UON Pty Ltd v Taranis Power Group Pty Ltd - [2020] APO 34

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

UON Pty Ltd v Taranis Power Group Pty Ltd 2020 APO 34

Patent Application: 2017213531

Title:An electrical system for driving a pump.

Patent Applicant: Taranis Power Group Pty Ltd

Requestor/Opponent: UON Pty Ltd

Delegate: Dr W.E. Guinea

Decision Date: 10 July 2020

Hearing Date: 19 February 2020, in Canberra

Catchwords: PATENTS – s36 and s59(a) – whether Requestor/Opponent is sole eligible person – Applicant solely entitled to grant of patent – sole or joint inventorship – sole or joint inventorship indeterminate – request/opposition under s36/s59(a) unsuccessful – s59(b) and (c) – whole of contents novelty – lack of novelty not found – s40 – clarity – clear enough and complete enough disclosure –support – best method – no defects under s40 established – documents not in evidence – Regulation 5.23 – Regulation 5.23 not exercised for documents not in evidence – costs awarded against Opponent – possible variation of costs – submissions requested on quantum of costs.

Representation: Counsel for the Applicant: Julian Cooke & Angela McDonald
Also appearing for the Applicant: Daniel Tassone of Williams + Hughes
Counsel for the Requestor/Opponent: Martin Bennett
Patent attorney for the Requestor/Opponent: Fidel Dela Paz of protectmyidea.com.au
Also appearing for the Requestor/Opponent: Amy Rumble and Taleesha Elder of Bennett and Co, Mark Keogh and James Waterreus of UON Pty Ltd.

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application: 2017213531
Title:An electrical system for driving a pump.

Patent Applicant: Taranis Power Group Pty Ltd

Date of Decision: 10 July 2020

DECISION

The opposition under s59 is unsuccessful. None of the grounds of opposition were made out.

The Opponent’s request under s36 is unsuccessful. I decline to make any declarations pursuant to s36 of the Patents Act 1990.

Costs are awarded against the Opponent, UON Pty Ltd. The Applicant, Taranis Power Group Pty Ltd, has fourteen (14) days from the date of this decision to provide submissions regarding a variation of costs beyond Schedule 8 of the Regulations. I will then invite submissions by the Opponent before making a determination as to the quantum of costs to be awarded. If no submissions are received by the Applicant within the period indicated, costs will be awarded according to Schedule 8 of the Regulations.

REASONS FOR DECISION

Background

Patent application 2017213531 (the “application”) was filed on 10 August 2017 in the name of Taranis Power Group Pty Ltd (the “Applicant”). The inventors are given as Joseph Rino Vetrone and Gabriel Hoascar. The application was advertised as accepted on 21 December 2017 and has an earliest priority date of 10 August 2017.
A request under s36 of the Patents Act 1990 (the “Act”) was filed by UON Pty Ltd (the “Opponent”) on 16 January 2018. The Applicant advised the Commissioner of its intention to defend its entitlement to the Application on 7 February 2018.
On 19 March 2018 the Opponent filed notice of opposition to the application under s59 of the Act.
In anticipation of entitlement being a ground of opposition pursuant to s59(a) of the Act, a delegate of the Commissioner proposed aligning the evidentiary periods for the s36 matter with the s59 opposition. This proposed direction was resisted by the Opponent and a directions hearing occurred on 14 June 2018. Ultimately the Opponent was unsuccessful in resisting the proposed direction, which was made on 15 June 2018.
In making the direction of 15 June 2018, the delegate noted:
“One effect of this direction will be that the evidence filed in the s 36 matter will become at least part of the evidence for the ground of entitlement that UON indicated at the hearing will be a ground of the s 59 opposition.”

In any case, as will be seen, both parties have either filed substantially identical evidence regarding the s36 matter and the ground of entitlement under s59(a) or have simply filed one set of evidence for the purposes of both matters. Consequently, for convenience, wherever I refer to evidence regarding entitlement, this is taken to be evidence for both the s36 request and grounds under s59(a).

The statement of grounds and particulars for the s59 opposition was filed on 19 June 2018 (the “SGP”). Notably the SGP asserted lack of entitlement pursuant to s59(a).
While evidence in support (“EIS”) was due to be filed on 19 September 2018, the Opponent only filed part of its EIS and requested an extension of time pursuant to Reg 5.9 on 19 September 2018 (the “EOT”). The requested extension ran to 19 November 2018. After requesting and receiving further information regarding the requested EOT on several occasions, the delegate was not satisfied that the EOT should be granted. The Opponent asked to be heard, and ultimately was successful in obtaining the EOT in UON Pty Ltd v Taranis Power Group Pty Ltd [2019] APO 6.
Subsequently the filing of evidence in support (“EIS”) was completed on 19 November 2018. This consisted of:
for the s59 Opposition:
·     a first declaration by Mr James Waterreus (“Waterreus1”), dated 18 September 2018, with supporting annexure JW-1;
·     a second declaration by Mr James Waterreus (“Waterreus2”), dated 16 November 2018; and
·     a first declaration by Mr Mark Vincent Keogh (“Keogh s59”), dated 19 September 2018, with supporting annexures Keogh 1 to Keogh 6.
For the s36 request:
·     a first declaration by Mr Mark Vincent Keogh (“Keogh1”), dated 19 September 2018, with supporting annexures Keogh 1 to Keogh 6.

Notably Keogh s59 is materially identical to Keogh1 and differs only with regard to two introductory paragraphs and some typographical errors. As Keogh1 appears to lack the typographical errors of Keogh s59, I will refer to Keogh1 throughout this decision. I also note that the respective annexures accompanying Keogh1 and Keogh s59 are identical, such that a reference to either one is also a reference to both. For the purposes of this decision I will simply refer to these as Keogh 1 to Keogh 6 as applicable.

The filing of evidence in answer (“EIA”) was completed on 19 February 2019. This consisted of, for both the s36 and s59 matters:
·    a declaration by Mr Tony Spirovski (“Spirovski”), dated 18 February 2019, with supporting annexures TS-1 to TS-6;
·     a declaration by Mr Joseph Rino Vetrone (“Vetrone”), dated 19 February 2019, with supporting annexures JRV-1 and JRV-2; and
·     a declaration by Mr Gabriel Hoascar (“Hoascar”) dated 19 February 2019, with supporting annexures GH-1 to GH-3.

10. The filing of evidence in reply (“EIR”) was completed on 18 April 2019. This consisted of:

for the s59 Opposition:

·     a second declaration by Mr Mark Vincent Keogh in response to Mr Hoascar (“Keogh2”), dated 18 April 2019;
·     a third declaration by Mr Mark Vincent Keogh in response to Mr Vetrone (“Keogh3”), dated 18 April 2019; and
·     a third declaration by Mr James Waterreus (“Waterreus3”), dated 18 April 2018, with a supporting annexure that I will call JW-2 ; and

for the s36 request:

· a second declaration by Mr Mark Vincent Keogh (“Keogh2”), dated 18 April 2019; and
· a third declaration by Mr Mark Vincent Keogh (“Keogh3”), dated 18 April 2019.

Notably the second and third Keogh declarations filed in the s59 opposition are identical to the second and third Keogh declarations filed in the s36 matter, such that a reference to either one is also a reference to both. For the purposes of this decision I will simply refer to these as Keogh2 and Keogh3.

11. At this point it is perhaps helpful to note that there is ongoing litigation between the parties in the Western Australia Supreme Court (the “Supreme Court matter”) which principally concerns an alleged breach of contractual obligations by Mr Hoascar regarding confidential information and the alleged misuse of that confidential information by Mr Hoascar and the Applicant. Some of the issues raised in the Supreme Court matter logically intersect with the question of entitlement in the matters considered here, and notably the annexures Keogh 1 to Keogh 6 in fact comprise material filed in evidence in the Supreme Court matter.

12. It is clear that by no means all the evidence from the Supreme Court matter that is or will become available to the Western Australia Supreme Court has been filed for the present matters. I note that the Supreme Court action is a separate matter of law and I will only consider the information from the Supreme Court matter that is before me in evidence for the purposes of deciding the question of entitlement in the present matters. Whether Mr Hoascar breached contractual obligations or Mr Hoascar and the Applicant misused the Opponent’s confidential information is clearly a matter for the Western Australia Supreme Court to decide in view of the body of evidence available to it.

13. It is also worth noting that the annexures Keogh 1 to Keogh 6 are rather voluminous in nature and comprise a series of affidavits and annexures, which I have tabulated below for convenience. To assist in identification, wherever I refer to annexure items to Keogh1, I will do so in italics as per the table below.

Annexure Item	Constituent Affidavit	Annexures to Constituent Affidavit
Keogh 1	Mr Kenneth Keogh, 24 November 2016	None
Keogh 2	Mr Anthony Carl Reid, dated 7 December 2016	ACR-1 to ACR-4
Keogh 3	Mr Mark Vincent Keogh, dated 20 December 2016	MVK-1 to MVK-42
Keogh 4	Mr Mark Vincent Keogh, dated 16 March 2017	MVK-1 and MVK-2
Keogh 5	Mr Mark Vincent Keogh, dated 16 March 2017	None
Keogh 6	Mr Charles Peter Halliday, dated 6 July 2017	None

14. The Opponent filed requests pursuant to s210 of the Act to summons Mr Hoascar (filed 31 January 2020) and to produce documents (filed 3 February 2020). These requests were declined by a delegate of the Commissioner on 6 February 2020.

15. Both parties filed written summaries of submissions prior to the hearing. The Opponent filed their written summary of submissions (the “Opponent’s written submissions”) on 5 February 2020, along with a chronology of events. The Opponent filed a corrected chronology on 12 February 2020. The Applicant filed its written summary of submissions (the “Applicant’s written submissions”) on 12 February 2020.

