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Metso Sweden AB v Outotec Pty Ltd

Metso Sweden AB v Outotec Pty Ltd

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IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Metso Sweden AB v Outotec Pty Ltd [2019] APO 25

Patent Application: 2014202392

Title:A System and Method for Orientating Scan Cloud Data Relative to Base Reference Data

Patent Applicant:                   Outotec Pty Ltd
Opponent:  Metso Sweden AB
Delegate:  Isaac Tan
Decision Date:  4 June 2019
Hearing Date:  13 March 2019 in Brisbane, QLD

Catchwords: PATENTS – section 59 – orientation of point cloud scan data – comminution of minerals – measurement of wear in a mill – regulation 5.23 considered and allowed – claim construction – essential and inessential integers – demonstration of software packages – novelty and inventive step under section 18 – impermissibly tainted with the benefit of hindsight – no evidence to suggest that the specification does not disclose the best method known to the applicant under section 40(2)(aa) – clarity under section 40(3) – claims are clear – manner of manufacture under section 18(1)(a) – mere collocation – working interrelationship exists – none of the grounds have been made out – opposition unsuccessful – no award of costs – application to proceed to grant

Representation: Applicant
§Scott Vilè, Patent Attorney of Wrays
§Phillip Burns, Patent Attorney of Wrays
Opponent

§Ben Fitzpatrick, Counsel for the Opponent
§Wayne Slater, Patent Attorney of IP Gateway Patent & Trade Mark Attorneys
§Daniel Rosenthal, Patent Attorney of IP Gateway Patent & Trade Mark Attorneys.
§Andreas Hoffmann, IPR Director of Metso Sweden AB
§Lars Furtenbach, Global Manager, RTD & Engineering, Mill Lining Solutions of Metso Sweden AB
§Sandra Lindvall, Patent Engineer of Metso Sweden AB

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2014202392

Title:A System and Method for Orientating Scan Cloud Data Relative to Base Reference Data

Patent Applicant: Outotec Pty Ltd
Date of Decision: 4 June 2019
DECISION
The opposition is unsuccessful. None of the grounds have been made out.
Subject to appeal, I direct that the Application proceeds to grant.
I make no award of costs.
REASONS FOR DECISION
Background

Australian patent application 2014202392 (Application) was filed on 1 May 2014 in the name of Scanalyse Pty Ltd as a divisional of AU 2007335263 and derives a priority date of 20 December 2006. The application is one of a series of divisional applications AU2013251255, AU 2015210442 and AU 2017232061, and lists Michael Paul Stewart, Derek Lichti and Jochen Franke as inventors.
On 3 September 2015, a Notice of Acceptance was issued indicating that the Application had been accepted on 28 August 2015 and is to be advertised in the Australian Official Journal of Patents (Journal) on 17 September 2015. On 17 December 2015, a Notice of Opposition was filed by IP Gateway Patent & Trade Mark Attorneys Pty Ltd on behalf of Metso Sweden AB (Opponent). The Statement of Grounds and Particulars was filed on 17 March 2016 and was amended on 24 December 2018. On 1 June 2016, a request was filed to assign the Application to Outotec Pty Ltd (Applicant). The assignment request was allowed on…

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 25
Decision Date: 4 June 2019

CaseChat Overview and Summary

The Australian Patent Office Delegate Isaac Tan determined that the opposition to Australian patent application 2014202392, titled "A System and Method for Orientating Scan Cloud Data Relative to Base Reference Data," was unsuccessful. The opposition, filed by Metso Sweden AB, was based on several grounds, including novelty, inventive step, clarity, and manner of manufacture. The Applicant, Outotec Pty Ltd, did not file any evidence or submissions, and did not attend the hearing. The Delegate found that none of the grounds for opposition were made out. In terms of novelty, the Delegate found that the invention was not anticipated by the prior art, as the prior art did not disclose a system comprising all the integers of the second element of the claim, designed in such a manner that its normal and intended use must contemplate operating within the environment defined by the parameters of the first element. Regarding inventive step, the Delegate found that the invention had an inventive step in light of the prior art. In terms of clarity, the Delegate found that the claims were clear, and that the terms used were not ambiguous. Finally, the Delegate found that there was a working interrelationship between all the integers of the claimed invention. The Delegate made no award of costs, noting that the Applicant's conduct had cast a veil of uncertainty over the general conduct of the Opposition proceeding, and that the Opponent had to prepare their case with a presumption of what the Applicant may, or could serve in rebuttal.

Orders