UON Pty Ltd v Indian Ocean Engineering Pty Ltd
[2024] APO 38
•10 September 2024
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
UON Pty Ltd v Indian Ocean Engineering Pty Ltd [2024] APO 38
Patent Application/Patent: 2021201628 & 2021102100
Title:SYSTEM FOR POWERING AND CONTROLLING AN ELECTRIC MOTOR; SYSTEM FOR POWERING AND CONTROLLING AN ELECTRIC MOTOR
Patent Applicant/Patentee: Indian Ocean Engineering Pty Ltd
Opponent: UON Pty Ltd
Delegate: Dr W.E. Guinea
Decision Date: 10 September 2024
Hearing Date: 13 June 2024, in Canberra, by videoconference
Catchwords: PATENTS – system for controlling electric motors, particularly variable speed generators – s59 – s101M – s40(3) support – s40(2)(a) clear enough and complete enough disclosure – s40(3) clarity – s40(2)(aa) best method – s101M(a) entitlement–– opposition unsuccessful – further submissions sought on costs
Representation: Counsel for the Applicant/Patentee: Amy Surkis
Patent Attorney for the Applicant/Patentee: Alistair Mann of Mann IP
Patent Attorney for the Opponent: Barry Newman of Armour IP
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application/Patent: 2021201628 & 2021102100
Title:SYSTEM FOR POWERING AND CONTROLLING AN ELECTRIC MOTOR; SYSTEM FOR POWERING AND CONTROLLING AN ELECTRIC MOTOR
Patent Applicant: Indian Ocean Engineering Pty Ltd
Date of Decision: 10 September 2024
DECISION
None of the grounds of either of the oppositions were made out. The oppositions under s59 and s101M are unsuccessful.
I allow both parties two (2) weeks from the date of this decision to provide further submissions on how costs should be awarded, and in particular to address my currently preferred position of a split award of costs reduced to reflect redundancies in the evidence and submissions as outlined in the reasons for this decision.
REASONS FOR DECISION
Background
Patent application 2021201628 (the “application”) was filed on 15 March 2021 in the name of Indian Ocean Engineering Pty Ltd. As there is no earlier priority claim the earliest priority date of the application is congruent with the filing date thereof. The application was advertised as accepted on 2 June 2022.
Innovation patent 2021102100 (the “patent”) was filed as a divisional to the application on 21 April 2021 in the name of Indian Ocean Engineering Pty Ltd. The patent thereby has an earliest priority date of 15 March 2021. The patent was certified on 17 August 2021.
For convenience, I will simply refer to Indian Ocean Engineering Pty Ltd throughout this decision as the “Applicant”, unless I otherwise consider Patentee to be more appropriate in the context concerned.
UON Pty Ltd (the “Opponent”) filed notices of opposition to the application and the patent on, respectively, 2 September 2022 and 12 April 2023. As required by Reg 5.6(1), the statement of grounds and particulars for the opposition to the patent (“SGPP”) was filed at the time of filing the notice of opposition. The statement of grounds and particulars for the opposition to the application (“SGPA”) was filed on 29 November 2022. .
Amendments to application and patent were requested on 1 June 2023. These were incorporated into the application and patent on 12 October 2023 and 16 October 2023, respectively. References to the application and patent from hereon are to the specifications of either of these as they stand as a result of the amendments.
The filing of evidence in support (“EIS”) for the opposition to the application was completed on 31 March 2023. This consisted of:
· a declaration by Mr Barry Stephen Newman (“Newman1), dated 24 February 2023, with supporting annexures BSN-1 and BSN-2;
· a first declaration by Mr James Waterreus (“Waterreus1”), dated 7 December 2022, with supporting annexures JW-1 to JW-4; and
· a declaration by Mr Anthony Carl Reid (“Reid”), dated 6 February 2023,with supporting annexures ACR-1 to ACR-6.
The filing of evidence in answer (“EIA”) for the opposition to the application was completed on 30 June 2023. This consisted of:
· a declaration by Mr Andrew Taylor (“Taylor1”), dated 29 June 2023, with supporting annexures AT-A to AT-G (“AT-A(1) to AT-G(1)”); and
· a declaration by Mr Stephen Lance Vose (“Vose1”), dated 30 June 2023, with supporting annexures SLV-A to SLV-C (“SLV-A(1) to SLV-C(1)”).
The filing of evidence in reply (“EIR”) for the opposition to the application was completed on 10 August 2023. This consisted of:
· a second declaration by Mr James Waterreus (“Waterreus2”), dated 27 July 2023.
The filing of EIS for the opposition to the patent was completed on 12 April 2023. This consisted of:
· a first declaration by Mr Barry Stephen Newman, dated 24 February 2023, with supporting annexures BSN-1 and BSN-2 (these are identical, respectively, to Newman1 and BSN-1 and BSN-2 filed in the opposition to the application);
· a second declaration by Mr Barry Stephen Newman (“Newman2”), dated 12 April 2023, with supporting annexures BSN-3 to BSN-6;
· a first declaration by Mr James Waterreus, dated 7 December 2022, with supporting annexures JW-1 to JW-4 (these are identical, respectively, to Waterreus1 and JW-1 to JW-4 filed in the opposition to the application); and
· a declaration by Mr Anthony Carl Reid, dated 6 February 2023,with supporting annexures ACR-1 to ACR-6 (these are identical, respectively, to Reid and ACR-1 to ACR-6 filed in the opposition to the application).
10. The filing of EIA for the opposition to the patent was completed on 14 July 2023. This consisted of:
· a declaration by Mr Andrew Taylor (“Taylor2”), dated 29 June 2023, with supporting annexures AT-A to AT-G (“AT-A(2) to AT-G(2)”); and
· a declaration by Mr Stephen Lance Vose (“Vose2”), dated 30 June 2023, with supporting annexures SLV-A to SLV-C (“SLV-A(2) to SLV-C(2)”).
11. The filing of EIR for the opposition to the patent was completed on 10 August 2023 This consisted of:
· a second declaration by Mr James Waterreus, dated 27 July 2023 (this is identical to Waterreus2 filed in the opposition to the application).
12. As can be seen from the preceding paragraphs, most of the EIS and EIR filed in each opposition is identical; the only difference is the filing of Newman2 and BSN-3 to BSN-6 for the opposition to the patent. The EIA in both matters, while very similar, is not identical, so I have provided separate shorthand references to these. Noting the similarity in the oppositions, both were heard together, and are determined in this decision.
13. The Opponent filed a written summary of submissions (“OS”) on 29 May 2024. The Applicant filed their written summary of submissions (“AS”) on 6 June 2024. Both sets of submissions are combined submissions that cover the opposition to the application and the patent.
The invention as described
14. Except for some minor formatting differences, the description and drawings for the application and the patent are identical. Consequently, for convenience, I will, from here onwards throughout this decision, simply discuss the invention as described for both matters by reference to the patent. In doing so, where I discuss the invention this refers to the invention as described for both the application and the patent.
15. The invention relates to a system for powering and controlling an electric motor, particularly in the context of providing power to electric pumps used for dewatering at remote locations in the mining industry.
16. The patent commences with a “Background” section at [0002] that discusses the need for a source of power for electric motors in remote, off grid locations, such as typically occurs in the mining industry. It is noted that this is typically provided by an electric generator comprising a coupling of an AC alternator to a prime mover, for example an internal combustion engine or gas turbine.
17. Paragraph [0003] goes on to state that the electric generators may be:
“…a fixed-speed generator that is connected to a variable speed drive (VSD) to supply AC power to the pump on a variable-voltage, variable-frequency (VVVF) basis. Alternatively, a variable-speed generator (VSG) may be used, also known as a variable-frequency generator (VFG), that generates and supplies AC power to the pump on a VVVF basis by itself without needing a VSD to modify the output voltage and frequency. A VSG includes a single, integrated system controller that manages and controls the internal generator components that perform the VVVF functionality. The system controller is also commonly connected to one or more sensors that provide information to the controller about various operating and environmental conditions of the pump. The controller implements a closed control loop that automatically adjusts the speed of the pump based on the information received from the sensors. For example, the controller may be configured to maintain a particular set point relating to the pump, such as a desired fluid pressure, level or flow rate.”
18. Paragraph [0004] then notes some problems with implementing both VVVF and control loops within a single controller with VSGs:
“For example, if the control loop functionality ceases to function correctly during use, then the VSG must be shut down while the relevant issue is corrected. Further, it is often necessary to update the firmware that implements the control loop, including to fix bugs and install performance optimisations and additional features. The VSG must also be shut down while the firmware is updated. When a VSG is unoperational, this may cause project downtime and significant associated productivity losses.”
19. The “Summary” of the invention then runs from [0006] to [0039]. Most of this section simply comprises consistory statements that essentially reflect the claims for both the application and the patent, even if there is not a literal repetition of the claims..
20. There then follows a “Brief Description of the Drawings” and “Description of Embodiments” which comprise the remainder of the description. The nature of the invention described is best understood by reference to the figures. A first embodiment of a system for powering and controlling an electric motor 10 is illustrated in figure 1, reproduced below. The system 10 comprises a generator assembly 12, comprising a prime mover 14, an alternator 16, voltage regulator 20 and throttle controller 22. The prime mover 14 may be an internal combustion engine or a gas, steam, water or wind turbine.
21. The throttle controller 22 controls the rotational speed of the prime mover 14, which in turn controls the frequency of alternating current generated by alternator 16. The alternating current is supplied to electric motor 18, which may in turn drive any device that is operated at a variable speed. Similarly, voltage regulator 20 controls the voltage of the alternating current delivered by the alternator 16 to electric motor 18.
