Trackspares (Australia) Pty Ltd v Caterpillar Inc - [2019] APO 47

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Trackspares (Australia) Pty Ltd v Caterpillar Inc. [2019] APO 47

Patent:781193 (2001073400)

Title:Joint Assembly to Resist Galling

Patentee:  Caterpillar Inc.
Opponent:  Trackspares (Australia) Pty Ltd
Delegate:  M. G. Kraefft
Decision Date:  23 October 2019
Hearing Date:  13 August 2019, in Melbourne

Catchwords: PATENTS – opposition under section 104 – allowability of amendments under section 102 – compliance with section 102 as a result of the amendment considered – subsection 40(3) – opponent’s points on lack of clarity, fair basis, succinctness not established as a result of amendment – certain claims found non-compliant with section 102 on other points – proposed amendments refused.

Representation: Counsel for the patentee: Mr Ian Horak
Patent attorneys for the patentee: Ms Daneta Crump and Mr Jason Manakis, FPA Patent Attorneys

Patent attorney for the opponent: Mr Bradley Postma, Spruson & Ferguson

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent:781193 (2001073400)

Title:Joint Assembly to Resist Galling

Patentee: Caterpillar Inc.
Date of Decision: 23 October 2019
DECISION
The opposition is unsuccessful on all points raised by the opponent in this case. On the other hand, claims 4, 5, 7, 8 and 9 are not compliant with subsection 40(3) as a result of the amendment on other points.
The proposed amendments are refused.
There is no award of costs.
REASONS FOR DECISION
BACKGROUND