16. For completeness I note that the copy of MVK-17 to Keogh 3 in evidence is so illegible as to be effectively meaningless. It seems that due to this the Opponent provided a legible copy (“MVK-17(2)”) to Mr Cooke and I at the hearing, and sought to rely upon this document. Because of restrictions brought about due to the COVID-19 pandemic, I was unable to access the copy of MVK-17(2) given to me at the hearing, and I requested that the Opponent file an electronic copy via letter dated 11 May 2020. The Opponent filed the electronic copy on 12 May 2020.

The Invention as Described

17. The invention for this application relates to an electrical system for driving a pump. In this regard the description discusses the fact that electrical motors are used throughout the world to operate a variety of pumps, including for the purposes of mining dewatering, sewage and irrigation. While some of the electrical motors may only need to operate at constant speed under conditions of constant frequency and voltage, others need to operate at variable speed under conditions of variable frequency and voltage. It is noted that the variable speed electrical motors use solid state switching (e.g. pulse width modulation (“PWM”)) for starting and controlling.

18. Some issues with the variable speed electrical motors are then discussed in the “Background Art” section spanning [0002] to [0007] of the specification. These include the fact that starting an induction motor involves inrush currents 7 to 10 times higher than the running current and torque up to three times higher than running torque. The requirement for the power supply to cope with large inrush currents may also potentially cause voltage dips. Consequently, the circumstances at start up add to wear on the mechanical and electrical components of the system.

19. While solid state switching is used to control the voltage supplied to an electric motor, including to temporarily reduce the voltage and current supplied at start up, these solid state devices generally need to have a rating much higher than for normal operation to accommodate start up conditions. Similarly, to also accommodate start up conditions, the generator concerned needs to also have a much higher rating, typically 250% more, than that needed to nominally drive the electrical motor.

20. It is then stated at [0007] of the application that:

“The present invention seeks to propose possible solutions, at least in part, in amelioration of the known shortcomings in the art.”

21. After the background discussed above there follows a “Summary of the Invention” spanning [0008] to [0045]. There are consistory statements for what would appear to be two aspects of the invention, at [0008] and [0028], however it is reasonable to state that both aspects really reflect the same fundamental solution to the problems discussed in the background. As is typical in patent specifications, these consistory statements more or less simply repeat the subject matter of the independent claims, while there are also a further series of consistory statements commensurate with the dependent claims.

22. A brief discussion of some of the features from the consistory clause at [0008], which is equally applicable to that at [0028], follows at [0009] and [0010].

“[0009] The skilled addressee will appreciate that a speed-torque relationship of either the prime mover or the induction motor may vary depending on prime mover or motor design and is generally indicative of desired operating ranges for a specific prime mover or motor having increased power efficiency. It is also to be appreciated that the performance curve of a pump provides an indication of producible pressure relational to producible fluid flow rate and a desired operating range delivering maximised efficiency for such variables.
[0010] In light hereof, by dynamically matching such speed-torque relationships and performance curves whilst maintaining the user-selectable pump operating characteristics, allows for efficient energy transfer through the system. As an energy source for the system typically comprises a fuel source for the prime mover, such energy efficiency generally allows for minimised fuel use.”

23. There then follows a “Brief Description of the Drawings” and “Detailed Description of Embodiments” which comprise the remainder of the description. The fundamental solution proposed in the description is best understood by reference to figure 1, being the only figure of the application. This is reproduced below.

24. As can be seen on figure 1, the solution proposed is generally designated by electrical system 10, this comprising a number of sub-systems or sub-components including a prime mover 12 and a synchronous three phase AC generator 14 (given as an alternator in figure 1). The prime mover 12 mechanically drives the AC generator 14 which in turn provides electrical power to an induction motor 16. The induction motor 16 drives a pump 18 to displace fluid at a headworks 30.

25. Certain applications for the electrical system 10 are discussed at [0048]:

“The system 10 finds typical, yet non-limiting, application in mining water management, particularly dewatering applications, such as in an open pit or an underground mine. Below surface water management is a critical operation, utilised extensively in the mining industry to remove or lower aquifer water levels in a controllable manner, by pumping the water out using purposely build pumps generally driven by three-phase induction motors directly coupled to a pump. Other related application includes injecting an amount of water into the ground into purposely drilled holes called wellbores. Another application is where the pump is above-ground, such as in a transfer station, to maintain a desired flow, pressure, temperature or level.”

26. The electrical system 10 may also have switchgear 24 interposed between the generator 14 and induction motor 16 for safety purposes. This comprises a circuit breaker that is monitored and controlled by a controller 20 such that electrical connection between the generator 14 and induction motor 16 can be varied between open and closed circuit as appropriate.

27. The controller 20 is also used to continuously monitor a variety of operating characteristics of the prime mover 12, the generator 14, the induction motor 16 and the pump 18. The operating characteristics of the pump 18 may be fed to the controller 20 via a junction box 32. The prime mover 12, generator 14 and controller 20 can form a generator assembly 34, while the induction motor 16 and pump 18 (and presumably relevant components of the headworks 30) form a pumping package 36. The controller 20 also typically comprises a programmable logic controller (“PLC”) and a remote monitoring interface 26 for remotely monitoring and/or controlling the electrical system 10

28. The controller 20 automatically and dynamically controls the outputs of the prime mover 12 (e.g. rotational speed and torque) and the generator 14 (e.g. voltage) by monitoring and varying any of the suitable operating characteristics of these. For the prime mover 12 this can be achieved via a governor or engine control unit (“ECU”) 28 which is in communication with a suite of sensors within the prime mover 12. For the generator 14 this can be achieved via control of a voltage regulator 22 of the controllable excitation system, using, for example, PWM.

29. The controller 20 is programmed with a speed-torque relationship of the prime-mover 12 and the induction motor 16, and with the performance curve of the pump 18. In this regard it is stated at [0053], essentially repeating [0009], that:

“The skilled addressee will appreciate that a speed-torque relationship of either the prime mover 12 or the induction motor 16 may vary depending on prime mover or motor design and is generally indicative of desired operating ranges for a specific prime mover or motor having increased power efficiency. It is also to be appreciated that the performance curve of the pump 18 provides an indication of producible pressure relational to producible fluid flow rate and a desired operating range delivering maximised efficiency for such variables.”

30. Given the discussion of the specification above, it is apparent from [0052] and [0054] (which essentially repeats [0010]) that the entire point of monitoring and/or controlling the operating characteristics or outputs (as applicable) of each of the prime mover 12, the generator 14, the induction motor 16 and the pump 18 is to ensure overall energy efficiency of the electrical system 10 while maintaining desirable pump operating characteristics:

“[0052] The controller 20 of the system 10 is programmed with a speed-torque relationship of both the prime mover 12 and induction motor 16, as well as a performance curve of the pump 18. The controller 20 is then configured to continuously monitor the operating characteristics of the prime mover 12, the electrical generator 14, the induction motor 16 and the pump 18, and to automatically and dynamically control the prime mover output and excitation system in order to dynamically and continuously match the speed-torque relationship of the prime mover 12 to that of the induction motor 16 and the pump performance curve. In this manner, optimal energy transfer efficiency through the system 10 can be facilitated whilst user-selectable fluid flow rate, fluid pressure and fluid level are maintainable when displacing fluid via the pump 18…
…[0054] In light hereof, by dynamically matching such speed-torque relationships and performance curves whilst maintaining the user-selectable pump operating characteristics, allows for efficient energy transfer through the system 10. As an energy source for the system 10 typically comprises a fuel source for the prime mover 12, such energy efficiency generally allows for minimised fuel use, resulting in overall cost-saving.”

31. Some advantages of the electrical system 10 in comparison to the known systems are also discussed, including with particular regard to start-up at [0074]:

“…This starting phase is operationally similar to conventional soft starter systems, with the exception that the delivered power in the system 10 is at variable speed and is identical with an external variable speed drive or variable frequency drive which delivers power to the load at variable frequency and voltage, with the exception the power system is not affected by the harmonics generated by Soft Starter or VSD, resulting into (sic) a much smoother operation, reduces copper loses, reduces cable temperature; as the power supplied to the induction motor is a pure sine-wave without any distortions. The final speed is then determined by the functional mode selected.”

32. Finally, a more general discussion of the advantages of the electrical system 10 is given at [0083] and [0084]:

“[0083] Applicant believes it particularly advantageous that the system 10 carries multiple distinctive advantages over conventional variable speed drive (VSD) or soft starter (SS) system, by eliminating the harmonics induced by the VSD, less copper losses due to harmonics, less operational temperature for engine, alternator, switchgear, cables, induction motor and pump; eliminating the requirements for VSD, transformers, associated filters, special cables, external switchgear and electrical cabinets; smaller foot print, decreased weight, increased reliability and fuel efficiency. Oversizing is eliminated in comparison with the traditional systems as the pumping system at full load is at 75% of the maximum power level provided by the power generator. This load level coincides with the maximum fuel efficiency of the engine.
[0084] As the system 10 is revolving at reduced speed the mechanical wear is also reduced, via reduced vibration, reduces friction and reduces rotational speed. The controller 10 is reduced to a single box with latest control technology, extended temperature range and increased vibration resistance. Less electrical and mechanical stress due to a smoother starting and running operation; consequently longer asset operation. Capital investment is reduced to 60 -70% of the traditional system and operation cost is reduced with 7-15% based on the fuel consumption alone.”

The Claims

33. The application comprises 36 claims of which claims 1 and 19 are independent. The independent claims are reproduced below; the full claim set can be found at Annex A to this decision. For convenience I have also adopted similar integer labels for these claims as per the Applicant’s written submissions, where the integers are labelled as per the item in parentheses. While there is a numbering error in claim 19 (there is no item i) or ii)) I have retained the item numbering from that claim for convenience.

