Uon Pty Ltd v Pacific Blue Vic Pty Ltd - [2024] APO 10

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Uon Pty Ltd v Pacific Blue VIC Pty Ltd [2024] APO 10

Innovation Patent: 2021107655

Title:Control System

Patentee:  Pacific Blue VIC Pty Ltd
Opponent:  Uon Pty Ltd
Hearing Officer:  Dr W.E. Guinea
Decision Date:  28 February 2024
Hearing Date:  Written submissions completed 24 October 2023

Catchwords: PATENTS – opposition to innovation patent that has been certified s101M – opposed on the basis of innovative step, clarity, clear enough and complete enough disclosure, and support – opposition unsuccessful – split award of costs

Representation: Patent attorneys for the opponent: Armour IP

Patent attorney for the Patentee: Mann IP

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Innovation Patent: 2021107655

Title:Control System

Patentee: Pacific Blue VIC Pty Ltd
Date of Decision: 28 February 2024
DECISION
The opposition under s 101M of the Patents Act 1990 is unsuccessful.
I award costs against the Patentee according to Schedule 8 of the Regulations up to the date before the amendments were allowed, namely 11 December 2022, and from 12 December 2022 I award costs against the Opponent according to Schedule 8 of the Regulations.
REASONS FOR DECISION
Background

Patent 2021107655 (the “Opposed Patent”) was filed in the name of Pacific Blue VIC Pty Ltd (the “Patentee”) on 24 December 2021. The Opposed Patent was filed as a divisional application of 2020201449 itself a divisional of 2019236622, and ultimately derives priority from provisional application 2019901967 filed 06 June 2019. The Opposed Patent was granted on 19 January 2022 before being examined and then certified on 11 March 2022 with no adverse report being issued.
The Opponent filed a notice of opposition under section 101M of the Patents Act (1990) on 16 June 2022. This was accompanied by their evidence in support (‘EIS’). The statement of grounds and particulars (“SGP”) asserted lack of manner of manufacture, innovative step, clear enough and complete enough disclosure, best method, clarity, and support.
The Patentee proposed amendments to the claims on 20 July 2022. A delegate of the Commissioner found these amendments to be allowable on 08 September 2022 and they were allowed unopposed on 12 December 2022. Hereinafter, all references to the Opposed Patent are to its present form subsequent to the amendments.
Evidence in answer (“EIA”) was filed on 21 September 2022. The Opponent informed the Commissioner on 23 September 2023 that they would not be filing evidence in reply (“EIR”).
The following is a summary of the declaratory evidence before me.

Dated

Declarant, dated

Exhibits

EIS

16 June 2022

Barry Stephen Newman (“Newman”)

BSN-1 and BSN-2

EIS

16 June 2022

James Waterreus (“Waterreus”)

JW-1 to JW-6

EIA

20 Sep 2022

Emlyn Williams (“Williams”)

EW-A to EW-F

Written submissions for the hearing were filed as follows:
·     The Opponent’s submissions in support (“SIS”) were filed on 14 September 2023
·     The Patentee’s submissions in answer (“SIA”) were filed on 12 October 2023; and
·     The Opponent’s submissions in reply (“SIR”) were filed on 24 October 2023.
Onus and Standard of Proof
The Patent is governed by the Patents Act 1990 (the “Act”) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act2012 which commenced on 15 April 2013.
The Opponent has opposed the Patent under subsections 101M(b) and (c). The onus is with the Opponent to satisfy me, on a balance of probabilities, that these grounds exist. If satisfied, I may revoke the Patent under s 101N(4) after providing, where it is appropriate to do so, the Patentee a reasonable opportunity to amend the specification for the purpose of removing any ground of revocation.
The Invention as Described
The specification is directed to control systems for electric pumps. While the teaching is generalised, the problem is described in the context of electric submersible pumps (“ESPs”) specifically. These pumps are designed to operate in a fully submerged state and are employed across a variety of industries and duties. The duty embodied by the specification is well bore dewatering.
The Opposed Patent explains that ESPs may be driven by either asynchronous or synchronous alternating current (“AC”) electric motors. Each class of motor is said to have its own advantages and disadvantages. Whereas asynchronous motors are simple to construct and mechanically robust, synchronous motors may be more efficient. The specification further explains that ESP motors require regular replacement and that changing circumstances may make it desirable to replace a synchronous motor with an asynchronous motor or vice versa.
The specification states that swapping between synchronous and asynchronous motors is problematic as the relevant control system will also need to be swapped (Opposed Patent at [0007]). This can lead to additional expense and delays.
The specification is relatively brief (15 pages) and provides a high-level description of the invention’s working. A control system functions to control the power supplied to an AC motor driving a pump. The system can then maintain a “set point” such as fluid flow rate, fluid pressure or the fluid level in an environment (Opposed Patent at [0058]).
The system may be powered from a variety of different sources (see item 18 in Figure 1 below), with the example given being a genset (Opposed Patent at [0047], an alternator that is mechanically coupled to an engine). Output (item 16) is provided through either a single control line suitable for either a synchronous or asynchronous motor, or one of two control lines, each being for one of either a synchronous or asynchronous motor (Opposed Patent at [0053]).
The specification explains that synchronous and asynchronous motors operate differently. Whereas the rotor of a synchronous motor turns synchronously with the field generated by the stator, the rotor of an asynchronous motor will experience slip (Opposed Patent at [0038]). The control system of the invention may be switched between a first (synchronous) motor operating mode and the second (asynchronous) motor operating mode. This switching may be performed on an as-needed basis according to the type of motor that needs to be connected (Opposed Patent at [0055]). Each of these modes may be associated with different datasets relating to the performance characteristics and operating limits of different motor types (Opposed Patent at [0043]).
The control system itself (item 10 of Figure 1, reproduced below) comprises a motor controller (item 20), and optionally, a storage device (item 24) and communication interface (item 26). The motor controller functions to vary the electrical power supplied to the motor and may take a variety of forms including a processor, programmable logic controller or programmable logic array (Opposed Patent at [0042]). The storage device functions to store the relevant set point and may take any suitable form such as RAM or flash memory (Opposed Patent at [0044]). The communication interface enables the system to be controlled via a remote user device (item 28) or master controller (Opposed Patent at [0061]) over a network (item 46) and may also take a variety of forms.
Motor control may be facilitated by one or more sensors (item 23). These may provide feedback on operating conditions such as motor speed, temperature or vibration (Opposed Patent at [0045]). In one embodiment, the control system further comprises a variable frequency drive and harmonic filter (Opposed Patent at [0048]). These are directly connected to the motor and the controller varies the frequency delivered by the drive to control the motor. In another embodiment the motor is directly connected to a variable speed genset, and the controller varies a throttle and voltage regulator to control the motor (Opposed Patent at [0050]).

