Jones Tulloch Pty Ltd v Redarc Technologies Pty Ltd [2025] APO 39

1. On 3 July 2024, the opponent filed a Statement of Grounds and Particulars (SGP). On 28 March 2025, the opponent filed an amendment to the SGP, which was allowed on 14 April 2025.

1. The amended SGP sets out the following grounds of opposition:

1. Section 59(b) - claims not novel under section 18(1)(b)(i)
2. Section 59(b) - claims not inventive under section 18(1)(b)(ii)
3. Section 59(b) - claims not useful under section 18(1)(c)
4. Section 59(c) - specification does not comply with section 40(2)(a), and
5. Section 59(c) - specification does not comply with section 40(3).

1. In terms of the first of these grounds, the amended SGP set out that the claims lack novelty in light of information made publicly available through the prior sale and use of one of several products, and separately that the claims are not novel in light of four patent documents. Similarly, the amended SGP set out that the claims lack inventive step over the same materials, and in addition that the claims lack inventive step in light of a further five patent citations.

1. However, the opponent's written summary of submissions narrows the novelty and inventive step grounds to a lack of novelty and inventive step in light of one particular patent citation, US 9,446,747 B2 (identified as D4).

1. The application was made after 15 April 2013, and so is governed by the Patents Act 1990 (the Act) as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. The standard of proof that applies is therefore the balance of probabilities. The opponent bears the onus.

1. If I am satisfied, on the balance of probabilities, that a ground of opposition to the grant of the standard patent exists, I may refuse the application. However, under section 60(3B), I must not refuse the application without, where appropriate, allowing the applicant a reasonable opportunity to amend the application to overcome the ground(s). In addition, when deciding a case, I may take into account any ground on which the grant of a patent may be opposed, whether relied upon or not[1].

1. On 3 October 2024, the opponent filed their evidence in support, which comprised a declaration from Mr Benjamin David Mottrom (Mottrom#1) with annexures BM-1 to BM-15. On 23 December 2024, the applicant filed their evidence in response, which comprised a declaration from Dr Yee Wei Law (Law#1) with annexures YL-1 to YL-4. On 28 February 2025, the opponent filed their evidence in reply, comprising a second declaration from Mr Mottrom (Mottrom#2).

1. Mr Mottrom obtained a Bachelor of Engineering majoring in software systems from RMIT in 2000. From 2002 to 2011 he worked for Rober Bosch Australia in a number of roles, including Software design engineer, application specialist, team leader, and Vehicle Application Manager, in particular working on testing, training, and application of anti-lock braking systems. From 2012 to 2015 he then worked as a product development manager for Heavy Vehicles Australia to design buses, and then from 2016 to 2019 he worked as a product development manager for Camec Pty Ltd leading research and development team working on products for recreational vehicles. He has held his current role of Engineering Manager at Altec Australia Holding Pty Ltd since 2019[2].

1. Dr Law is a Senior Lecturer at the University of South Australia. He obtained his Bachelor of Engineering from the University of Southampton in the UK with his thesis on "Adaptive Meshing in Finite Elements", then went on to complete his Masters at Nanyang Technological University in Singapore with a thesis "Simulation and Visualisation in a 3D Collaborative Environment", and then completed his PhD at the University of Twente in the Netherlands with his PhD thesis "Key Management and Link-Layer Security of Wireless Sensor Networks: Energy-Efficient Attack and Defense". He was a Research Fellow at the University of Melbourne from 2006 to 2014, working on a range of projects related to sensor technology and sensor networks. From 2014 to 2020 he was a lecturer and Program Director at the School of Engineering at the University of South Australia, which included being a course coordinator for multiple control systems, electromechanics, and mechatronic courses[3].

1. Of particular note, in "about late 2019" Dr Law commenced a project with the applicant involving a scoping study and literature review on trailer brake control systems. This study was only finalised in April 2021 (i.e. after the priority date), but Dr Law states that the literature review portion "was conducted at an early stage", although he is not specific as to dates[4]. At or around the same time, Dr law was a "co-supervisor" for Timothy Fosdike (the named inventor of the application), working under the "Future Industries Accelerator - Mobility Scheme".