“1. [1.a] An electrical system for operatively driving a pump, said system comprising:
[1.1] a prime mover having a controllable mechanical output;
[1.2] an electrical generator mechanically coupled to the prime mover output, said generator operatively generating electrical power and having a controllable excitation system whereby generator voltage output is controllable;
[1.3] an electrical induction motor operatively supplied with electrical power from the electrical generator;
[1.4] a pump driven by the induction motor for operatively displacing fluid, pump operating characteristics comprising a measurable fluid flow rate, fluid pressure and fluid level; and
[1.5] a controller programmed with a speed-torque relationship of both the prime mover and induction motor and a performance curve of the pump, said controller configured to:
[1.5i] i) continuously monitor operating characteristics of the prime mover, the electrical generator, the induction motor and the pump; and
[1.5ii] ii) automatically and dynamically control the prime mover output and excitation system in order to dynamically and continuously match the speed-torque relationship of the prime mover to that of the induction motor and the pump performance curve;

[1.6] so that optimal energy transfer efficiency through the system is facilitated whilst user-selectable fluid flow rate, fluid pressure and fluid level are maintainable when displacing fluid via the pump.”

“19. [19.a]A controller for an electrical system for operatively driving a pump, the system having [19.1] a prime mover with a controllable mechanical output, [19.2] an electrical generator mechanically coupled to the prime mover output, [19.3] an electrical induction motor operatively supplied with electrical power from the electrical generator, and [19.4] the pump driven by the induction motor for operatively displacing fluid, said controller comprising:
[19.5] an interface for interfacing with a plurality of sensors for operatively monitoring operating characteristics of the prime mover, electrical generator, induction motor and pump; and
[19.6] a memory arrangement operatively programmed with a speed-torque relationship of both the prime mover and induction motor and a performance curve of the pump; [19.7] the controller configured to:
[19.7iii] iii) continuously monitor the operating characteristics; and
[19.7iv] iv) automatically and dynamically control the prime mover output and an excitation system of the generator excitation system whereby generator voltage output is controllable, in order to dynamically and continuously match the speed-torque relationship of the prime mover to that of the induction motor and the pump performance curve;

[19.8] so that optimal energy transfer efficiency through the system is facilitated whilst user-selectable pump fluid flow rate, fluid pressure and fluid level are maintainable when displacing fluid via the pump.”

The s59 Opposition and the s36 Request

34. In the SGPs the Opponent pursued grounds under:

· s59(a)(i) and s15(1) – the nominated person is not entitled to a grant of a patent for the invention;
· 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, in particular AU 2017210650 A1 (the “UON application”); and
· s59(c) – the specification does not comply with s40(2)(a), s40(2)(aa) and s40(3) (clarity and support).

35. The s36 request asserted that the Opponent was an eligible person and that the Applicant is not an eligible person.

36. Not all the grounds from the SGP were discussed by the Opponent at the hearing. Consequently, I asked Mr Bennett whether all grounds from the SGP were still being pressed by the Opponent, which he answered in the affirmative. I note that the pressing of grounds for which there is little or no evidence and/or submissions has been unhelpful.

37. I will consider the grounds under s59(c) first, then s59(b) and then the matters under s59(a)(i) and s36.

The Opposition under s59 Excluding Entitlement

Onus and Standard of Proof

38. The application was filed on 10 August 2017. Consequently, substantive amendments of the Act brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act2012 apply to the application. This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a patent application 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?

39. 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. 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...”

40. I consider that the skilled addressee is a person or team of persons involved in the use, designing and construction of an electro-mechanical system for driving and controlling pumps and the like using computerised controllers, and in particular those pumps that require variable speed electric motors. It is reasonable to believe that the skilled addressee is a composite being comprising those who have an understanding of the electrical, mechanical and control aspects of such systems.

41. I have reviewed the declarations by each of the expert declarants and I am satisfied that each is able to adequately represent the views of the skilled addressee as I have defined it. In this regard I note that:

· Mr Waterreus is an electrical engineer with extensive experience in variable speed drives (“VSDs”) including their application to pumps. He also has a broad range of electrical engineering experience in such things as power generation, transformers, industrial motors, industrial automation and programmable logic controllers (“PLCs”); and
· Mr Spirovski is also an electrical engineer with considerable experience in the design and development of control systems across a number of electro-mechanical and telecommunication systems, including for water pumps.

42. At the hearing both parties presented various objections to the ability of the expert declarant of their adversary to represent the skilled addressee.

43. Mr Bennett pointed out that Mr Spirovski has no experience in variable speed drives and highlighted his experience in control technology. I take this as a clear representation that Mr Bennett, unsurprisingly, would urge me to prefer the evidence of Mr Waterreus to that of Mr Spirovski.

44. Mr Cooke for his part pointed to the fact that Mr Spirovski has expertise in controllers and is an electrical engineer, asserting that the inventive concept lay in the controlling aspects of the claimed invention. Mr Cooke also pointed out that Mr Spirovski was an independent witness, unlike Mr Waterreus who was an employee of the Opponent. Mr Cooke also pointed out that, unlike Mr Spirovski, Mr Waterreus had not committed to the Federal Court practice guidelines for expert witnesses. Mr Cooke asserted that because of these issues Mr Spirovski’s evidence should be preferred to Mr Waterreus’s where there was any contest.

45. As I indicated above, the skilled addressee is a composite and hypothetical person One may suggest that the skilled addressee typically does not literally exist in reality but is brought into legal existence to suit the purposes of the Act. Because of this it is rather unsurprising that no one person would generally represent the entire gamut of the skilled addressee’s knowledge and experience. Typically, one declarant or the other may be better positioned to provide evidence on certain aspects of what the skilled would know or do based on their knowledge or experience.

46. I do not propose to make any general statements here about the relative suitability of Mr Waterreus and Mr Spirovski to represent the skilled addressee. Suffice to state that where the declarants disagree on a factual point that I intend to rely upon, 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.

47. The fact that Mr Waterreus is an employee of the Opponent does not necessarily mean I must automatically treat his evidence as being biased. A similar consideration applies to his failure to adhere to the Federal Court practice guidelines for expert witnesses. However, as will be discussed later in this decision, the conjunction of these facts with the nature of his evidence at some points raises grave reservations, in my view, as to the impartiality of Mr Waterreus’s evidence.

Construction of the Independent Claims

48. Before considering the issue of clarity, I consider it helpful to construe the independent claims.

49. 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]. These include, 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), cited at [249] of Pfizer:

“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.”

50. 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.”

51. As noted in Commissioner of Patents v Rokt Pte Ltd [2020] FCAFC 86 at [73], the construction of patent claims is a question of law for the decision maker, rather than a question of fact to be determined via expert evidence:

“The role of expert evidence in construing the patent specification and the claims is limited. It is to place the Court in the position of the person acquainted with the surrounding circumstances as to the state of the art and manufacture as at the priority date: Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [24]; Myriad Genetics at [12]. Typically, the Court will read the specification with the benefit of expert evidence as to the meaning of words that are terms of art, or with an explanation of technical concepts relevant to the understanding of the invention as described and claimed. The question of construction remains with the Court.”

Construction of claim 1

52. [1.a] An electrical system for operatively driving a pump, said system comprising:…

53. I take this to indicate that the claim defines an electrical system non-exhaustively including the further features as later defined in the claim, the electrical system being suitable for operating a pump to displace fluid. While characterised as an “electrical system”, the skilled addressee would understand that the system would generally comprise components that can be characterised as either electrical, mechanical or electro-mechanical in nature. Hence, while it can be argued that the system could be better characterised as an electro-mechanical system, the difference is of no practical consequence in understanding the claimed invention.

54. [1.1] …a prime mover having a controllable mechanical output;…

55. I take this feature to refer to a primary source of mechanical energy for the electrical system, typically a mechanical motor or engine, such as an internal combustion engine, although clearly any type of suitable prime mover falls within the scope of the claim. The mechanical output refers to the usable energy or force produced by the prime mover that is used to drive other components of the electrical system. Typically, such output would be provided by a rotating shaft whereby the output can be characterised in terms of RPM (speed or speed of rotation), torque or power. I note that power is formally the vector dot product of torque and angular velocity, meaning that power will be proportional to the product of torque and speed.

56. The fact that the output is controllable indicates that, generally, the output, for example in terms of speed, RPM or power, can be regulated as desired i.e., varied or maintained as needed.

57. …[1.2] an electrical generator mechanically coupled to the prime mover output, said generator operatively generating electrical power and having a controllable excitation system whereby generator voltage output is controllable;…

58. I take this to mean that there is a device that converts mechanical energy into electrical energy, such as an alternator, that is mechanically driven by the prime mover output to produce electrical power. An example is where a shaft of an alternator is connected to a shaft of an internal combustion engine thereby providing a driving force to the alternator to produce electrical power. The excitation system of the generator I take to refer to a component or system whose voltage and/or current output determines the output voltage of the electrical generator at a given frequency i.e. prime mover speed (Spirovski at [28], [48] and [56]; Waterreus3 at [9]). It is apparent that the speed of the prime mover and the output of the excitation system will determine the voltage output of the electrical generator that drives the induction motor (Spirovski at [49],[50], [59] and [70]). The fact that the excitation system is controllable means that its output can be varied or regulated in a desired manner.

59. [1.3] …an electrical induction motor operatively supplied with electrical power from the electrical generator;…

60. I take this to mean that there is a motor that delivers a mechanical output (i.e. a rotating shaft) via electromagnetic induction using electrical power supplied by the electrical generator. Again, the mechanical output can be characterised in terms of RPM (speed or speed of rotation), torque or power

61. [1.4] …a pump driven by the induction motor for operatively displacing fluid, pump operating characteristics comprising a measurable fluid flow rate, fluid pressure and fluid level; and…

62. I take this to mean that there is a pump that is able to be driven by the induction motor to displace fluid, the pump having a number of operating characteristics that can be measured, including fluid flow rate (i.e. the volume of fluid that is displaced per unit time), fluid pressure (represented, for example, by fluid head) and fluid level (i.e. the height or depth of the fluid in a reservoir or other source/destination of the fluid). I understand that the pump would be mechanically coupled to the output (i.e. rotating shaft) of the induction motor so as to be driven and displace fluid.