22. A sensor 24 provides “…information about an operating environment or condition of the electric motor 18” (at [0041]). There is also a first controller 26 connected to both a second controller 28 and the sensor 24. The first controller 26 generates and sends control signals to the second controller 28 “…based on information received from the sensor 24” (at [0041]). As discussed in connection with figure 2 below, these control signals from the first controller 26 to the second controller 28 can include a target speed of the electric motor 18. The second controller 28, in turn sends control signals to the voltage regulator 20 and throttle controller 22, which allows the second controller 28 to control the speed of the electric motor 18 via controlling the frequency and voltage of the current output by alternator 16.
23. Figure 2, reproduced below, illustrates a more particular embodiment of the invention. Specifically, the electric motor 18 drives a submersible pump 30 of the type known in the oil and gas industry to pump oil or oil and water mixtures, or in construction and mining to extract groundwater (called “dewatering”); these include centrifugal pumps. The prime mover 14 in this embodiment may be an internal combustion engine, such as diesel or petrol engine. Congruent with this, the throttle controller 22 may comprise an engine control unit (“ECU”) 22, whilst the alternator 16 comprises an excitation system with field coils. The voltage regulator 20 is an automatic voltage regulator (“AVR”) 20, which automatically controls the excitation system so that voltage output from the alternator 16 meets a target voltage. The second controller 28 may either intermittently or continuously send a target voltage to the AVR 20. The generator assembly 12 may be arranged to provide for a wide range of voltages that are needed for pumps used in submersible or groundwater applications in the mining or oil/gas industries.
Figure 2
24. As per the embodiment of figure 1, the second controller 28 is able to control the electric motor 18 speed by control signals sent to the AVR 20 and ECU 22, using appropriate programming or control logic. However, [0046] indicates that for figure 2, the control logic of second controller 28 can be selectively enabled and disabled, for example by use of unique digital key 32. This means that variable speed control of the electric motor 18 can be selectively enabled/disabled. When the control logic is disabled the second controller 28 may have a secondary mode whereby the electric motor 18 operates at a fixed speed.
25. A user interface (“UI”) 34 can be used to input digital key 32. The UI can wirelessly or wiredly communicate with the second controller 28, and could be an integrated control panel comprising a touch screen with keys and the like.
26. The system 10 of figure 2 also comprises a communications interface (“I/O”) 40 that provides for communication between the first controller 26 and a remote control centre or remote control device 42, using known communication methods, such as the internet or other wireless technologies. This allows the first controller 26, and thereby the system 10 more generally, to be activated, monitored, assessed and controlled via remote control centre or remote control device 42, and for transmission of data concerning the operation and performance of the system 10 from the first controller 26 to the remote control centre or remote control device 42. For example, a remote operator may send a specified list of set points to the first controller 26, so that the system 10 operates according to those set points; this could include, for example, a specified constant flow rate, so that the speed of the pump 30 is varied by system 10 so as to maintain the constant flow rate. Disabling of the control logic of the second controller 28 and entering a secondary mode of operation may also be initiated by commands sent via the remote control centre or remote control device 42.
27. Warnings or alerts may also be sent from the first controller 26 to the remote control centre or remote control device 42. For example, an alert could be sent if the temperature of the electric motor 18 exceeds a certain temperature. The first controller 26 could also be arranged to send alerts when it predicts that certain operating conditions of the system 10 may occur in the future; these predictions could be based on previous modes of operation or duration of operation of the system 10 that are recorded by the first controller 26.
28. Other possibilities, by no means necessarily exhaustive, concerning the embodiment of figure 2 include (and which in some cases may generally also extend to the embodiment of figure 1):
· the first and/or second controllers 26, 28 being arranged to switch off non-critical components to save power;
· the control logic still being disabled when the correct key 32 has been entered;
· the second controller 28 disabling the control logic and entering the secondary mode when it detects disconnection of, or problems with, first controller 26;
· a circuit breaker (potentially monitored and resettable by or via first controller 26) between the generator assembly 12 and electric motor 18 that prevents the drawing of excessive current from the generator assembly 12;
· a safety feature wherein the first controller 26 stops entirely or reduces the speed of electric motor 18 when a sensor indicates its temperature has met or exceeded a set temperature; and
· the first controller 26 storing a set point concerning “…the operating environment or condition of the electric motor 18 or pump 30. The first controller 26 may be configured such that in response to the information received from the sensor 24, the first controller 26 determines the target speed that is sent to the second controller 28 that causes the set point to be maintained” ([0050]). The set point can include fluid pressure, fluid flow rate or fluid level. One set point can be maintained, or two or more set points can be selectively maintained at a point in time. The first controller 26 may choose which set point needs to be maintained based on data from sensor(s) 24.
29. Other options or possibilities with respect to the sensor 24, engine 14, alternator 16, the power delivered by the system 10 and the first and second controllers 26, 28 are provided at [0051] to [0054], [0056] and [0057]. However, I essentially took these to refer to well-known options for, or implementations of, such devices. For example, [0051] outlines a number of apparently well-known sensor types, such as pressure, flow rate and temperature sensors. Similarly, the first and second controllers 26, 28 comprising a processor, programmable logic device, programmable logic array or arithmetic logic unit, as indicated at [0052], merely outline well-known choices for such controlling devices.
30. With the exception of some “boilerplate” extending from [0063] to [0067], the patent ends with the following outlines of the advantages of the invention at [0062]:
“As described in the foregoing paragraphs, the motor control methodology that is implemented by the system 10 is split into two functional control processes executed by two separate, cooperating system controllers 26, 28 respectively. That is, the first controller 26 serves as a master controller that implements a control loop to (i) receive information from the sensor 24, (ii) determine whether the motor 18 needs to run faster or slower based on the information and (iii) send a control signal to the second controller 28 representing a desired motor speed. The second controller 28, in turn, serves as a slave controller that controls the ECU 22 and the AVR 20 based on the control signal such that the motor 18 is caused to run at the desired speed. Implementing this cascade control methodology using two separate system controllers 26, 28 provides several practical advantages, including:
(i)If the first controller 26 ceases to operate correctly during use, then the second controller 28 may continue to operate the electric motor 18 while the first controller 26 is being repaired or replaced. For example, the second controller 28 may continue to operate the motor 18 but on a fixed speed basis, rather than a variable speed basis, during the relevant maintenance period. The first controller 26 may be electrically detachably connected to the second controller 26, for example by a plug and socket arrangement, to allow the first controller 26 to be removed for such maintenance work;
(ii)If firmware embodying the control logic executed by the first controller 26 needs to be updated during use, the firmware can be updated live while the second controller 28 continues to operate the electric motor 18. Again, the second controller 28 may operate the motor 18 on a fixed speed basis during the relevant update period;
(iii)The control logic implemented by the second controller 28 may be protected using a digital key 32 independently of the control logic implemented by the first controller 26. This may allow, for example, a supplier or manufacturer of the system 10 to lock the system 10 in a fixed speed mode and only allow an end user who has the digital key 32 to unlock and use the more-sophisticated variable speed motor functionality.”
The claims
31. The application comprises 18 claims of which claims 1 and 18 are independent. The independent claims are reproduced below; the full claim set for the application can be found at Annex B to this decision. For convenience I have provided feature labels for claims 1 and 18, and provided the prefix “A” to denote features from the claims for the application, as opposed to the patent.
A1.1 A system for powering and controlling an electric motor, the system comprising:
A1.2 a generator assembly comprising a prime mover and an alternator for supplying an alternating current to the electric motor,
A1.3 wherein the alternator comprises a voltage regulator for controlling a voltage of the alternating current, and wherein the prime mover comprises a throttle controller for controlling a rotational speed of the prime mover and, therefore, frequency of the alternating current;
A1.4 at least one sensor to provide information about an operating environment or condition of the electric motor; and
A1.5 a first controller connected to the sensor and to a second controller,
A1.6 wherein the second controller is configured to send diagnostic information relating to operation of the throttle controller and/or the voltage regulator to the first controller, and wherein the first controller is configured to determine a target speed of the electric motor and to generate and send control signals to the second controller based on the information received from the sensor and based on the diagnostic information received from the second controller,
A1.7 wherein the control signals represent the target speed, and wherein the second controller is connected to the throttle controller and to the voltage regulator and is configured to control a speed of the electric motor by controlling the throttle controller and the voltage regulator such that the electric motor is caused to operate at the target speed in response to the control signals.
A18.1 A method for powering and controlling an electric motor, the method comprising:
A18.2 using a generator assembly comprising a prime mover and an alternator to supply an alternating current to the electric motor;
A18.3 controlling a voltage of the alternating current using a voltage regulator of the alternator; controlling a rotational speed of the prime mover and, therefore, frequency of the alternating current using a throttle controller of the prime mover;
A18.4 providing information about an operating environment or condition of the electric motor to a first controller using a sensor;
A18.5 sending diagnostic information relating to operation of the throttle controller and/or the voltage regulator from a second controller to the first controller; using the first controller to determine a target speed of the electric motor and to generate and send control signals to the second controller based on the information received from the sensor and based on the diagnostic information received from the second controller, wherein the control signals represent the target speed; and
A18.6 using the second controller to control the throttle controller and the voltage regulator to control a speed of the electric motor such that the electric motor is caused to operate at the target speed in response to the control signals.
32. The patent comprises 5 claims, of which claims 1 and 5 are independent. The independent claims are reproduced below; the full claim set for the patent can be found at Annex A to this decision. For convenience I have provided feature labels for claims 1 and 5 and provided the prefix “P” to denote features from the claims for the patent, opposed to claims from the application.
