CQMS Pty Ltd v Esco Group LLC [2025] APO 18

1. The specification is directed towards a system and tool for monitoring the status, health and performance of wear parts on various kinds of earth working equipment.[1] A range of embodiments are discussed but for present purposes it is sufficient to note that the invention relates to a monitoring system which uses a wireless device in some way attached to a digging bucket to remotely send sensed information to a processor. A general depiction of the invention is in Figure 9 which is a perspective view of a bucket with a monitoring system 25 installed on the bridge of the bucket.

1. I need not discuss the description any further at this point for the purposes of this decision. As will be seen, the matter in dispute relates to narrow issues of claim construction and everyday English words. In short, the present matter and its resolution fundamentally depends on what the meaning of the word 'on' and the word 'in' is.

1. Independent claims 1, 3, 7 and 8 prior to amendment require that a wireless device be "located on a bucket". This feature has been amended to be "secured in or on a wall of a bucket". I provide claim 1 to lay out the location and nature of the amendment to these claims using mark-ups. Claims 3, 7 and 8 are annexed to the decision.

a wireless device capable of sending and receiving wireless information secured in or located on a wall of a bucket, the bucket secured to an earth working equipment;

at least one electronic sensor secured in or on a wall of the bucket to monitor a characteristic of the bucket, wherein the at least one electronic sensor is in wireless communication with the wireless device;

a remote device wirelessly receiving at least one sensor information from the wireless device; and

a processor using the at least one sensor information to determine the status, health, performance and/or impact of the bucket.

1. Independent claim 16 and its amendment are slightly different as follows again with mark-ups:

walls, including walls defining a cavity for gathering earthen material;

a wireless device capable of sending and receiving wireless information located secured in or on one of the walls; and

at least one electronic sensor secured in or on one of the walls to monitor a characteristic of the bucket, wherein the at least one electronic sensor wirelessly communicates with the wireless device to provide information pertaining to the characteristic of the bucket to a processor to determine the status, health, performance and/or impact of the bucket.

1. The application for the patent was filed in 2021, and the amendments of the Patents Act 1990 brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 therefore apply to the present patent.

1. The requirements for the allowability of amendments are governed by 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:

(a) the complete specification as filed;

(b) 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) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b) the specification would not comply with subsection 40(2), (3) or (3A).

1. Notably the legislation requires that the failure to meet the requirements of subsections 102(1) and (2) must be the result of the amendment, the relevant point in time in this case being the accepted application. The only ground in this matter is s102(2)(a).

s102(2)(a) - Claim would not in substance fall within the scope of the claims before amendment

1. A useful test for the allowability of amendments under s102(2)(a) is:

"...would the amendment make anything an infringement which would not have been an infringement before the amendment?"

1. This test was suggested in relation to s31(1) of the Patents Act 1949 (UK) in The Distillers Co. Ld.'s Application[2]. Although the wording of s102(2)(a) differs from the wording of the then s31(1) of the British Act, the Commissioner in W.J. Voit Rubber Corp.'s Application (1965)[3], when considering the corresponding provision of the Patents Act 1952, stated:

"...the test as to whether a proposed amendment would have the effect of causing infringement when none existed before, seems to me a perfectly reasonable one".

1. The Federal Court accepted the continuing relevance of this approach in Boehringer Ingelheim International GmbH v Commissioner[4].