63. [1.5] …a controller programmed with a speed-torque relationship of both the prime mover and induction motor and a performance curve of the pump, said controller configured to:…

64. I take this to mean that there is a computerised controller of some kind, such as a PLC that has a set of instructions (i.e. a program) that includes the speed-torque relationship of the prime mover, the speed-torque relationship of the induction motor and a performance curve of the pump. The controller is designed to undertake or achieve the further steps outlined at integers [1.5i] and [1.5ii], i.e. in effect it is programmed to achieve those further steps.

65. I take the speed-torque relationships of each of the prime mover and the induction motor to simply reflect data or information characterising efficient, and thereby desirable, operating ranges in terms of the torque output that one can expect at particular operating speeds for each of these components (Spirovski at [19] and [20] and opposed application at [0009] and [0053]). Noting the relationship between speed, torque and power discussed above, the speed-torque curves are also indicative of the power that is produced at each combination of speed and torque on the respective curves.

66. The “pump performance curve”, of a pump I take to mean data or information characterising efficient, and thereby desirable, operating ranges in terms of the pressure (or head) that the pump can deliver at various flow rates delivered by the pump (Spirovski at [19] and [20] and opposed application at [0009] and [0053]). It is worth noting that where the pump can operate at variable speed there will be a pump performance curve for each of these speeds (Waterues3 at [19b]). There is also a “system curve” that reflects the fundamental constraints of the system (for example delivery pressure) in which the pump operates (Waterues3 at [19a]), and, given a desired set parameter, such as flow rate of the system, there will be a single pump performance curve associated with a particular pump speed that intersects the system curve at the required flow rate (Waterreus3 at [19c]).

67. [1.5i] …i) continuously monitor operating characteristics of the prime mover, the electrical generator, the induction motor and the pump; and…

68. I take this to mean that the controller is designed to continuously, that is without interruption, in effect constantly within the restraints of the sensing equipment concerned, monitor the operating characteristics of the prime mover, the electrical generator, the induction motor and the pump.

69. The operating characteristics would include anything characterising the operation of the prime mover, the electrical generator (including the excitation system), the induction motor and the pump. This would include a wide range of variables including such things as the speed and torque of both the prime mover and the induction motor, the output voltage of the generator, the pump flow rate, pump pressure, the relevant operating temperature of any of these components, oil pressure of the prime mover, etc.

70. [1.5ii] …ii) automatically and dynamically control the prime mover output and excitation system in order to dynamically and continuously match the speed-torque relationship of the prime mover to that of the induction motor and the pump performance curve;…

71. I take this to mean that the controller is designed to automatically, that is independently or of its own volition, and dynamically, which in the context of the claim I take to mean with constant or continuous activity, controlling the prime mover output (i.e. speed and torque) and excitation system (i.e. voltage and/or current) so as to dynamically and continuously “…match the speed-torque relationship of the prime mover to that of the induction motor and the pump performance curve…”. I note that the language of matching the curves in a literal way does not appear to make much sense. However on reading the claim and the specification as a whole I take the features in quotation marks to mean that the prime mover is controlled to operate at a point on its speed-torque curve such that in conjunction with the output of the electrical generator (as determined by the speed of the prime mover and the output of the excitation system) it is able to effectively drive the induction motor, where the induction motor in turn operates at a point on its speed-torque curve that allows it to drive the pump, the pump operating according to its pump performance curve or at a desired point on the pump performance curve.

72. In effect I take integer 1.5ii to mean that the controller automatically and constantly provides active control feedback to the prime mover and the excitation system so as to ensure that the output of the prime mover in terms of speed and torque and the output voltage of the electrical generator, as determined by the speed of the prime mover and the excitation system output, meets the speed-torque requirements of the induction motor so that it may drive the pump according to where it is operating or needs to operate on the pump performance curve. I note that this interpretation is similar to Mr Spirovski’s understanding of these features at [19] to [22] of his declaration, this being unchallenged by Mr Waterreus in reply.

73. [1.6] …so that optimal energy transfer efficiency through the system is facilitated whilst user-selectable fluid flow rate, fluid pressure and fluid level are maintainable when displacing fluid via the pump.”

74. I take this to mean that the characteristics and functions carried out by the controller in integers 1.5, 1.5i and 1.5ii are undertaken so as to facilitate or promote optimal energy transfer efficiency through the system. That is the controller automatically and constantly provides active control feedback to the prime mover and the excitation system in view of the continuous monitoring of the operating characteristics of the prime mover, the electrical generator, the induction motor and the pump so as to ensure that the output of the prime mover in terms of speed and torque and the voltage output of the electrical generator, as determined by the excitation system and the speed of the prime mover, meets the speed-torque requirements of the induction motor so that it may drive the pump according to where it is operating on or desired to operate on the pump performance curve in a way that facilitates or promotes optimal energy transfer through the system.

75. I take “energy transfer efficiency” to refer to the efficiency of the overall transfer of useable energy from the prime mover to the generator, from the generator to the induction motor and from the induction motor to the pump. Hence “optimal energy transfer efficiency” being “facilitated whilst user-selectable fluid flow rate, fluid pressure and fluid level are maintainable when displacing fluid via the pump” denotes a situation where energy is transferred throughout the system to the pump in a way that promotes or facilitates minimal energy consumption as far as possible within the system constraints while still achieving the relevant desired operating output of the pump.

76. As to the phrase “user-selectable fluid flow rate, fluid pressure and fluid level are maintainable when displacing fluid via the pump”, it would be plainly apparent to the skilled addressee that this is providing a list of the typical operating parameters of the pump that would be chosen as desired. It is understood that only one of these parameters can be maintained at a time due to the relationships between each of the parameters, and to formally consider that any two or all three are simultaneously maintainable is clearly absurd (Waterreus1 at [13]; Spirovski at [58] and Waterreus3 at [10]).

Construction of Claim 19

77. [19.a] A controller for an electrical system for operatively driving a pump, the system having…

78. I take this to define a computerised controller of some kind, such as a PLC, that is suitable for an electrical system as construed for integer 1.a, the electrical system having the features further defined in the claim. The fact that the controller is a computerised controller is apparent from the further features of the claim, such as integers 19.5 and 19.6.

79. [19.1] …a prime mover with a controllable mechanical output,…

80. I take this feature to provide the same limitation as per integer 1.1.

81. [19.2] …an electrical generator mechanically coupled to the prime mover output,…

82. I take this to mean that the electrical system has a device that converts mechanical energy into electrical energy, such as an alternator, that is mechanically driven by the prime mover output to produce electrical power.

83. [19.3] …an electrical induction motor operatively supplied with electrical power from the electrical generator, and…

84. I take this feature to provide the same limitation as per integer 1.3.

85. [19.4] …the pump driven by the induction motor for operatively displacing fluid, said controller comprising:…

86. I take this to mean that the pump of the electrical system is able to be driven by the induction motor to displace fluid. The controller non-exhaustively includes the following features that are listed.

87. [19.5] …an interface for interfacing with a plurality of sensors for operatively monitoring operating characteristics of the prime mover, electrical generator, induction motor and pump; and…

88. I take this to mean that the controller has means allowing it to connect with a plurality of sensors that are suitable for monitoring operating characteristics of the prime mover, the electrical, the induction motor and the pump. I take operating characteristics as discussed with regard to integer 1.5i.

89. [19.6] …a memory arrangement operatively programmed with a speed-torque relationship of both the prime mover and induction motor and a performance curve of the pump;…

90. It take this to mean that the controller has a memory having a set of operative instructions (i.e. a program) that includes the speed-torque relationship of the prime mover, the speed-torque relationship of the induction motor and a performance curve of the pump. The speed-torque relationships and the pump performance curve I take as per integer 1.5.

91. [19.7] …the controller configured to:…

92. I take this to mean that the controller is designed to undertake or achieve the further steps outlined at integers 19.7iii and 19.7iv.

93. [19.7iii] …iii) continuously monitor the operating characteristics; and…

94. I take this feature to provide the same limitation as per integer 1.5i.

95. [19.7iv] …iv) automatically and dynamically control the prime mover output and an excitation system of the generator excitation system whereby generator voltage output is controllable, in order to dynamically and continuously match the speed-torque relationship of the prime mover to that of the induction motor and the pump performance curve;…

96. I take this feature to provide the same limitation as per integer 1.5ii. The second reference to “excitation system” in the feature is clearly an error that does not create any ambiguity.

97. [19.8] …so that optimal energy transfer efficiency through the system is facilitated whilst user-selectable pump fluid flow rate, fluid pressure and fluid level are maintainable when displacing fluid via the pump.

98. I take this feature to provide the same limitation as per integer 1.6.

99. In effect claim 19 is simply for a controller that is suitable for performing the invention as defined in claim 1.

Clarity

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...”
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]; (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

In their written submissions, at [47.1] to [47.5], the Opponent asserted that claims 1, 4 and 8 are unclear, although I note that the arguments seem to be interspersed with issues of support. Clarity also appears to be discussed, amongst other things, throughout a separate section of the Opponent’s written submissions at [51] to [86] that specifically responds to Mr Spirovski’s declaration. The relevant passages from this section also assert, as best understood, that claims 1, 4 and 8 lack clarity for similar reasons as discussed at [47.1] to [47.5], along with their respective counterparts in claims 19, 22 and 26. Similar arguments as per the written submissions were advanced during the hearing by Mr Bennett in relation to claim 1, 4 and 8, which I take to be equally applicable to claims 19, 22 and 26. I have taken into account all the various submissions made by the Opponent, both written and oral, as best understood in considering the issue of clarity.