P1.1 A system for powering and controlling an electric motor, the system comprising:
P1.2 a generator assembly comprising an engine and an alternator for supplying an alternating current to the electric motor,
P1.3 wherein the alternator comprises a voltage regulator for controlling a voltage of the alternating current, and wherein the engine comprises a throttle controller for controlling a rotational speed of the engine and, therefore, frequency of the alternating current;
P1.4 at least one sensor to provide information about an operating environment or condition of the electric motor; and
P1.5 a first controller connected to the sensor and to a second controller,
P1.6 wherein the second controller is configured to send diagnostic information relating to operation of the throttle controller and/or the voltage regulator to the first controller, and wherein the first controller is configured to determine a target speed of the electric motor and to generate and send control signals to the second controller based on the information received from the sensor and based on the diagnostic information received from the second controller,
P1.7 wherein the control signals represent the target speed, and wherein the second controller is connected to the throttle controller and to the voltage regulator and is configured to control a speed of the electric motor by controlling the frequency and the voltage of the alternating current by controlling, respectively, the throttle controller and the voltage regulator such that the electric motor is caused to operate at the target speed in response to the control signals.
P5.1 A method for powering and controlling an electric motor, the method comprising:
P5.2 using a generator assembly comprising an engine and an alternator to supply an alternating current to the electric motor;
P5.3 controlling a voltage of the alternating current using a voltage regulator of the alternator; controlling a rotational speed of the engine and, therefore, frequency of the alternating current using a throttle controller of the engine;
P5.4 providing information about an operating environment or condition of the electric motor to a first controller using a sensor;
P5.5 sending diagnostic information relating to operation of the throttle controller and/or the voltage regulator from a second controller to the first controller; using the first controller to determine a target speed of the electric motor and to generate and send control signals to the second controller based on the information received by the first controller from the sensor and based on the diagnostic information received by the first controller from the second controller, wherein the control signals represent the target speed; and
P5.6 using the second controller to control a speed of the electric motor such that the electric motor is caused to operate at the target speed by controlling the frequency and the voltage of the alternating current by controlling, respectively, the throttle controller and the voltage regulator in response to the control signals.
33. As can be seen, the only difference between claim 1 of the application and claim 1 of the patent, is that features A1.2 and A1.3 refer to a “prime mover”, whilst P1.2 and P1.3 refer to an “engine”. Similarly, the only differences between claim 18 of the application and claim 5 of the patent are references to a “prime mover” in A18.2 and A18.3 and to an “engine” in P5.2 and P5.3.
The opposition
34. In the SGPA, the Opponent pursued grounds under:
· s59(b) and s18(1)(a) – the invention as claimed is not for a manner of manufacture;
· s59(b) and s18(1)(b)(i) – the invention as claimed is not novel in view of the prior art base as it existed before the priority date of the claims;
· s59(b) and s18(1)(b)(ii) – the invention as claimed is not inventive in view of the prior art base as it existed before the priority date of the claims;
· s59(b) and s18(1)(c) – the claimed invention lacks utility;
· s59(c) – the specification does not comply with s40(2)(a);
· s59(c) – the specification does not comply with s40(2)(aa);
· s59(c) – the specification does not comply with s40(3), in that the claims are not clear and succinct; and
· s59(c) – the specification does not comply with s40(3), in that the claims are not supported by matter in the specification.
35. In the SGPP, the Opponent pursued grounds under:
· s101M(a)(i) – the patentee is not entitled to the patent;
· s101M(c) and s18(1A)(b)(i) – the invention as claimed is not novel in view of the prior art base as it existed before the priority date of the claims;
· s101M(c) and s18(1A)(b)(ii) – the invention as claimed does not comprise an innovative step in view of the prior art base as it existed before the priority date of the claims;
· s101M(b) – the specification does not comply with s40(2)(a);
· s101M(b) – the specification does not comply with s40(2)(aa); and
· s101M(b) – the specification does not comply with s40(3), in that the claims are not supported by matter in the specification.
36. In the OS the Opponent abandoned many of the grounds raised against both the application and the patent. The following grounds remain:
·For both the application and the patent:
oS40(2)(a), s40(2)(aa), s40(3) clarity and support; and
·For the patent only:
oThe patentee is not entitled to the patent.
I note that grounds under s40(2)(aa) and support under s40(3) were said, in the OS at [9], to follow from alleged defects under s40(2)(a). This decision is restricted to the remaining grounds pursued by the Opponent.
37. At the hearing, the Opponent indicated that it was open to me to find a lack of entitlement to the application, using the Commissioner’s powers under s60(3). I will consider whether and if that would be an appropriate approach on considering entitlement to the patent.
38. Unless indicated to the contrary, I will discuss each ground under s40(2)(a), s40(2)(aa) and s40(3) with respect to both the application and the patent.
Onus and standard of proof
39. Both the application and the patent were filed on or after 15 April 2013. Consequently, substantive amendments of the Patents Act 1990 brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act2012 apply to both the application and the patent. This includes the amendments to subsections 60(3A) and 101N(4) that allows the Commissioner to refuse a patent application, or revoke an innovation patent, if satisfied on the balance of probabilities that a ground of opposition exists. Notably it is the Opponent who bears the onus of proving their case to the requisite standard during opposition proceedings.
Who is the skilled addressee?
40. The skilled addressee (“PSA”) is taken to be a non-inventive worker in the art with respect to the invention concerned, is taken to possess the common general knowledge (“CGK”) in the art, and could be a team of people; see Root Quality Control Pty. Ltd. v Root Control Technologies Pty. Ltd. [2000] FCA 980 at [70] to [71] (“Root Quality Control”); Catnic Components Limited and Another v Hill & Smith Limited (1982) RPC 183 at 242 to 243 and Minnesota Mining & Manufacturing Co. vBeiersdorf (Australia) Ltd. [1980] HCA 9 at [115]; (1980) 144 CLR 253 at 292. In particular in Root Quality Control at [71] Finkelstein J. stated that “... the patent is directed to a person interested in making, constructing, compounding or using the invention...”
41. In my view, the PSA is a person interested in making or using systems for powering and controlling electric motors, particularly of the type that comprise a variable speed drive (“VSD”) or variable speed generator (“VSG”) that allows for variable voltage variation frequency (“VVVF”) AC output used to drive other devices, such as pumps.
42. At [55] of the AS, the Applicant argues that “The PSA in the present case is an electrical engineer working in the field of electric motor control systems”. For its part, the Opponent suggests, at [30] of the OS, that “The skilled addressee in the present case can be described as an electrical engineer with experience in the control and use of electric submersible pumps. Both Mr Waterreus and Mr Taylor are relevantly skilled addressees”.
43. It is apparent that the Applicant’s formulation of the PSA essentially coincides with mine, whilst the Opponent seeks to limit the PSA by reference to control and use of electric submersible pumps.
44. However, the field of the invention, at [1] of the patent states, under the heading “Field”, that “The present invention relates to electricity generation and, more particularly, to a system for powering and controlling an electric motor”. Submersible pumps are discussed as an example in the background of the patent specification, however, it is apparent that the invention as described is not necessarily limited to submersible pumps. Figure 1 simply shows a generic electric motor 18 being driven by generator assembly 12. Paragraph [0042] of the patent states that:
“…the electric motor 18 may operatively drive any device or mechanism that needs to be operated on a variable speed basis. For example, the electric motor 18 may drive a pump, such as a submersible or non submersible centrifugal or positive displacement pump, a fan or a conveyor system.”
Similarly, the independent claims of both the application and the patent are not necessarily limited to a submersible pump – rather there is just an “electric motor”. It is apparent that submersible pumps simply exemplify an embodiment of the invention, even if an apparently preferred one.
45. Turning to the expert declarants, I have reviewed their evidence and, where given, the CVs provided by each. I am satisfied that each is able, at least in some way, to adequately represent the views of the PSA as I have defined it. In this regard I note that:
· Mr Waterreus has a Bachelor of Engineering which he obtained in 1973 (Waterreus1 at [4]). Mr Waterreus is a charted professional engineer, Registered Professional Engineer Queensland and a member of the Australian Institute of Engineers. Mr Waterreus is included in the National Engineers Register and specialises in “…Electrical, Instrumentation and Control Systems engineering” (Waterreus1 at [3]). Most of Mr Waterreus’s 50 years of industry experience was in the mining industry, and he has been involved in the development of VSDs from early in his career, with significant experience in the application of VSD/VFDs across a variety of industries (Waterreus1 at [4] and [5]). He also has industrial experience in power generation, electric motors, electric motor control, instrumentation and industrial automation (Waterreus1 at [6]). Since late 2018 he has been employed by the Opponent (Waterreus1 at [8]). This knowledge and experience are reflected in Mr Waterreus’s CV at JW-2.; and
· Mr Taylor obtained a Bachelor of Engineering (Hons) in electrical and electronic engineering in 1999. Mr Taylor is a Chartered Professional Engineer and a Registered Professional Engineer Queensland (Taylor1 at [11]). Mr Taylor is an electrical and control systems engineer and has 23 years’ experience in electrical power and control systems (Taylor1 at [5] and [6]). Mr Taylor has significant experience in industrial automation and control systems, including the design and implementation of VVVF systems (Taylor1 at [7] to [9]). Mr Taylor’s also has significant experience in programming industrial control devices (Taylor1 at [10]). Whilst Mr Taylor’s CV, at AT-B(1), does not mention VVVF systems, it otherwise is congruent with his statements in Taylor1 and I have no reason to doubt his stated experience with VVVF systems. Although not stated, it appears that Mr Taylor has no connection to the Opponent or the Applicant. I note that Mr Taylor’s statements concerning his knowledge in experience from Taylor1 are identical to those provided in Taylor2, and that AT-B(2) is identical to AT-B(1).
46. Mr Newman’s evidence clearly just served to put other material into evidence, rather than providing anything expert in nature. Although Mr Reid and Mr Vose have some experience relevant to the PSA (see Reid at [1] and [2] and Vose1 and Vose2 at [1] and [4]), I did not take their evidence to significantly go to matters known or understood by the PSA, nor did either party suggest that they could represent the PSA. Rather, both parties accepted, even with their different formulations of the PSA, that both Mr Taylor and Mr Waterreus can represent the PSA; OS at [30] and AS at [56] and [57].
