Uon Pty Ltd v Berkshire Renewable Energy Pty Ltd - [2023] APO 15

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Uon Pty Ltd v Berkshire Renewable Energy Pty Ltd [2023] APO 15

Innovation Patent: 2021107610

Title:Generator with automated fuel tank selector system

Patentee:  Berkshire Renewable Energy Pty Ltd
Opponent:  Uon Pty Ltd
Hearing Officer:  Dr N. R. Madsen – Deputy Commissioner of Patents
Decision Date:  8 March 2023
Hearing Date:  Written submissions completed 27 January 2023

Catchwords: PATENTS – section 210 – request for production of documents – whether the documents are likely to be of substantial relevance to the matter – substantial relevance not established – notice to produce refused

Representation: Counsel for the opponent: A. D. B. Fox
Patent attorneys for the opponent: Armour IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovation Patent: 2021107610

Title:Generator with automated fuel tank selector system

Patentee: Berkshire Renewable Energy Pty Ltd
Date of Decision: 8 March 2023
DECISION
I refuse to issue a notice to produce.
REASONS FOR DECISION

This matter concerns a request by Uon Pty Ltd (Uon) for orders under section 210 of the Patents Act 1990 (the Act) for the production of documents for the purpose of an opposition under section 101M.
Background
Patent application 2021107310 was filed in the name of Berkshire Renewable Energy Pty Ltd (Berkshire) on 16 November 2021 as a divisional application of 2021215197 itself filed on 11 August 2021 (this date also being the earliest priority date). It was examined and subsequently certified on 30 March 2022. Following certification, Uon filed a notice of opposition asserting grounds of a lack of novelty and innovative step. The case asserted in the statement of grounds and particulars is rather straight forward in that it poses that the invention is not novel and or not innovative in light of a publicly available operation manual and the supply of a particular variable speed dewatering trailer mounted assembly.
Evidence in support and answer was filed and shortly following the completion of evidence in answer Uon filed a request for a notice to produce (3 October 2022). The request was subject to modification and numerous exchanges with a delegate of the Commissioner of Patents who was ultimately not convinced that a notice to produce should issue. On 25 November 2022, Uon requested a hearing in regard to the delegate’s decision.
The Patent Application
The specification relates to generators for producing electrical power and, more particularly, to a variable speed generator that comprises multiple fuel tanks and an automated fuel tank selector system. As noted in the specification at [0003]:
An engine-generator includes a fuel tank that is normally integrated into the housing or trailer structure that the engine-generator is mounted to. For many applications, it is necessary for the generator to produce an uninterrupted and continuous supply of power over a long period of time. If the fuel in the tank is used up during this period, then the generator stops operating. Some engine-generators are, therefore, provided with a second fuel tank that is detachably connectable to the generator's engine. The second fuel tank provides an additional source of fuel that can be disconnected, replenished and reconnected to the generator during use as required. When the second fuel tank has been depleted of fuel or is disconnected from the generator, the generator's engine can then use fuel from the first (onboard) fuel tank until fuel subsequently becomes available from the second fuel tank. To allow this to happen, the generator typically includes a manually-operated mechanical switchover valve that a human operator uses to cause the engine to extract fuel from the first fuel tank instead of the second fuel tank. Requiring an operator to perform this task is inefficient and consumes human resources that could be used for other, more-useful purposes. If the operator is not available to perform the switchover, or fails to notice that the second tank is near to being depleted, then the generator can become starved of fuel and cease to operate.
Independent claim 1 reads as follows:
An electrical generator, comprising:
an internal fuel tank and an external fuel tank, each of the fuel tanks being arranged to supply fuel to an engine of the electrical generator;
an actuable valve assembly fluidly connected to the engine and to the internal fuel tank, wherein the actuable valve assembly is also detachably fluidly connectable to the external fuel tank and is operatively switchable between a first and a second operating mode, wherein in the first operating mode the actuable valve assembly supplies fuel from the internal fuel tank to the engine, and wherein in the second operating mode the actuable valve assembly supplies fuel from the external fuel tank to the engine;
a sensor configured to output sensor information corresponding to a level of fuel in the external fuel tank; and
a system controller connected to the actuable valve assembly and to the sensor, wherein the system controller is configured such that:
when the external fuel tank is fluidly disconnected from the actuable valve assembly, the system controller causes the actuable valve assembly to operate in the first operating mode only; and
when the external fuel tank is fluidly connected to the actuable valve assembly, in response to the sensor information the system controller causes the actuable valve assembly to operate in the second operating mode when a level of fuel in the external fuel tank is at or above a predetermined level, and to operate in the first operating mode when the level of fuel is below the predetermined level.