The Claims

The specification ends in 5 claims which were recently amended on 12 December 2022. Claims 1 and 5, as per the latest amendments, define a control system for an electric pump and a power and control system for an electric pump respectively. Claims 2-4 are dependent on at least Claim 1.
Claim 1: A control system for an electric pump, the control system comprising:
an input and an output electrically connectable to, respectively, a power source and the electric pump;
a controller configured to cause variable electrical power to be supplied to an AC motor of the electric pump via the output and thereby control a rotational speed of the AC motor,
wherein the controller is selectively switchable between first and second motor operating modes,
wherein for the first of the motor operating modes the AC motor is a synchronous AC motor and for the second of the motor operating modes the AC motor is an asynchronous AC motor;
a storage device coupled to the controller that stores first and second datasets,
wherein the first and second datasets record operational parameters and settings for the first and second motor operating modes respectively; and
a sensor configured to measure a measurable condition or state of fluid pumped by the electric pump,
wherein the controller is further configured to control a rotational speed of the AC motor in response to signals received from the sensor, and
wherein the controller accesses and uses the first and second datasets when executing the first and second motor operating modes respectively to control the rotational speed of the AC motor.
Claim 2. The control system according to claim 1, wherein in the first of the motor operating modes the synchronous AC motor is a brushless permanent magnet AC motor.
Claim 3. The control system according to claim 1 or 2, wherein in the second of the motor operating modes the asynchronous AC motor is an induction motor.
Claim 4. The control system according to any one of the preceding claims, wherein the controller is connectable to a user control device and is selectively switchable between the first and second motor operating modes using the user control device.
Claim 5. A power and control system for an electric pump, comprising:
a variable speed genset;
an output electrically connectable to the electric pump;
a controller configured to cause variable electrical power to be supplied from the variable speed genset to an AC motor of the electric pump via the output and thereby control a rotational speed of the AC motor,
wherein the controller is selectively switchable between first and second motor operating modes,
wherein for the first of the motor operating modes the AC motor is a synchronous AC motor and for the second of the motor operating modes the AC motor is an asynchronous AC motor;
a storage device coupled to the controller that stores first and second datasets,
wherein the first and second datasets record operational parameters and settings for the first and second motor operating modes respectively; and
a sensor configured to measure a measurable condition or state of fluid pumped by the electric pump,
wherein the controller is further configured to control a rotational speed of the AC motor in response to signals received from the sensor, and
wherein the controller accesses and uses the first and second datasets when executing the first and second motor operating modes respectively to control the rotational speed of the AC motor.
Who is the Skilled Addressee?
The skilled addressee 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. v Beiersdorf (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...”
The Opponent identifies the person skilled in the art as “an electrical engineer with experience in the control and use of electric submersible pumps for dewatering purposes” (SIS at [41]). They further argue in their SIR at [23], that “the skilled addressee cannot have background knowledge which extends beyond that of a dewatering expert” as the invention will at least include applications in dewatering. For their part, the Patentee’s identification of “an electrical engineer with experience in control of electric pumps” (SIA at [26]) is somewhat broader.
I am inclined to agree with the Patentee’s broader definition. While the specification describes embodiments which are programmed to control a ‘fluid level in a well bore’ (Opposed specification at [0058]), I can see no reason to so limit the field of the invention nor, indeed, the scope of the invention claimed. The specification references several uses of electric pumps for which the invention seems suitable (Opposed Patent at [0002]). There further does not seem to be anything particular in the technical working of the invention that limits its application to dewatering specifically. Similarly, while the embodiments are limited to ESPs, the specification is clear that the invention may be applied to other pump types (Opposed Patent at [0055]). The invention thus seems broadly applicable to the field of electrically powered pumps absent any limitation to a particular duty or application. I consider that the person skilled in the art is a person having a practical interest in the general field of electrical pump control.
I do not think that it is accurate to say that the skilled addressee I have identified ‘cannot have background knowledge which extends beyond that of a dewatering expert’. While the invention may be applied in the field of dewatering, it relates to the field of electrically powered pumps generally. These fields may well overlap but I think it is likely that the CGK relating to the application of electrically powered pumps generally will differ from that relating to the application of electrically powered pumps in dewatering specifically.
The Opponent has provided evidence from Barry Stephen Newman and James Waterreus. Mr Newman is a patent attorney and is not asserted to be an expert in relation to the technology of the invention. Mr Newman’s evidence is limited to putting certain patent specifications into evidence. The Patentee has provided evidence from Mr Emlyn Williams.
Mr Waterreus is an Electrical, Instrumentation and Control Systems Engineer. He holds a bachelor’s degree in electrical engineering and has 50 years of industry experience. Much of this experience has been in the Australian mining industry. Mr Waterreus highlights his experience in both the development and application of variable speed drives (“VSDs”). This experience has been across a variety of motor sizes and industries. He also reports a broad base of technical expertise including fields such as a power generation, motor control, voltage protection, programmable logic controllers and industrial automation (Waterreus at paragraphs 1-6 and JW-2).
Mr Waterreus has been employed by the Opponent since 2018. This does not mean I must necessarily treat his evidence as biased. I note that Mr Waterreus states that he has generally complied with the Federal Court Expert Evidence Practice Note (“GPN-EXPT”) and while acknowledging that is difficult for his evidence to be entirely impartial, believes that he has been objective. I will remain cognisant of this difficultly and discuss any questions of bias if and where they arise. I further note the Patentee’s submission at [14] of their SIA that Mr Waterreus has not made a declaration in compliance with paragraph 3(i) of Annexure A to the GPN-EXPT. Paragraph 3(i) requires:
“a declaration that the expert has made all the inquiries which the expert believes are desirable and appropriate (save for any matters identified explicitly in the report), and that no matters of significance which the expert regards as relevant have, to the knowledge of the expert, been withheld from the Court…”
While a declaration of this kind is desirable, the Patentee does not appear to be making a specific allegation and I have no reason to suspect that Mr Waterreus has not made all the inquiries which he believes to be desirable nor withheld matters of significance from me.
Mr Waterreus’ evidence is given in relation to the specification of the parent application, 2020201449. The Opponent had previously run a concurrent opposition to the granting of the parent application, and it appears that they chose to file the same evidence in both oppositions. Mr Waterreus considers the evidence he gave in relation to the parent application to be directly applicable to the Opposed Patent as there are only “minor changes” to the text; see Waterreus at [101] and [102]. I agree that his evidence is relevant to the current Opposition. The textual differences between the two specifications seem mostly limited to the claims and consistory statements. I note, however, that no EIR was filed, and that Mr Waterreus has not provided evidence on the amended claims.
Mr Williams is an electrical and control systems specialist. He holds a bachelor’s degree in physics and has over 20 years of industry experience. Mr Williams has international experience in commissioning, configuring and servicing VSDs. He also has experience programming and commissioning supervisory control and data acquisition (“SCADA”) and programmable logic controller (“PLC”) based control systems for applications in the resources and maritime industries. He is currently the owner and Lead Electrical Engineer at CHB Drives (Williams paragraphs 6-17).
Mr Williams’ evidence is primarily directed to the previous claim-set, but he does comment on the amendments at paragraphs 106-109 of the EIA. I note that Mr Williams states that he has complied with the Federal Court Expert Evidence Practice Note and provides a declaration in conformance with paragraph 3(i) of Annexure A (Williams at [110]).
The Opponent submits that “the level of background knowledge brought by Mr Waterreus more closely represents that of the hypothetical skilled addressee” (SIS at [14] and SIR at [9]), and that, “Mr Williams’s expertise is in a related but different field” (SIS at [41]). They clarify in their SIR at [5], however, that they do not seek to “question the expertise of either witness” but only, “the background knowledge which should be accorded to the skilled addressee”.
The Patentee rejects any suggestion that Mr Williams lacks expertise in pumping systems and makes reference to his experience with ESPs for artificial lift (SIA at [11], I understand “artificial lift” here to be a term of art used particularly in oil and gas industries to describe methods to increase flow from a production well). They further question Mr Waterreus’ experience in dewatering (SIA at [7]). The Opponent appears to answer this at [3] of their SIR by stating that the Mr Waterreus’ employer (the Opponent) is “a leading provider or dewatering systems” and that “Mr Waterreus has demonstrated extensive experience of pumping systems in the Australian mining industry, of which dewatering is the principle application”.
It is apparent to me that both experts have extensive experience in the use and control of AC-motors and that this experience extends to the use of AC-motors for driving fluid pumps. While Mr Waterreus does seem to have had more experience with applications in mining and specifically dewatering, I am not sure this is relevant. As I have discussed above, neither the claims nor the specification are limited to mining or dewatering. The specification and submissions further do not identify a problem specific to these fields that would lead me to believe that an appropriate expert should have particular knowledge of mining or dewatering. The relevant field is instead that of electric pumps and their control.