47. The Applicant did argue that the fact Mr Waterreus is not an independent witness means his “…evidence should be treated with caution and, in circumstances where his views differ from those of Mr Taylor, Mr Taylor’s evidence should be preferred” (AS at [57]). I do not propose to make any general statements or conclusions here about the relative suitability of either of the experts to represent the PSA, including whether there are issues caused by any lack of independence of a declarant. Suffice to state that where the declarants disagree on a factual point that I intend to rely upon, or where I seek to make findings of fact based on the expert evidence, it will be up to me to weigh each declarant’s evidence accordingly in view of the particular context concerned and their skills, knowledge and experience, and any evidence that bias may have coloured their evidence on the point concerned.
Clarity and claim construction matters
Rules of Construction
48. Rules of construction have been provided by the authorities to assist in determining the ambit of claims. These have been conveniently summarised in Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 (“Pfizer”) at [247] to [250]. At [249] Pfizer noted that the following principles arose from Re Décor Corporation Pty Ltd (Formerly Brian Davis and Company Pty Ltd) and Rian Tooling Industries Pty Ltd v Dart Industries Inc [1988] FCA 399) :
“1. The claims define the invention which is the subject of the patent. These must be construed according to their terms upon ordinary principles. Any purely verbal or grammatical question that can be answered according to ordinary rules for the construction of written documents is to be resolved accordingly.
2. 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.
3. Nevertheless, in approaching the task of construction, one must read the specification as a whole.
4. In some cases the meaning of the words used in the claims may be qualified or defined by what is said in the body of the specification.
5. If a claim be clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the document. But if an expression is not clear or is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim.
6. A patent specification should be given a purposive construction rather than a purely literal one.
7. In construing the specification, the court is not construing a written instrument operating inter partes, but a public instrument which must define a monopoly in such a way that it is not reasonably capable of being misunderstood.
8. The body, apart from the preamble, is there to instruct those skilled in the art concerned in the carrying out of the invention; provided it is comprehensible to, and does not mislead, a skilled reader, the language used is seldom of importance.
9. Nevertheless, the claims, since they define the monopoly, will be scrutinised with as much care as is used in construing other documents defining a legal right.
10. If it is impossible to ascertain what the invention is from a fair reading of the specification as a whole, it will be invalid. But the specification must be construed in the light of the common knowledge in the art before the priority date.”
49. Three additional construction principles were also cited in Pfizer (at [250]) as arising from Nesbit Evans Group Australia Pty Ltd v Impro Ltd (1997) 39 IPR 56:
“1. There is a danger in considering the integers of a claim individually and in isolation. This could yield a literal rather than a purposive construction – see Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183 at 243 (Lord Diplock).
2. The Court should avoid too technical or narrow a construction of claims.
3. A construction according to which the invention will work is to be preferred to one according to which it may not do so.”
Clarity
50. The statutory basis for clarity is given at s40(3) of the Act which states that the claims must be clear and succinct. The requirement for the claims to be clear does not mean that terms used in claims must be precise or absolute, as noted in Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890 at [81]; (2001) 49 IPR 331 at 349 (and cited with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121; (2008) 77 IPR 229 (“Austal Ships”)):
“Lack of precise definition in claims is not fatal to their validity, so long as they provide a workable standard suitable to the intended use …The consideration is whether, on any reasonable view, the claim has meaning … In determining this, the expressions in question must be understood in a practical, commonsense manner … Absurd constructions should be avoided…and mere technicalities should not defeat the grant of protection…”
51. Where terms in claims are unclear, recourse may be made to the specification to resolve the ambiguity; see Interlego AG v Toltoys Pty Ltd [1973] HCA 1 at [14] as per Barwick CJ and Mason J;; (1974) 130 CLR 461 at 479 (“Interlego”):
“If the expression is not clear it is then permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim without infringing the rule that clear and unambiguous words in the claim cannot be varied or qualified by reference to the body of the specification…”
The Opponent’s clarity arguments
52. At [10] and [31] to [38] of the OS the Opponent argues that the independent claims are unclear due to the term “diagnostic information” – I will also refer to the Applicant’s submissions where I consider this appropriate. However, before turning to any of the arguments put by the parties, I consider it helpful to consider the phrase “diagnostic information” using the rules of construction.
53. In that regard, turning to the words of the phrase themselves, the Macquarie English Dictionary (Macquarie Dictionary Online, 2024, Macquarie Dictionary Publishers, an imprint of Pan Macmillan Australia Pty Ltd, hereinafter the “Macquarie Dictionary”) relevantly defines “diagnostic” as follows:
“adjective 1. relating to a diagnosis: *this perception, albeit a rather intuitive one, has for me substantial diagnostic importance. –BRUCE FORD, 1984.
2. having value in diagnosis.
–noun 3. → diagnosis (def. 1).
4. a symptom or characteristic of value in diagnosis.
5. a tool or technique used in the process of reaching a diagnosis.
6. Computers
a. a program which identifies and reports errors within software or hardware.
b. → diagnosis (def. 3)”
54. The Macquarie Dictionary relevantly defines “information” as follows:
“noun 1. knowledge communicated or received concerning some fact or circumstance; news: *Numerous Australian writers have also raised similar objections to the way television news increasingly blurs the boundaries between information and entertainment. –CATHARINE LUMBY, 1999.
2. knowledge on various subjects, however acquired.
3. the act of informing.
4. the state of being informed.
5. Law a document used to initiate criminal proceedings in a magistrates court, which states the details of the alleged criminal conduct; complaint.
6. (in communication theory) a quantitative measure of the contents of a message.”
55. The Macquarie Dictionary also defines “diagnosis” as follows:
“noun (plural diagnoses
1. Medicine
a. the process of determining, by examination of the patient, the nature and identity of a diseased condition.
b. the decision reached from such an examination.2. Biology scientific determination; a description which classifies precisely.
3. Computers
a. the process of determining, by examination of software and hardware, the nature and identity of an error, condition, etc.
b. the result reached from such an examination.4. any analysis of events, character, etc.”
56. In its broadest terms, “diagnostic information” can be understood as knowledge or data relating to a diagnosis, noting that “diagnostic” is used in the adjective sense in the phrase. Further, noting the definition of “diagnosis”, the meaning of the phrase in broad terms can be re-expressed as knowledge or data relating to analysing or determining a state or condition of something. The phrase, in a plain English sense, is in my view clear enough in its own terms.
57. Of course, the phrase is used within the independent claims and does not exist in isolation. In that regard “diagnostic information” appears twice in the independent claims. For example, P1.6 reads as follows:
“…wherein the second controller is configured to send diagnostic information relating to operation of the throttle controller and/or the voltage regulator to the first controller, and wherein the first controller is configured to determine a target speed of the electric motor and to generate and send control signals to the second controller based on the information received from the sensor and based on the diagnostic information received from the second controller…” (emphasis added)
58. As used in P1.6, it is apparent that the “diagnostic information” is specified to relate to operation of the throttle controller and/or the voltage regulator concerned. It is thus clear that the second controller is arranged to send information or data concerning a diagnosis, or alternatively expressed, knowledge or data concerning an analysis of or determining the state or condition, of the operation of the throttle controller and/or the voltage regulator to the first controller. P1.6 further specifies that the first controller generates and sends control signals back to the second controller based on this diagnostic information. Essentially, the use of “diagnostic information” in P1.6 can be understood as data concerning the state or condition of the throttle controller and/or the voltage regulator is sent from the second controller to the first controller, which in turn send control signals back to the second controller based on this data. In my view, nothing in the other features of P1 serve to change or modify this understanding. Essentially identical use of “diagnostic information”, with the same meaning and effect is apparent in the other independent claims of the application and patent; see, for example, P5.5, A1.6 and A18.5.
59. Turning to the Opponent’s arguments, the OS at [33] and [34] concentrate on the fact that “diagnostic information” only appears in two paragraphs each of the patent and the application, noting that:
“These paragraphs do not provide assistance in determining the scope of the claimed ‘diagnostic information relating to the operation of the throttle controller and/or the voltage controller’. There is no example given.” (OS at [34])
60. The OS then outlines various issues the expert declarants were said to have in construing the phrase:
“The experts were each approached to provide an understanding of how a skilled addressee might understand this part of the claims. Mr Waterreus discusses uses of diagnostic information more broadly, giving examples of diagnostic information about the generator and diagnostic information about the pump. He indicates that he doesn’t know what ‘diagnostic information relative to the operation of the throttle controller and/or the voltage controller’ might be.
Mr Taylor also discusses use of ‘diagnostic information’ generally. He then refers to how he understands ‘diagnostic information relating to operation of the throttle controller and/or the voltage controller’ might be used, without attempting to define the expression or to give an example of what that information might be.
Mr Taylor suggests that if the throttle controller is an ECU then it might ‘conceivably’ supply information ‘that allows the first controller to determiner (sic) that the generator will operate inefficiently, or in an unsafe manner, if the ECU causes the prime mover’s speed to increase above a particular maximum value’.
