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Metso Outotec Sweden AB v FLSmidth A/S

Metso Outotec Sweden AB v FLSmidth A/S

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Case Copied 29 November 2023 75 min read

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Metso Outotec Sweden AB v FLSmidth A/S [2023] APO 60
Patent Application: 2018264756

Title:Roller mill and method of operating a roller mill

Patent Applicant:                   FLSmidth A/S
Opponent:  Metso Outotec Sweden AB
Delegate:  Andrew Burgess
Decision Date:  29 November 2023
Hearing Date:  8 September 2023

Catchwords: PATENTS – opposition to the grant of a patent under s59 – construction – clarity – claims 5 and 12 not clear – s40(2)(b) definition – claims define the invention – s40(3) support – claims are supported as they define the technical contribution – novelty – s7(1)(b) contrast to s7(3)(b) - claims novel – inventive step – claims 1-3, 5, and 7-11 not inventive – utility – claims deliver the promised benefit – opposition successful – applicant given opportunity to amend - costs awarded against the applicant

Representation: Patent attorney for the applicant: Christian Schieber of Griffith Hack Patent & Trademark Attorneys
Counsel for the opponent: Julian Cooke SC
Patent attorney for the opponent: Matthew Lord and Wayne Slater of IP Gateway Patent & Trademark Attorneys

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2018264756

Title:Roller mill and method of operating a roller mill

Patent Applicant: FLSmidth A/S
Date of Decision: 29 November 2023
DECISION
The opposition is successful. Claims 5 and 12 are unclear and do not comply with subsection 40(3). Claims 1-3, 5, and 7-11 do not involve an inventive step.
The Applicant has three (3) months from the date of this decision to file amendments to overcome the deficiencies.
I award costs according to Schedule 8 against the Applicant, FLSmidth A/S.
REASONS FOR DECISION
Background

Patent application 2018264756 was filed by ThyssenKrupp Industrial Solutions AG (ThyssenKrupp) on 5 April 2018 under the provisions of the Patent Cooperation Treaty. The application claims priority from DE102017208014.0 which was filed on 11 May 2017.
Acceptance of the application was advertised on 30 September 2021. Metso Outotec Sweden AB (the Opponent) filed a notice of opposition under Section 59 of the Patents Act 1990 (the Act) on 4 January 2022.
The statement of grounds and particulars (SGP) was filed on 4 April 2022 and was accompanied by citations D1-D10.
On 14 April 2023, a request was filed to record an assignment of a number of applications/patents, including 2018264756, from ThysenKrupp to FLSmidth A/S (the Applicant).
The Grounds of Opposition
The SGP sets out the following grounds for opposing the grant of the patent:
1.Lack of novelty
2.Lack of inventive step,
3.Failure to comply with subsections 40(2) and 40(3),
4.Claims not to a manner of manufacture, and
5.Lack of utility
The Opponent’s submissions[1] narrowed the grounds to:
[1] Opponent’s outline of submissions (OS), summarized at [4].
1.Novelty in light of D1, D2, and/or D3,
2.Inventive step in light of:
i.common general knowledge alone,
ii.common general knowledge and the combined disclosure of D1 and D2,
iii.common general knowledge in combination with D3,
3.Failure to comply with subsections 40(2) and 40(3), and
4.Lack of utility.
Onus

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 60
Decision Date: 29 November 2023

CaseChat Overview and Summary

Metso Outotec Sweden AB opposed the grant of a patent to FLSmidth A/S under section 59 of the relevant legislation. The dispute was heard by the Federal Court of Australia, which was required to determine whether certain claims in FLSmidth's patent application were clear, defined the invention, were supported by the disclosure, novel, involved an inventive step, and had utility. The court was also required to decide whether the opposition was successful and whether costs should be awarded.

The court held that claims 5 and 12 were not clear and did not define the invention as required by section 40(2)(b). However, the remaining claims were clear and defined the invention. The court found that the claims were supported by the disclosure as they defined the technical contribution of the invention. The court held that the claims were novel as they contrasted with the prior art under section 7(1)(b), despite the applicant's argument under section 7(3)(b). The court found that claims 1-3, 5, and 7-11 did not involve an inventive step. However, the court held that the remaining claims delivered the promised benefit and therefore had utility.

The opposition was successful in relation to claims 5 and 12 for lack of clarity and definition, and in relation to claims 1-3, 5, and 7-11 for lack of inventive step. The applicant was given an opportunity to amend the claims. The court awarded costs against the applicant.

Orders