James Hardie Technology Limited v Etex Services NV - [2023] APO 66

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
James Hardie Technology Limited v Etex Services NV [2023] APO 66
Patent Application: 2018382935

Title:Colored fiber cement products and methods for the production thereof

Patent Applicant: Etex Services NV

Opponent:James Hardie Technology Limited

Delegate:Dr S. J. Smith

Decision Date: 19 December 2023

Hearing Date: Written submissions completed on 5 September 2022

Catchwords: PATENTS – section 59 – opposition to the grant of a patent – grounds of manner of manufacture, inventive step, utility, sufficiency, support and best method – some claims lack inventive step – grounds of manner of manufacture, utility, sufficiency, support and best method not made out – costs awarded against applicant

Representation: Patent attorney for the applicant: Phillips Ormonde Fitzpatrick
Solicitor/patent attorney for the opponent: Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE

Patent Application: 2018382935

Title:Colored fiber cement products and methods for the production thereof

Patent Applicant: Etex Services NV
Date of Decision: 19 December 2023
DECISION
Claims 1, 2 and 5-15 lack inventive step.

Etex Services NV is allowed a period of two months from the date of this decision to propose amendments to overcome this deficiency.
I award costs according to Schedule 8 against Etex Services NV.
REASONS FOR DECISION

Background

Patent application 2018382935 (the application) in the name of Etex Services NV (the applicant) was filed on 12 December 2018 under the provisions of the Patent Cooperation Treaty. The application claims priority from EP 17207105.2 filed on 13 December 2017. The application was advertised as accepted on 3 December 2020.

A notice of opposition to grant was filed on 3 March 2021 by James Hardie Technology Limited (the opponent). The statement of grounds and particulars was filed on 3 June 2021 and, following a request for further and better particulars by the applicant, amended on 3 September 2021 alongside the filing of the evidence in support. The amended statement identifies manner of manufacture, novelty, inventive step, utility, clear enough and complete enough disclosure (sufficiency), support and best method as grounds of opposition. All grounds other than novelty are pressed.
Evidence in support consists of declarations by Peter Pagones (Pagones) with Exhibits PP-01 to PP-13 and Frazer Donald McLennan with exhibits FDM-01 to FDM-14.[1] No evidence in answer was filed.
[1] Mr McLellan is a patent information professional and provides evidence concerning the publications dates of prior art documents annexed to his declaration.
The matter was set for hearing by written submissions. After the completion of the submissions as directed, the applicant filed further submissions. On 20 September 2022, a delegate advised the parties that the submissions for the hearing by written submissions were completed with the filing of the opponent’s submissions in reply and that the filing of further submissions by the applicant was undesirable. Accordingly, the delegate advised the parties that in the event the opponent’s reply submissions and applicant’s further submissions raised issues material to the decision such that any additional submissions were required, provision for further submissions would be made.…

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 66
Decision Date: 19 December 2023

CaseChat Overview and Summary

James Hardie Technology Limited (the opponent) opposed the grant of patent application 2018382935 (the application) in the name of Etex Services NV (the applicant). The application relates to coloured fibre cement products and methods for their production. The opponent argued that the claims of the application lacked inventive step, were not useful, did not comply with section 40 of the Patents Act 1990 (Cth), and were not supported by the specification. The applicant submitted that the opponent had not established any of the grounds of opposition. Dr S. J. Smith (the delegate) found that the opposition was successful in respect of inventive step, but unsuccessful in respect of utility and section 40. The opponent had not established that the claims were not supported by the specification. The applicant was granted a period of two months from the date of the decision to propose amendments to overcome the finding of lack of inventive step. Costs were awarded to the opponent.

Orders