Claims 1 and 19

The Opponent raised a number of clarity issues with the independent claims which I will consider below. While these were generally raised with regard to claim 1, given the similarity of the claims I take the Opponent’s arguments to also be applicable to claim 19.
Firstly, in its written submissions the Opponent asserts that:
“47.2 Claim 1 lacks clarity as the term ‘said controller configured to automatically and dynamically control the prime mover output and excitation system in order to dynamically and continuously match the speed torque relationship of the prime mover to that of the induction motor and the pump performance curve’ is ambiguous.
47.2.1 It is unclear what ‘dynamically and continuously match’ means, and how and in what manner this is achieved. The specification does not provide any discussion or explanation of how this is performed. The Evidence provided by the Applicant does not show how the specification performs this function.
47.2.2 It is unclear how and in what manner a speed torque relationship of a prime mover is ‘dynamically and continuously matched’ against a speed torque relationship of an induction motor. The specification does not provide any discussion or explanation of how this is performed. The Evidence provided by the Applicant does not show how the specification performs this function.
47.2.3 It is unclear how and in what manner a speed torque relationship of a prime mover is ‘dynamically and continuously matched’ against a performance curve of a pump. The specification does not provide any discussion or explanation of how this is performed. The Evidence provided by the Applicant does not show how the specification performs this function.
47.2.4 It is unclear how and in what manner a speed torque relationship of a prime mover is ‘dynamically and continuously matched’ against both a speed torque relationship of an induction motor and performance curve of a pump. The specification does not provide any discussion or explanation of how this is performed. The Evidence provided by the Applicant does not show how the specification performs this function.
47.2.5 It is unclear what ‘pump performance curve’ means. Is this referring to Discharge vs Efficiency, Power, Head or some other measurement curve, or a totally different curve. The specification does not provide any explanation.”
The above arguments appear to be confusing issues of clarity with those under s40(2)(a). There are no actual arguments as to why the skilled addressee would be unable to understand what limitation the various features bring to the invention as claimed. Rather the arguments provided assert that the specification does not provide any explanation as to how the specification performs the functions associated with the features concerned, and this would seem to me to be a matter of clear enough and complete enough disclosure (or perhaps support under s40(3)) rather than clarity. Consequently, in terms of clarity it is not apparent to me how the features concerned do in fact lack clarity based on these submissions alone.
The lack of clarity alleged above was expanded on somewhat at the hearing by Mr Bennett who discussed this in the context of [19] and [20] of Spirovski:
“Effectively what he says in paragraph twenty, is that the controller is programmed with the relationship between the engine and the induction motor and the controller then can monitor, can control the engine output and the voltage, the excitation system of the generator to match the energy transfer and power requirements of the induction motor and pump to achieve the most efficient, energy efficient system whilst maintaining user selected flow rate, fluid pressure or fluid level.
Effectively, the prime mover is controlled by, as we take his system, is controlled by the generator, if you set a user selected option flow, pressure or level, the voltage will control the engine output which will transfer power to the induction motor and the pump needed to achieve that level. In other words, having set level it will cause the pump and the motor and the pump, pump to be powered at a sufficient rate so as to achieve that and then maintain that level which if that’s dynamically and continuously match the speed-torque relationship of the prime mover to that of the induction motor and the pump performance curve, um we’d say that’s an ambiguously phrased or a phrase that is unclear.
Spirovski says he understands the phrase continuously matched to refer to ongoing and real-time nature of the feedback process of the control system. In other words that engine speed is going, use engine as a synonym for prime mover, is continuously being adjusted by the controller. The term speed-torque relationship he refers to in paragraph nine of the application is indicative of desired operating ranges. He says (quoting from [19] of Spirovski) ‘I understand based on my experience that the speed-torque relationship of both the prime mover and the induction motor whilst having general forms, will be determined by the particular model of prime mover and induction motor selected.’
Putting a caveat on the extent of his experience in dealing with this, what he says there is what I have submitted to you before, that they’re effectively off the shelf items and as off the shelf items the come with a predetermined relationship determined by the particular model. If you buy an engine and an induction motor then they’ll have a relationship defined by the nature of how they’ve been made. The performance curve of the pump he says, by reference to back to paragraph nine (of the opposed application), (quoting from [19] of Spirovski) ‘…provides an indication of the producible pressure relational to producible fluid flow rate and a desired operating range’, and it would ‘…depend on the type of pump being used, the particular application and the system in which the pump is operating’. We would probably add to that the specific gravity of whatever is being pumped. If the specific gravity is one then we will have a performance, a pump performance curve, but if it is greater than one then it will alter the pump efficiency.