Patent 781193 is in the name of Caterpillar Inc. (“the patentee”). The patentee filed the application on 11 July 2001 and it was given the application number 73400/01.
Over a two-year period, April 2016 to May 2018, the patent was subject to a number of re-examination reports and proposed amendments.
The patentee filed a statement of proposed amendments, the subject of this opposition, on 24 October 2017. Following the granting of leave to amend by a delegate of the Commissioner of Patents, Trackspares (Australia) Pty Ltd (“the opponent”) filed a notice of opposition to the allowance of the amendments on 31 July 2018. A statement of grounds and particulars in support of the opposition followed on 31 August 2018.
The patentee subsequently made an application requesting dismissal of the opposition. In response, and after further comments from both parties, a delegate of the Commissioner dismissed one ground of opposition, and directed that the opponent provide further and better particulars in respect to two other grounds of opposition. The opponent duly filed an amended statement of grounds and particulars on 5 December 2018 which was subsequently allowed on 4 January 2019.
The parties completed the filing of evidence in respect to the opposition on 12 April 2019.
SPECIFICATION
The specification describes the invention as relating to a joint assembly for connecting a rotating structure together and, more particularly, to an arrangement having a sleeve positioned between rotating members to resist galling.
As background, the specification states that joint assemblies such as a track joint are customarily held together by an interference fit between the ends of a pin and the respective bores of a track link or structure. During use, the joint assembly between track links will receive unequal loading and have a tendency to deflect and bend. The deflection and bending of the track pin relative to the track bushing may result in edge loading on various components. When the components move relative to each other, they may wear or have a tendency to make grooves or gall.
The specification indicates that the present invention is directed to overcoming one or more of the above problems. The specification, as proposed to be amended, ends with 20 claims. Claims 1, 5, 10 and 16 are independent claims. The patentee also proposed commensurate amendments in the descriptive part of the specification.
In the amended statement of grounds and particulars, in evidence and in its submissions, the opponent principally directed attention to the independent claims. These claims are recited below, with the proposed amendments as indicated. Prior to amendment, there are three independent claims. Consequently, the indicated proposed amendments below are related to the current claims as follows:-
(1)proposed claim 1 against current claim 1;
(2)proposed claim 5 against current claim 5;
(3)proposed claim 10 against current claim 12; and
(4)proposed claim 16 against current claim 12.
Claim 1.
A joint assembly adapted to connect a first structure to a second structure, the joint assembly comprising:
a sleeve positioned within the first structure, the sleeve having a first end portion, a second end portion, an intermediate portion and a bore extending therethrough;
~~an insert~~ first and second inserts being positioned within the bore of the first and second end portions of the sleeve, respectively, each of the inserts having an inner diameter and an outer diameter wherein the surface at the outer diameter of each insert has a crown shape; and
a pin positioned within the second structure and being disposed within the inserts and the intermediate portion of the sleeve ~~and the insert~~.
Claim 5.
A joint assembly adapted to connect a first structure to a second structure, the joint assembly comprising:
a sleeve positioned in the first structure, the sleeve having a first end portion, a second end portion, an intermediate portion and a stepped bore extending therethrough;
the bore in the first and second end portions having a first predetermined inner diameter and the bore in the intermediate portion having a second predetermined inner diameter ~~being~~ wherein the second predetermined inner diameter of the intermediate portion is smaller in magnitude than the first predetermined inner diameter of the first and second end portions;
an inserts positioned within the bore of the first and second end portions of the sleeve, the inserts having a predetermined inner diameter smaller in magnitude than the first and second predetermined inner diameters of the sleeve, the insert having an outer diameter, a first side surface, a second side surface; ~~and being positioned within the bore of the end portions of the sleeve;~~ ~~and~~
a pin disposed within the insert and the intermediate portion of the sleeve ~~and the insert~~, the pin being positioned within the second structure; and wherein sliding rotation occurs between the insert and the sleeve.
Claim 10.
A track joint assembly adapted to connect a track chain together, the track chain having a first pair of spaced track links and a second pair of spaced track links, the track joint comprising:
a track bushing extending between the first pair of spaced links, the track bushing having a first end portion, a second end portion, an intermediate portion and a stepped bore extending axially therethrough;
a track pin extending between the second pair of spaced links, and
an insert around the track pin being positioned between the track pin and the track bushing; wherein the insert is free floating between the track pin and the track bushing.
Claim 16.
A track joint assembly adapted to connect a track chain together, the track chain having a first pair of spaced track links and a second pair of spaced track links, the track joint assembly comprising:
a track bushing extending between the first pair of spaced track links, the track bushing having a first end portion, a second end portion, an intermediate portion and a stepped bore extending axially therethrough;