The invention relates to an automated switch over mechanism from external to an internal fuel tank. This gives a generator more capability to run for longer, and addresses the issues associated with manual change over of fuel tanks. The invention clearly relates to the operation of a generator, and for that matter, what can be considered internal operation, or operational function.
The Notice to Produce
As I have already noted, on 3 October 2022 Uon made an initial request for a notice to produce. That request referred to a declaration filed as evidence in answer by Steven Vose of Allied Pumps Pty Ltd, which states at [9] that a system supplied to BHP included the features described in each of claims 1, 2, 3, and 5 of the patent. The request also stated:
“The Evidence in Support demonstrates that the system was supplied prior to 26 November 2020. This is prior to the priority date of the opposed application, but within twelve months of the filing date. It can be presumed, therefore, that the patent applicant will argue that the information made available by the supply of the system should be disregarded under the operation of Section 9(e) and/or Section 24(1)(b).”
Documents requested included a broad list encompassing: shipping documents, purchase order, invoices, manuals, factory acceptance procedure, and email correspondence regarding the use of an external fuel tank in relation to the supplied system. The delegate was not satisfied that a notice to produce should issue, pointing out as a starting point, that information made public prior to 11 August 2020 may be suitable for a notice to produce to the extent that it would not be subject to the grace period[1]. The delegate also noted that s 9(e) was not relevant to the present matter as no case was put forward by Uon as to invalidity via secret use[2].
[1] Section 24(1) provides that for the purposes of deciding whether an invention is novel or involves an inventive/innovative step, any information made publicly available by, with or without the consent of the nominated person or the patentee, or their predecessor in title, within 12 months before the filing date of a complete application, must be disregarded. This 12-month period is referred to as the "grace period”.
[2] Section 9(e) provides for an exclusion to the secret use of a patent application as a ground of invalidity in the circumstance that a complete application is made within 12 months of the first use of the invention that would have constituted secret use.
Uon responded with a modified request for a notice to produce appearing to speculate that supply of the relevant system may have occurred prior to 11 August 2020. They requested any shipping documents listing dispatch and/or receipt of the system. The delegate responded noting that in the present circumstances, it did not appear substantially likely that mere supply of the system constituted an act (prior use) that could provide a “clear and unmistakable direction to the working of the invention”. The delegate pointed to contrasting cases for disclosure by prior use:
“See for example Load and Move Pty. Ltd. v Australian Mobile Mining Equipment Systems and Accessories Pty. Limited [2017] APO 23; 131 IPR 202 at 89-90, 156-157, where the features at issue are clearly visible from simple inspection of the prior use; contrast with Oakmoore Pty Ltd v ARB Corporation Limited [2019] APO 29 at 84-89 where it was not visible due to the features of interest being covered in the prior use.”
The delegate noted that:
“At this stage, I am of the view that it appears rather unlikely that someone could directly perceive the features of the invention by merely looking at the Dewatering Trailer, since the relevant features are details of its operation – the switching between external and internal tanks based on sensed conditions – which prima facia would only be apparent from operation of the Dewatering Trailer or detailed study of its internal components. Since the Evidence in Support (“EIS”) establishes that the Opponent was brought on site to commission the Dewatering Trailer, it would seem that there was no operation of the Dewatering Trailer prior to that point, and merely providing evidence of supply would not appear to demonstrate otherwise.”
After further correspondence between Uon and the delegate, the delegate’s position regarding the nature of the potential prior use in the context of the invention remained. The delegate was of the opinion that, in the circumstances, it appeared that mere proven supply prior to the grace period date could not demonstrate features regarding the operation of the system such as to be substantially likely to be decisive in the opposition. Following the delegate’s correspondence to this effect on 21 November 2022, Uon requested to be heard. With their request to be heard Uon filed the following modified list of documents sought to be produced.
