Technological Resources Pty Limited v Tettman

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FEDERAL COURT OF AUSTRALIA

Technological Resources Pty Limited v Tettman [2018] FCA 1770

File number: VID 436 of 2018
Judge: MIDDLETON J
Date of judgment: 13 November 2018
Date of publication of reasons: 15 November 2018
Catchwords: PATENTS – application to amend patent – whether proposed amendments allowable under section 102 of the Patents Act 1990 (Cth) – scope of claim not broadened – application allowed.
Legislation:

Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)

Patents Act 1990 (Cth) ss 102, 105(1A)
Cases cited:

Bristol-Myers Squibb Co v Apotex Pty Ltd (2010) 87 IPR 516

Tettman v Technological Resources Pty Limited [2018] APO 22

Date of hearing: 13 November 2018
Registry: Victoria
Division: General Division
National Practice Area: Intellectual Property
Sub-area: Patents and associated Statutes
Category: Catchwords
Number of paragraphs: 31
Counsel for the Appellant: Mr C Dimitriadis SC with Mr J S Cooke
Solicitor for the Appellant: MinterEllison
Counsel for the Respondent: Ms C Cunliffe
Solicitor for the Respondent: Herbert Smith Freehills

ORDERS

VID 436 of 2018
BETWEEN:

TECHNOLOGICAL RESOURCES PTY LIMITED (ACN 002 183 557)

Appellant
AND:

RAYMOND LUDWIG JOHN TETTMAN

Respondent

JUDGE:

MIDDLETON J

DATE OF ORDER:

13 NOVEMBER 2018

THE COURT ORDERS THAT:

1.Pursuant to section 105(1A) of the Patents Act 1990 (Cth), the claims of Australian Patent Application No. 2011261171 (the ‘Patent Application’) be amended in the form indicated in ‘Annexure A’ to these orders.

2.By Monday 10 December 2018, the Respondent file and serve a statement of the grounds and particulars of his opposition to the grant of a patent on the Patent Application.

3.By Friday 1 March 2019, the Respondent file and serve his evidence in chief.

4.By Friday 31 May 2019, the Appellant file and serve its evidence in answer.

5.The proceedings be listed for further case management hearing at 10.15am on 7 June 2019.

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Annexure ‘A’


REASONS FOR JUDGMENT

MIDDLETON J:

Introduction

  1. On 13 November 2018 and on the motion of the Appellant who is the patent applicant in this proceeding, I ordered that pursuant to s 105(1A) of the Patents Act 1990 (Cth) (the ‘Act’), the claims of Australian Patent Application No. 2011261171 (‘171 Application’) be amended in the form indicated in ‘Annexure A’ of the orders.  These are my reasons for making that order.

  2. The contest before me arose as a result of an objection raised by the Commissioner of Patents (the ‘Commissioner’) in relation to whether the Appellant’s application to amend its 171 Application is allowable pursuant to s 102 of the Act.

  3. I have had the benefit of written submissions prepared by counsel for the Appellant, Mr Dimitriadis SC and Mr Cooke, and in preparing these reasons I have substantially adopted those submissions.

    Relevant background

  4. On 7 September 2015, the 171 Application was accepted by IP Australia.

  5. On 24 December 2015, Mr Tettman, the Respondent in this proceeding, filed a…

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Details
Case
[2018] FCA 1770
Decision Date

CaseChat Overview and Summary

In this case, Technological Resources Pty Limited (Appellant) sought to amend their patent application, which was opposed by Tettman (Respondent). The court was tasked with determining whether the proposed amendments to the patent application were allowable under section 102 of the Patents Act 1990 (Cth). The amendments sought to narrow the scope of the claims, particularly by incorporating a specific feature found to be novel by a delegate of the Commissioner. The central issue was whether the proposed amendments expanded the scope of the patent claims beyond what was disclosed in the original application.

The court examined the nature and effect of the proposed amendments, focusing on whether they broadened the scope of the claims or introduced new matter. It was held that the amendments did not broaden the scope of the claims, as both the original and proposed claims related to methods concerning mined ore. The amendments merely refined the scope by introducing specific features and renumbering the claims. The court found that the proposed amendments were allowable as they did not capture any infringement that the unamended claims would not.

Given the court's determination that the proposed amendments were allowable and did not broaden the scope of the claims, the court allowed the Amendment Application. The decision was made in light of the Commissioner's position and the absence of any opposition to the Amendment Application. The court's reasoning was based on the premise that the amendments were within the scope of the original disclosure and did not introduce any new matter.