1. The opponent submitted that because of Dr Law's working relationship with the inventor at or around the priority date, there is the possibility that Dr Law is not an independent witness[5]. Mr Mottrom even went as far as postulating that Dr Law may actually be a co-inventor for the invention[6]. The applicant answered this in two ways, firstly that Mr Mottrom's comments are pure speculation, and secondly that to the extent that Dr Law does have prior connection to the applicant, he has been honest and forthright in communicating this in his declaration and CV. At the hearing, the applicant also suggested that Dr Law's forthrightness should be contrasted with the behaviour of the opponent: as the listed opponent is a patent attorney firm, it is reasonable to assume they are a 'straw man' opponent, making it impossible to determine whether Mr Mottrom is independent or not.

1. Opposition proceedings before the Commissioner do not follow the strict rules of evidence of the courts, so it is not essential for experts to be truly independent from the parties. Instead, these matters only go towards what weight I place on each expert's declarations when they are at odds with one another. While Dr Law's working relation with the inventor contemporaneously with the priority date is not entirely irrelevant, I do not think it carries much weight. For completeness, I agree with the applicant that there is no evidence Dr Law is a co-inventor. Similarly, while it is possible Mr Mottrom may not be independent from the opponent, there is no evidence to that.

1. Having said that, at face value, it appears that Dr Law's experience is predominantly directed to more general sensor networks and control systems, and his only experience related specifically to braking controllers comprises the literature review conducted approximately contemporaneously with the priority date. In contrast, Mr Mottrom's experience in ABS systems, vehicle design, and RV accessories would seem to be more closely related to braking controllers, and is more reliably placed prior to the priority date. That is not to say Dr Law's testimony is to be disregarded entirely, he is clearly very knowledgeable of a broad range of sensor and control systems, but I will bear Dr Law's experience in mind when weighing the evidence. Having said that, as will be seen, there are few points where the experts are directly in dispute regarding relevant facts.

1. The application describes a brake controller used in in towed vehicles, such as trailers. It states prior brake controllers provide trailer braking proportional to the braking of the towing vehicle, which typically relies on an accelerometer or pendulum to measure the vehicle braking force, with the accelerometer mounted in a fixed orientation to allow braking force to be measured along a single axis[7].

1. The specification states that it would be desirable to provide a more versatile brake controller that can be mounted differently, such as outside the towing vehicle, on the towed vehicle, or between the two vehicles. More particularly, it is identified that it may be desirable to be able to mount the brake controller on a wiring loom rather than fixed to the chassis. However, brake controllers mounted in such locations would be affected by various "artefacts", such as i) noise from the road, ii) gravity, iii) sway on the vehicle springs, iv) sway due to wiring loom movement, v) variations in road slope, and vi) centripetal acceleration. It is acknowledged there are prior brake controllers which compensate for gravity by eliminating the vertical component from sensed forces, but it is said this remains sensitive to rotation rate of the brake controller and also does not compensate for any horizontal component of the other artefacts[8].

1. The specification then provides a "Summary of the invention" section, which merely comprises a series of consistory clause paragraphs[9] essentially matching the claims (discussed more below).

1. The detailed description then describes the invention by reference to Figures 1 and 2 (it will be convenient here to begin with Figure 2, reproduced below). It describes a brake controller 10 which may be mounted at a location outside a towing vehicle 20, inside a towed vehicle 21, or between the vehicles such as on a wiring loom (the specification states this location is not shown, but it seems to be approximately location 22). The brake controller may be in communication with a remote head 12, via a wireless connection, wired connection, or using the vehicle bus connection. The remote head is used by the user to control a gain control, and for displaying status information. It is mentioned that the system may be coupled to the vehicle management system 18 to obtain additional measurement information, such as wheel speed or acceleration[10].

1. The brake controller 10 (shown in Fig. 1, reproduced below) includes an inertial sensor 14 for taking inertial measurements in more than three sensor axes, which may take the form of a multi-axis accelerometer, a gyroscope, a magnetometer, or various combinations. For reasons which will become apparent, I note here the precise wording includes "The inertial sensor ... can include a multi-axis accelerometer and a gyroscope... Alternatively, the inertial sensor may include two multi-axis accelerometers..."[11] The brake controller 10 includes a microprocessor or microcontroller 16 that uses the sensor data from the inertial sensor 14 to estimate a braking deceleration, and to activate the trailer brakes 13 as a function of the estimated braking deceleration. The microcontroller includes memory 17 to store algorithms for estimating the braking deceleration. The braking controller may also include an input 15 from the towing vehicle brake light circuit for indicating when the brakes of the towing vehicle are applied.