Category 1:Any shipping or delivery document which records the date of receipt of Dewatering Trailer Number TAO858 (Requisition Number R84000-10) by BHP from Allied Pumps Pty Ltd.
Category 2:Any non-confidential emails or other correspondence prior to 11 August 2020 between Allied Pumps Pty Ltd and BHP regarding the use of an external fuel tank and automatic switchover controls/fuel tank selection parameters in connection with Dewatering Trailer Dewatering Trailer Number TAO858 (Requisition Number R84000-10) that describes any of the features of claims 1 to 5 of Australian Innovation Patent Application 2021107610.
Category 1 documents seek to confirm the date of receipt of the relevant dewatering trailer, while category 2 documents seek non-confidential communications about key features of the working of the dewatering trailer prior to the date relevant to the activation of the grace period.
The Law
Section 210 of the Act provides:
210 Commissioner's powers
Commissioner's powers
(1) The Commissioner may, for the purposes of this Act:
(a) summon witnesses; and
(b) receive written or oral evidence on oath or affirmation; and
(c) require the production of documents or articles; and
(d) award costs against a party to proceedings before the Commissioner.
Exercise of power to summon witnesses
(2) The Commissioner must not summon a witness under paragraph (1)(a) unless:
(a) the Commissioner is satisfied, on the balance of probabilities, of the following matters:
(i) the witness has a substantial interest in the proceedings before the Commissioner;
(ii) the witness is likely to provide oral evidence of substantial relevance to a matter before the Commissioner;
(iii) receiving oral evidence from the witness is necessary or desirable in all the circumstances; and
(b) the Commissioner notifies the witness of the actions the Commissioner may take under section 210A if the witness fails or refuses to comply with the summons.
(3) The Commissioner may summon a witness under paragraph (1)(a) whether the witness is in or out of the patent area.
Exercise of power to require production of document or article
(4) The Commissioner must not require a person to produce a document or article under paragraph (1)(c) unless:
(a) the Commissioner is satisfied, on the balance of probabilities, of the following matters:
(i) the person has a substantial interest in the proceedings before the Commissioner;
(ii) the document or article is likely to be of substantial relevance to a matter before the Commissioner; and
(b) the Commissioner notifies the person of the actions the Commissioner may take under section 210A if the person fails or refuses to comply with the requirement.
(5) The Commissioner may require a person to produce a document or article under paragraph (1)(c) whether the person is in or out of the patent area.
Exercise of powers in relation to bodies corporate
(6) The Commissioner's powers in subsection (1) to make a requirement of a person extend, if the person is a body corporate, to making that requirement of any person who is an officer, agent or employee of the body corporate.
Central in respect of the present matter is the fact that the Commissioner must not issue a notice to produce unless the document or article is likely to be of "substantial relevance" to the matter.
These provisions apply to the exercise of the Commissioner's powers on or after the commencement of Schedule 3 of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Raising the Bar Act), that is, after 15 April 2013. Substantially the changes brought about at that time were the insertion of subsections (2) to (6) and section 210A. The effect of these changes was discussed by the Deputy Commissioner in Domino's Pizza Enterprises Limited v Precision Tracking Pty Ltd (Domino's) [2016] APO 13 at [31]:
"…in my view 'substantial relevance' means more than just 'substantive relevance' or 'not of limited relevance' as suggested by Mr Cordiner. It must be something that is likely to be, if not determinative, highly significant in the determination of a relevant issue in dispute in the proceedings."
The Deputy Commissioner drew a clear distinction between production under the Act and discovery (at [32]):
"It follows that section 210 as amended is unlike the scheme for discovery and production in other jurisdictions. It is not to be invoked by one party as a general means of exploring the other party’s case and particularly is not to be used in a fishing expedition or a hunt for a ‘smoking gun’. Usually it will be necessary to identify a real and specific factual issue in dispute, not merely speculation that production or summons might reveal such a matter and a plausible basis for concluding that the order will in some way be likely to provide substantial assistance in resolving the matter. Otherwise the Commissioner cannot be satisfied on the balance of probabilities that what is sought is 'likely to be of substantial relevance'."