The court made specific orders to amend the claims of the patent application as indicated in Annexure A. It also set a timeline for the Respondent to file and serve a statement of opposition, evidence in chief, and the Appellant to serve its evidence in answer. The proceedings were listed for a further case management hearing. The entry of orders was in accordance with Rule 39.32 of the Federal Court Rules 2011.

Orders

Orders of the court

1. Pursuant to section 105(1A) of the Patents Act 1990 (Cth), the claims of Australian Patent Application No. 2011261171 (the ‘Patent Application’) be amended in the form indicated in ‘Annexure A’ to these orders.

2. By Monday 10 December 2018, the Respondent file and serve a statement of the grounds and particulars of his opposition to the grant of a patent on the Patent Application.

3. By Friday 1 March 2019, the Respondent file and serve his evidence in chief.

4. By Friday 31 May 2019, the Appellant file and serve its evidence in answer.

5. The proceedings be listed for further case management hearing at 10.15am on 7 June 2019.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

Annexure ‘A’

Background

Background to the litigation

I have had the benefit of written submissions prepared by counsel for the Appellant, Mr Dimitriadis SC and Mr Cooke, and in preparing these reasons I have substantially adopted those submissions.Relevant background On 7 September 2015, the 171 Application was accepted by IP Australia. On 24 December 2015, Mr Tettman, the Respondent in this proceeding, filed a Notice of Opposition opposing the grant of the 171 Application (‘Opposition’). A delegate of the Commissioner (the ‘Delegate’) decided the Opposition in Tettman v Technological Resources Pty Limited [2018] APO 22. On 17 April 2018, the Appellant filed a Notice of Appeal in this Court appealing the whole of the Delegate’s decision. A separate opposition was also brought by the Commonwealth Scientific and Industrial Research Organisation (‘CSIRO’). The Appellant’s appeal from the Delegate’s decision in the CSIRO’s opposition was allowed by orders of the Court made on 19 June 2018 in proceeding VID 434 of 2018. Pursuant orders made by consent in this proceeding on 7 June 2018, the Appellant filed an interlocutory application to amend the claims of the 171 Application (‘Amendment Application’) on 6 July 2018 and a supporting affidavit of Robert Kelvin Cooper sworn on the same date (‘Cooper Affidavit’). The Amendment Application was made pursuant to s 105(1A) of the Act. The Respondent indicated that it did not oppose the Amendment Application. The amendments were advertised by IP Australia in the Australian Official Journal of Patents on 23 August 2018. No person opposed the Amendment Application in response to that advertisement.Nature of the proposed amendments The Appellant explained that, as set out in the Cooper Affidavit, the Amendment Application sought to narrow the issues in dispute by narrowing the scope of the claims of the 171 Application by reference to, among other things, a feature defined in existing claim 35 (namely, “wherein the grade assessment [in the method] is a direct assessment of the grade”), which was found by the Delegate to be novel. The proposed amendments were annexed to the Amendment Application. They included the deletion of various claims, the incorporation of various limiting features into the remaining claims, the introduction of further dependent claims, and some renumbering and restructuring of claims for future ease of reference.Disputed proposed amendments Relevantly, the amendments also included a change to existing claim 23 (which becomes independent claim 19 following the renumbering proposed in the Amendment Application) which was proposed to be amended as follows:A method of separating a mined material ore as described herein that comprises:(a)reducing the size of mined ore in a crushing step and producing a crushed ore having a primary crushed ore particle size;(b)assessing the grade of successive segments of the crushed ore by direct assessment of grade as the crushed ore is transported along a pathway the mined material, and(c)separating each segment of the crushed ore on the basis of grade of the segment into a category that is at or above a first grade threshold or a category that is below the first grade threshold by dry sorting the segment; and(d)processing at least one separated segments in a downstream processing plant and producing upgraded material.

Evidence

Evidence Before The Court

Full text does not contain this section.

Decision

Reasons for decision

In the circumstances, the proposed amendments in substance fall within the scope of the claims before amendment. The proposed amendments would not capture an infringement that the unamended claims would not. That is, both the unamended claims and proposed amended claims capture particular methods and apparatuses that concern mined ore. The unamended claims are broader than the proposed amended claims because they capture “mined material” which is not “mined ore” (for example mined coal).Conclusion In light of the above, I find that the proposed amendments are allowable pursuant to s 102(2)(a) of the Act. In those circumstances, and given the Commissioner’s position and the fact that the Amendment Application has not been opposed, the Amendment Application is allowed pursuant to s 105(1A) of the Act.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.