However the Opponent’s clarity argument here seems to be, as best understood, that, first, as Mr Spirovski interprets certain features of the claims in a certain way which does not literally correspond to the words used in the claim, then therefore those features lack clarity.
Secondly there seems to be an implied argument, that, as the components concerned are off the shelf and thereby come with their own inherent operating characteristics (i.e. speed-torque relationship, pump performance curve etc), then these will determine the relationship between the components such that there is no possibility of dynamic and continuous “matching” as defined in the claims.
It should be apparent from my construction of claims 1 and 19 above that I do not consider that any of the features of these claims are unclear. In terms of the first argument really all that Mr Spirovski has done is no more than indicate his understanding of the claims. It is hard to see how an expert’s opinion on claim scope per se, absent any evidence that there were any difficulties in coming to that opinion, in any way supports there being a lack of clarity. It is also apparent that Mr Bennett in reaching his conclusion here has simply ignored aspects of Mr Spirovski’s evidence that discuss how the claimed invention promotes optimal energy efficiency while controlling the components concerned.
In relation to the second argument I note that there is nothing in the claims that mandates that the prime mover, induction motor, pump etc are necessarily off the shelf components, although that circumstance clearly falls within the scope of the claim. However, even if the claim was so limited I see no reason why you cannot have continuous and dynamic feedback to the prime mover and excitation system while maintaining a desired pump output, not least for the purposes of optimising energy transfer efficiency as outlined in the claims, but also for tightly regulating the desired pump output and tightly constraining the prime mover and excitation system to meet the desired pump output.
It is at this point that I consider it appropriate to undertake an expedition into some matters from Mr Waterreus’s evidence that relate to those discussed in the preceding paragraphs and that appear to be a sort of nexus for some of the Opponent’s arguments under clarity, clear enough and complete enough disclosure, support and novelty, even if it has not been cited for those purposes in some instances. It is perhaps best to consider these before continuing as this provides some background context to these grounds and to understanding Mr Waterreus’s evidence. To begin it is helpful to repeat [70] and [71] of Spirovski:
“In response to paragraph 12 of Waterreus 2, I do not consider there is any ambiguity in the phrase ‘continuously match the speed-torque relationship of the prime mover to that of the induction motor ...’. The speed-torque relationship is about power, given that power is speed multiplied by torque. I understand this phrase to be referring to matching the power needs of the pump to the power drive of the prime mover as part of a closed loop control system. In a closed loop control system there is a desired quantity that you want to control (e.g. an aspect of the pump output, say for example flow rate) and a means of effecting the desired quantity which in this case is varying the power supply to the induction motor by controlling its frequency and voltage which in turn is determined by the speed of the prime mover and the excitation energy applied to the alternator. This concept would be readily understood by a person skilled in the art.
Further, it is not misleading to claim that the speed-torque relationship of the prime mover can be independently matched to the motor. In the system described in the Application, the drive to the pump (the induction motor) is magnetically coupled rather than mechanically coupled to the frequency of the power supply. This means that the speed of the induction motor and the speed of the prime mover are not directly coupled and that for every speed setting of the prime mover, a range of speeds are possible for the induction motor based on the voltage applied to the motor. The speed of the prime mover only determines the maximum speed of the induction motor. This is evident in the soft start process. Of the possible speed and voltage combinations available to drive the induction motor at a particular speed, the system controller dynamically selects the combination that results in the optimal energy transfer or minimal losses, based on the programmed speed torque curves.”
Mr Waterreus responds to this at [8] and [9] of Waterreus3:
“In response to Paragraph 70, I would like to point out that Mr. Spirovski only introduces further ambiguity by the statement ‘Power is speed multiplied by torque’, when in reality power is only proportional to speed and torque. Further, I stand by my statement that Taranis Claim 1 (ii) is ambiguous and misleading by claiming to ‘continuously match the speed-torque relationship of the prime mover to that of the induction motor’. The induction motor only requires electrical power at the right frequency and voltage in order for it to meet, via the motor drive shaft, the demands of the directly coupled pump and it gets this power from the alternator which in turn makes demands of torque and speed from the prime mover (engine). It is misleading to state that the speed-torque relationship of the prime mover is ‘matched’ to the induction motor because the pump determines the required specification for the motor, the motor nameplate data determines the alternator specification and the electrical load that the motor places on the alternator determines the torque-speed requirement from the prime mover.
In response to Paragraph 71, this is an add on statement to Paragraph 70 and is purely a text book extract, known to all those skilled in the art, on how an induction motor ‘slips’ to provide torque and that voltage can be used to affect the amount of slip. However, voltage control of slip is an inefficient method of induction motor speed control, especially when variable frequency supply is available. In addition, excitation of the alternator determines motor voltage, not a direct torque-speed relationship between the prime mover and the induction motor.”
Several things emerge from this. Firstly, it is not apparent how Mr Spirovski’s statement about power being speed multiplied by torque results in any ambiguity. While Mr Spirovski’s statement here is perhaps rather fast and loose in a mathematical sense, it does not detract from the fact the speed-torque relationship clearly determines power as would be understood by the skilled addressee. Mr Waterreus’s statements in response are little more than technical pedantry that adds nothing to an understanding of the issues at hand. If anything, one could go a step further and add, as discussed above, that power is formally the vector dot product of torque and angular velocity. However as noted a reduction to formalism here, while mathematically correct, is not necessary to conceptually understand the matters involved and a failure to do so does not introduce any ambiguity.
Secondly, I do not consider Mr Waterreus’s response at [8] effectively deals with what Mr Spirovski is saying at [70]. I take Mr Waterreus’s point that the demands of the pump determines a required output of the induction motor, which then places a requirement on the electrical generator to meet this output, which in turn places a requirement on the speed-torque requirements of the prime mover. Obviously, this must occur for the electrical system as claimed to be operable in terms of pumping a fluid. However, I consider that Mr Waterreus has missed Mr Spirovski’s point, and indeed the nature of the claimed invention as I have construed it above, in that the electrical system as claimed comprises a particular form of control feedback loop. That is, it appears that Mr Waterreus has simply read over aspects of the claims without really coming to terms with what these mean.
Thirdly, Mr Waterreus does not contradict Mr Spirovski’s statements at [71] regarding there being, for each speed setting of the prime mover, a range of possible speeds for the induction motor based on the voltage applied to the induction motor via the electrical generator. Rather he appears to accept the possibility but with the caveat that doing so would be inefficient. In terms of efficiency, I note that the claims refer to optimal energy transfer through the system, which clearly incorporates the idea that you may run individual parts of the system at lower energy transfer efficiency if that helps achieve optimisation of overall energy transfer efficiency.
It is also clear that Mr Waterreus has read over features of the claim at other points in his evidence. This is apparent in his response to [87] of Spirovski. Paragraph [87] of Spirovski reads as follows:
“As an overview, a fundamental difference between the invention claimed in the Application and the Uon System (note this is a reference to AU 2017210650 A1) is that the invention claimed in the Application is a more integrated system. It continuously monitors the operating characteristics of each of the components of the system and the system a whole. This allows the controller to maintain a set pump operating characteristic (i.e. the fluid flow, fluid pressure or fluid level) selected by the user whilst performing an additional step of making adjustments to the operating points of system components to achieve the goal of optimal energy efficiency. This involves characterising the specific performance of system components across their operating range for each real-world application of the system. In contrast, the Uon Application is more simple and can be put to generic applications with pre-programmed component types and without the need to characterise the specific component parameters of the system. Further, the Uon System is not focused on optimizing overall energy efficiency beyond the point of selecting an optimally-sized generator assembly.”
Mr Waterreus’s response to this is given at [19] of Waterreus3:
“In response to Paragraph 87, I disagree with the statement that the Taranis application describes a more integrated system because:
·     As described in my response to Paragraphs 82 to 84 above, both systems draw on the same range of industry standard subsystems to produce an optimised integrated holistic solution for VVVF type control of AC induction motors driving (primarily) pumps.
·     The UON system also uses algorithms to achieve the integrated whole and to optimise overall performance and maximise efficiency.
·     To state that the Taranis Claim 1 describes a superior system because the master controller is programmed with the speed-torque relationship of both the prime mover and the induction motor and programmed with the performance curve of the pump in order to optimise energy transfer through the system is misleading because:
a)The static head including delivery pressure, suction head and dynamic head (head losses) determine the System Curve.
b)Where the system curve intersects the pump curve is where the pump will operate, albeit the VVVF technology of the applications being discussed herein facilitates a series of pump curves from which flow, pressure or level control can be chosen;
c)If flow control is chosen, for example, this determines a point on the system curve and only one of the pump speed curves passes through this system curve point i.e. the pump speed cannot be ‘optimised’ to deliver the chosen flow rate if delivering over pipework into atmospheric pressure;
d)The primary application of these two applications is centrifugal pumps pumping from boreholes or in dewatering applications via open ended pipework where water table level / the suction head may change and shift the system curve such that a new pump speed is required to maintain the flow rate, but again this new operating point cannot be optimised - the system curve determines the required new pump speed for a change in system head.
e)Similar arguments apply if either pressure or level control is chosen for the design application as described in (d) above, so Taranis claim 1 that the pump curve is programmed into the master controller for optimal energy transfer will not achieve the intended purpose, unless it was stated that the application was of a municipal type where an optimal flow rate can be calculated to transfer a given volume of water in a 24 hour period i.e. per day.
f)A certain pump speed requires the same shaft speed from the direct couple AC induction motor and the optimal way to achieve this with centrifugal type loads is by V/f control using VVVF technology. The V/f algorithm in the UON invention achieves this without the need to program in the induction motor torque / speed curve and induction motor slip is compensated for by the fact that flow control, pressure control and / or level control are outer control loops. The induction motor torque / speed curve may be programmed into the Taranis master controller, but what this achieves is seriously in doubt;
g)This leads me to the Taranis Claim 1 that the speed-torque relationship of the prime mover is also programmed into the Master Controller, yet the Taranis application describes a demand driven system. The chosen pump, the desired flow rate and overall system head (including suction, head losses and delivery pressure) determine the pump speed which in turn determines the motor speed including VWF requirements, which in turn determines the requirements from the alternator which in turn determines the speed the prime mover must operate and the torque it must deliver. Optimising how the prime mover will deliver this demand speed and torque is done by choosing and maintaining a well tuned engine, not by entering a torque-speed curve.
To summarise my response to Paragraph 87, I do not agree that the Taranis application describes an invention that has superior algorithms to what is inherent to the UON invention, as presented in the pending UON patent application. In addition, test results are available from the large UON test tank facility (largest in Australia) which prove the efficiency of UON invention is such that savings fuel savings of between 15% to 30% depending on the selection of engine 9 model to motor or motors starting requirements (as stated in Embodiment [67] of the Pending UON patent application. Copies of those test results are attached.”
Again, Mr Waterreus has simply read over the control aspects of the claimed invention. For example, Mr Waterreus appears to accept that having the speed-torque curve of the induction motor programmed in the controller of the claimed invention is a difference between the opposed application and the UON application. However, he dismissively states that “…what this achieves is seriously in doubt…” It would be of some assistance if Mr Waterreus expanded on what he meant by this otherwise bald statement. Similarly his statements regarding the speed-torque relationship of the prime mover implicitly suggests that he accepts that this is another difference between the opposed application and the UON application, however again he simply brushes this aside with no explanation or analysis of what this does (or does not do) or what this means in the context of the claim.
Rather it seems from [19] of Wattereus3 that Mr Waterreus was at some pains to establish that the claimed invention was no different to that in the UON application and in particular was no better in terms of efficiency. I consider that Mr Waterreus’s evidence as discussed above is based on a pre-conceived notion that the invention of the opposed application as claimed and described is effectively identical to the invention of the UON application, without undertaking a proper analysis or consideration of the invention as actually claimed. This is reinforced by his statements at [6] and [18] of Waterreus3:
“6. In response to Paragraph 68, based on my experience developing VSDs (Variable Speed Drives) of the VVVF (Variable Voltage Variable Frequency) type for varying the speed of AC induction motors, it is clear to me that Taranis do not comprehend the physics and engineering behind the VVVF method of varying the speed and torque capabilities of AC induction motors. There does not seem to be an understanding and it is not stated, why the supply voltage to the AC induction motor needs to be varied in conjunction with frequency i.e. a demonstrated understanding and statement that the motor supply voltage needs to be varied in conjunction with motor supply frequency to prevent saturation of the stator core as supply frequency is reduced from the nameplate (design) value of 50 Hz down to 30 Hz (similarly for speed reduction of 60 Hz motors). To those experienced in the relevant industry, induction motor supply voltage at frequencies below nameplate also needs to be reduced and managed so as to maintain the availability of torque in line with the motor designer's torque vs speed curve. The Taranis system replicates the fact that the earlier developed UON variable frequency, variable voltage invention varies the motor supply voltage with frequency, but the Taranis Claim No. 1 does not state why they do it, so as to demonstrate that they are coming from inventive/engineered approach which, in my view, places the clarity of Taranis Claim No. 1 in question.” (emphasis added)
“18. In response to Paragraphs 82 to 84, Mr. Spirovski makes a simplistic statement and ignores the complexity embodied in the UON invention, as spelled out in the UON Patent Application for an invention developed before the Taranis alleged invention, which only surfaced after a person in the Taranis team joined Taranis after he had been an employee of UON for one year and privy to all technical aspects of the prior developed UON invention…” (emphasis added)
Noting the above, the fact that Mr Waterreus is an employee of the Opponent, that Mr Waterreus has not agreed to be bound by the Federal Court practice note for expert witnesses and that the Opponent has raised entitlement broadly based on what could be said to be an allegation that Mr Hoascar simply stole the invention from the Opponent, I have grave reservations about the impartiality of the evidence given by Mr Waterreus in Waterreus3. It is telling that Mr Waterreus would raise matters that relate to the Opponent’s allegations on the entitlement issue in the context of providing technical evidence as an expert witness. I consider that in Waterreus3 Mr Waterreus has departed from simply providing impartial expert evidence to assist the Commissioner as the decision maker to providing evidence that is coloured by the presumption that Mr Hoascar stole the invention from his employer and seeks to further the Opponent’s case.
While I have direct concerns about Waterreus3, the circumstances outlined above indicate that I need treat the entirety of Mr Waterreus’s evidence with a great deal of caution. Where he reaches conclusions on the claimed invention I do not consider that I can be confident of those in probative terms where they have not been corroborated by Mr Spirovski. To be clear I do not doubt Mr Waterreus’s technical competency. It is just that my concerns about his impartiality make it difficult for me to accept his conclusions about the opposed application at face value.
Returning to the issue of clarity, further alleged clarity issues with claim 1 are outlined at [47.3] of the Opponent’s written submissions:
“47.3 Claim 1 lacks clarity as the term ‘so that optimal energy transfer efficiency through the system is facilitated whilst user-selectable fluid flow rate, fluid pressure and fluid level are maintainable when displacing fluid via the pump’ is ambiguous.
47.3.1 It is unclear what “optimal” means. “Optimal” is an indefinite relative term.
47.3.2 It is unclear what “energy transfer efficiency” means. What energy is being transferred? How is efficiency being measured? “Efficiency” is an indefinite relative term. The specification does not provide any explanation.
47.3.3 It is unclear what “through the system” means. Does this mean from fuel into the prime mover to induction motor output? How is this energy transfer measured and quantified? The specification does not provide any explanation.
47.3.4 It is unclear how and in what manner efficiency is facilitated whilst user-selectable pump operational features are maintained. The specification does not provide any explanation.
47.3.5 It is unclear how and in what manner a user is able to select and maintain fluid rate, fluid pressure, and fluid level, whilst the controller at the same time is “dynamically and continuously matching” the speed torque relationship of the prime mover to that of the induction motor and the pump performance curve. If the user wants to maintain a specific fluid rate for example, how does the controller maintain this fluid rate whilst performing the dynamic and continuous matching function defined. There is no discussion or explanation of this feature.
47.3.6 As noted above, paragraphs 52 and 53 of the Application do not provide additional explanation, discussion, example graphs, of how these functions are performed.” (emphasis in original)

Despite this, at the hearing, Mr Bennett referred to the Applicant having a lacuna in their case, in that there was no evidence that the Applicant was entitled to the invention from Mr Vetrone. However, there is no evidence of any difficulty or dispute in the assignment from Mr Vetrone to the Applicant. While the onus can shift from the Opponent to the Applicant under some circumstances, as per Dunlop Holdings, I do not think that mere speculation, unsupported by any evidence is sufficient to shift the onus from the Opponent to Applicant. In any case the notice of entitlement is prima facie evidence of a valid assignment from Mr Vetrone and Mr Hoascar (assuming Mr Hoascar is in fact an inventor) to the Applicant, and it would otherwise seem unusual that Mr Vetrone became a director of the Applicant in July 2018 (Vetrone at [9]) if there was a dispute over assignment of the opposed application.

