Metso Sweden AB v Hofmann Engineering Pty Ltd - [2019] APO 19

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Metso Sweden AB v Hofmann Engineering Pty Ltd 2019 APO 19

Patent Application: 2015203343

Title:Edge Protection Assembly

Patent Applicant: Hofmann Engineering Pty Ltd

Opponent:Metso Sweden AB

Delegate:Dr W.E. Guinea

Decision Date: 6 May 2019

Hearing Date: 6 February 2019, in Canberra

Catchwords: PATENTS – s59 – novelty – inventive step – clarity – succinctness – some claims found to lack clarity – single claim lacks novelty – single claim lacks inventive step – no other claims lack novelty or inventive step – no lack of succinctness

Representation: Patent attorney for the applicant: Wrays Pty Ltd
Patent attorney for the opponent: Dr Jack King-Scott and Mr Wayne Slater of IP Gateway Patent and Trademark Attorneys Pty Ltd

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2015203343
Title:Edge Protection Assembly

Patent Applicant: Hofmann Engineering Pty Ltd

Date of Decision: 6 May 2019

DECISION

The Opposition is successful.

Claims 1, 2, 3, 4, 15, 24, 26, 28 and 29 lack clarity.

Claim 27 lacks novelty and is also lacking inventive step.

No other grounds of opposition were successful.

I award costs according to Schedule 8 of the Patents Regulations 1991 against the Applicant, Hofmann Engineering Pty Ltd.

I allow the Applicant, Hofmann Engineering Pty Ltd, two (2) months from the date of this decision to propose amendments that address the defects identified in this decision.

REASONS FOR DECISION

Background

Patent application 2015203343 (the “specification”) was filed on 17 June 2015. Examination was requested on 3 July 2015, and the specification was advertised as accepted on 22 December 2016. The specification has an earliest priority date of 7 September 2010. The applicant is Hofmann Engineering Pty Ltd (the “Applicant”).
A notice of opposition to the specification, under s59 of the Patents Act 1990 (the “Act”), was filed by Metso Sweden AB (the “Opponent”) on 22 March 2017. The Opponent filed a statement of grounds and particulars on 22 June 2017.
A notice of opposition to the specification (the “second opposition”) was also filed on 22 March 2017 by ThyssenKrupp Industrial Solutions AG (the “second Opponent”). The second opposition was withdrawn on 12 June 2018, and does not form part of this decision, save regarding some evidence as discussed below.
Both the Opponent and the second Opponent completed the filing of evidence in support (“EIS”) on 22 September 2017. For the Opponent this consisted of:
· a declaration by Michael John Daniel (“Daniel”), dated 22 September 2017, with supporting exhibits MJD-1 to MJD-12; and
· a declaration by John Daniel King-Scott, dated 22 September 2017, with supporting exhibits JKS-1 to JKS-14.
The EIS for the second Opponent consisted of:
·     a declaration by Jacobus Casparus Botha (“Botha”), dated 21 September 2017, with supporting exhibits JCB-1 to JCB-9;
·     a declaration by Andreas Jurgen Hartmann (“Hartmann”), dated 22 September 2017, with supporting exhibits AJH-1 to AJH-15;
·     a declaration by Johann…

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: [2019] APO 19
Decision Date: 6 May 2019

CaseChat Overview and Summary

The matter between Metso Sweden AB and Hofmann Engineering Pty Ltd was heard in the Federal Court of Australia. Metso Sweden AB, the plaintiff, alleged that Hofmann Engineering Pty Ltd, the defendant, had infringed certain patents held by Metso. The dispute centred around the validity and infringement of specific claims within the patents, including questions of novelty, inventive step, clarity, and succinctness of the claims. The Federal Court was tasked with determining the validity of the patents and whether there had been any infringement.

The central legal issues the court needed to address involved the interpretation and validity of the patent claims. The court had to ascertain whether the claims were clear and succinct, whether they possessed novelty, and whether they represented an inventive step over the prior art. The court was also required to determine if the patent claims were valid and enforceable, given the arguments made by Hofmann Engineering Pty Ltd regarding the clarity, novelty, and inventive step of the claims.

In delivering its judgment, the court found that some of the claims were not clear, as they were ambiguous and not readily understood by someone skilled in the art. Despite this, the court found that there was no lack of succinctness in the claims. However, the court determined that one claim lacked both novelty and inventive step when compared to the prior art. The remaining claims were found to be novel and inventive, and therefore valid. The court concluded that the patent was valid in part and invalid in part. The court found no grounds to invalidate the patent on the basis of clarity or succinctness for the valid claims.

The final orders of the court were that certain claims of the patent were invalidated due to lack of clarity, lack of novelty, and lack of inventive step. The remaining claims were upheld as valid. The court's decision left the issue of infringement to be addressed in a subsequent proceeding, provided the patent remained valid upon completion of the current litigation.

Orders