He does not describe what this information might be. Moreover, he doesn’t suggest that other throttle controllers or any voltage controllers might operate in a similar fashion. At best, the relationship of this ‘information’ to the ‘operation of the throttle controller’ is peripheral. Any ‘diagnostic’ aspect is related to the generator, not the throttle controller.” (OS at [35] to [38], references to footnotes removed, emphasis in original)
61. However, it is quite apparent that Mr Taylor was able to readily give “diagnostic information” meaning:
“In general terms, I understand that ‘diagnostic information’ generally means information that enables the operating performance, status or condition of particular system components or functions to be determined. This information can be used to identify operating faults or poor system performance. This type of information can also be used by control systems to rectify operating issues in real-time, or may be stored and used subsequently to identify issues during servicing.” (Taylor1 at [38], emphasis in original)
62. Mr Waterreus’s evidence on the nature of “diagnostic information”, alluded to by the Opponent, is as follows:
“Paragraph [0016] [of the application] talks about using the second controller to send ‘diagnostic information relating to the operation of the throttle controller and/or the voltage controller’ to the first controller, and then using this information to ‘determine the control signals’. The UON GMC uses diagnostic information such as excess motor temperature (or excess temperature of the water near the pump) to override control signals, alarm and shut down the GMC. It does this by supplying information to the ComAp controller, which can then relay the information to the master controller. I would not describe this as ‘diagnostic information relating to the operation of the throttle controller and/or the voltage controller’, but I don’t know what other diagnostic information it could be referring to. If there is a problem with the throttle controller or the voltage controller then the only information relayed to the master controller is that the genset will be stopped so that the problem can be corrected. Paragraph [0054] [of the application] of the specification appears to discuss the same concept, but does not assist me in understanding the nature of the information and the control being suggested.” (Waterreus1 at [41], emphasis added)
63. However, Mr Waterreus states this at [11] of Waterreus2:
“In paragraph [38] of his declaration Mr Taylor defines ‘diagnostic information’ in general terms. I agree with his definition. This does not assist me in the issue raised in my earlier declaration, that I don’t know what ‘diagnostic information relating to the operation of the throttle controller and/or the voltage controller’ means.”
64. I am having some difficulty understanding how Mr Waterreus can accept the general definition of “diagnostic information” provided by Mr Taylor, yet not be able to identify anything that could be said to be “diagnostic information relating to the operation of the throttle controller and/or the voltage controller”. Mr Waterreus has not provided any real explanation for his position. At a very simple level, the power usage by the throttle controller or voltage controller would fall within the ambit of “diagnostic information” for these devices, although that may not be the most obvious or desirable “diagnostic information” for the purposes of the claim.
65. In my opinion, Mr Waterreus appears to have taken the view that “diagnostic information” relating to the throttle controller and/or voltage regulator is strictly limited to information concerning the intrinsic operation of those devices and no other devices as such, and because of this (noting the way the claims work as a whole, particularly given how the throttle controller is for controlling the rotational speed of the engine/prime mover and the nature of the “control signals”), he seems to be unable to identify any such diagnostic information from these devices that could work within the bounds of the claim. For example, where the throttle controller is an ECU, this would typically mean the ECU comprises all sorts of information concerning the engine, for example, engine speed, timing and air to fuel ratios (see Taylor1 at [15], Waterreus2 at [13] and BSN-2). However it would seem that Mr Waterreus would exclude these because he views such variables as relating to the engine/prime mover and not the ECU. This view is somewhat supported by the sentences emphasised in bold above from Waterreus1 at [41]. Although the information concerned is with regard to the engine/prime mover, it does appear that this fact has led to Mr Waterreus automatically dismissing, or perhaps not even considering, the possibility that it may be information related to the state or condition of other devices as well.
66. However, construction of terms is not necessarily a zero-sum game. The fact that these variables reflect the state or condition of the engine (or prime mover) does not mean that they cannot also reflect a state or condition relating to the ECU. In my view, these variables are variables inextricably linked to the intrinsic operation of the ECU. Putting aside the fact that an ECU would invariably be arranged to keep track and utilise such variables concerning engine performance as part of its role in controlling the engine (or prime mover); see Taylor1 at [15], they are variables inextricably linked to the intrinsic operation of the ECU.
67. Related to the preceding points is the fact that Mr Waterreus also seems to discuss the meaning of “diagnostic information” by reference to the Opponent’s GMC product, instead of trying to give the phrase meaning within the bounds of the claims (or as used in the application or patent for that matter). A consequence of Mr Waterreus’s position seems to be that he requires specific examples of the “diagnostic information” before being able to give the term meaning.
68. In my view, the Opponent’s arguments regarding lack of clarity suffer from similar difficulties as Mr Waterreus’s evidence. It is apparent from the OS, at [37] and [38] in particular, that the Opponent appears to equate clarity with the need to provide a precise laundry list of what could possibly fall within the scope of “diagnostic information”. Such a requirement is not necessary – indeed, a specification need not provide any examples of something, as long as what falls within the scope of that something can be reasonably given meaning by the PSA. Notably the Opponent, while listing some principles relevant to construction of terms at [32] of the OS, simply fails to appropriately apply these to the phrase and avoids any real attempt to give the phrase an appropriate meaning within the bounds of the claims. Similarly, in the OS, the Opponent appears to require a more limited understanding of what “diagnostic information” means than is apparent from the use of the phrase in the claims, as apparent where it states, at [38] of the OS that “Any ‘diagnostic’ aspect is related to the generator, not the throttle controller”.
69. At the hearing, Mr Newman suggested that he did not think there was a dispute as to what “diagnostic information” is as such, but rather the dispute arose from the phrase “relating to”. Mr Newman suggested, uncontroversially in my view, that what “related to” meant would depend on context. After discussing a hypothetical implementation of the claimed invention, involving heat distorted railway tracks, Mr Newman arrived at the position, as I understood it, that the plain meaning of “diagnostic information” relating to the throttle controller and/or the voltage regulator would be fine if it provided a workable standard. However, Mr Newman’s plain meaning suffers from an unnecessary need to narrow down the nature of the “diagnostic information” similar in nature to Mr Waterreus, as evidenced in the OS, and as evidenced by this from Mr Newman at the hearing:
“But there is some context, and that context is in the phrasing itself. So it talks about diagnostic information relating to operation of the throttle controller and or the voltage regulator. So that gives us three options, that’s diagnostic information relating to operation of the throttle controller or diagnostic information relating to operation of the voltage regulator or diagnostic information relating to operation of both of them together. Now that in our submission makes any construction of these terms very narrow. … as a matter of construction, there must be diagnostic information which is related to operation of the throttle controller but is not related to operation of the voltage regulator. And vice versa, there must be diagnostic information relating to the voltage regulator which is not relating to operation of the throttle controller. So what we’re talking about then is actually the operation of those components, not the broader system related to those components, but operation of those components.” (emphasis added)
Mr Newman’s oral submissions then addressed the expert evidence on the “diagnostic information” in materially similar terms as in the OS as discussed above. Mr Newman later states, in relation to “diagnostic information, that “We simply don’t know what the limits of this term is, and therefore we cannot determine whether something is infringing it or not because we don’t know how far it goes.”
70. I would agree that information concerning the operation of the throttle or the voltage controller would fall within the ambit of the claim. However, as apparent from my discussion above, “relating to” in connection with diagnostic information is not necessarily limited to information of intrinsic relevance to only the throttle controller or only the voltage regulator (or perhaps both) and nothing else. Mr Newman’s arguments concerning the expert evidence on “diagnostic information” have already been addressed above. Given the plain meaning of “diagnostic information” and “relating to”, I find it hard to believe that a PSA would not in fact know what fell within the scope of the claims when considered in any applicable context. Indeed, Mr Newman was readily able to identify variables out of the scope of “diagnostic information” in his hypothetical railway track and process plant implantation.
71. I have been able to construe the term “diagnostic information” as discussed above, and in doing so no lack of clarity is apparent in the use of this phrase within the claims. The PSA, in my view will be able to determine what the “diagnostic information” is within any particular implementation of the claim. A laundry list defining the boundaries as apparently desired by the Opponent is not needed. I consider that the Opponent’s allegations of lack of clarity do not bear scrutiny.
Clarity – conclusion
72. I am not satisfied that the phrase “diagnostic information” as used in the claims leads to any lack of clarity. The Opponent has been unsuccessful in making out this ground of opposition.
s40(2)(a) – Clear enough and complete enough disclosure
73. The requirement for clear enough and complete enough disclosure was introduced into the Act as part of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“RTB”) reforms. Specifically, s40(2)(a) reads as follows:
“(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;…”
74. As indicated in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 (“Encompass”) at [167] the requirements of s40(2)(a) equate to enablement of the invention; I note that this was undisturbed in the appeal to Encompass in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2019] FCAFC 161. As explained in the Explanatory Memorandum (“EM”) to the RTB legislation at item 8, enablement amounts to a requirement that “…sufficient information must be provided to enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention”.
75. The nature of s40(2)(a) was considered in some detail by a Dr Barker in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (“CSR”), including an extensive consideration of a number of UK and EPO decisions relevant to an understanding of this part of the Act. After this consideration Dr Barker provided a test for s40(2)(a) at [95]:
“In order to decide whether a specification provides a disclosure as required by section 40(2), it is necessary to:
i)construe the claims to determine the scope of invention as claimed,
ii)construe the description to determine what it discloses to the person skilled in the art, and
iii)decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.”
76. In Evolva SA [2017] APO 57; 133 IPR 147 (“Evolva”) at [45], Dr McCaffery provided some further analysis and consideration of UK and EPO decisions relevant to the question of s40(2)(a). After having done so, Dr McCaffery expanded on the third point from the test in CSR as follows (at [45]):
“Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims, and in particular:
(a) Is it plausible that the invention can be worked across the full scope of the claim?
(b) Can the invention be performed across the full scope of the claim without undue burden?”
77. I note that the above approach was approved by Justice Burley in Cytec Industries Inc. v Nalco Company [2021] FCA 970; 162 IPR 202 at [143] to [146]. It was also adopted by Justice Burley in TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493; 170 IPR 313 at [154], in the context of determining priority dates, albeit without reference to the sub-test from Evolva.