The Deputy Commissioner also pointed out that the power is discretionary (at [33]):
"The power exercised by the Commissioner is discretionary and must only be exercised after considering the respective interests involved and the purpose of the legislation. Some relevant factors will include fairness to the respective parties, whether any order made would be onerous, delay in the resolution of the proceedings and in the granting of the patent, the correctness of the determination of the proceedings and the efficiency of IP Australia in administering the process."
The reasoning and conclusions of Deputy Commissioner Spann in Domino's were adopted by Deputy Commissioner Barker in Sanofi v Amgen Inc. (Sanofi) [2018] APO 3 and Norbrook Laboratories Limited v Bayer New Zealand Limited [2019] APO 37. In Sanofi the Deputy Commissioner stated that "substantial relevance" is not to be understood as merely relevant to a substantial issue that is in dispute. Rather, he noted that it is the degree of relevance that must be considered, and it is the high threshold set out in Domino's that applies. The Patent Manual of Practice and Procedure at 3.6.3 summarises the principles neatly:
“Likely to be of substantial relevance" means that the documents or articles required are likely to be of substantial probative value in the determination of a matter before the Commissioner. This goes beyond evidence that may be merely relevant to the Commissioner’s determination. It requires a realistic expectation that the documents or articles are of such significance that they may be determinative of a matter before the Commissioner.
Unless a document or article is identified with sufficient particularity for its relevance to be determined it cannot be the subject of a requirement to produce. Section 210 is not an opportunity to discover what relevant documents are in possession of another party or to obtain documents of potential relevance. Requests of this nature will be refused.
Consideration
As a first point Uon notes that their evidence in support refers to a potential prior use of a device known as a Dewatering Trailer having Number TAO858 (requisition number R84000-10). Uon suggests that delivery of the trailer by Allied Pumps Pty Ltd to its customer, BHP, at the Mt Whaleback mine occurred prior to 26 November 2020. Relevantly, the declaration of Mr Kenny Keogh states at [7]:
“In or around July / August 2020 UON was engaged by BHP to install and commission a dewatering system at the Mt Whaleback mine site in the Pilbara region of Western Australia. The dewatering system was to be supplied by another supplier. A UON team was deployed to Mt Whaleback in November 2020 for this purpose. I attended the site on or about 26 November 2020 in order to supervise the team.”
There is nothing further in the evidence either from Uon or Berkshire to suggest when the act of delivery occurred. At best, it can be said that delivery occurred around or before 26 November 2020. While Berkshire admits that relevant features of the invention were present in the trailer supplied by Allied Pumps Pty Ltd, I must assess the request in the context of the allegation of prior use and documentary disclosure with respect to the particular documents sought by the requested notice for production. In this context it is Uon’s position that:
“…if the date of delivery of the TA0858 Trailer was earlier than 11 August 2020, then the documents in Categories 1 and 2 are likely, or will, establish that the claimed invention in the Application lacked novelty since disclosures will have occurred outside the grace period.”
Prior disclosure
To establish a lack of novelty, it is necessary for there to be a disclosure of all of the essential features of the invention as claimed (Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40 at [19]; [1990] FCA 40; 16 IPR 545 at [549]). To meet this requirement, the prior art must contain “clear and unmistakable directions to do what the patentee claims to have invented” (The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at [486]). As per the General Tire case: “A signpost, however clear, upon the road to the patentee’s invention will not suffice. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee”. Importantly prior art information includes information in a document that is publicly available before the relevant date, and information made available before the relevant date through the doing of an act (Patents Act 1990 s7(1)(a)).

In his correspondence to Uon, delegate Andrew Burgess usefully outlined some important principles for considering potential novelty disclosures for documents and prior uses. In meeting the requirement for clear and unmistakable direction with respect to a document delegate Burgess noted that in such a case there can be little debate over what is disclosed. What is disclosed is fundamentally equivalent to that which is written in said document. Prior use and disclosure by way of an act is, by its nature, different. This idea is well reflected in Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd (Insta Image) [2008] FCAFC 139. This judgement makes clear that consideration should be given to the nature of the act in question where the way in which a device operates may not be directly visible from mere inspection of said device. Insta Image demonstrates when an act of prior use may constitute a disclosure (see [146]):
“Importantly, the present submission is not that simple visual inspection was not an adequate means of giving the person skilled in the art an understanding of the invention. The case was not one in which the invention was below a surface or enclosed, for example.”