Conclusion on Entitlement under s36 and s59(a)

I conclude that the Opponent has failed to establish that any party other than the Applicant is entitled to patent rights in the opposed application. It follows that the Opponent’s s36 request and grounds of opposition under s59(a) are unsuccessful.

Conclusion on the Opposition and the s36 Request

None of the grounds of opposition have been made out and therefore the opposition under s59 is unsuccessful. Similarly, the Opponent’s request under s36 has also been unsuccessful.

Costs

Costs usually follow the event. I see no reason to do otherwise here. I award costs against the Opponent, UON Pty Ltd.
I note that costs are usually awarded according to Schedule 8 of the Regulations. However Mr Cooke made it plain at the hearing that, in the event an award of costs was made against the Opponent, the Applicant would seek a variation of scale beyond Schedule 8 based, as I understand it, on the late filing of the summons and the notice to produce by the Opponent. Therefore, while costs are awarded against the Opponent, the precise quantum of costs will be determined based on further submissions from the parties.
To that end the Applicant has fourteen (14) days from the date of this decision to file submissions in support of a variation of costs beyond Schedule 8 of the Regulations. I will then consider the matter and seek submissions from the Opponent before finalising the quantum of costs. If no submissions are made by the Applicant within the time frame indicated the award of costs will be made according to Schedule 8 of the Regulations.

Dr W.E. Guinea

Delegate of the Commissioner of Patents

Annex A – Claims of the 2017213531 Application.