1. The opponent puts forward the following arguments:

• The word 'on' is a preposition which identifies a particular form of relation ship between the wireless device and the bucket (or walls thereof). The Macquarie Dictionary, 8th edition, defines 'on' as: 1. position above and in contact with a supporting surface: on the table. 2. contact with any surface: the picture on the wall; the shoes on my feet. They argue a wireless device located within the walls as amended cannot be described as in contact with a surface of the bucket.
• The word 'in' means: 1. inclusion within space or limits, a whole, material or immaterial surroundings, etc.: in the city; in the army; in politics. A device that is secured 'in' a wall could not be described as 'located on' the bucket (or located on the walls of the bucket).
• Claims 1 and 3 before amendment already used the term 'in or on' in respect of other components. "Thus, the claims, before amendment, imposed separate requirements as to the location/securement of the wireless device and electronic sensor - on the one hand, the wireless device was required to be 'located on' the bucket (or walls thereof), whereas, on the other hand, the electronic sensor could be 'secured in or on' a wall of the bucket. The use of different language to describe the location of the wireless device ('on') and the securement of the electronic sensor ('in or on') further reiterated that the claims required that the wireless device be located 'on' the bucket (or walls thereof) and could not be located 'in' the bucket (including within the walls thereof)."
• "...claims 1 and 3 provided that the electronic sensor could be 'secured in or on a wall of the bucket', whereas claim 16 expressly required that the wireless device be 'located on one of the walls'. That is, the claims contemplated that different objects (the electronic sensor and wireless device) might both be located on, or secured to, the walls of the bucket, but expressly contemplated different arrangements - the electronic sensor could be 'in or on' a wall of the bucket, whereas the wireless device could only be 'on' a wall of the bucket. It could not have been clearer that the wireless device, unlike the electronic sensor, could not be located/secured 'in' a wall of the bucket (as now proposed, in the amended claims).
• The specification makes clear that there is a distinction being drawn in the application between the electronic sensor which could be 'in or on' a wall, and the wireless device which could only be located 'on' the bucket. They argue that the language 'in/on' and 'on or in' is not used in relation to a wireless device.
• Expert evidence filed in the s59 opposition matter suggests that it is common ground amongst the experts that the application and claims teach the use of the wireless device 'on' but not 'in' the bucket (and walls thereof).

1. It will be seen that my position regarding these first four arguments is addressed below. I approach construction of the terms in each of the claims in a manner that considers what they mean in their context. Regarding the fifth argument I don't see any need to resort to the specification as it is clear in my reasoning below that I do not see any ambiguity on the face of the claims that needs resolution via the description. The plain meaning of the text stands to facilitate construction in the broad context of the specification. Regarding the sixth argument, there is no evidence in the present matter regarding the s104 amendment. I am simply not assisted in construing every day English terms 'on' and 'in' by evidence. Construction is a matter for me as the decision maker.

1. The applicant's submissions focus upon the idea that:

"It is important in construing the Proposed Amendments that the phrase be read together as a whole. Specifically, consideration must be given to the entirety of the phrase 'located on a bucket', as compared to 'secured in or on a wall of a bucket.' The term 'located on a bucket' is broad, and encompasses numerous positional or attachment configurations relative to the bucket. Something 'on' a bucket includes placement on its surface, but also includes embedded, integrated or recessed structures partially or completely within the bucket wall. Therefore, the Proposed Amendments, which clarify the exact structural position, is within the scope of 'located on a bucket'.

In addition, a wireless device secured 'in or on a wall of a bucket' is still 'on' the bucket structurally, because it remains physically connected to and physically supported by the bucket's body itself. ESCO submits that a wireless device explicitly positioned and secured within the thickness or body of a bucket's wall structure is simply one type of attachment or location already implicitly included by the broader phrasing 'located on a bucket.'"

1. With respect to the opponent's key submissions, they argue:

• "...the Opponent refers to the dictionary definitions of the words 'in' and 'on'. ESCO does not dispute that these words, in isolation, have different meanings. However, the amendment is not to these words alone. In addition, English is context driven, and so the context in which these words appear will drive the interpretation of such words. Therefore, despite the Opponent's statement to the contrary, a wireless device that is 'secured in...a wall of a bucket' includes both a sensor 'in' a wall of a bucket (in the normal meaning of that term) and one 'located on a bucket' within the broad meaning of that term."
• "ESCO agrees that the claims prior to the Proposed Amendments, used the language 'in or on' with respect to the electronic sensor, and particularly 'in or on a wall of the bucket'. But as noted above, the skilled person would appreciate that the phrase 'in or on' with respect to a bucket (in comparison to the walls of a bucket) raises potential for confusion (and so would be avoided in the claim). Additionally, as also noted above, the Opposed Application makes clear that the wireless device can be located with the sensor, which the claim makes clear can be in or on a wall of the bucket. The rational conclusion of the skilled person is that the wireless device will be located on the bucket if it is secured in or on the wall of the bucket, including with the sensor."