1. It is stated that the microcontroller 16 executes one or more stored algorithms to estimate "acceleration and/or braking force in a manner that is relatively insensitive to sensed forces other than braking deceleration."[12] It is further explained that this involves compensating for one or more extraneous acceleration and/or rotation rate components when generating the braking signal[13]. These extraneous components may be attributed to gravity, sway on the vehicle springs, wiring loom sway (presumably, only when the controller is mounted on said wiring loom), changes in road slope, road noise, or centripetal acceleration (i.e. cornering)[14].

1. The specification then describes certain exemplar algorithms. The first of these relates to compensating for gravitational acceleration components when estimating the vehicle braking deceleration. It is explained that as the direction of inertial measurement changes with respect to the gravity vector 30, a component of the gravity acceleration will lie in the same axis as the direction of braking (i.e., the forward/backward direction of the vehicle), for example due to road slope[15]. The specific details of this algorithm are quite involved[16], but it will suffice for now to note that it broadly comprises estimating a gravity vector by taking a long term average of measured acceleration, which is used to estimate a rotation matrix for transforming the measurement reference frame into the vehicle reference frame, and also using a Kalman state estimator to estimate pitch and roll state of the vehicle, allowing a further rotation for transforming the vehicle reference frame to an angularly corrected reference frame. This then allows measured acceleration to be rotated into the corrected reference frame, and then input into the so called "horizon" detection method, which in its simplest form comprises estimating the braking deceleration as being the total acceleration in the horizontal plane (i.e., ignoring all vertical components of acceleration in the corrected reference frame), or estimating the gravitational vector and subtracting this from the measured acceleration vector, and using the magnitude of the resulting vector as an estimate for the braking deceleration. It should be noted here that this process is acknowledged to be based on, but extending and improving upon, the estimation method used in AU2017100513B4, being the applicants own earlier work[17].

1. The second exemplar algorithm relates to errors associated with lateral accelerations associated with the rocking of the vehicle on its springs, or sway of the wiring loom, or changes in road slope. Again, the specific details of this algorithm are complex[18], but the specification summarises it as a process of predicting the components of lateral acceleration on the basis of measured components of angular velocity/acceleration, and using these predictions to compensate for the errors in the measured acceleration[19]. It was discussed in the context of this example that when estimating a basis vector for the vehicle reference frame, an alternative to the gravity reference method involved an analysis of principle components, where the eigenvectors of the covariance matrix would tend to match the cardinal directions of the vehicle. Or still further alternatively, the forward direction may be determined from the cross correlation of yaw rate with acceleration measurements[20]. Whichever method is used, once one representative vector of the vehicle reference frame is estimated, this is used to form the basis for a transformation from the accelerometer reference frame into the vehicle reference frame.

1. Finally, the specification refers generally to a combined correction of extraneous acceleration components. Comparatively little detail is provided on this embodiment, but it refers to an extended Kalman filter which also tracks yaw rate (i.e., an extension of the first algorithm), and a "deceleration extraction" stage that applies a low pass filter to reduce "under-damped movement modes of the brake controller that are related to the stiffness of the wiring loom."[21]

1. In wrapping up the detailed description, the specification outlines the key advantages of the invention as:

"It is an advantage of the present invention that a brake controller is provided which has improved versatility in the sense that it may be installed inside of the towing vehicle or outside of the towing vehicle, such as on the towed vehicle or between the towing vehicle and the towed vehicle, for example on a wiring loom. Moreover, strict attention to the orientation of the brake controller at installation is not required. This advantageously enables the brake controller to be installed by a lay person that need not possess any particular skill which saves cost and inconvenience on installation and further enables the brake controller to be moved between vehicles further enhancing its versatility and convenience."[22]

1. The specification concludes with 32 claims, of which claims 1, 27, and 28 are independent. A full set of claims is included in the annex, but for now it will suffice to set out the independent claims here (integer reference numerals and formatting added).

Claim 1: A brake controller for a towed vehicle braking system, the brake controller adapted to generate a braking control signal to the towed vehicle braking system, the brake controller comprising:

• 1.1 at least one inertial sensor adapted to
  • 1.1.1 sense inertial measurements in more than three sensor axes,
  • 1.1.2 including at least one axis of angle or rotation rate sensing, and
  • 1.1.3 generate sensor data associated with each of the sensor axes;

1.2 a processor for processing the sensor data to estimate a braking deceleration;

1.3.1 generate the braking control signal to control activation of at least one brake associated with the towed vehicle braking system based on the braking deceleration

1.3.2 in a manner that is relatively insensitive to sensed forces other than the braking deceleration

1.3.3 thereby adapting the brake controller to be mounted in orientations that need not be fixed relative to the towed vehicle or a towing vehicle.