a track pin extending between the second pair of spaced track links, and
an insert around the track pin being positioned between the track pin and the track bushing, wherein sliding rotation occurs between the insert and the track bushing.
It may be noted that proposed claims 10 and 16 differ, in the main, only in respect to each of their last clauses.
APPLICABLE LAW
As a consequence of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Raising the Bar Act”), there are substantial changes to the Patents Act 1990 (“the Act”). The date of effect of those changes was 15 April 2013. The application of the Raising the Bar Act in the present case depends on the date of the request for examination. The patentee filed its request for examination on 14 October 2003. Consequently, the Patents Act as in force before 15 April 2013 applies in the present case.
This means the former standard for opposition proceedings applies and the opponent bears the onus of establishing that it is clear or practically certain that the amendment should not be allowed (by analogy F Hoffman-La Roche AG v New England Biolabs Inc [2000] FCA 283; 50 IPR 305 at 311, 319; Commissioner of Patents v Sherman [2008] FCAFC 182; 79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at [17]).
Section 102 governs the allowability of amendments. At the relevant time, section 102 read as follows:-
(1)An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.
(2)An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
(b) the specification would not comply with subsection 40(2) or (3).
Subsection 102(2A) stated that, for the purposes of subsection (2), “relevant time” means after the specification has been accepted.
Relevantly to this case, the pertinent part of section 40, at the relevant time, read as follows:-
(3)The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
The expression “as a result of the amendment” has been considered on many occasions. In RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (“RGC”), [1998] FCA 1358, 89 FCR 458 at page 466, Carr and Goldberg JJ discussed subsection 102(1) as it stood at the time.
“That subsection requires one first to identify precisely what is the amendment. In this case that is done by identifying the difference between the specification as accepted … on the one hand and, on the other hand, as the specification would read if amended in the manner sought. Then one reads the specification as a whole (as so amended in the manner sought) to see whether as a result of the amendments sought (which must mean by reason of the amendment sought) the specification would claim matter not in substance disclosed in the specification as filed. The subsection focuses on the amendment proposed and it must be that amendment which has the result of pushing the claimed matter over the line defined by the expression ‘matter not in substance disclosed in the specification as filed’. The key point to keep in mind is, as counsel for the respondent contended (in our view correctly), that the words ‘as a result of the amendment’ are not to be confused with the expression ‘after the amendment’.
Pre-existing defects in the specification are not relevant in considering the allowability of amendments under section 102. As noted by Bennett J in Apotex Pty Ltd v Les Laboratoires Servier (No 2), (“Apotex”), [2009] FCA 1019 at [28]:-
“There may be deficiencies in the (existing) complete specification or lack of compliance with s40 which do not fall for consideration at this time. The question is whether, as a result of the introduction of the proposed new claims, the amendments are not allowable because of the requirements of s102.”
In summary, it is the difference between the specification as it stands and as it is proposed to be amended that must be considered.
STATEMENTS OF GROUNDS AND PARTICULARS
In both, the original and the amended, versions of the statement of grounds and particulars, the opponent stated the grounds of opposition to simply be that the amendment was not allowable under section 102. In various correspondence, for example the official letters of 8 October 2018 and 21 November 2018, it would appear the applicable grounds were interpreted to be the sub-headings under the opponent’s heading of particulars.
Thus, the remaining grounds in the amended statement of grounds and particulars are lack of clarity, succinctness and fair basis (subsection 40(3)). The opponent provided detailed particulars under each of these grounds.
For completeness, it may be noted that the above-mentioned dismissed ground was that of a claim not in substance falling within the scope of the claims of the specification before amendment (subsection 102(2)(a)).
EVIDENCE IN SUPPORT
The opponent filed evidence in support from Mr Bradley Oats. Mr Oats is the managing director of the opponent. He has more than 20 years of experience in the earthmoving track industry.
In his declaration, Mr Oats objected to the proposed claims on the above-mentioned subsection 40(3) grounds. He initially expressed surprise that the claims, as proposed to be amended, had been deemed satisfactory in the final re-examination report. Noting that the re-examination report deemed the amended claims to involve an inventive step in the light of the features of an insert having a crown-shape and being free-floating, Mr Oats stated that those terms were unclear to him and unfamiliar. He thus questioned the validity of the patent.
Mr Oats further took issue with the increase in the number of independent claims. He indicated that they relate to different combinations of features using similar yet different terminology which made the patent scope extremely hard to determine.
Finally, Mr Oats suggested the point of the invention of a reduction of galling was not achieved by the claimed combination of features.
EVIDENCE IN ANSWER