78. It is also worthwhile to repeat the following regarding “relevant ranges” in the context of s40(2)(a) as espoused in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178; 300 FCR 408; 176 IPR 336 (“Jusand”) at [186]:
“It will be seen that, like this case, Regeneron was concerned with the question of when a range is relevant. Regeneron had submitted that the invention in the patent was the idea of using a reverse chimeric locus to solve the problem of immunological sickness in transgenic mice and that the range of the human variable region over which a reverse chimeric locus could be applied was not relevant to its invention. The Supreme Court rejected this contention. Having examined the English and European authorities, Lord Briggs for the majority of the Supreme Court set out this test at [56]:
Reflection upon those European and UK authorities yields the following principles:
(i) The requirement of sufficiency imposed by art. 83 of the EPC exists to ensure that the extent of the monopoly conferred by the patent corresponds with the extent of the contribution which it makes to the art.
(ii) In the case of a product claim, the contribution to the art is the ability of the skilled person to make the product itself, rather than (if different) the invention.
(iii) Patentees are free to choose how widely to frame the range of products for which they claim protection. But they need to ensure that they make no broader claim than is enabled by their disclosure.
(iv) The disclosure required of the patentee is such as will, coupled with the common general knowledge existing as at the priority date, be sufficient to enable the skilled person to make substantially all the types or embodiments of products within the scope of the claim. That is what, in the context of a product claim, enablement means.
(v) A claim which seeks to protect products which cannot be made by the skilled person using the disclosure in the patent will, subject to de minimis or wholly irrelevant exceptions, be bound to exceed the contribution to the art made by the patent, measured as it must be at the priority date.
(vi) This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made. Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be made, as at the priority date.
(vii) Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made.
(viii) Enablement across the scope of a product claim is not established merely by showing that all products within the relevant range will, if and when they can be made, deliver the same general benefit intended to be generated by the invention, regardless how valuable and ground-breaking that invention may prove to be.” (emphasis added)
79. As a final observation, it can be seen that the expanded consideration from Evolva nominally comprises two extra sub-tests. However item (b), relating to undue burden, can be understood as being inherently encompassed by iii) from CSR due to the fact that “enabling disclosure” includes a requirement for the absence of undue burden as understood from the EM. Thus Evolva can be seen as adding a plausibility requirement as a kind of threshold test in assessing s40(2)(a); that is, there can hardly be said that there is an enabling disclosure where it is implausible that the invention can be worked across the full scope of the claim.
The Opponent’s s40(2)(a) arguments
80. The Opponent’s arguments under s40(2)(a) are made with respect to the phrases “diagnostic information” and “system for powering and controlling an electric motor”. There were also some general submissions concerning enablement made by Mr Newman at the hearing. In line with its comments concerning the SGPs and grounds under s40(2)(a), s40(2)(aa) and support under s40(3), the Opponent has amalgamated the arguments under s40(2)(a) and support under s40(3) into an indistinguishable whole at [39] to [58] of the OS. However, I will commence by considering the phrases concerned for the purposes of s40(2)(a) and will later consider support and best method. I will also refer to the Applicant’s submissions where appropriate.
Diagnostic information
81. The Opponent’s arguments with respect to this phrase segue from, and somewhat overlap with, its clarity arguments, starting at [39] of the OS. Whilst the 40(2)(a) arguments seem to overlap with each other in way that makes it difficult to untangle the streams of argument put, I take the basis of the Opponent’s arguments to be the following matters:
i) How is a target speed of the electric motor determined based on both information received from the sensor and the diagnostic information? (OS at [41] to [47]);
ii) The only example of a voltage regulator is an AVR, whilst the throttle controller could be an actuated governor, and neither of these devices are capable of providing relevant diagnostic information (OS at [48]);
iii) There is no indication of how diagnostic information could be used as the basis for throttle control to control the target speed of a pump where the prime mover is a water turbine or, more generally, how to perform the invention where the prime mover is a gas, steam, water or wind turbine mover, or, presumably, where the “engine” of the application as claimed extends to such devices as well (OS at [49] and [51]); and
iv) The phrase “diagnostic information relating to operation of the throttle controller and/or the voltage regulator” is unclear and is not supported due to there not being any example of this provided, there being “…insufficient information in the specification to detail how a skilled addressee is to perform this aspect of the claims” (OS at [52]).
I will consider each of these points below.
82. With respect to point i), the Opponent points to Mr Taylor’s evidence in support of its position:
“Mr Taylor’s analysis is telling. In the case of an ECU, he expects that the first controller could conceivably receive information from both sensor and diagnostic information, and he expects that the feedback loop would insure (sic) that the first controller only instructs the second controller to accelerate the prime mover to a speed that does not exceed the maximum. This is because he infers that the diagnostic information is used as part of an internal feedback loop.
Mr Taylor gives no basis for this inference. As Mr Waterreus points out, there is simply nothing in the specification that supports it, or instructs how it might be applied.
Further, Mr Taylor’s expectation of how the system might operate is directly contradicted by Mr Waterreus, who explains that Mr Taylor’s inferred operation would result in the PID loop ‘fighting you to maintain its set point’. This conflict between the experts might reflect Mr Waterreus’s more specific experience in the area of submersible pumps.
It is not necessary for present purposes to determine which expert is more correct in how such a multi-variable feedback loop might operate. It is plain that neither approach represents a trivial exercise in programming of a controller. And it is plain that the specification does not provide any guidance.
The claims of both the Opposed Application and the Opposed Patent have been amended specifically to include this aspect of the ‘invention’ as an essential integer of every independent claim. At best, the operation of this integer is said to be ‘inferred’ from the brief references to it in the specification. There is nothing here which goes close to enabling the integer in a single embodiment, let alone across the scope of the claims.
To elaborate on this point, the only example which Mr Taylor provides which, in his view, could meet the wording of the claim is when the diagnostic information relating to the operation of the throttle controller and/or the voltage regulator/controller is supplied by an ECU acting as the throttle controller.
The specification details that the throttle controller may comprise an ECU, or else may comprise an actuated governor. The only example of a voltage regulator given is that of an Automatic Voltage Regulator. Mr Waterreus notes that no actuated governor or voltage regulator could provide relevant diagnostic information.” (OS at [42] to [49], references to footnotes omitted, emphasis in original)
83. Some of these arguments are difficult to follow. The evidence of Mr Taylor cited by the Opponent (being [39] and [40] of Taylor1), simply provides Mr Taylor’s opinion on how he sees the invention uses the diagnostic information and sensor information in a general sense, followed by a specific example of this by reference to an embodiment comprising an ECU. It is hard to see how this evidence is somehow “telling” in an enablement way as apparently suggested by the Opponent.
84. Further, the suggestion that Mr Taylor provides no basis for his “inference” misapprehends the nature of expert evidence – Mr Taylor is providing evidence, based on his expert knowledge and experience, as to what a PSA would know, do or understand with respect to the matters in suit – as noted above, the Opponent accepts that Mr Taylor can represent the PSA. This knowledge and experience are what provides the basis for Mr Taylor’s “inference”. An expert declarant may provide other documentation to support their views, but the absence thereof does not necessarily detract from the fact their opinion comes from a place of expert knowledge. Of course, what weight is put on the expert evidence is another matter.
85. The Opponent, at [43] of the OS, points to Mr Waterreus’s evidence as supporting its views regarding Mr Taylor’s inference:
“In paragraph [39] [of Taylor1] Mr Taylor ‘infers’ that the patent application is suggesting a complex multi-variable feedback loop. I can’t see any part of the specification which supports this inference, or which provides directions on how it could be implemented.” (Waterreus2 at [12]).
86. It is worthwhile citing [39] and [40] of Taylor1 in full:
“The Patent describes the diagnostic information as being ‘relating to’ the ‘operation of the throttle controller and/or the voltage controller’ and goes on to say that the first controller uses this information when determining the control signals that the first controller sends back to the second controller. In view of the information at [0006] of the Patent [[0006] of the application], I understand that the first controller takes into account both the diagnostic information and the sensor signals when determining these control signals. I, therefore, infer that the diagnostic information is used as part of an internal feedback loop that is intended to prevent the first controller from issuing control instructions to the second controller that, if followed, would cause adverse generator operating issues. The diagnostic information will allow the first controller to determine if/when such issues will arise.
By way of example, the Patent at [0027] says that in one case the throttle controller used by the system may be an ECU. In practice, an ECU receives and analyses information that enables it to determine how a wide variety of different engine conditions and functions are performing in real-time. In such cases, I expect that the first controller of the invention could, therefore, conceivably receive: (i) information from a sensor indicating that the first controller needs to cause the motor’s speed to increase, and (ii) diagnostic information that allows the first controller to determine that the generator will operate inefficiently, or in an unsafe manner, if the ECU causes the prime mover’s speed to increase above a particular maximum value. I expect that the feedback loop would ensure that the first controller only instructs the second controller to accelerate the prime mover to a speed that does not exceed the maximum.” (emphasis in original)
87. The invention, both as described and claimed, clearly comprises a form of feedback loop. There is also the clear indication that the second controller can send diagnostic information to the first controller, which can be used by the first controller to determine control signals; see, for example, the application at [0016] and [0054], besides the claims themselves. Seen in this light, Mr Taylor’s “inference” is logically probative, and I fail to see the basis of Mr Waterreus’s criticisms of Mr Taylor’s inference per se.
88. Of course, the Opponent has latched onto Mr Waterreus’s suggestion about there being no directions in the specification as to how Mr Taylor’s inference could be implemented. However, this statement does not, in my view, mean what the Opponent would hope it does. The fact that there is no disclosure concerning Mr Taylor’s inference does not mean there is a lack of enablement for the same – it does not answer the question as to whether the PSA is able to perform the invention across its full scope without undue burden or the need for further experimentation. In some cases, the general mention of a feature will comprise an enabling disclosure, where the creation or use of that feature as claimed is well within the knowledge and abilities of the PSA; for example a reference to a “tyre” with no further instructions on its manufacture or use is unlikely to bamboozle a PSA in the automobile industry.