Annex B – Chronology

Date	Event	Source
1998	Since this time Mr Vetrone suggests that he had thought it desirable to design a better motor starting system that would not need a state assistance device for a motor when starting by a generator in a remote mine site	Vetrone [11]
2000	Mr Vetrone founds GPS Services Pty Ltd (“GPS”). GPS was involved in the “…designing, building and maintaining of electrical equipment”. GPS sold generator s, installed power stations and was involved with building switchboards and control panels for generators, softstarter and pump control panels. Mr Vetrone took the lead in the design and construction of the control panels.	Vetrone at ]6]
January 2002	Mr Keogh suggest that he considered whether the conventional starting method could be removed or altered, and worked since then to develop an alternative system.	Keogh1, Keogh 2 at [6] and annexure
In or about 2014	Mr Keogh considered and worked on looking at the development of an alternate system again due to advancement in technology.	Keogh 3 at [18].
July 2014	Mr Vetrone sells his majority shareholding in GPS.	Vetrone at [8].
22 December 2014	Mr Hoascar is terminated by APac Energy for accessing and sharing confidential documents, specifically regarding the dismissal and workers compensation claim of another employee, as well as general conduct issues	MVK-42 to Keogh 3
March 2015	Mr Vetrone decides to make the ideas he had about a better motor starting system in 1998 a reality.	Vetrone at [12].
1 July 2015	Mr Hoascar begins full time employment with the Opponent. NB Mr Hoascar’s employment contract at MVK-3 clearly indicates that he commenced employment on 1 July 2015. I take Mr Reid’s and Mr Keogh’s statement of “between” (respectively at [10] of Keogh 2 and [3] of Keogh1) to be exclusive of 30 June 2015. It is not clear to me why Mr Hoascar indicates that his employment with the Opponent began on 30 March 2015 at [9] of his declaration, but I consider that this is an error.	Keogh1 at [3] and [6], MVK-3 to Keogh 3, Keogh 2 at [10]; Hoascar at [9].
September/October 2015	Mr Vetrone starts some R and D programming on a HT-GC500 (controller).	Vetrone at [13].
Some time prior to October 2015	Mr Keogh asks Mr Hoascar’s manager, Mr Geoff Smith, to make sure Mr Hoascar knew about the Opponent’s intellectual property policies. Mr Keogh indicates that he believed Mr Smith spoke to Mr Hoascar a number of times about this prior to October 2015, as well the confidentiality of the Opponent’s coding and passwords.	Keogh 3 at [28].
October 2015 to January 2016	Mr Hoascar provides assistance and input with respect to the invention of the UON application while employed by the Opponent.	Keogh1 at [7].
3 October 2015	Mr Vetrone authors JRV-1. By October 2015 Mr Vetrone states that he had in mind a fairly well thought out concept of what he wanted to achieve and how to put this into practice.	Vetrone at [13] and JRV-1.
8 October 2015	The Opponent is said to successfully test the first Pro Power GMC Generator (this being the device said to be subject of the UON application)	Keogh 2 at [8].
19 October 2015	Mr Hoascar signs a confidentiality agreement with the Opponent, apparently due to the fact that he would have access to the Opponent’s source coding and passwords from October 2015. It is not clear from the evidence whether Mr Hoascar was given access to the coding and passwords before or after the confidentiality agreement was signed, although I note that the Opponent asserts that access was subsequent to the confidentiality agreement (Corrected Chronology).	MVK-4 to Keogh 3; Keogh 3 at [29] and [30].
28 October 2015	Mr Hoascar attends a development meeting where Mr Keogh draws a diagram comprising a design concept apparently relating to the Pro Power GMC Generator. The VarioGen brochure (said to be an embodiment of the opposed application) is said by Mr Keogh to comprise a diagram identical in form and function to the drawing from the development meeting.	Keogh 3 at [55] to [61]; MVK-16 to MVK-18 of Keogh 3.
November 2015	The Opponent tests and achieves speed/voltage control over pump motor control and operation.	Keogh 3 at [3].
November 2015	Mr Vetrone conducts engine trials with a Cummins PT Governor and a 60kVa generator. He indicates that he determined that speed control was achievable without a VSD.	Vetrone at [14].
8 December 2015	Mr Hoascar forwards information regarding Mecc Alte regulators to his personal email address.	MVK-7.
18 December 2015	Mr Hoascar enters into an employment contract variation with the Opponent, varying his hours of employment.	Keogh 3 at [25]; MVK-5 to Keogh 3.
Early 2016	Mr Vetrone joins the Applicant as a technical and managerial consultant.	Vetrone at [9].
January 2016	Mr Vetrone conducts AVR trials using a DECS-100 AVR, a 60kVa generator, a PT governor and fuel control card. Mr Vetrone indicates that he was able to achieve both speed control and voltage control.	Vetrone at [15].
28 January 2016	Mr Hoascar forwards to his personal email address information on testing data from the Mooka minesite said by the Opponent to have been used by the Opponent to write code for the ProPower GMC Generator.	Keogh 3 at [35], MVK-8 to Keogh 3.
February 2016	Mr Vetrone indicates that “…we looked at sourcing a new test engine”.	Vetrone at [16].
8 February 2016	Mr Hoascar forwards to his personal email address the “Mooka file” attachment. This is a data capture file for the programming of an external fuel system into the Opponent’s generators.	Keogh 4 at [9], MVK-1 and MVK-2 to Keogh 4
18 February 2016	Mr Hoascar forwards to his personal email address the authorisation code for the purchase and registration of In Power Cummins software.	MVK-10 to Keogh 3. Keogh 3 at [38].
28 February 2016	Mr Hoascar forwards to his personal email address testing results for a Heineken transformer unrelated to the Pro Power GMC Generator.	Keogh 3 at [39]; MVK-11 to Keogh 3
29 February 2016 to 1 March 2016	Mr Hoascar is onsite at BHP Mt Whaleback commissioning the GMC Generator system.	Keogh 2 at [16] and [17]; ACR-2 to Keogh 2; Hoascar at [52].
March 2016	Mr Vetrone was in the United States and recollects that there was no development of the invention.	Vetrone at [18].
9 March 2016	Mr Hoascar ceases full time employment with the Opponent	Hoascar at [9].
10 March 2016	Mr Hoascar commenced employment with the Applicant.	Hoascar at [43], Vetrone at [19].
15 March 2016	Mr Hoascar commences casual employment with the Opponent.	MVK-6 to Keogh 3, Hoascar at [9].
24 March 2016	Mr Hoascar’s casual employment with the Opponent ends.	Hoascar at [9].
April 2016	Mr Vetrone returns from the United States and has discussions about the invention with Mr Hoascar. He asks Mr Hoascar to take over some of the development of the invention, particularly with selecting and programming an appropriate controller. Mr Hoascar shows a SICES controller to Mr Vetrone.	Vetrone at [19] and [20]. Hoascar at [47].
22 April 2016	The Opponent demonstrates the Pro Power GMC Generator to Mr Chris Gee of PIHA Pty Ltd (a subsidiary of Mineral Resources) at the Opponent’s premises.	Keogh 3 at [87].
28 April 2016	Mr Gee emails the Opponent regarding sizing and pricing of the Pro Power GMC Generator for Mineral Resources Iron Valley BWT Project.	Keogh 3 at [88]; MVK-40 to Keogh 3.
May to August 2016	Mr Hoascar and Mr Vetrone continue to develop the invention. This included failures and the destruction of ECUs, alternator excitation relays and AVRs.	Vetrone at [21].
2 May 2016	The Opponent is said to provide two quotes to Mr Gee for supply of various models of the Pro Power GMC Generator. PIHA did not accept these quotes.	Keogh 3 at [89]; MVK-41 to Keogh 3.
On or about 23 June 2016	Mr Keogh is informed by Kenny Keogh that Mr Hoascar had commenced working for the Applicant in March 2016.	Keogh 3 at [54].
29 June 2016	Aust Asia Legal Pty Ltd (“AustAsia”) send a letter to Mr Hoascar stating his obligations to the Opponent and requesting an undertaking within seven days regarding the return and deletion of any confidential information in his possession.	Keogh 3 at [62] and [63]; MVK-19 to Keogh 3
29 June 2016	AustAsia send a letter to the Applicant outlining Mr Hoascar’s obligations to the Opponent and requesting an undertaking to return and delete any of the Opponent’s confidential information in the Applicant’s possession.	Keogh 3 at [73]; MVK-27 to Keogh 3.
6 July 2016	Leach Legal responds to AustAsia indicating that they act for the Applicant and requesting further details of the confidential information. The letter also indicates that Mr Steve Heathcote separately represents Mr Hoascar and correspondence from him could be expected within the next 10 days.	Keogh 3 at [74]; MVK-28 to Keogh 3.
8 July 2016	Mr Keogh views the Applicant’s website and considered that the Applicant was advertising a product that achieved the same function as the Pro Power GMC Generator.	Keogh 3 at [54] to [56]; MVK-14 to Keogh 3.
13 July 2016	AustAsia send a letter to Leach Legal providing the requested detail regarding the confidential information. The letter includes, amongst other things, an assertion that Mr Hoascar represented to Rio Tinto and Engenium that he had invented the Opponent’s product, is now employed by the Applicant and that the Applicant can supply the product. It also asserts that a certain product on the Applicant’s website was a copy of the Opponent’s product. Certain demands were also made regarding removal of the product from the Applicant’s webpage and the sale thereof.	Keogh 3 at [75]; MVK-29 to Keogh 3.
18 July 2016	AustAsia send a further letter to Mr Hoascar.	Keogh 3 at [64]; MVK-20 to Keogh 3
21 July 2016	AustAsia send a further letter to Leach Legal regarding non-response to the letter of 13 July 2016 and commencement of legal proceedings.	Keogh 3 at [76]; MVK-30 to Keogh 3.
22 July 2016	Mr Steve Heathcote writes to AustAsia indicating that Mr Hoascar denies having any of the Opponent’s confidential information or of using, disclosing or reproducing any of the same and that Mr Hoascar will continue to honour his confidentiality obligations to the Opponent.	Keogh 3 at [65]; MVK-21 to Keogh 3
25 July 2016	Leach Legal emails AustAsia stating that the Applicant did not have any of the Opponent’s confidential information and has not and will not utilise any of the Opponent’s confidential information.	Keogh 3 at [77]; MVK-31 to Keogh 3.
Mid-August 2016	Mr Kenneth Keogh allegedly has a conversation with Mr Mostyn Jones of RIO Tinto at RIO Tinto’s offices in the CBD wherein Mr Jones allegedly states that Mr Hoascar had contacted RIO Tinto about supplying the GMC unit and that he had invented it. About two hours before speaking with Mr Jones, Mr Kenneth Keogh allegedly has a conversation with Mr Marcus Byrne of Engenium at Engenium’s offices in the CBD. Mr Byrne allegedly told Mr Kenneth Keogh that Mr Hoascar contacted Engenium about supplying the GMC unit, that he had invented it and that he had gone to work for the Applicant. Mr Hoascar denies telling Mr Jones or Mr Byrne that he had invented or could supply the GMC unit. Mr Hoascar does not recall ever speaking to Mr Byrne.	Keogh 1 at [17] to [22]. Hoascar at [57] and [58].
16 August 2016	The Opponent files provisional application AU 2016903254.	MVK-12 to Keogh 3.
31 August 2016	AustAsia send a further letter to Mr Heathcote. This letter asserts, amongst other things, that Mr Hoascar was in fact in possession of the Opponent’s confidential information and supplied this to the Applicant, and had represented to the Opponent’s contacts that he had worked for the Opponent, had invented the Opponent’s products, was now employed by the Applicant and could supply that product to the Opponent’s contacts. Undertakings were also sought regarding the confidential information within 48 hours.	Keogh 3 at [66]; MVK-22 to Keogh 3.
31 August 2016	Mr Heathcote responds to the AustAsia letter of the same day indicating that he will take instructions.	Keogh 3 at [67]; MVK-23 to Keogh 3.
31 August 2016	AustAsia informs Leach Legal that the Opponent had filed AU 2016903254 and reiterating matters regarding alleged appropriation and misuse of confidential information as well as undertakings regarding the confidential information within 48 hours.	Keogh 3 at [78]; MVK-32 to Keogh 3.
31 August 2016	Leach Legal emails AustAsia regarding the status of AU 2016903254 and asking for more details regarding what information from the Opponent that the Applicant is said to possess and utilise.	Keogh 3 at [79]; MVK-33 to Keogh 3.
31 August 2016	AustAsia responds to Leach Legal indicating that provisional application AU 2016903254 has a status of patent pending and that the confidential information is quite clearly set out in the previous letter.	Keogh 3 at [79]; MVK-33 to Keogh 3.
Late August/September to October 2016	The Applicant tests nine prototype units of the invention with a client Mineral Resources Limited and subsidiary PIHA Pty Ltd. The testing confirmed ECU communication and AVR control, but revealed a communications issue with the Evolution display. A display by Hydroelectric Devices Inc (the “HED display”) was tried instead.	Vetrone at [22]; JRV-2 (note I consider that the invoice date on JRV-2 is in US format, being from a US company).
6 September 2016	AustAsia email Mr Heathcote indicating counsel was being briefed.	Keogh 3 at [68]; MVK-24 to Keogh 3.
6 September 2016	AustAsia emails Leach Legal regarding the letter of 31 August 2016. Leach Legal replies that it no longer acts for the Applicant and that Mr David Stewart of Williams and Hughes was now acting for the Applicant.	Keogh 3 at [80]; MVK-34 to Keogh 3.
6 September 2016	AustAsia email Mr Stewart to confirm he acted for the Applicant.	Keogh 3 at [81]; MVK-35 to Keogh 3.
7 September 2016	Mr Stewart confirms, amongst other things, that Williams and Hughes acts for the Applicant.	Keogh 3 at [82]; MVK-36 to Keogh 3.
8 September 2016	Mr Heathcote emails AustAsia indicating that he has instructions to receive service.	Keogh 3 at [68]; MVK-24 to Keogh 3.
On or around 12 September 2016 (Mr Reid) or 18 September 2016 (Mr Keogh)	Mr Kenneth Keogh and Mr Reid are allegedly onsite at BHP Mt Whaleback and are allegedly told by “Joel” of BHP that Mr Hoascar represented to him that he had invented the GMC and that Joel had had dinner with Mr Hoascar and Mr Vetrone of the Applicant about working together/the solution. Mr Reid also indicates that Joel allegedly told him that he was going to leave the Opponent and work for the Applicant. Mr Hoascar denies telling Joel that he invented the GMC ProPower generator.	Keogh 1 at [9] to [16]; Keogh 2 at [18] to [26]. Hoascar at [53] and [56].
27 September 2016	AustAsia send a further letter to Mr Heathcote regarding, amongst other things misuse of the Opponent’s confidential information and breach of employment contract by solicitation, loss of income because of this and that the Opponent would commence proceedings.	Keogh 3 at [69]; MVK-25 to Keogh 3.
27 September 2016	Mr Heathcote responds to the AustAsia letter of the same day indicating that he would take further instructions, but did not anticipate a change in Mr Hoascar’s position.	Keogh 3 at [70]; MVK-26 to Keogh 3.
27 September 2016	Williams and Hughes sends a letter to AustAsia regarding alleged threats of infringement of AU 2016903254 made by the Opponent to the Applicant’s customers.	Keogh 3 at [83]; MVK-37 to Keogh 3.
27 September 2016	AustAsia responds to Williams and Hughes reiterating the matters concerning the Opponent’s confidential information and outlining alleged representations Mr Hoascar was said to have made to BHP, including at a dinner with Mr Vetrone present, and Rio Tinto about inventing the Opponent’s product and the Applicant being able to supply this product. Demands regarding the confidential information were also made.	Keogh 3 at [84]; MVK-38 to Keogh 3.
29 September 2016	William and Hughes replies to AustAsia regarding discussion or mediation to resolve the dispute.	Keogh 3 at [85]; MVK-39 to Keogh 3.
6 October 2016 to 17 October 2016	Mr Hoascar travels to the United States to regarding a possible alternative to the Evolution display, this alternative being made by Hydro Electronic Devices Inc. However, the Evolution display was eventually used in the VarioGen system.	Hoascar at [48]; Vetrone at [22]; GH-3.
19 December 2016	The Opponent commences proceedings against Mr Hoascar in the Supreme Court of Western Australia for breach of confidence and solicitation of the Opponent’s customers.	Keogh1 at [12].
30 March 2017	Mr Vetrone has a conversation with Mr Peter Halliday of International Power Consultants Pty Ltd, who are consultants for the Opponent since October 2016. The conversation takes place at the Applicant’s offices and Mr Halliday alleges that Mr Vetrone stated, amongst other things, that Mr Hoascar had breached the confidentiality clauses of his employment contract with the Opponent, that he had used the information he obtained while employed by the Opponent, that the Applicant had developed the VarioGen for he same application and same process as the Opponents Pro Power GMC Generator and that the Roy Hill Project reverse engineered the Opponent’s technology from a demo hire unit. Mr Vetrone confirms that the conversation took place but denies that that he stated those matters above as suggested by Mr Halliday.	Keogh 6 at [9] and [10]. Vetrone at [29] and [30].
June 2017	The Applicant meets with its patent attorneys.	Vetrone at [23].
5 August 2017	The Opponent files the UON application.	Copy of AU 2017210650 A1 as filed with the SGP; TS-5.
10 August 2017	The Applicant files the opposed application.	Vetrone at [23]; TS-2.