It is my opinion that both experts are suitably qualified to give evidence in the present opposition proceedings. The Opponent seems to broadly agree with this conclusion at [11] of their SIR. They do, however, assert that each expert has “specialised knowledge” not forming part of the CGK in the preceding paragraphs:
“If the Opponent’s submission regarding the relevance of dewatering knowledge is rejected, the result is that Mr Waterreus’ specialised knowledge in the field of dewatering can’t be ascribed to the skilled addressee. Likewise, Mr Williams has specialised knowledge in the field of control systems which can’t be ascribed to the skilled addressee.
The Opponent is content to proceed on the basis that Common General Knowledge (CGK) in the field can be considered to be the knowledge held by both of these witnesses. Where one has knowledge not held by the other, this cannot be considered CGK.”
These submissions are difficult to follow. Certainly, any individual expert, no matter how closely approaching that “wraith-like creature” of the skilled addressee, will have some knowledge beyond what may be properly characterised as the CGK. It is not the case, however, that any evidence an expert gives in a field where they possess such additional “specialised knowledge” should be rejected. Similarly, given that the skilled addressee may consist of a team, it will often be the case that no natural person will possess the entirety of the relevant common knowledge. I thus cannot agree with the Opponent’s submission that I should limit the CGK to only those points on which the experts both hold knowledge.
Where the experts do disagree on matters of CGK, and where it is needed, I will appropriately weigh all the evidence to reach findings of fact.
Claim Construction and Clarity
Relevant law
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 cites the following 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.”
36. Three additional principles were also cited in Pfizer (at [250]) 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.”
Subsection 40(3) of the Act requires that the claims be clear. In BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2) [2019] FCA 2117 (“Bluescope”) Beach J explained at [705]:
“A valid claim is required to define with sufficient certainty the scope of the monopoly being claimed. Given that a patent is a public instrument, the claim must be defined in such a way that it is not reasonably capable of being misunderstood so that others know the “exact boundaries of the area within which they will be trespassers”: Electric & Musical Industries Ld v Lissen Ld (1939) 56 RPC 23 at 39 per Lord Russell of Killowen. A claim will lack clarity if a person skilled in the relevant art cannot ascertain whether what he proposes to do falls within the claim’s ambit.”
Where it is impossible to ascertain the scope of invention the claims should be found to lack clarity (see Martin v Scribal Pty Ltd [1954] HCA 48 at 12), however, ‘any purely verbal or grammatical question that can be resolved according to ordinary rules for the construction of written documents, does not, once it has been resolved, leave uncertain the ambit of the monopoly claimed’ (Welch Perrin and Co Pty Ltd v Worrel [1961] HCA 91).
As was cited from Blanco White, Patents for Inventions (5th ed) at 4-701 with approval in Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag [2008] FCAFC 121 and Flexible Steel Lacing Co v Beltreco Ltd [2000] FCA 890:
“Certainly a claim is not invalid merely because it might have been better drafted, nor merely because the patentee puts forward a construction that the court is not prepared to adopt; nor merely because it is capable of more than one construction, even though it be difficult to decide which is the right one.”
The Patentee also draws my attention to General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd (1971) 1A IPR 121 which was cited with approval in Bluescope:
“It is clear in our judgment that the question whether the patentee has sufficiently defined the scope of his claims is to be considered in relation to the facts of each case, that allowance is to be made for any difficulties to which the circumstances give rise, and that all that is required of the patentee is to give as clear a definition as the subject matter admits of. It is also clear in our judgment that, while the court is to have regard to all the relevant facts, the issue of definition is to be considered as a practical matter and little weight is to be given to puzzles set out at the edge of the claim which would not as a practical matter cause difficulty to a manufacturer wishing to satisfy himself that he is not infringing the patent.”
Evidence and submissions
The Opponent’s submissions on construction relate to the use of the terms “motor” and “pump”. Rather than integers of the claims, the Opponent submits that these terms should be construed to define suitability; see the SIS at [56] to [62] and the SIR at [12] to [15]. The Patentee seems to disagree with this approach in relation to the feature of an “AC motor”. They point to the use of the definite article and the function of AC motor in defining the configuration of the controller; see the SIA at [27] to [32].
The Opponent further submits that the status of the “AC motor” renders the claims unclear (SIS at [93] to [104]. As put in their SGP, “If the AC motor does represent an integer of the claims then the AC motor must be both synchronous and asynchronous, which is clearly absurd. If the AC motor does not represent an integer of the claims then it cannot control the switching of the motor operating modes”. The Patentee, at [46] to [48] of the SIA, argues that this does not reflect the wording of the claims.
Does the claimed invention include a motor?
The preambles of claims 1 and 5 define a “control system” and a “power and control system” respectively. Both claims are framed around several integers including an electrical output, a controller, a storage device, a sensor, and, in the case of Claim 5, a genset. It is notable that neither claim explicitly defines the system to comprise a pump or a motor, they instead define the system to be suitable for a pump.
The ordinary meaning of a “control system” is something distinct from that which is controlled. This agrees with the use of this phrase in the Opposed Patent. Paragraphs [0007] and [0012] of the Opposed Patent exemplify this use of the phrase “control system” to mean something other than the pump and motor. A “power system” is similarly distinct from that which is powered. The Opposed Patent makes this usage clear at both [0003] and [0007] where a “power and control system” is said to supply power to the motor and pump.
I thus do not construe the AC motor to be an integer of the claimed invention as such. As much seems consistent with the Patentee’s own expert in the EIA. Paragraph 57 of Williams states that he understands the phrase “a control system for an electric pump” to define “a system that is suitable for controlling an electric pump”. He further indicates that he understands that the system to supplies AC power to an AC motor. Both statements treat the claimed control system as being distinct from the pump and motor.
I further agree with the Opponent’s submission that Claim 1 should be construed to define a control system that is suitable for an electric pump. As submitted by the Patentee, however, the claims define more than just suitability. It is apparent that the claims also require that the relevant systems to be configured to cause variable electrical power to be supplied to an AC motor of the electric pump and to control a rotational speed of an AC motor in response to signals received from the sensor. In view of this, I construe the claim to include an integer of configuration to supply power to motors, but the claim is not necessarily limited to the presence of an AC motor.