Claim 27: A brake controller for a towed vehicle braking system, the brake controller adapted to generate a braking control signal to the towed vehicle braking system, the brake controller comprising:

27.1.1 sense inertial measurements in more than three sensor axes,

27.1.2 including at least one axis of angle or rotation rate sensing, and

27.1.3 generate sensor data associated with each of the sensor axes;

27.2 a processor for processing the sensor data to estimate a braking deceleration;

27.3.1 compensate for at least one of extraneous acceleration components and rotation components in the sensor data

27.3.2 such that the brake controller is adapted to generate the braking control signal to control activation of at least one brake associated with the towed vehicle braking system based on the braking deceleration that has been corrected for sensed forces other than the braking deceleration

27.3.3 thereby adapting the brake controller to be mounted in orientations that need not be fixed relative to the towed vehicle or a towing vehicle.

Claim 28: A brake controller for a towed vehicle braking system, the brake controller adapted to generate a braking control signal to the towed vehicle braking system, the brake controller comprising:

28.1.1 sense inertial measurements in more than three sensor axes,

28.1.2 including at least one axis of angle or rotation rate sensing, and

28.1.3 generate sensor data associated with each of the sensor axes;

28.2 a processor for processing the sensor data to estimate a braking deceleration;

28.3.1 generate the braking control signal to control activation of at least one brake associated with the towed vehicle braking system based on the braking deceleration

28.3.2 in a manner that is relatively insensitive to changes in road slope.

1. For brevity, the applicant introduced the terminology of the "sensing limitation" to refer to the X.1-X.1.3 integers, and the "signal limitation" to refer to the X.3-X.3.3 integers. While I may use that terminology in places, it should be borne in mind that the "signal limitation" is not actually the same for each independent claim, and where necessary they will need to be addressed separately.

1. The rules of construction are well established. Jupiters v Neurizon[23] provides a useful summary:

"(i) the proper construction of a specification is a matter of law: Décor Corp Pty Ltd v Dart Industries Inc [1988] FCA 399; (1988) 13 IPR 385 at 400;

(ii) a patent specification should be given a purposive, not a purely literal, construction: Flexible Steel Lacing Company v Beltreco Ltd [2000] FCA 890; (2000) 49 IPR 331 at [81]; and it is not to be read in the abstract but is to be construed in the light of the common general knowledge and the art before the priority date: Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8; (2001) 207 CLR 1 at [24];

(iii) the words used in a 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: Décor Corp Pty Ltd at 391;

(iv) 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: Kimberley-Clark v Arico at [15]; Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588 at 610; Interlego AG v Toltoys Pty Ltd [1973] HCA 1; (1973) 130 CLR 461 at 478; the body of a specification cannot be used to change a clear claim for one subject matter into a claim for another and different subject matter: Electric & Musical Industries Ltd v Lissen Ltd [1938] 56 RPC 23 at 39;

(v) experts can give evidence on the meaning which those skilled in the art would give to technical or scientific terms and phrases and on unusual or special meanings to be given by skilled addressees to words which might otherwise bear their ordinary meaning: Sartas No 1 Pty Ltd v Koukourou & Partners Pty Ltd [1994] FCA 1529; (1994) 30 IPR 479 at 485-486; the Court is to place itself in the position of some person acquainted with the surrounding circumstances as to the state of the art and manufacture at the time (Kimberley-Clark v Arico at [24]); and

(vi) it is for the Court, not for any witness however expert, to construe the specification; Sartas No 1 Pty Ltd, at 485-486."

1. The opponent also refers to Welch Perrin & Co. Pty Limited v Worrel[24], while the applicant refers to Pfizer Overseas Pharmaceuticals v Eli Lilly and Company[25], which are each substantially in agreement with the summary from Jupiters, although there is one additional point from Pfizer relevant to the applicants arguments:

"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."[26]

1. There is some dispute over what an inertial sensor comprises. The plain meaning of a sensor is an electronic device which detects a variable quantity and converts it into a signal[27]. I understand an "inertial sensor" to refer to a sensor for detecting changes in motion of an object by reference to an inertial reference frame (i.e., a non-accelerating reference frame). Typical examples include accelerometers and gyroscopes. This much is uncontroversial.