In the present case the invention is directed to an automated switch over mechanism from external to an internal fuel tank. The invention clearly relates to the internal operation of a generator.
Regarding the relevant principles above, Uon do not appear to have any material contention in their submissions. However, Uon argues that the request for a notice to produce and this hearing is not an occasion to resolve dispute as to the correctness as a matter of legal principle, whether the act of supply of certain devices is itself sufficient to constitute a novelty-defeating disclosure. They submit consideration of that legal issue should be deferred to the opposition hearing.
In short, I believe Uon’s submission on this point is misconceived. The legal principle posed by Uon does not appear open for consideration by me or a delegate at a substantive hearing and represents a misconceived broad principle. The law regarding novelty clearly requires a certain character of disclosure, regardless of the form of that disclosure. It is also clear for example in Insta Image that in some instances the mere supply of a particular device may constitute a disclosure, and in some instances, mere supply would not. For example, where all the features of a device are plainly apparent from mere visual inspection a lack of novelty may be found. On the other hand, where a complicated inner working invention is merely supplied, or “placed in front of a person”, in some kind of metaphorical “black box”, then it is absurd to think that all features would be clearly and unmistakably disclosed.
It is thus not reasonable to pose a legal question as to whether supply of “certain devices” itself is sufficient to constitute a novelty disclosure. The question more relevant to this matter is whether mere supply of the trailer in question, having particular inner workings, is substantially likely to constitute a novelty disclosure. To not consider whether (in the circumstances of this case where the trailer in question has merely been supplied) supply is substantially likely to render the claimed invention as lacking novelty would appear to constitute an error of law on my part, or improper exercise of power in my role as a decision maker determining the request at hand. To understand if evidence requested to be produced is substantially likely to be determinative of a ground of opposition it is inevitable that I must give thought to the nature of that ground of opposition, and the evidence itself.
Category 1
These documents are:
Any shipping or delivery document which records the date of receipt of Dewatering Trailer Number TAO858 (Requisition Number R84000-10) by BHP from Allied Pumps Pty Ltd.
This category of documents relies on Uon’s case of prior use and disclosure via the act of supply. Uon submits that:
“Based on the evidence filed to date (i.e. evidence in support and answer), the Opponent is presently able to advance a novelty case by which the claimed invention has been disclosed at least since 26 November 2020 by use of the TAO858 Trailer – that is, anticipation by an enabling disclosure (assuming the grace period exemption does not apply). That is because of the admissions made in the Applicant’s evidence (see [8] above) coupled with the Opponent’s evidence in support (see Keogh Dec). Adopting those admissions, the Opponent is therefore able to invite the Patent Office to draw the inference that use of the TAO858 Trailer before 26 November 2020 would also constitute an enabling disclosure. The question then becomes – how far back can that inference be drawn? The answer resides in the documentation to be produced in response to Category 1. If the date of delivery of the TAO858 Trailer was, say, a month or so before 11 August 2020, then the Opponent is able to invite the Patent Office (at the opposition hearing) to draw the reasonable inference that the device had been used before 11 August 2020, which constitutes an enabling disclosure consistent with the admissions made by the Applicant (and assuming the grace period exemption applies). That is an entirely appropriate, and rational, inference to draw – because it may be reasonably expected that a supplied device will be put into use within a short timeframe following delivery. That would be sufficient to establish the Opponent’s case as to lack of novelty.”
Uon essentially invites an inference from the Commissioner that the possibility of mere delivery of the relevant trailer prior to 11 August 2020 means that there is also the possibility that it was used prior to 11 August 2020. They go on to add that it is reasonable to expect that a supplied device would be put into use within a short timeframe following delivery.