Is the ‘AC motor’ both synchronous and asynchronous?
The claims require the controller to be selectively switchable between two operating modes. In the first, the AC motor is defined to be a synchronous AC motor, and in the second, the AC motor is defined to be an asynchronous motor. The Opponent submits that a plain reading results in the motor being both synchronous and asynchronous. I disagree.
The use of the indefinite article (‘the AC motor is a synchronous AC motor’) rather than a verb or auxiliary verb (‘the AC motor operates in/ is a synchronous manner/ motor’) seems most naturally read as an alternative particularisation of motor type rather than an alternative operational state or configuration. Indeed, the Opponent has answered its own question, given the Opponent’s statement at paragraph 61 of the SIS that this is the “apparent intention” of the drafter and that the alternative is not physically possible.
Are the claims clear?
The Opponent asserts at [104] of the SIS that claims 1 and 5 lack clarity. Their reasoning is based on an understanding that, “Claims 2 and 3 do not act to limit the control system of Claim 1. They act to limit the nature of connected AC motors”. As they do not understand the motor to be an integer of Claim 1, they interpret claims 2 and 3 to require the control system to be permanently connected to the motor which they state to be an “absurd result” (SIS at [103]).
I disagree with Opponent’s reasoning on this point. Much as I discussed in relation to the independent claims above, the features added by Claims 2 and 3 seem best understood as a further particularisation of motor type. Rather than acting to “limit the nature of the connected AC motors”, their wording serves to further define the operating configuration of the controller which is specific to the motor to be connected. Indeed, the fact that the Opponent identifies their own construction as an “absurd result” is indicative that such a construction is not to be preferred.
While the language of the claims is perhaps not optimal, I do not think it is capable of being reasonably misunderstood. The Opposition therefore fails on this ground.
Innovative Step
Relevant law
Subsection 18(1A)(b)(ii) of the Act, requires the claims of an innovation patent to involve an innovative step. Subsection 7(4) further provides:
An invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.
Subsection 7(5) identifies the information to be of the following kinds:
(a) prior art information made publicly available in a single document or through doing a single act;
(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information.
As stated by the Federal Court in TCT Group Pty Ltd v Polaris IP Pty Ltd [2022] FCA 1493:
“...the language of s 7(4) makes plain that an innovation patent is assumed to possess an innovative step, with the onus being upon the party challenging the patent to establish otherwise.”
The Opponent, at [65] of the SIS, has drawn my attention to the process for assessing innovative step set out at [174] of Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179 (“Blue Gentian”):
a)identify the invention as claimed in the particular claim; this is not to be confused with loose concepts such as the “key idea”;
b)identify the relevant common general knowledge;
c)identify the relevant prior art information against which the invention as claimed is to be compared;
d)identify the person skilled in the relevant art; and
e)then pose and answer the question as to whether the claimed invention only varies from the particular single prior art in a way that makes no substantial contribution to its working.
The proper interpretation of the question posed at step (e) was discussed by Gyles J in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 as endorsed by the Full Court at [68] of Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 (“Dura-Post”):
“The phrase ‘no substantial contribution to the working of the invention’ involves quite a different kind of judgment from that involved in determining whether there is an inventive step. Obviousness does not come into the issue. The idea behind it seems to be that a claim which avoids a finding of no novelty because of an integer which makes no substantial contribution to the working of the claimed invention should not receive protection but that, where the point of differentiation does contribute to the working of the invention, then it is entitled to protection, whether or not (even if), it is obvious.”
Gyles J further expanded on what is to be understood as a “substantial” contribution (see [70]):
“In my view the provenance of the phrase ‘make no substantial contribution to the working of the invention’ indicates that ‘substantial’ in this context means ‘real’ or ‘of substance’ as contrasted with distinctions without real difference.”
As explained by the Full Court at [83] of Dura-Post:
“...the comparison requires a functional inquiry between the invention as claimed – the claimed device or process – and the relevant prior disclosure”
In Blue-Gentian the Full Court further explained, at [176], that:
“The question is not to be whether, absent the variation, the invention could still work effectively or whether, by other means, it could be adapted to so work. The question is whether the variation makes a substantial contribution to the working of the invention as claimed. … Moreover, the substantial contribution to the working of the invention must be across the full scope of the claim… ”
There is furthermore no requirement for the specification to identify a substantial contribution that any particular integer of a claim might make to the working of the invention. Nor is it necessary for the claimed invention to differ from the prior art in a manner that provides an “advantage” or “economic benefit” (Blue Gentian at [177]-[181])
Prior art
The Opponent has pressed two documents for innovative step, AU2017210650 and AU2017213531, which I will hereby refer to as D1 and D2 respectively. Both documents disclose the use of variable speed generators for powering electric pumps.
Neither party provided substantial evidence or submissions on the disclosure of these prior art documents. Mr Waterreus discusses a product based on D1 (UON’s Pro Power GMC Generator Motor Controller referred to as “GMC” in Mr Waterreus’ evidence, for example at [8] and [18] to [23]) while Mr Williams gives a brief opinion as to whether either of these documents disclose the claimed invention ([62] to [65] of his declaration).
D1 - AU2017210650
D1 is the Opponent’s own art and has an earliest publication date of 8 March 2018. The specification outlines the equipment that is currently required to start an electric motor and vary its speed. This can be expensive and inefficient (see D1 at [3]-[5]). An embodied alternative comprises a combustion engine (item 9 of Figure 1 below) driving an alternator (item 12 see D1 at [35]-[36]). A controller (item 16) controls the engine and voltage output of the alternator (D1 at [36]-[38]). This system can operate at low voltage or high voltage and be connected to equipment such as fans or an electric pump (D1 at [32]-[34]). The specification explains how the system can be used to start an electric motor (D1 at [47]-[52]) or vary motor speed to maintain a setpoint (D1 at [54]-[57]). Setpoints can include a predetermined water level, pressure, or fan speed. These setpoints and other configurations may be made through a human machine interface (item 20; D1, at [64]).
Mr Waterreus discusses D1 in the context of the GMC product. I understand from his evidence that this product was made publicly available before the priority date but there is no indication it forms part of the CGK. Mr Waterreus explains that Figure 1 of D1 (reproduced as JW-4) displays the same working as the GMC. This figure is reproduced below.