1. The dispute is that, according to the opponent, the at least one inertial sensor defined is referring to an electronic sensing element itself (e.g., an accelerometer), while the applicant contends it refers to a functional component (some black box which performs the defined functional features, i.e., the "sensing limitation").

1. It is worth noting briefly that this dispute seems to have been kicked off by a comment from Dr Law that it is not possible to sense measurements in more than three sensor axes with a single accelerometer[28]. The parties appear to read different implications from this: the applicant suggests Dr Law's comment just meant he understood the "at least one inertial sensor" referred to by the specification could not mean a single accelerometer, while the opponent suggests instead that Dr Law was voicing a correction of a perceived error in the specification, implying Dr Law interpreted "one inertial sensor" as a single accelerometer/gyroscope/etc. Regardless, it is not the role of the expert to construe the claims.

1. As I foreshadowed above, the applicant draws attention to the way that the specification refers to "the inertial sensor" as comprising multiple sensors (accelerometer and gyroscope, two multi-axis accelerometers[29]). Relatedly, both experts refer at different times to "a multi-axis accelerometer"[30], which Mr Mottrom explained are in fact multiple sensors combined within a single unit[31]. Taken together, between the way the specification when read as a whole uses the term and the way the term appears to be generally used by the experts, "inertial sensor", "inertial sensor unit", and "inertial sensor module" appear to be generally synonymous unless there is some need to be more specific about the sensor element itself.

1. As such, my construction of "inertial sensor" as it is used in each of the independent claims is it refers to a functional unit, rather than a specific sensing element (that is, an inertial sensor may contain one or more sensor elements), and when read in combination with the rest of the claim it is a functional unit that is defined by being adapted to provide the defined functional result (e.g., integers 1.1.1 to 1.1.3).

sensed forces other than the braking deceleration

1. While the respective submissions on this point are brief, there is some disagreement on this phrase. The opponent argues that "sensed forces" are not defined, and implies they understand this phrase to refer to any sensed force other than braking deceleration[32]. The applicant instead argues it refers to all sensed forces other than braking deceleration, or at the very least a plurality of forces[33].

1. While I think there could be merit in either construction, as it turns out it is ultimately not necessary for me to make a definitive construction of this point.

thereby adapting the controller to be mounted in orientations which need not be fixed (claims 1 and 27)

1. Broadly, the dispute regarding this integer is whether or not it requires that the controller be capable of functioning in either a fixed or non-fixed orientation (the opponent's construction), or capable of functioning in both a fixed and non-fixed orientation (the applicant's construction). The opponent argues that Dr Law's construction (being essentially the applicant's position) is artificial and motivated to avoid anticipation. Again, since construction is not the role of the expert, I think we can dispense with any overly close analysis of Dr Law's comments.

1. This feature is quite dense, so before answering the dispute there are other points that need to be quickly covered.

1. Firstly, it is relevant to consider what "mounted in a fixed orientation" means. As I discussed above, the specification makes clear that the prior art has two relevant (and related) problems: the need to install the brake controller along a particular orientation, and the need for mounting the brake controller fixed to the chassis[34]. With these problems in mind, I can imagine that "fixed orientation" could refer to either a predetermined orientation, or an orientation which does not vary over time. When the specification is read as a whole, it is tolerably clear that "mounted in a fixed orientation" would mean a non-varying orientation relative to whichever vehicle the controller is mounted to (equivalently, a rigid mounting).

1. With this in mind, "mounted in orientations which are not fixed" would be the obverse: a flexible, non-rigid orientation which varies over time. In case there was any ambiguity about this, the specification at [0044] describes "need not be fixed" in similar terms ("may be changing in at least one of a pitch, roll, or yaw direction"). At the hearing, I asked what the bounds on this are, for example it surely cannot include where the controller is "mounted" by just sitting on the back seat. The applicant's answer was that "mounted" means more than this, it has the connotation of a secure connection, but not necessarily rigid. I agree that is a common sense approach.

1. "Need not be fixed" is a somewhat difficult phrase, but in the context of "thereby adapting", I understand the combined phrase to be saying that the preceding integers adapt the brake controller in such a way that it can function without requiring that the controller be mounted in a fixed orientation. Phrased differently, integer 1.3.3 (and corresponding 27.3.3) defines a result, that the brake controller is capable of being mounted in orientations which vary over time. The claim is not read as limited to a brake controller when mounted (in whatever manner).