The patentee filed evidence in answer from Mr Kevin Steiner. Mr Steiner is named as the large track-type-tractor undercarriage engineering manager of the applicant. He has more than 20 years of experience in the field of tracked earthmoving machines.
In his declaration, Mr Steiner considered the terms “crown shape” and “free-floating”, and defined those terms as understood in the general field of mechanical engineering and in the context of the present specification. He thus concluded that those terms would be readily understood by those of relevant skill in the art.
On the point of the invention, Mr Steiner stated that the specification describes two solutions beneficial to the reduction of galling. The first solution is to provide an insert with a crown shape. This reduces edge loading on the components. The second solution is to provide an insert that is free floating. This allows sliding motion at either the inner or outer diameter of the insert. Mr Steiner thus concluded that each of the independent claims, as proposed to be amended, was consistent with the invention described.
EVIDENCE IN REPLY
The opponent filed evidence in reply from Mr Oats and from Mr Bradley Postma, the attorney representing the opponent.
Mr Oats responded to the evidence in answer by stating he could not find Mr Steiner’s clarifications of the terms “crown shape” and “free floating” in the claims. Mr Oats further stated that, in reality, both of the foregoing elements are required to stop galling of the sleeve and thereby increase the life of the chain.
Mr Postma stated, with reference to an unrelated innovation patent, that patentees can construct claims one way in obtaining patents and then construct the claims completely differently in seeking to enforce them. He indicated that unclear claim terms increase the likelihood of this problem occurring.
DISCUSSION
The opponent’s case principally rested on assertions of the amended claims’ non-compliance with subsection 40(3) in general, as though this were an opposition to the grant of a patent. For a general complaint of such nature, section 102 would not appear to provide the full remedy sought by the opponent in this case. Any deficiencies in the claims can only be addressed under section 102 if those deficiencies arise as a result of the amendment.
In seeking to bring the opponent’s case more in line with the requirements of section 102 at the hearing, the opponent principally submitted that, because the claims and particularly the independent claims are amended, any deficiencies therein are as a result of the amendment. This is tantamount to suggesting again that the test is whether the amended claims are compliant with section 40. In this respect though, the last sentence from the above extract from RGC is crucial. That is, in the present context, it is not a question of whether the amended claims are non-compliant. It is whether the alleged non-compliance is as a result of the amendment. As indicated in Apotex, pre-existing deficiencies are not relevant. In some respects, the opponent’s case regarding section 102 appeared difficult from the outset.
Clarity
For instance, the opponent submitted that there was lack of clarity in the terms “crown shape” and “free floating”. On the other hand, these terms exist in the claims prior to amendment, for example in claims 6, 7, 15, 16 and 18. Thus, this alleged deficiency is present in the claims before amendment. Consequently, even if there is a lack of clarity, it is not as a result of the amendment.
In any case, and assuming there may have been an initial lack of clarity with those terms, I would note the comments of Sheppard J in Décor Corporation Pty Ltd v Dart Industries Inc., [1988] FCA 399, (1988) 13 IPR 385 at 400 [14]. Relevantly to the present matter, if an expression in a claim is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of the words used in the claim. Moreover, Middleton J stated in Eli Lilly and Company Limited v Apotex Pty Ltd, [2013] FCA 214, at [139] as follows:-
“It is well settled that the Court should, from the outset, approach the task of patent construction with a generous measure of common sense. The Court must place itself in the position of a person skilled in the relevant art, being the subject matter of the patent. From this perspective, the patent is to be read as a whole, in the context of the specification and in light of the prevailing common general knowledge and state of the relevant art at the priority date.”
In respect to the crown shape, the specification describes the outer surface diameter 52 of the insert 20 having a crown shape 58 (page 4 lines 24 and 25). Figures 1 and 2 clearly show that outer surface diameter in the form of a domed surface in cross-section. Mr Steiner, in evidence in answer and in analysing the context of the specification and relying on his experience, similarly described the crown shape to mean that the insert is a curved element that has a central part that is higher than its edge parts. I find that the meaning of crown shape, in the present context, would have been readily resolved by the relevant person skilled in the art at the relevant time.
The free-floating feature is described in the specification at page 4 lines 15-18. The insert 20 is free floating positioned around the pin 18 and within the first diameter 38 of the bore 36 and in the end portions of the bushing 16. Mr Steiner stated that, upon reading the specification, the manner in which the insert was free-floating, would be readily apparent to those of relevant skill in the art. He stated the insert was free-floating in the sense that it was not fixedly connected to any particular component, and was free to rotate about the pin. In a similar way to the resolution above, I find that the meaning of free-floating, in the present context, would have been readily resolved by the relevant person skilled in the art at the relevant time.
Where the above meanings are resolved and understood, it becomes unnecessary to spell them out in the claims.