1. Given this matter heavily relies upon the fundamental task of claim construction I lay out here the relevant principles which are well captured by delegate Kolev in his decision in Pizzeys Patent and Trade Mark Attorneys Pty Ltd v Apple Inc.[5] where he initially referred to Austal Ships Sales Pty Ltd v Stena Rederi Aktiebolag[6] which stated:

"13 In Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) 49 IPR 331, Hely J considered at length the approach to construction of a specification and, in particular, the circumstances in which uncertainty might lead to invalidity. At [71]-[78] his Honour identified the following principles:

• The monopoly must be defined in a way that is not reasonably capable of being misunderstood.
• In determining the nature and extent of the monopoly claimed, the specification must be read as a whole, but recognizing that the parts have different functions. The claims mark out the legal limits of monopoly. What is not claimed is disclaimed. The specification describes how to carry out the process and the best method known to the patentee of doing so.
• Although the claims are construed in the context of the specification as a whole, it is not legitimate to narrow or expand the boundaries of the monopoly as fixed by a claim by adding glosses drawn from other parts of the specification. If a claim is clear, it is not to be varied, qualified or made obscure by statements found elsewhere in the document.
• It is legitimate to refer to the rest of the specification to explain the background to the claims, to ascertain the meaning of technical terms and resolve ambiguities in the construction of the claims. When the language of the claims is obscure or doubtful such doubts may be resolved by reference to the specification.
• It is not necessary that the claims be construed without reference to the body of the specification in order to see whether there is any ambiguity. The document is construed as a whole. If the specification demonstrates an intention that words used elsewhere have a particular meaning, effect should be given to such a 'dictionary'.

[81] Other principles of construction which may be of assistance in the resolution of the present matter include:

• A patent specification should be given a purposive construction rather than a purely literal one ...
• The hypothetical addressee of the patent specification is the non-inventive person skilled in the art before the priority date. The words used in a specification are to be given the meaning which the hypothetical addressee would attach to them, both in the light of his own general knowledge and in the light of what is disclosed in the body of the specification.
• There is a fine line between, on the one hand, reading down the words of a patent claim to reflect how a person skilled in the art would understand it in a practical and commonsense way, and, on the other hand, impermissibly limiting the clear words of a claim because a reader skilled in the art would be likely to apply those wide words only in a limited range of all the situations they describe.
• It is permissible for an invention to be described in a way which involves matters of degree. 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.
• As a general rule, the terms of a specification should be accorded their ordinary English meaning.
• Evidence can be given by experts on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings given by such persons to words which might otherwise bear their ordinary meaning.
• However, the construction of the specification is for the court, not for the expert witness. In so far as a view expressed by an expert depends upon a reading of the patent, it cannot carry the day unless the court reads the patent in the same way.
• Section 116 of the 1990 Act provides that the court may, in interpreting a complete specification, refer to the specification without amendment. However, it is neither useful nor legitimate to do so where the amended specification is clear." (original italic, underlining added)

1. Importantly delegate Kolev also noted in reference to Interlego A.G. v Toltoys Pty. Ltd.[7] that:

"14 ... 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 ..." (underlining added)

1. Critically to the present matter, what I draw from this is that if a claim is clear when considered purposively and in the context of the specification as a whole, it cannot be narrowed by the content of the specification. This is the act of glossing. In other words, there should be ambiguity on the face of the claim before one resorts to the body of the specification for resolution. Where the specification does not lay out special meanings for words or phrases, then their plain meaning, for example, their meaning guided by a dictionary, is an appropriate mechanism for understanding the scope of the claimed invention.

s102(2)(a) - Does the scope of the claims after amendment fall outside the scope of the claims before amendment?

Claims 1, 3, 7, and 8 - 'located on a bucket' vs 'secured in or on a wall of a bucket'

1. As a starting point I turn to the dictionary to understand the meaning of the word 'on'. The opponent clearly lands upon a specific definition for the word which as will be seen below, finds support in some of the definitions provided in the dictionary. However, for completeness, I provide the below extract of the Macquarie Dictionary as it defines the word 'on' as a preposition (a word placed before noun to indicate relation to other words or their function in a sentence):

preposition a particle expressing: 1. position above and in contact with a supporting surface: on the table.

2. contact with any surface: the picture on the wall; the shoes on my feet.

3. immediate proximity: a house on the coast; to border on absurdity.

4. situation, place, location, etc.: a scar on the face; a journey on the plain.

5. Obsolete in; at: we saw him on the night camp; on Bendigo.

6. support, suspension, dependence, reliance, or means of conveyance: on foot; on wheels.

7. state, condition, course, process, etc.: on the way; on strike.

8. ground or basis: on good authority; a story based on fact.

11. position with relation to something else: on the left; on the other side.