D2 - AU2017213531

D2 was first published on 21 December 2017. It explains at [0004] that solid state switching may be inefficient when used for controlling variable speed motors. The described alternative consists of a prime mover (item 12 of Figure 1, reproduced below) driving an electrical generator (item 14, marked as “alternator” see D2 at [0047]). In one embodiment, this assembly is used to power the induction motor (item 16) of a pump for mine water management (D2 at [0048] - [0049]). A controller controls the speed of the prime mover and the voltage on the generator for optimal energy transfer (D2 at [0052]). Various operational modes are described including generator, soft-start, level control, flow control and pressure control (D2 at [0079] - [0082]).

Submissions and Consideration

Although there was some skirmishing over constructional matters, it was essentially common ground that the claimed invention varies from the Opponent’s cited prior art in that the controller is selectively switchable between first and second operating modes wherein these modes are associated with first and second respective datasets; see the SIS at [73] and the SIA at [41]. The Patentee submitted that the variation is further defined by “such datasets containing operational parameters suitable for controlling the speed of synchronous and asynchronous motors respectively — and the controller being configured to (a) use the first dataset to control the speed of an electric pump powered by a synchronous motor when the first mode is selected, and (b) use the second dataset to control the speed of an electric pump powered by an asynchronous motor when the second mode is selected” (SIA at [41]).
Having reviewed the prior art, I agree with the above characterisation of how the claimed invention varies from it. I further agree that the additional limitations identified by the Patentee better reflect the wording of the claims in defining this variation. The physical arrangement of integers shown in Figure 4 of the Opposed Patent, a controller connected to a prime mover and generator which together power an electric motor, is essentially the same as that taught in D1 and D2. The prior art documents do not, however, contemplate that the controller may have two separate operating modes, one for an asynchronous motor and another for a synchronous motor. Indeed, neither document seems to recognise any difference between asynchronous and synchronous motors, and D2 frames its disclosure purely in terms of induction motors.
Does ‘working’ mean ‘in use’?
Having identified how the claimed invention varies from the prior art, the Opponent presses two lines of reasoning on why this difference does not make a substantial contribution to the working of the invention. The first of these relies on interpreting the word “working” to imply that the invention is “in use” (SIS at [74]-[76]). The Opponent explains that “[t]he presence of the alternative dataset does not affect the way the control system controls the pump it is connected to” (SIS at [75]) and “only become[s] relevant when the control system stops working, and the pump motor is removed and replaced” (SIS at [76]).
The Patentee understands the above to be stating that, “the invention involves the controller of the claimed system switching between the two motor operating modes when the system is connected to and operating a pump” (SIA at [45]a). This differs from my own understanding of the Opponent’s reasoning, and I do not find the Patentees submissions on this point to be useful.
The Opponent’s argument, as I understand it, is that because the operating mode of the controller is only to be changed when the controller is not powering a motor, then the presence of multiple modes does not affect the working of the controller at the times it is powering a motor. I do not find this reasoning persuasive as I disagree with the Opponent’s interpretation of term “working”.
Rather than any singular operative condition, I understand the phrase “working of the invention” to capture the overall capability and functioning of the invention. As I have already quoted from [83] of Dura-Post, “the comparison requires a functional inquiry” (emphasis mine). In the current context, I understand the claimed invention to vary from the prior art in a manner that adds the functionality to switch between two different types of AC-motor. This is a real and substantial difference that contributes to the technical operation of the invention. It is immaterial whether this alters the operation of the claimed system at all times, or simply at select times. The capability to selectively switch between operating modes clearly contributes to the working of the invention when this working is considered from a functional perspective.
What is the difference between the two operating modes?
The Opponent’s second line of reasoning questions whether there is a substantial difference between the two operating modes. They identify two distinct issues in this context, firstly “…whether or not there is any practical difference (significant contribution) between the two modes…” and secondly, “…whether or not any differences in the modes are related to the type of motor to which the control system is connected…” (SIS at [77).
Considering firstly whether there is any practical difference between the two operating modes, the Opponent presses Mr Waterreus’ conclusion that there is not. They also emphasise the fact that the specification describes the measurement of rotor position to be optional. The Patentee responds by pointing to the language of the claims in “…a controller configured…” and Mr Williams’ evidence of configuration differences in the context of VSD systems (SIA at [45]).
The claims define that the control system is for an electric pump where the motor of that pump may alternatively be asynchronous or synchronous. The specification does not elaborate, however, on just what limitation this places on the operation of the two associated controller modes. In both cases the controller is said to vary the frequency of the alternating current that is supplied to the motor (Opposed Patent at [0034] and [0038]). No mention is made of varying the voltage. Paragraph [0038] makes a general statement that slip may be considered for asynchronous motors.
The expert’s evidence differed on how these two modes are to be understood. As referenced in the Opponent’s submissions, Mr Waterreus concluded, “…that there is no actual difference is (sic) between the control systems for the two operating modes…” (Waterreus at [72]). This seems to be based on his understanding that different pumps would not need different PID settings (Waterreus at [81]). He also states that slip control “…is never activated when flow, pressure or level control is also be used…” (Waterreus at [40]) and that slip is “…inconsequential to the operation of a set-point controlled system such as a VSD-driven system…” (Waterreus at [24]).
Mr Williams disagreed on these points. His own evidence was that the system would require specific parameters for motors having particular operating characteristics (Williams at [35]). These would generally be programmed into a control system by a field engineer (Williams at [36]). He further stated that VSDs are often configured to use rotor position to control the supply frequency and that this is key for proper control of induction motors (Williams at [28]).
The Opponent submits that Mr Waterreus and Mr Williams seem to be “referring to fundamentally different things” (SIS at [81]). Mr Waterreus’ evidence is said to relate to “downhole submersible pumps used for dewatering where the pump motor is some distance (typically circa 50m) from the control system, without any clear communication from pump motor back to control system”. Mr Williams’ evidence is said to be “in relation to AC motors generally”. The Opponent also submits that, “[a]n expert in the control of submersible pumps, particularly those of downhole dewatering pumps, such as Mr Waterreus, is concerned with programming the feedback loop between the sensed condition and the rotational speed of the AC motor” (SIS at [124]). They further submit that the background knowledge of the skilled addressee “does not include the ‘sophisticated motor control algorithms’ within Mr Williams’s ken” (SIR at [23]).
The Opponent’s submissions further clarify that they do not dispute “that there are motors used in industry where rotor position may well be critical”. They instead dispute the suggestion that, “rotor position is critical in the field of the present invention, control of submersible pumps”. They go on to state that ‘Mr Williams’s general evidence about AC motors does not adequately counter Mr Waterreus’ evidence, which is directed specifically to downhole pumping systems’ (SIS at 83).
The Patentee’s reply emphasises that the invention is not limited to dewatering; see the SIA at [13], [24] and [45]e)i). I discussed why I agree with this assertion when I identified the person skilled in the art. As neither the claims nor description seem properly limited to dewatering, I see no reason to favour Mr Waterreus’ evidence on the above points. I further do not accept the Opponent’s submission that downhole submersible pumps will have no “clear communication between the pump motor back to the control system” (SIS at [81]). This does not seem to be a point on which Mr Waterreus has provided evidence and I do not view Figures 1 and 3 of the Opposed Patent to show ‘one-way communication’ as asserted. Indeed such ‘one-way communication would seem unworkable in the context of a PID system and runs counter to the Opposed Patent’s teaching in relation to the use of sensors to determine motor state (see the Opposed Patent at, for example, [0035] and [0057]). I also find it difficult to accept the Opponent’s submission that the background knowledge of the skilled addressee for a specification which relates to the control of electrically driven pumps would not include the motor control algorithms which seem necessary to making the invention work. This is especially so when one of the primary embodiments includes a VSD.