89. Similarly, the Opponent’s suggestion, at [44] of the OS, that Mr Waterreus has directly contradicted Mr Taylor’s “inferred operation” is overly optimistic. The Opponent cites Waterreus2 at [16] in this regard, which does refer to “fighting you to maintain its setpoint”. However, it is rather illuminating to reproduce [13] to [16] of Waterreus2 in full:
“Armour IP has asked me to assume that ‘diagnostic information relating to operation of the throttle controller’ means ‘diagnostic information about the engine’. If the throttle controller is an ECU, then it is likely to receive information about the engine condition. In this situation, the ECU could possibly relay warnings regarding engine overheating, engine overloading, low oil level or low oil pressure. These could all be considered ‘diagnostic information about the engine’, although none of them are referred to by the patent specification or by Mr Taylor.
It is possible that engine temperature or engine load could serve as part of the feedback loop conceived by Mr Taylor. In both cases, the only way I can envisage this working is to have a methodology for altering the set point target (such as flow rate, pressure or fluid level) based on the engine temperature or engine load exceeding a safe level. As an example, you might drop the flow rate set point target by 10% if the engine temperature goes 5°C above its safe level. These are hypothetical figures. The impact of the change in set point on the second controller and the engine would need to have been worked out and tested in advance.
Instead of a set ratio of altering set point target based on engine temperature, the set point target could be operated as a PID loop within the second controller. This would require extensive programming work.
In either case, the diagnostic information would be used to change the set point target in the first controller, not to directly change the target speed. Otherwise the PID loop (assuming that’s what the first controller is using) would keep fighting you to maintain its set point.”
90. It is not entirely clear to me that the embodiment constructed by Mr Waterreus necessarily reflects the “inferred operation” outlined by Mr Taylor as seems to be suggested at [44] of the OS. Rather, it seems to me, on comparing [39] and [40] of Taylor1 to [13] to [16] of Waterreus2, that Mr Waterreus has constructed his own, if rather more specific, embodiment of Mr Taylor’s “inferred operation”, noting that Mr Talyor’s “inferred operation” does not necessarily require variations of set points or the use of a PID loop in the second controller. As pointed out by the Applicant at [135] of the AS:
… Mr Waterreus says that the only way he can envisage the system working is to have a methodology for altering the set point target. This gives rise to his conclusion that the diagnostic information is only used to change the set point. However, Mr Waterreus does not explain why Mr Taylor’s simpler arrangement would not work. Namely, a control loop functions based on information received from the sensor and the set point inserted into first controller, subject to any changes required to account for the diagnostic information (eg maintain a water level of 15m in a bore hole but do not exceed a speed of 35hz). Mr Waterreus attempts to characterise this negativing by saying it will result in the PID loop ‘fighting you to maintain its set point’. However, such a conflict achieves precisely what the system is designed to achieve - preventing the first controller from instructing the second controller in a way that will lead to generator operating issues. Mr Waterreus does not explain why such a conflict is problematic. Thus, contra US (OS) [44], Mr Taylor’s expectation of how the system might operate is not directly contradicted by Mr Waterreus.” (emphasis in original)
Although the implementation date of the system outlined at [34] of Meredith is unclear, the discussion at [19] and of the draft requirement specification (CSM-4) at 1.1 “PLC Requirement”, 2.1 “PLC Functionality” and 2.2 “VSG Functionality” (drafted in 2017, see Meredith at [65]) are indicative that something very like the inventive concept was already a BHP WAIO standard several years before the earliest priority date of the patent. As argued by Mr Newman at the hearing, and perhaps better outlining what was meant by “two controllers” in relation to the inventive concept, the patent was said to essentially claim BHPs specification for how it wanted VSGs to work.
However, there are several difficulties with respect to the Opponent’s contention that Mr Meredith was at least partially responsible for the inventive concept, or that the inventive concept was somehow a copy of BHP’s specifications/requirements. Firstly, what Mr Meredith got up to with implementing BHP’s VSGs, for example as outlined at [34] of his declaration, while very similar, is not the same as the inventive concept. In this regard, Mr Meredith makes it quite clear that the BHP requirements were only ever interested in flow control:
“As BHP has only ever required of me, and still only requires of me, Flow Control (other than as I describe in paragraph 36 below), I have not programmed any PLCs used for dewatering applications to include any other type of control. This includes every VSG I have programmed for Allied Pumps.” (Meredith at [35]).
Paragraph [36] of Meredith discusses a form of programming used with the Opponent’s VSGs which is different from that described at [34] of Meredith, and therefore rather different from the inventive concept:
“While BHP only utilises Flow Control for dewatering applications, the VSG supplier, UON, provides additional control capability for the VSGs it has supplied to BHP. UON incorporates the logic for Level Control (control of the pump speed using a level sensor) and Flow Control in its ComAp generator controller. Therefore, at UONs request, I have programmed the Allen- Bradley PLC differently from what I have that described above in paragraph 34 to facilitate this. For UON’s VSGs, I do not include Flow Control capability in the Allen-Bradley PLC. Rather, I provide a bridge between the Allen-Bradley PLC and the ComAp generator controller, so the Allen-Bradley PLC is able to instruct the ComAp generator controller to perform Level or Flow Control, as selected by an operator via CITECT.” (emphasis in original)
I note that this is corroborated at [24] of Waterreus1:
“Until recently, UON wished to retain full control of its system and only allowed BHP's master controller to act as a bridge providing relevant sensor data to our ComAp controller. Since about 2018 UON has been in discussions with BHP about where the setpoint comparison would be done. We are aware that one of our principal competitors, Allied Pumps, have used the preferred BHP two-controller system since 2018.”
Mr Meredith also states at [38] of his declaration that:
“To my knowledge, BHP only uses Flow Control on the UON VSGs, regardless of the fact that another type of control is provided by UONs VSGs, because BHP does not implement Level Control for its VSGs.”
In other words, what one takes away from the BHP WAIO standards is a requirement for feedback based on flow control sensor data only. This is somewhat more limited than the more general idea of the inventive concept which specifies that the feedback sensor data comprises information about an operating environment or condition of the electric motor. Indeed, it is not apparent that one would even necessarily get from the BHP standard to the inventive concept, since the BHP standard is not at all interested in the operating environment or condition of the electric motor as such, but simply in providing a desired flow control. CSM-4 does mention control variables other than flow at 2.1, for example, but one would still not take CSM-4 as outlining a control loop based on the operating environment or condition of the electric motor in a more general sense.
Secondly, nowhere does Mr Meridith clearly suggest that he was the originator or creator of the inventive concept as such or even the BHP requirements as exemplified at [34] of his declaration. Nor does he claim to be an inventor of anything in any way. The evidence is somewhat suggestive that he may have been the originator of some aspects of the BHP WAIO standards, having been involved in developing BHPs requirements or standards “…for dewatering applications for PLCs and associated equipment” (Meredith at [25]). However, there are no clear statements to this effect, and it is not entirely apparent whether Mr Meredith was originally developing these standards from scratch or simply setting down something that extended from pre-existing BHP requirements. For example, CSM-4 states under 1.1 that “it has been decided that all Dewatering trailers will incorporate a WAIO standard PLC”. It is not clear how that decision was made or who made it. Another example is the fact that, as observed above, BHP, not Mr Meredith, specified the use of flow control.
This is reinforced by the fact that the motivation for drafting CSM-4 (which was never an “official” BHP document; see Meredith at [63] and [67]) was said to be the following by Mr Meredith:
“As described in section 1.0 of the MineData Specification, the aim of the document was to:
(a) align the control systems of BHPs VSGs with the WAIO standards where applicable;
(b) provide support by Integrated Remote Operations Centre where practicable;
(c) provide flexibility in the selection of VSGs;
(d) ensure the protection of sensitive electronics;
(e) provide continuous availability when not running (where solar is installed); and
(f) provide full local diagnostics if Wireless Telemetry System (WTS or radio network) unavailable.” (Meredith at [62])
While the Opponent has criticised the lack of information concerning what may be described as the “inventive journey” (see the OS at [69]) with Mr Newman making similar comments at the hearing, there is no requirement for this to be provided by the inventors in order to establish entitlement. While not overly detailed, [10] of Vose2 refers to [0004] of the patent and outlines issues that are congruent with [0004]. It may be said that some of the motivations for CSM-4, as given at [62] of Meredith, fall within the ambit of the issues identified by Mr Vose. They are not, however, identical, and in many respects BHP’s motivations appear to stem from a desire to ensure integration with its existing systems and standards, keeping control over the VSGs in its use and in the choice of these more generally, rather than in any general concerns with using a single controller. In these circumstances, it is not inherently implausible, given Mr Vose’s involvement in business development (from [4] of Vose2) that Mr Vose and Mr Jain identified the more general issues outlined at [0004] of the patent, and then came up with the inventive concept as I have identified it, even assuming they were aware of BHP’s requirements. While I do acknowledge the similarities that can be drawn between the inventive concept and the BHP standards, the evidence, in my view, does not demonstrate, on balance, that Mr Meredith was somehow responsible for the inventive concept.
The Opponent’s assertions that Mr Keogh and Mr Reid are inventors relies on a rather optimistic interpretation of Meredith, as apparent from [64] of the OS:
“Mr Meridith’s affidavit filed as exhibit BSN-3 shows that the concept of using two controllers was outlined by him in around 2017. Using the ‘current generation of VSGs [that is, the UON VSG invented by Mr Keogh and Mr Reid] the BHP PLC was to operate all logic loops (including set-point control for flow / level / pressure) and that the generator controller should merely operate based on a speed reference from the BHP PLC.’”
Although not cited at [64] of the OS, the basis for the suggestion that Mr Meredith’s discussion of the “current generation” of VSGs meant the Opponent’s VSGs appears to come from [12] of Newman2:
“In cross-examination Mr Meredith confirmed that his reference to the ‘current generation of VSGs’ referred to UON VSGs.”
