CQMS Pty Ltd v ESCO Group LLC - [2023] APO 29

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

CQMS Pty Ltd v ESCO Group LLC [2023] APO 29

Patent Application: 2018201726

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC

Opponent:CQMS Pty Ltd

Delegate:Dr W.E. Guinea

Decision Date: 11 May 2023

Hearing Date: 1 December 2021, by written submissions

Catchwords: PATENTS – evidence in reply – whether evidence in reply properly in reply – no evidence in reply clearly not properly in reply – costs awarded against Applicant

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 Application: 2018201726

Title:Wear part monitoring

Patent Applicant: ESCO Group LLC
Date of Decision: 11 May 2023

DECISION

I am not satisfied that any of the evidence in reply challenged by the Applicant is not properly in reply to the evidence in answer.

I award costs against the Applicant, ESCO Group LLC, according to Schedule 8 of the Regulations.

REASONS FOR DECISION

Background

Patent application 2018201726 (the “application”) was filed on 9 March 2018 in the name of ESCO Corporation. By virtue of a request filed under s113 on 12 September 2018, the Applicant of record became ESCO Group LLC (the “Applicant”). By virtue of its divisional status to 2014262221, the application has an earliest priority date of 25 November 2013.
The application is 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.
Examination was requested at filing. A first examination report issued on 15 May 2019, with the application being subsequently accepted on 13 January 2020. The application was advertised as accepted on 30 January 2020.
On 30 April 2020, CQMS Pty Ltd (the “Opponent”) filed a notice of opposition to the grant of the application under s59 of the Act (the “s59 opposition”). A statement of grounds and particulars (“s59 SGP”) was filed on 30 July 2020, with evidence in support (“EIS”) being completed on 1 February 2021. Evidence in answer (“EIA”) was completed on 3 May 2021, with EIR completed on 23 June 2021.
The evidence is summarised in the table below, with shorthand references provided in bold.

EIS	EIA	EIR
A declaration by Dr Nicholas Simon Hillier dated 1 February 2021 (Hillier), with supporting exhibits NH-1 to NH-3.	A declaration by Mr Hezekiah Russell Holland dated 1 May 2021 (Holland).	A declaration by Dr Nicholas Simon Hillier dated 23 June 2021 (Hillier2)with supporting exhibits NH-4 to NH-6.

On 19 July 2021, the Applicant informed the Commissioner that it considered the EIR was not properly in reply to the EIA. A Delegate considered the matter, and on 14 September 2021, informed the parties…

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 29
Decision Date: 11 May 2023

CaseChat Overview and Summary

In the case of CQMS Pty Ltd v ESCO Group LLC, the parties were engaged in a dispute concerning the validity of a patent application related to wear part monitoring. The Applicant, ESCO Group LLC, was the patent applicant, while the Opponent was CQMS Pty Ltd. The matter was heard before Dr W.E. Guinea, a Delegate of the Commissioner of Patents, who was tasked with deciding whether certain evidence in reply (EIR) submitted by the Opponent was properly in reply to the evidence in answer (EIA) provided by the Applicant.

The primary legal issue before the court was whether the EIR submitted by the Opponent was properly in reply to the EIA provided by the Applicant. The Applicant argued that some of the EIR was not properly in reply, and therefore, should not be considered by the court. The Opponent, on the other hand, contended that the EIR was properly in reply and should be accepted as evidence.

In delivering the decision, Dr Guinea found that none of the EIR challenged by the Applicant was not properly in reply to the EIA. The Delegate carefully considered each contested passage of the EIR and found that they were generally responsive to the EIA, and did not merely confirm the evidence in support or open up new matters that should have been raised in the evidence in support. The Delegate also noted that there was a reasonable basis to consider the EIR as being properly in reply, and therefore, should be treated as such.

As a result of the court's decision, costs were awarded against the Applicant, ESCO Group LLC, according to Schedule 8 of the Regulations. The court found that costs usually follow the event, and in this case, the Applicant was unsuccessful in their challenge to the EIR.

In summary, the court held that the EIR submitted by the Opponent was properly in reply to the EIA provided by the Applicant, and therefore, should be considered in the opposition proceedings. The court also awarded costs against the Applicant for their unsuccessful challenge to the EIR.

Orders