If Mr Waterreus and Mr Williams are to be taken to be “referring to fundamentally different” things, this is perhaps understood by considering the distinction between a set-point control loop and motor drive logic. As outlined by Mr Williams at [71] of his EIA:
“[a] set-point control loop is typically implemented in a motor controller separately to the underlying motor drive logic performed by the controller. The control loop determines what (if any) motor speed changes need to occur in response to the relevant sensor inputs. In turn, the motor drive logic is responsible for adjusting the motor's speed, as determined by the control loop. It is correct to say that the control loop logic generally operates without regard to the rotor's position - the control loop only needs to determine by how much the motor speed needs to increase or decrease. However, the underlying motor drive logic will take into account the rotor's position when adjusting the motor's speed as determined by the control loop.”
Taking Mr Waterreus’ use of the term “PID” to reference the “set-point control loop” as distinct from the “motor control logic”, allows much of his evidence to be reconciled with that of Mr Williams. Both would then be in agreement that the set-point control loop may operate without regard for the motor type or rotor position. Perhaps supporting this interpretation, Mr Waterreus draws a distinction between “set-point control” (flow, pressure, or bore level) and the monitoring of “non-process system characteristics” (motor temperature, current draw, pump speed, rotor position – Waterreus at [13] and [37]).
One difficultly with the above interpretation is that it takes Mr Waterreus to be silent on the role and functionality of motor drive logic. Given that it seems clear that operation of the control system will involve motor drive logic (Williams at [71]), Mr Waterreus’ evidence in relation to the operation of the control system should at least be understood to be making implicit reference to the motor drive logic.
The alternative reading of Mr Waterreus’ evidence is that the model and type of electric motor is inconsequential to the operation of the controller which powers it. While I can accept that this may hold for certain types of AC-motors, it is a difficult proposition to accept in totality. In stating this, I note that the claims are quite clear in defining the control system to be connected to the motor. The specification further describes embodiments where the VSD will form part of that control system. Mr Williams has described his experience in configuring VSDs and provides example configurations in annexes EW-D and EW-E to his declaration. Given his detailed explanation on this point, I accept Mr Williams’ evidence that the two operating modes will be characterised by two separate sets of configurations (Williams at [35]-[39]). I further accept that certain configurations of the control system will require the measurement of rotor position.
Does the difference between operating modes make a substantial contribution to the working of the invention?
Having found that the two operating modes are characterised by two sets of configuration data, I furthermore understand both experts to state that this configuration data will be specific to the particular model of AC motor controlled in performing the invention. Mr Waterreus states, for instance, that the data described at paragraph [0041] of the ‘449 patent, “is specific to an individual pump, not to a broadly defined style of pump” (Waterreus at [59]). While Mr Waterreus uses the term “pump” here, the data he is referring to relates only to the motor of the pump (electrical voltage, current and timing parameters). As this data relates to the motor, I understand Mr Waterreus to be stating that the dataset will be specific to an “individual” motor. The Opponent further states at [120] of the SIS that, “[i]t is accepted that different motors may require the input of different parameter values in a controller” (see also [19] of the SIR). They add though that, “[t]he specification does not suggest that these changes in parameter values lead to any meaningful change in the operation of the controller”.
Mr Williams statements on this matter are similar to those of Mr Waterreus. At paragraph 93 of his evidence, he agrees “…that some types of parameters will be programmed into a motor controller regardless of whether the connected motor is a synchronous and an asynchronous motor”. He further states at [94] of his declaration that the two datasets could be stored in advance if “both motor types are known in advance”. I understand Mr Williams’ use of the word “type” here to refer to different models of motor as a distinction between synchronous and asynchronous operation would be redundant in the context of the claim which defines both. The Patentee further puts at [45f] of their submissions that “different motor controller settings are required to control different motors”.
I thus cannot agree with the Opponent’s suggestion that there is no practical difference between the two operating modes of the controller. Each operating mode is characterised by the use of data reflecting the operational parameters of a specific model of electric motor so selected in performing the invention. This data alters the configuration of the controller such that it will operate differently in each mode to accommodate the different operating characteristics of each motor.
In relation to whether the difference between modes relates to the “type” of motor (asynchronous versus synchronous), the Opponent has submitted that, “The particular ‘mode’ is not a relevant concern” (SIS at [87]). They further state, in the same paragraph, “[i]t follows that it cannot contribute substantially to the working of the invention”. The Patentee submits:
“For the purpose of evaluating the innovative step of the invention, it is necessary and sufficient that the controller of the invention be configured to control at least one type of synchronous motor when executing its first operating mode and at least one type of asynchronous motor when executing its second operating mode. This capability provides a novel solution to the problems addressed by the Opposed Patent and substantially affects how the invention works.” (SIA at [45]g))
I agree with the Patentee’s submissions on this point. Having accepted that different motor controller settings are required to control different motors, it follows that the settings for any given synchronous motor will be different from those for an asynchronous motor. Establishing whether or not these differences will arise from one motor being synchronous and the other asynchronous is unnecessary for the purposes of the current innovative step inquiry. It is sufficient to say that the controller will operate differently in each mode as each mode will operate in a manner suitable for a specific electric motor that is chosen in performing the invention. This difference between modes makes a real and substantial contribution to the working of invention. Compared to the equivalent systems of D1 and D2 which have only a single operational mode, the claimed system is selectively switchable between two distinct operational modes.
As the claimed invention varies from the prior art in a way that makes a substantial contribution to its working, the claims possess an innovative step and the Opposition fails on this ground.
Sufficiency and Support
Relevant law
Subsections 40(2)(a) and (3) of the Act require that:
(2) The 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;
…
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
As was explained by Perram J at [155] of Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (“Jusand”):
“The requirement in s 40(2)(a) is often referred to as the sufficiency obligation whilst the requirement in s 40(3) is referred to as the support requirement. The sufficiency requirement requires that the patentee should sufficiently disclose in the specification how to perform the invention. The support requirement requires that the claims defining the patent should themselves be supported by what appears in the specification. In many cases these obligations may tend to be the same since they are describing the same relationship although viewed from the differing perspectives of the claims and the specification. As Burley J has observed in Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477; 155 IPR 1 (‘Merck’) at [543], they may often be viewed as two sides of the same coin. But they may nevertheless sometimes differ as Birss J (as his Lordship then was) explained in Illumina Cambridge Ltd v Latvia MGI Tech SIA [2021] EWHC 57 (Pat); RPC 12 (‘Illumina’) at [255].”
Subsections 40(2)(a) and (3) were introduced in their current form by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Regarding the amendments to s40(2)(a), the Explanatory Memorandum to the Bill states at item 8:
“This is intended to align the disclosure requirement with that applying in other jurisdictions with the effect 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.”
And on the support requirement of s 40(3), at item 9 of the Explanatory Memorandum:
“Overseas law generally requires there to be a relationship between the claims and the description, and between the claims and any document from which priority is being claimed. This is expressed by the requirement that a claim be ‘supported by’ or ‘fully supported by’ the description. Broadly speaking, the terms ‘support’ and ‘full support’ pick up two concepts:
·there must be a basis in the description for each claim; and
·the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.”
A useful approach to s 40(2)(a) was put by the delegate in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (“CSR”) and later endorsed by Burley J in Cytec Industries Inc. v Nalco Company [2021] FCA 970 (“Cytec”):
·What is the scope of the invention as claimed?
·What does the specification disclose to the skilled person?
·Does the specification provide an enabling disclosure of all the things that fall within the scope of the claims?

