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Shoveling through the Details: Examining Patent Amendments in CQMS Pty Ltd v ESCO Group LLC [2023] APO 35
Andrew Balis
Andrew Balis

This decision highlighted the importance of careful claim drafting and the need to avoid being unduly influenced by specific examples or embodiments mentioned in the patent specification when interpreting claims. The case underscored the significance of adhering to the plain English meaning of terms and ensuring that the specification as a whole supports the proposed amendments. The decision also highlighted the importance of ensuring that any amendments that change the scope of the claims must be filed prior to acceptance of the application.

History

ESCO Group LLC filed a patent application (2018201634) in 2018 which is a divisional application of 2016219013. The ‘634 application was examined and accepted in March 2020. CQMS Pty Ltd filed an opposition during the 3 month advertisement of acceptance period. CQMS also filed evidence in support, answer and reply which was completed by 2021. ESCO Group then filed a request to amend the specification which was accepted by the Australian Patent Office. CQMS then opposed the proposed amendments on 25 January 2022 on the basis that the amendments extend beyond the disclosure as filed; they result in a claim that is not within the scope of the claims before amendment.

Evidence submitted to the hearing officer in the form of declarations was found to provide little assistance as the case essentially involves issues of construction and application of legal principles.

The relevant law

The hearing officer delved into the relevant law under the Australian Patents Act 1990 (Cth), which govern the allowability of amendments under subsections 102(1) and (2) which state that:

  1. An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:
    • the complete specification as filed;
    • other prescribed documents (if any).
  2. An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment;
    • a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or
    • the specification would not comply with subsection 40(2), (3) or (3A).

The hearing officer noted that construction of the claims before and after the amendment was critical, emphasising the need for a purposive construction of the claims and citing H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [118] – [120]:

“the words in a claim should be read through the eyes of the skilled addressee in the context in which they appear … while the claims define the monopoly claimed in the words of the patentee’s choosing, the specification should be read as a whole … it is not permissible to read into a claim an additional integer or limitation to vary or qualify the claim by reference to the body of the specification … terms in the claim which are unclear may be defined or clarified by reference to the body of the specification”

The invention and claim amendments

The invention relates to a device and system for identifying and monitoring characteristics such as part identification, presence, condition, usage and/or performance of ground-engaging products such as ground engaging tools, wear plates, buckets, truck trays, and the like used on various kinds of earth working equipment.

The claims as proposed to be amended on 28 September 2021 define:

A monitoring system comprising:

  • a ground-engaging product secured to an earth working machine at a worksite;
  • a monitoring device secured to the ground-engaging product to monitor the ground-engaging product and wirelessly transmit information pertaining to the use at least one characteristic of the ground-engaging product by the earth working machine;
  • a database with geology information pertaining to different characteristics of ground material; and
  • at least one remote device to receive the transmitted information and the geology information from the database and use programmable logic to process the transmitted information and the geology information to map the worksite with at least one characteristic associated with the ground being worked by the earth working machine.

The opposition by CQMS to the amendment centered around the difference between:

  • Information pertaining to the use of the ground-engaging product by the earth working machine; and
  • Information pertaining to at least one characteristic of the ground-engaging product.

CQMS argued that the proposed amendment could result in a system that only reports information pertaining to specific characteristics listed in the specification, which was beyond the scope of the original claim.

The hearing officer then goes on to define the terms “pertain” and “use”, believing it would be useful to clearly define those terms according to their plain English meaning in the Macquarie Dictionary. The hearing officer noted that “there is nothing particularly interesting about the definitions of those terms in the context of the present matter”.

It was noted by the hearing officer that the “information pertaining to the use of the ground-engaging product” is clearly linguistically different to “information pertaining to at least one characteristic of the ground-engaging product”. In saying this, consideration must be given to whether this difference bears on the claim, when considered in context of the claim and the specification as a whole, and ultimately whether the scope of claim 1 travels to a place in which it did not sit prior to amendment.