I find there is no lack of clarity in the above terms in the proposed claims.
Fair Basis
In respect to fair basis, the opponent submitted that the specification makes it clear that both the crown-shaped and the free-floating features are necessary to reduce galling. The opponent referred to Mr Steiner’s evidence and the specification, as filed, in support. The opponent also referred to Mr Oats’ evidence in reply where he indicated that galling would still occur with only one of the features. Consequently, the opponent concluded that, because none of the independent claims included both the crown-shaped and the free-floating features necessary to reduce galling, the claims were not fairly based.
The patentee firstly submitted this complaint did not pass the test of being as a result of the amendment. Secondly, the patentee further submitted that the specification did not limit the invention in the manner contended by the opponent. The patentee stated the specification, together with Mr Steiner’s evidence, made it clear that the galling problem is overcome either by using a crowned surface or by having a free-floating insert. The fact that the best method may involve both features did not constrain the patentee to require both in every independent claim.
The crown-shaped and the free-floating features are absent from the independent claims before amendment. Thus, the alleged deficiency is present before amendment. Consequently, even if there is a lack of fair basis on this point, it is not as a result of the amendment.
It may also be noted that the proposed amendments do not remove anything of substance from the independent claims, as they stand before amendment, and that the additional independent claim 16 is also within the scope of the claims before amendment. Thus, regardless of what the essential features of the invention may be, if any essential feature is absent after amendment, then it is also absent before amendment. Consequently, if there is a lack of fair basis due to the absence of any essential feature, again it is not as a result of the amendment.
Succinctness
In asserting a lack of succinctness in the amended claims, the opponent noted the addition of a fourth independent claim 16 and suggested the same features in the four independent claims are expressed with a wide variety of different terms and repetitious language, contrary to the principles from Sabre Inc v Amadeus Global Travel Distribution SA (“Sabre”), [2004] APO 21.
From [16] and [17] of the Sabre decision, it would appear there were two principal issues. The first was the inability to find the main, or even an essential, feature of the inventive concept common to all the seventeen different aspects described or to all the independent claims. Secondly, the language that could in hindsight be said to encompass that feature in the claims varied so widely that it became unrecognisable. At [17] of Sabre, the delegate stated as follows:-
“While the number of claims, and particularly the number of independent claims, in this case would readily suggest undue prolixity given the nature of the invention said to be described, one ought to be cautious in applying arbitrary limits to the applicant’s legitimate freedom to draft claims that meet the requirements of the Act. … However, it has long been accepted that claims will not be clear and succinct if their repetitious nature is such the difference in scope between two or more claims is not readily apparent, (see Bancroft’s Application, (1906) 23 RPC 89).”
In Metso Sweden AB v Hofmann Engineering Pty Ltd, [2019] APO 19, the delegate stated effectively the same thing. At [293]:-
“Firstly, I note that the fact that the invention could be defined via a smaller number of independent claims does not give rise to a lack of succinctness per se. Secondly, the fact that the differences in scope are small does not automatically give rise to a lack of succinctness. The question is whether the difference in scope is readily apparent.”
In the first instance, the present opponent noted that claim 10 defines that the insert is free floating between the track pin and the track bushing whereas claim 16 defines that sliding rotation occurs between the insert and the track bushing.
The free floating and the sliding rotation features may be similar in terms of indicating the capacity and the nature of movement between the insert and the track bushing. Notably though, the free-floating feature may also be said to be the mechanism to assist in readily enabling various forms of movement between components. In proposed claim 10 for example, that mechanism is defined. In proposed claim 16, the nature of movement is defined, specifically sliding rotation. I find this is a case of different terminology defining different features. The difference in scope is readily apparent.
The opponent further suggested that the entire remaining portions of claims 10 and 16 are identical and thus submitted the claims are plainly repetitious and lack succinctness. While it may be that much of claim 10 is repeated in claim 16, this is an issue between just two claims in the present case and cannot be said to create the level of complexity or confusion as in the Sabre case. In any case, as indicated above, the difference in scope between claims 10 and 16 is readily apparent.