Justice Burley also endorsed the expanded approach of Evolva SA [2017] APO 57 where the third question is reformulated into a two-step consideration:
·Is it plausible that the invention can be worked across the full scope of the invention?
·Can the invention be performed across the full scope of the claims without undue experimentation?
An approach to the support requirement of s40 (3) was put by Rofe J in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540. This involves determining:
·what is the invention which is specified in the claims;
·compare that with the invention which has been described in the specification; and
·the technical contribution to the art of the patent.
The technical contribution to the art is a subtle concept. In Jusand at [204], Perram J cited Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 at [56(ii)] for the proposition that, “at least in relation to a product claim that a patent’s technical contribution to the art is the product and not the inventive step”. He also quoted from Illumina in explaining that care need to be exercised when applying the principle beyond product claims. For method claims concerned with a mechanical apparatus Perram J stated at [205] that:
“I would accept that the technical contribution of the patent to the art is the explanation of how to perform the method disclosed in the specification. The technical contribution to the art is not the same as the inventive step, although the inventive step may constitute an element of the contribution to the art.”
Submissions
The Opponent submits, at [115] of the SIS, that “the specification does not in any way enable a skilled addressee to perform the invention” (see also [29] of the SIR). They reason at [115] and [126] of their SIS:
“If the two modes are effectively the same, there cannot be an invention. For there to be an invention, the two modes must have meaningful differences, and for there to be sufficiency (and support) the specification must teach those differences.
…
Notably, there is no suggestion in paragraph [0043] that different parameters are used for synchronous or asynchronous motors. The list of parameters given are all specific to individual motors, of either type. There is nothing in the list which teaches or even suggests any difference in the operation of the controller between the two claimed ‘modes’.”
They also reason at [124] of the SIS that the skilled addressee “is concerned with programming the feedback loop between the sensed condition and the rotational speed of the AC motor”, and as, “the specification does not suggest any use of differing algorithms… it is a clear and obvious conclusion that the specification does not teach anything about the different ‘modes’ to such a skilled addressee”.
The Opponent did not make any distinct submissions on the ground of support. I therefore understand that they press the same reasoning for support as outlined above for sufficiency.