12. direction or end of motion: to march on the capital.

14. object or end of action, thought, desire, etc.: to gaze on a scene.

15. membership or association: on the staff of a newspaper; to serve on a jury.

16. agency or means: to speak on the telephone; we saw it on television.

18. subject, reference, or respect: views on public matters.

19. Colloquial relation of someone to an event which affects them, especially where they are morally responsible: I don't want him to die on me; the apples went bad on me.

20. liability for expense: drinks are on the house.

21. engagement in the mining of a specified resource: on the tin.

22. Colloquial indulgence to excess: he's on the bottle; on the turps.

23. Colloquial direction of attention or emotion: don't go crook on me.

1. As a start, I consider that any lay person would understand what one means by being 'on a table'. Similar can be said of each of the prepositional definitions above. However, the important thing is that it is clear that the work being done by the word 'on' is fundamentally understood by reference to the context in which the word is in, for example, what 'thing' is being put 'on' what other 'thing'. Thus, clearly my task at this point is to determine what I understand to be meant by the phrase 'located on a bucket'. Equipped with this I can then determine if the phrase 'secured in or on a wall of a bucket' is within the bounds of the original phrase.

1. My intuitive linguistic reaction to the presentation of the phrase 'located on the bucket' is a rather broad construction. If someone was to instruct me to go and 'put a wireless device on the bucket' I don't feel that I would be limited to achieving this merely by putting it on a particular surface of the bucket. To put it tritely, a bucket is not a table, nor is a bucket a wall. A bucket is an object that serves a function to move material from one location to another, this function is not so clearly set on my reckoning so as to have things, in essence, put on a surface of it. In other words, thoughts that cross my mind as to the concept of locating something on a bucket are similar to the thoughts that cross my mind when I consider what it might mean to 'hop on a bus', or 'get on a plane'.

1. To balance this discussion there is also the aspect of the particular thing that is being put or 'located' on a bucket. If one is to put a layer of paint on a bucket or to simply write on a bucket then it would seem reasonable to limit the operation of the word 'on' to a surface of the bucket because of the nature of those things. I do not consider this logic also extends to a wireless device being located on bucket.

1. Having meandered somewhat amongst my natural reading of the claimed feature I turn to the dictionary to solidify what appears to me a clear and satisfactory understanding of the scope of the phrase 'located on a bucket'. Definition 6 in the Macquarie dictionary presents 'on' as being used in the context of support of an object, that support potentially involving some kind of means of conveyance such as on foot or on wheels. To me this is akin to the idea of being on a bus or a plane. To this extent the word on, on my reckoning, is something that is not necessarily limited to contact with a particular surface. I consider it can be broadly construed to include the idea of an objection being conveyed by something. In the present claim I read the wireless device being located on a bucket broadly, the wireless device essentially being conveyed by that bucket. It is directly supported by the bucket in some way, and this does not need to be merely on a surface like a vase that sits on a table or paint on a wall. I do not see any material difference between my construction and that put forward by the applicant and summarised above at [14] and [15].

1. I do not see any real ambiguity in the relevant phrase prior to amendment and as such, see no need to resort to the specification for clarification. The specification does not seek to define the word for use to be different to that in the dictionary and as such, I need go no further. In short, I disagree with the opponent regarding their argument the relevant use of the word 'on' in claims 1, 3, 7 and 8 should be limited, essentially, to the first two definitions in the dictionary. Furthermore, given my approach to construction of the phrase 'located on a bucket', the opponent's arguments regarding the use of similar terms in other locations of the claim becomes moot. I consider it clear that the construction of the relevant term is one of context of that term alone.

1. I thus arrive at a construction of the phrase 'located on a bucket' that is congruent with the applicant's submission that:

"The term 'located on a bucket' is broad, and encompasses numerous positional or attachment configurations relative to the bucket. Something 'on' a bucket includes placement on its surface, but also includes embedded, integrated or recessed structures partially or completely within the bucket wall."

With this in mind, it is clear to me that the amendment falls within the scope of the phrase 'located on a bucket'. The word 'secured' is clearly narrower than 'located'. Being 'secured in or on a wall of a bucket' is clearly encompassed by the general idea of direct support by the bucket.