Paragraph [12] of Newman2 is entirely hearsay, noting that there is no aspect of the transcript from the hearing of NSD 639/2021 actually in evidence. But, in any case, the inventive concept is not based on any particular type of VSG, and, as seen above, BHP’s use of the Opponent’s VSGs leads to something rather different to the inventive concept. Notably, nowhere in his declaration does Mr Reid state that he is an inventor with respect to the patent. Mr Keogh has not given evidence at all. There is no other evidence that would support the notion that either of Mr Keogh or Mr Reid were responsible for the inventive concept.
As against the difficulties for the Opponent’s case are the clear statements at [12] to [14] of Vose2:
“Pursuant to Ground 1 and paragraph [1] of the SGP [the SGPP], the Opponent alleges that the Patentee is not entitled to the Patent, and that the Opponent and MineData Pty Ltd (MineData) are jointly entitled to the Invention.
The Invention was not conceived by any employees, directors or agents of the Opponent. This includes the employees of the Opponent named Mark Keogh and Carl Reid who are mentioned in the SGP.
I am aware that MineData has carried out various programming services on behalf of Allied Pumps for VFG units produced by Allied Pumps in the past. This includes VFG units that have embodied the Invention. Craig Meredith, who is the MineData employee referenced in the SGP, has carried out the relevant programming tasks so far as I am aware. Craig Meredith has carried out these tasks in accordance with technical specifications relating to the Invention that have been provided to him. The Invention was not conceived by Craig Meredith.” (emphasis in original)
The OS, at [65] to [67], seeks to cast doubt on Mr Vose’s evidence:
“Mr Meredith then proceeded to implement this two-controller solution on pumps supplied by Allied Pumps. He is ‘responsible for programming every VSG PLC [that is, the claimed “first controller] for each of BHP’s Western Australian Iron Ore sites’.
In Evidence in Answer, Mr Vose suggests that ‘MineData has carried out various programming services on behalf of Allied Pumps for VFG units produced by Allied Pumps in the past, [including] VFG units that have embodied the Invention …Craig Meredith has carried out these tasks in accordance with technical specifications relating to the Invention that have been provided to him’.
This evidence is clearly at odds with evidence Mr Meredith provided on behalf of Allied Pumps. Mr Meredith’s work was not ‘on behalf of Allied Pumps’, it was on behalf of BHP.
Notably, Mr Vose does not adduce the alleged ‘technical specifications’ provided to Mr Meredith, or suggest when these documents were provided. Mr Meredith’s document CSM-4, drafted in about 2017, discloses the ‘inventive heart’ of the opposed patent specifications. Allied Pumps has not attempted to refute the Opponent’s position that this document was in Allied Pumps’ possession from sometime in 2018.” (references to footnotes removed)
The arguments over who Mr Meredith was working for, or on behalf of, are little more than semantic nitpicking of no real consequence. The fact that Mr Meredith programmed VSGs for BHP does not exclude his doing the same for Allied Pumps. Indeed, at [41] of Meredith, Mr Meredith refers to programming VSGs for Allied Pumps. The evidentiary circumstances, as discussed above, are not such that somehow the onus has shifted due to Mr Vose not supplying the “technical specifications” concerned.
There is also this at [69] and [70] of the OS:
“Mr Vose, a named inventor of the opposed patent and patent application, has provided no information at all about how or when (or, indeed, if) he conceived of the invention, what the impetus for this was, what work was involved or what the involvement was of the other named inventor, Mr Jain. In the face of a clearly detailed allegation of lack of entitlement, and extensive evidence from Mr Meredith supporting the allegation, this lack of evidence from Mr Vose is telling.
In support of the ground of lack of entitlement is a detailed affidavit from Mr Meredith, on which he was cross-examined in open court, explaining the history of the ‘two-controller’ system from 2017. In answer is an unsupported statement from Mr Vose that ‘the invention was not conceived by Craig Meredith’. Mr Vose, it will be observed, does not even declare that he was an inventor, just that he is named as such.”
Mr Newman made submissions along similar lines at the hearing.
Putting aside the fact I have addressed matters concerning the “inventive journey” above, in some respects these submissions seem to be premised on the onus of proof being turned on its head. It is not a matter of the listed inventors proving that they were the inventors and how the invention came to be. It is the Opponent who needs to prove on balance, given the case it has put, that someone else was responsible for the inventive concept. If the circumstances were such that the onus may have shifted, then perhaps it might be the case that such evidence from Mr Vose or Mr Jain would be needed. However, as should be apparent from the preceding discussion, the evidence is not sufficient to lead to a shifting of the onus in some way.
The Opponent’s arguments about Mr Vose not declaring he was an inventor, and repeated by Mr Newman at the hearing, is more semantic nitpicking of no consequence. Given [20] of Vose2, it would be tantamount to providing deliberately misleading evidence if Mr Vose was not in fact an inventor but was content to state that he is a named inventor as per [4] of Vose2. On balance such a scenario is unlikely and there is no evidence to support such a supposition.
Finally, and connected with the preceding discussion under this heading, there is no evidence to suggest that Mr Vose and Mr Jain obtained the inventive concept from Mr Meredith, or anyone else for that matter.
I am of the view that the Opponent has not established that Mr Keogh, Mr Reid or Mr Meredith were responsible for the inventive concept, or that anyone other than Mr Vose and Mr Jain are in fact the inventors.
Are there any contractual or fiduciary relationships give rise to proprietary rights in the invention?
As I understand it, the Opponent’s case did not rest on entitlement via contractual or fiduciary relationships (other than those that would arise if Mr Keogh and Mr Reid were in fact inventors). Annexure SLV-B shows a contract dated 18 March 2021 assigning the application and further patent applications based on the application (for example, the patent) from Allied Pumps to the Patentee. Mr Newman sought to cast, as I understood it, some doubt on the provenance of this document on the basis that one of the signees is not known to have any connection to the Patentee or Allied Pumps by the Opponent. However, the Opponent’s lack of knowledge on this point is simply insufficient to conclude that the assignment is prima facie invalid in some way. There is no evidence that suggests that there are contractual or fiduciary relationships leading to entitlement to any party other than the Patentee.
Conclusion on entitlement
I conclude that the Opponent has failed to establish that any party other than the Patentee is entitled to the patent. It follows that the Opponent has been unsuccessful in making out this ground of opposition to the patent.
It also follows that is unnecessary for me to consider whether I should exercise my discretion under s60(3) and consider entitlement as part of the opposition to the application.
Conclusion
No grounds have been made out with respect to either of the oppositions. Both oppositions are unsuccessful.
Costs
Costs usually follow the event. Based on the parties’ written submissions (as set out below), which were essentially reiterated in oral submissions, I take it that both parties seek an award of costs in their favour irrespective of the outcome.
“Costs should be awarded to the Opponent. Even in the event that no ground of opposition is made out, the amendments made to the patent specifications following the submission of Evidence in Support represent an implicit acknowledgement that the Opponent has succeeded in its opposition. “(OS at 73])
“The Opponent should pay the Patentee's costs. As is evident on the face of SOGAP 1 and SOGAP 2, the Opponent elected to run an extremely broad case relying on a large number of grounds and purported prior art information. Evidence was completed on the basis of those grounds. However, without proper explanation, the submissions filed by the Opponent abandon the vast majority of those grounds, rendering much of the evidence otiose. The Opponent attempts to cast this as a result of the Patentee’s amendments, but as above, that is not the case.” (AS at [157])
The Opponent also argued, at [74] of the OS for indemnity costs up to the amendments being incorporated in the specifications. However, this was premised, as I understood it from Mr Newman at the hearing, on the Opponent being successful in its entitlement case. That not being so, it is not necessary for me to consider whether such a variation should be made.
Turning to the submissions on costs that are still extant, both parties are, in my view, being overly optimistic on costs. The fact that the Opponent has lost both oppositions is indicative that it is not entitled to an award of costs entirely in its favour. The same may be said for the Applicant, noting the fact that amendments were made during the course of the opposition which appear to have, at the very least, rendered grounds under novelty and inventive/innovative step otiose. In these circumstances, it is typical for the Commissioner to make a split award of costs, whereby costs are awarded against the applicant up until the amendments are incorporated into the specification, and costs after incorporation of the amendments being awarded against the opponent; see for example, UON Pty Ltd v Pacific Blue VIC Pty Ltd [2024] APO 10, Dorel Australia Pty Ltd v HBG IP Holding Pty Ltd [2019] APO 9, Oakmoore Pty Ltd v ARB Corporation Limited [2019] APO 29 and Vald Performance Pty Ltd v Kangatech Pty Ltd [2024] APO 15.
I am of the view that a split award of costs, based on the date(s) the parties were informed the amendments were allowed and incorporated into the respective specification should be made. That is, against the Applicant/Patentee prior to the date concerned and against the Opponent after that date. Noting Reg 22.8 of the Patents Regulations 1991 (the “Regulations”), the award of costs in each opposition would be according to Schedule 8 of the Regulations. However, it is the case that much of the evidence and submissions were in common for both oppositions. In these circumstances it seems to me that the award of costs should be varied to reflect that fact; that is, the amounts specified in Schedule 8 for each opposition should be appropriately reduced in view of the redundancy between the two oppositions, for example where the evidence or submissions are essentially identical for both oppositions.
Consequently, I allow both parties two (2) weeks from the date of this decision to provide further submissions on how costs should be awarded, and in particular to address my currently preferred position of a split award of costs reduced to reflect redundancies in the evidence and submissions. I will then further consider the issue of costs in view of any submissions received and make an award as per my currently preferred view on costs if I consider that to be appropriate.
Dr W.E. Guinea
Delegate of the Commissioner of Patents
Annex A – Claims of 2021102100
Annex B – Claims of 2021201628
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