The opponent also noted that claim 5 defines a sleeve while claim 16 defines effectively the same feature as a bushing. While that may be so, it involves just two further terms across the four independent claims. In any case, it may also be said that the track bushing, as defined in claims 10 and 16, is a narrower form, in scope, of the sleeve of claims 1 and 5. Again, the difference is scope is readily apparent.
I find there is no lack of succinctness of the claims as a result of the amendment.
Other Sub-Section 40(3) Issues
At the hearing, I raised some other concerns of possible non-compliance of principally claim 5, as proposed to be amended, with subsection 40(3) as a result of the amendment. I allowed the patentee the opportunity to file further submissions on those points. The patentee chose to file a further statement of proposed amendments. This led to a number of questions, put to both parties, as to how the present opposition could be further progressed. In response, the patentee withdrew that statement, and filed further submissions on the subsection 40(3) matters.
The patentee submitted that a practical and common sense reading of the specification would, if there were any ambiguity, be resolved by the person skilled in the art. More specifically, the patentee submitted that the wording “inserts” in proposed claim 5 needed to be considered in light of the disclosure in the specification as a whole. If there was ambiguity in the scope then a person reading the specification would give meaning and be guided to identifying two inserts. The patentee referred to Figure 1 clearly illustrating two inserts, each one located within the bore in respective end portions of the bushing or sleeve, and to a passage in the description describing the inserts within the bore in the end portions. On this basis, the patentee stated that a reference to “inserts” in claim 5 should be understood as a reference to two inserts.
Furthermore, the patentee submitted that the primary test for fair basis was simply whether the claims are consistent with what the specification as a whole describes as the invention, citing Ipsen Pharma S.A.S. v Allergan, Inc., [2012] APO 21 at [46]. The patentee stated the invention described is an assembly which reduces galling either by shape or relative movement of an insert, and that the language of claim 5 is not inconsistent with this. By example, the patentee indicated it may be inconsistent to dispense with an insert altogether, but that it would not be inconsistent with the invention to have, in one embodiment, three or more inserts.
The above submissions themselves appear to be inconsistent. On one hand, the patentee argues that the reference to “inserts” in claim 5 should be understood as two inserts. On the other hand, the patentee argues that claim 5 is fairly based even for three or more inserts. Moreover, the patentee relies on the person skilled in the art taking guidance from the specification as a whole to resolve any ambiguity in scope. On the latter point though, the meaning of “inserts”, on the face of claim 5, is quite clear and unambiguous. There is no constraint as to what that multiple might be. The meaning is open to any multiple number of inserts. It may also be noted from Décor v Dart, again at [14] by Sheppard J, as follows:-
“It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way, it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification.”
Proposed claim 5 simply defines inserts positioned within the bore of the first and second end portions of the sleeve. On the other hand, the specification envisages no more than first and second inserts positioned within the bore of the first and second end portions of the sleeve, respectively. I conclude that claim 5 is not fairly based on this point as a result of the amendment.
In regard to recitations in the claims of “the insert” in the singular, the patentee further submitted that the proper construction of that term was a reference to each insert. Moreover, the patentee again noted the correct principles were to read the claims in the context of the specification as a whole. In this respect, the authorities countenance the possibility of a potential ambiguity which can be resolved in that manner by taking a common-sense approach. The patentee submitted the present claims can be interpreted precisely in that manner.
Following the definition in proposed claim 5 of multiple inserts, claim 5 subsequently refers, in at least three places, to “the insert” in the singular and having a number of additional features and a number of interrelationships with other structural features of the claim. While it is possible to identify what the patentee may have intended, the present definition is not clear in the context of the claim’s earlier definition of multiple inserts and in the context of whether one or each insert has the additionally defined features and interrelationships. I conclude that claim 5 is not clear as a result of the amendment. The same applies with the expression “the insert” in dependent claims 4, 7, 8 and 9.
CONCLUSION
The opposition is unsuccessful on all points raised by the opponent in this case. On the other hand, I have found that claims 4, 5, 7, 8 and 9 are not compliant with subsection 40(3) as a result of the amendment on other points. I refuse the proposed amendments.
COSTS
Both parties sought costs. While the opposition is unsuccessful on the points raised by the opponent, the proposed amendments are nonetheless refused on other points in this case. In these circumstances, I make no award of costs.
M. G. Kraefft
Delegate of the Commissioner of Patents