1. I consider that the amendment to claims 1, 3, 7 and 8 is allowable.

Claim 16 - 'located on one of the walls [of a bucket]' vs 'secured in or on one of the walls [of a bucket]'

1. The approach taken by both parties was generally consistent across all of the claims. However, at the hearing when discussion focussed upon the contextual understanding of the function of the word 'on' the applicant accepted that their argument was harder to make out in respect of claim 16. This is fundamentally because the context is changed. As is well traversed above, claim 1 prior to amendment was directed towards a wireless device located on a bucket, whereas claim 16 prior to amendment is directed to a wireless device located on one of the walls [of a bucket] (my emphasis). I concluded as to my understanding of the plain meaning of the phrase 'located on a bucket'. I must now take the same steps in understanding a different phrase and thus different context.

1. Starting with an intuitive reading of the phrase 'located on one of the walls [of a bucket]' I arrive at a narrower understanding of the use of the word 'on'. In the context of a wall, I find it very difficult to consider that 'on a wall' could be read as broadly as 'on a bucket'. A wall is something that is characterised quite commonly as being something with a surface upon which something can be placed. Put simply, you hang a picture on a wall, and if one instructs a person to 'go and hang a picture on a wall" then I don't see it possible that a person would consider this to include another possibility such as to place the picture in a wall. This is entirely consistent with the second definition above, being contact with any surface: the picture on the wall; the shoes on my feet.

1. I thus consider it clear that prior to amendment, the phrase involving the location of a wireless device 'on one of the walls' means contact with the surface of that wall.

1. The phrase that is the subject of the amendment, being 'secured in or on one of the walls' indubitably includes within its scope the concept a wireless device that is completely secured in one of the walls, there being no contact with a surface of that wall. This being the case, the amendment to claim 16 is thus directed to subject matter that does not fall within the scope of original claim 16. The amendment creates the potential for infringement that did not exist prior to amendment.

1. I consider that the amendment to claim 16 is not allowable.

1. I find that the amendment results in a claim that does not in substance fall within the scope of the claims before amendment. I therefore refuse the amendment of 13 May 2024. The applicant requested the opportunity to file further amendments. I do not consider it necessary to provide a formal period for the applicant to do so.

1. Furthermore, I note that the opposition to the application under section 59 is presently stayed by the following direction:

The opposition under s59 of the Act to 2021203036 is stayed until two weeks after the Commissioner advises the parties that the amendments are allowed (following the opposition period), refused or withdrawn as the case may be, at which point the evidence in reply will be due.

1. This decision constitutes advice that the amendments are refused. The evidence in reply in the section 59 matter is thus due in two weeks.

1. The opposition to the s104 amendments is successful. On this basis I consider it appropriate to make an award of costs against the applicant.

a bucket secured to an earth working equipment, wherein the bucket has walls including walls defining a cavity for gathering earthen material, and a digging edge;

a wireless device capable of sending and receiving wireless information located secured in or on a wall of the bucket;

at least one electronic sensor secured in or on a wall of the bucket to monitor a characteristic of the bucket and/or the wear part, wherein the at least one electronic sensor is in wireless communication with the wireless device;

a remote device wirelessly receiving at least one sensor information from the wireless device; and

a processor using the at least one sensor information to determine the status, health, performance and/or impact of the bucket and/or the wear part.

a wireless device capable of sending and receiving wireless information located secured in or on a wall of the bucket, the bucket secured to an earth working equipment;

at least one electronic sensor secured on or in a wear part secured to the bucket to monitor a characteristic of the bucket and/or the wear part, wherein the at least one electronic sensor is in wireless communication with the wireless device;

a remote device wirelessly receiving at least one sensor information from the wireless device; and

a processor using the at least one sensor information to determine the status, health, performance and/or impact of the bucket and/or the wear part.

a bucket secured to an earth working equipment, wherein the bucket including walls defining a cavity for gathering earthen material, and a digging edge;

a wireless device capable of sending and receiving wireless information located secured in or on a wall of the bucket;

at least one electronic sensor secured on or in the wear part to monitor a characteristic of the bucket and/or the wear part, wherein the at least one sensor is in wireless communication with the wireless device;

a remote device wirelessly receiving at least one sensor information from the wireless device; and

a processor using the at least one sensor information to determine the status, health, performance and/or impact of the bucket and/or the wear part.

[2] (1953) 70 RPC 221 at page 223

[4] [2000] FCA 1918

[5] [2024] APO 54

[6] [2008] FCAFC 121

[7] [1973] HCA 1