Claim construction

The rules of claim construction are well established and conveniently set out in Jupiters v Neurizon [2005] FCAFC 90; 65 IPR 86 at [67]. They can be summarised as follows:

  1. A patent specification should be given a purposive construction rather than a purely literal one;
  2. The words used in a patent specification are to be given the meaning which the normal person skilled in the art would attach to them, having regard to his or her own general knowledge and to what is disclosed in the body of the specification; and
  3. While the claims are to be construed in the context of the specification as a whole, 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, although terms in the claim which are unclear may be defined by reference to the body of the specification.

Put simply, the patent specification must be considered as a complete entity, taking into account the general knowledge commonly known to an imaginary person skilled in the relevant field, before the patent’s priority date.

The hearing officer went on to construe the terms “use” and “characteristic” in the claims in accordance with: (1) their ordinary English meaning; (2) the specification; and (3) the claims as a whole.

The hearing officer agreed with the opponent that the amendment to claim 1 must be rejected on the basis of the strict linguistic difference in scope between the words “use” and “characteristic”, before and after the amendment. However, before jumping to this conclusion, it was noted that consideration must be given to the use of those terms in the specification and the claims as a whole. Importantly, care must be had to avoid imparting a gloss from the specification, as set out by the full Court in Davies v Lazer Safe Pty Ltd [2019] FCAFC 65. Davies v Lazer Safe highlighted the importance of careful claim drafting and the importance of construing claims using the plain English / dictionary definition of a word of phrase. While Australian patent law has firmly established these principles, it can be challenging to avoid being swayed by specific embodiments or examples mentioned in the patent specification. When interpreting claims, the specification should only be referenced if there is ambiguity regarding the meaning of a word or phrase within the context of the specification.

The hearing officer identified that paragraph [71] is the key paragraph in the specification for outlining the nature of transmitted information. Examples of information, or “characteristics”, that may be transmitted were provided in [71]. Information pertaining to a characteristic includes information such as: “product number, customer number, brand name, trademark, manufacturer, and bill of materials.” Therefore, claim 1 as proposed to be amended encompasses a system with a monitoring device which might only report information pertaining to the above list characteristics, whereas such a system did not fall within the scope of claim 1 before the proposed amendments.”

ESCO submitted that a person skilled in the art reading the claim and specification in context would only consider it sensible to combine information characteristics that are limited to the use of the ground-engaging product by the earth working machine with geology information to produce a map. The hearing officer couldn’t see how those features have an effect to limit the claim after the amendment to exclude characteristics of the ground-engaging product that do not pertain to use.

ESCO also submitted that the pre and post-amendment claims do not encompass non-operational’ monitoring of the system as the claim requires mapping of the worksite with at least one characteristic associated with the ground being worked by the earth working machine.

Ultimately, the hearing officer held that the specification does not eliminate the straightforward interpretation of the relevant claim features before and after the amendment. Initially, the claimed invention was restricted to information about the ground-engaging product’s use by the earth working machine. However, after the amendment, the claimed invention encompasses information related to at least one characteristic of the ground-engaging product. This amended feature logically includes characteristics unrelated to the use of the ground-engaging product by the earth working machine. The presence of such characteristics, which are not reasonably associated with the act of employing a ground-engaging product by the earth working machine, is acknowledged in the specification itself.

In the end, the proposed amendments were refused. Some key takeaways when drafting amendments to the claims, particularly post acceptance amendments, are:

  1. Consider how the words selected for the claim amendment will be construed under a purposive construction;
  2. Be careful not to impart a gloss from the specification as to the meaning of a term; and
  3. Ensure the amended claims fall within the scope of the claims as they were prior to amendment.
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About the author
Andrew Balis
Associate, Patent & Trade Mark Attorney
Andrew Balis is a Sydney patent and trade mark attorney specialising in mechanical and aerospace technology.

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