100. The Patentee’s submissions respond that:
“Mr Williams explains that various different types of synchronous and asynchronous motors exist and that the control settings that are required to drive these motors, when using VSDs, will depend on the particular motor types… the claims only require the controller of the invention to be configured to control at least one type of synchronous motor when executing its first operating mode and at least one type of asynchronous motor when executing its second operating mode.” (SIA at [52])

Consideration
101. I understand the Opponent to submit that the specification does not enable the skilled addressee to configure the two operational modes of the controller. There seem to be two lines of reasoning to their submission. The first is that the specification does not teach a generalised distinction between configurations suitable for asynchronous motors and those suitable for synchronous motors. The second is that the specification does not provide the skilled addressee with sufficient guidance to identify suitable parameters and algorithms for each of the configurations.
102. Regarding firstly a generalised distinction between asynchronous and synchronous motor control, this does not seem to form part of the CGK. At paragraph 34 of his evidence, Mr Waterreus states that it would be “of interest” to learn what would be different between the two operational modes of the system. Mr Williams states that the “settings and configurations that must be implemented to control each motor type correctly will be different” but does not identify any consistent difference between these types (Williams at [92]).
103. The specification itself does not explicitly reference nor describe any generalised distinction between the two modes. It does state that slip may need to be considered when controlling asynchronous motors, but I do not think the skilled addressee would understand this to be a generalised distinction. This is especially so given that the specification teaches that rotor position may be tracked for synchronous motors (Opposed Patent at [0035]). Indeed, Mr Williams gives evidence that rotor position may need to be considered to properly control a permanent magnet synchronous motor (Williams at [44]). The Patentee’s submissions further emphasise that the rotor tracking feature of the invention is to be understood as optional (SIA at [45e(ii)]). For these reasons, it does not seem that slip must be considered for all asynchronous motors and thus can be said to provide a universal distinction between the control of asynchronous and synchronous motors.
104. I therefore agree that the specification does not provide the skilled addressee with a generalised distinction between configurations suitable for asynchronous motors and those suitable for synchronous motors. I do not think, however, that this is necessary in order for them to perform the invention. This is because I do not read the claims to define generalised configurations suitable for any and all asynchronous or synchronous motors. The claims instead define the controller to be configured to cause variable electrical power to be supplied to ‘an’ AC motor. I have already concluded that the two modes of the controller simply provide alternative particularisations of this motor. While the claim extends to include any and all asynchronous and synchronous AC motors, any embodiment falling within its scope is only, as put by the Patentee, required to be selectively switchable between two modes that are suitable for two particular motors utilised in performing the invention. The question then is not whether the person skilled in the art would be aware of “different parameters [that] are used for synchronous or asynchronous motors” (SIS at [126]) but rather whether they would be able to identify and implement parameters suitable for any particular pairing of asynchronous or synchronous motors.
105. Regarding then whether the skilled addressee is afforded sufficient guidance in identifying the appropriate parameters and control algorithms, the Opponent seems to draw a distinction between the two experts. As discussed above, their submissions contrast Mr Williams who they characterise as an expert in the control of AC motors” with Mr Waterreus who they characterise as an expert in the control of submersible pumps, particularly those of downhole dewatering pumps. While Mr Williams gives evidence that he would source the necessary control algorithms from the motor supplier, the Opponent submits that the specification “does not teach anything about the different ‘modes’ to such a skilled addressee [as Mr Waterreus]” (SIS at [124]). As I have already found that both experts to be suitably qualified, I am not persuaded that there is a useful distinction to be made here.

106. I agree with the Opponent’s assertion that the specification does not teach how to identify the appropriate dataset parameters and control algorithms for the controller. I question, however, whether the person skilled in the art would require this teaching to perform the invention. When asked if he could provide a controller to be switchable with a different setting for different motors, Mr Waterreus stated that this would be a “trivial exercise” (Waterreus at [81]). Mr Williams similarly explains that he would have, “sourced an AC motor controller and configured the controller to maintain two distinct sets of motor operating parameters and settings, one set for each operating mode. I would have populated each dataset with relevant values for the motor type” (Williams at [59]). Elsewhere in his evidence he explains how VSDs are routinely “programmed” by field engineers using tools such as “Sinamics starter” (Williams at [36]-[39]).

107. On balance, it seems that configuring a controller for any particular electric motor is no more than a matter of routine. The Opponent’s submissions do not identify any specific difficulties posed by the functionality of the claimed invention, only that the specification does not teach the differences between the claimed modes. There is furthermore no specific evidence going to an undue burden or need for further invention. As I have determined elsewhere, the difference between the claimed operational modes lies in the dataset parameters and control algorithms relevant to each of the motors. I would expect the relevant parameters to be provided with a motor and Mr Williams explains that the relevant algorithms are developed by original equipment manufacturers (“OEMs”) (Williams at [28]). As configuring a controller to be switchable between these different settings would be “trivial”, I do not think there is an undue burden in configuring the two operational modes of the controller. The Opposition therefore fails on this ground. For similar reasons it also fails on the ground of support for which I understand the Opponent to press the same reasoning.
Conclusion
108. The opponent has not established that claims 1-5 of the opposed application fail to comply with the grounds of clarity, innovative step, clear enough and complete enough disclosure or support. The opposition is therefore unsuccessful.
Costs
109. It is normal in matters before the Commissioner that costs should follow the event and I see no reason to depart from that approach in the present case. The Opponent submits, at [128] of the SIS, that, “the amendments made to the patent specification following the submission of Evidence in Support represent an implicit acknowledgement that the Opponent has succeeded in its opposition”. The Patentee submits, at [58] of the SIA, that this is “speculative only and should not be accepted”.
110. I agree with the Opponent’s submission to the extent that it seems reasonable to infer that the specification was amended in response to grounds of opposition that were raised by the Opponent. The amendments added the feature of the storage device storing first and second datasets, wherein the first and second datasets record operational parameters used when executing the first and second operational modes. These features serve to better distinguish the two operational modes of the claimed system and were thus highly relevant in establishing that the claims involved an innovative step.
111. Given the Patentee made these substantive amendments which appear to have been requested as a result of the opposition, I am of the view that the Opponent was successful up to the incorporation of amendments on 12 December 2022. As a consequence, I award costs against the Patentee according to Schedule 8 of the Regulations up to the date before the amendments were allowed.
112. The Opponent has not been successful in pressing any of the grounds of this Opposition and I therefore award costs against them from the day the amendments were allowed according to Schedule 8 of the Regulations.

Dr W.E. Guinea

Delegate of the Commissioner of Patents

Dated	Declarant, dated	Exhibits
EIS	16 June 2022	Barry Stephen Newman (“Newman”)	BSN-1 and BSN-2
EIS	16 June 2022	James Waterreus (“Waterreus”)	JW-1 to JW-6
EIA	20 Sep 2022	Emlyn Williams (“Williams”)	EW-A to EW-F