Firstly, it appears clear that there is no basis in the present circumstances to consider mere delivery of the trailer to be substantially likely to be an act that provides a clear an unmistakeable disclosure of the invention for reasons already discussed. The invention relates to internal workings of the trailer and without an act of operation, there is no substantial basis to consider the features might be disclosed by the trailer itself while inanimate. With this in mind, Uon appears to invite me to take a journey of logical assumption to arrive at an expectation that the device was put into use (along with the provision of an operating manual itself) within a short time frame following delivery, and before 11 August 2020. I find this nothing short of pure speculation. The evidence suggests nothing of the sort, and instead points to the engagement of Uon to install and commission the trailer well after 11 August 2020. The most rational inference I might consider drawing from the evidence is that trailer sat and waited from delivery until 26 November 2020 when it was first used, but such an inference does not assist Uon’s present argument. Such pure speculation cannot amount to a likelihood of substantial relevance.
Uon also argues that Berkshire has deliberately elected not to reveal the date upon which the trailer commenced use, adding that the evidence in answer does not suggest any reason why the date was not able to be revealed. Uon thus invites inference that there is evidence that could have been led by Berkshire but has not been led, thus justifying production of documents in category 1.
I feel this submission is quite similar to that faced by Deputy Commissioner Barker in Sanofi where Sanofi, in requesting a notice to produce, sought inferences to be drawn from Amgen’s behaviour in not providing certain information. Suffice to say I see no founded basis for concern regarding the information provided by Berkshire in this case. It is for Uon to discharge their onus in respect of the present opposition, and I have no basis to believe Berkshire is in possession of a “smoking gun”. To use the words of the Deputy Commissioner at [16], “[t]here are many answers to this question, and I do not find any assistance in asking it”.
Category 2
These documents are:
Any non-confidential emails or other correspondence prior to 11 August 2020 between Allied Pumps Pty Ltd and BHP regarding the use of an external fuel tank and automatic switchover controls/fuel tank selection parameters in connection with Dewatering Trailer Dewatering Trailer Number TAO858 (Requisition Number R84000-10) that describes any of the features of claims 1 to 5 of Australian Innovation Patent Application 2021107610.
Uon submits that these documents are plainly relevant to the question of anticipation, and I agree with this point. Any documents that are prior to the relevant date that disclose relevant features to the claims are plainly relevant for novelty purposes. However, relevance does not equal a substantial likelihood to be determinative.
Turning to the evidence, I see nothing whatsoever to suggest to me that there are any non-confidential emails or other correspondence prior to 11 August 2020 between Allied Pumps Pty Ltd and BHP that discuss invention specifics. The only activity I can see potentially prior to 11 August 2020 is that in or around July / August 2020 Uon was engaged by BHP to install the supplied system. Therefore, I have no reasonable basis to believe that any of the non-confidential information requested in category 2 exists. I am simply being invited to entertain the idea that such documents might exist.
Secondly, the category 2 request seeks documents regarding the use of an external fuel tank and automatic switchover controls/fuel tank selection parameters in connection with Dewatering Trailer Dewatering Trailer Number TAO858. Assuming that documents within category 2 exist, it is the case that the request itself is not of such a narrow scope to provide me with any confidence that a novelty disclosure may be demonstrated. The key features of claim 1 are not themselves articulated specifically in the request, as would be required by a novelty disclosure. Furthermore, the request does not seek documents that themselves would provide a disclosure of all of the essential features of the invention as claimed. The request simply seeks to obtain documents that in a general sense discuss an external fuel tank, automatic switchover controls and fuel selection parameters relevant to the supplied trailer. The request only requires that the documents describe any but not all of the features of the claimed invention.
It is clear that the category 2 request is for documents that have no factual basis upon which I can be satisfied of their existence. It is also clear that the documents sought, if they exist, would not be substantially likely to provide a disclosure of all the features of the claimed invention. Substantial relevance goes beyond mere relevance and requires a realistic expectation of being determinative. I simply cannot see a real basis upon which I can be satisfied that the documents may be determinative because, fundamentally, I am not even satisfied that the documents exist. As noted above, section 210 is not an opportunity to discover what documents might exist and whether they may be relevant. The applicant’s request in relation to category 2 is akin to discovery.
Conclusion
I am not satisfied on the balance of probabilities that what is sought is likely to be of substantial relevance. It follows that I must refuse to issue a notice.
Dr N. R. Madsen
Deputy Commissioner of Patents