monitoring device and obtains geology information so as to map the worksite with a characteristic associated with the ground being worked. The claim is not limited to any particular processing or manner of combining data to obtain a particular output. To this extent, this element of the claim clearly includes within its scope merely processing characteristic data of a ground-engaging product and processing geology information ultimately producing a map. The characteristic associated with the ground being worked may be entirely a result of the geology information itself, or some combination of a non-use characteristic of the ground-engaging product with geology information.
Finally, the applicant notes that:
“…the claim specifically requires that the earth working equipment be located at a worksite. Second, each of the aspects of the invention and the description of the invention relate to a system that is monitoring ground-engaging products to improve the overall efficiency of the system while in operation. Finally, claim 1 requires mapping of the ‘worksite with at least one characteristic associated with the ground being worked by the earth working machine’ (emphasis added). Therefore, the claim concerns activity of the earth working machine in fact working the ground, not simply being ‘parked up and non-operational’ [as submitted by the opponent]. Accordingly, both pre and post-amendment, the claims do not encompass ‘non-operational’ monitoring of the system.”
I do not see how this submission assists the applicant in their case. It is fair to say that that the claim requires mapping while the ground is being worked. However, this is the extent of any temporal requirement in the claim. The data gathered so as to feed into the claimed processing and mapping need only pertain to a characteristic of the ground-engaging product along with geology information regarding ground material. When this data is gathered with respect to the act of mapping and ground working is irrelevant. As such, the fact that the claim may concern activity of an operational system does not bear on the scope of the features related to the input data. Clearly there is no specific aspect of “improved efficiency” within the claim that assists the applicant.
In summary, I see nothing present in the specification to otherwise dispose of the plain meaning of the relevant features of the claim before and after amendment. Before amendment, the claimed invention was limited to information pertaining to the use of the ground-engaging product by the earth working machine. After amendment the claimed invention is directed to the feature of information pertaining to at least one characteristic of the ground-engaging product. The feature after amendment clearly includes as a matter of linguistic logic, characteristics which do not pertain to the use of the ground-engaging product by the earth working machine. I accept that there are characteristics of ground-engaging products that do not in any reasonable sense, represent an aspect of an attribute of the act of employment of a ground-engaging product by the earth working machine. The specification itself points to a range of such characteristics.
Therefore, I consider that the claimed invention after amendment would have the effect of causing infringement when none existed before, thus contravening s102(2)(a).
CONCLUSION
The amendment results in a claim that would not in substance fall within the scope of the claims before amendment.
I refuse the amendment.
COSTS
The opposition to the s104 amendments is successful and I see no reason to depart from the normal practice to award costs against the applicant.
Dr N. R. Madsen
Deputy Commissioner of Patents