1. Neither party made detailed submissions on this point, but there is a subtlety here I want to address. Claim 28 is defined (in part) as adapted to generate a braking control signal which is relatively insensitive to changes in road slope. In the specification, this is treated as being quite distinct from compensating for/rendering insensitive to changes in the component of gravity lying in the braking direction[35]. This is somewhat surprising, as a key cause for changes in the gravity vector is the slope of the road, and hence, of the vehicle and brake controller. Providing more context, what the specification states at [0076] is

"For example, lateral acceleration may take the form of rocking of the vehicle 20 on its springs, wiring loom sway, change in road slope, and the like."

1. The implication seems to be that the description seems to intend for "changes in road slope" to be associated with lateral road slope (i.e., camber or banking).

1. Having said that, there is nothing in the description which rises to the level of a dictionary definition that would displace the ordinary meaning of the words, so to my mind "changes in road slope" is inclusive of both lateral and longitudinal slope (i.e., banking and hill slope).

1. Putting all of these points together so as to construe claim 1 as a whole, I arrive at a brake controller comprising at least one sensor unit (which may include multiple sensor elements) adapted to measure in more than three axis, at least one measurement axis being an angle or rotation rate sensing axis, a processor for estimating a braking deceleration, and where the brake controller generates a braking control signal which is relatively insensitive to sensed forces other than the braking deceleration, which allows the brake controller to be mounted in orientations which vary over time. Claim 27 is similar, replacing "relatively insensitive to" with "compensated for". Claim 28 is to a brake controller using a similar sensor, where the brake controller generates a braking signal which is relatively insensitive to changes in road slope.

1. The novelty requirement is set out in subsection 18(1)(b)(i), which relevantly states:

"(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:

(b) when compared with the prior art base as it existed before the priority date of that claim:

1. It is well established, and agreed between the parties[36], that the basic test for whether an invention lacks novelty is the "reverse infringement test" set out by Meyers Taylor Pty Ltd v Vicarr Industries Ltd[37]:

"The basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement."

1. In addition, the applicant also refers to authority from Hill v Evans [1862] EngR 365; (1862) 6 LT 90 (the person skilled in the art "would at once perceive, understand and be able practically to apply the discovery"), Flour Oxidising Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 ("clear and unmistakeable directions"), General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457 and ICI Chemicals & Polymers Ltd v Lubrizol Corp Inc [2000] FCA 1349; (2000) 106 FCR 214; (2000) 49 IPR 513 ("planted his flag at the precise destination"), SNF (Australia) Pty Ltd v CIBA Speciality Chemical Water Treatments Limited [2012] FCAFC 95; (2012) 204 FCR 325 ("must disclose those integers in that combination"), and at the hearing they particularly emphasise the words of Apotex Pty Ltd v Sanofi-Aventis [2008] (Apotex) FCA 1194; [2008] FCA 1194; 78 IPR 485 at [91]:

"Anticipation is deadly but requires the accuracy of a sniper, not the firing of a 12 gauge shotgun."

1. As noted above, while the SGP identified multiple documents, the opponent's written submissions only discuss D4.

1. D4 is a US patent granted to Redarc Technology Pty Ltd (i.e., the applicant), which was published on 20 September 2016. I note that one of the related patents is AU20171005134B4 (the document which the present specification acknowledges as earlier prior art and incorporates by reference[38]).

1. D4 describes a brake controller used in towed vehicles, such as trailers. It states prior brake controllers provide trailer braking proportional to the braking of the towing vehicle, which typically relies on an accelerometer or pendulum to measure the vehicle braking force, with the accelerometer mounted in a fixed orientation to allow braking force to be measured along a single axis[39].

1. D4 describes that when attempting to measure the braking deceleration, the brake controllers can be affected by various "artefacts", such as i) noise from the road, ii) gravity, adjusted by pitch and roll, iii) centripetal acceleration, iv) acceleration due to pitch and roll of the vehicle (which I understand to mostly relate to sway on the vehicle springs). It is acknowledged there are prior brake controllers which compensate for gravity by eliminating the vertical component from sensed forces, but this does not compensate for any horizontal component of the other artefacts[40].

1. The detailed description describes the invention by reference to Figures 1 (copied below). It describes a brake controller 10 which may be mounted in a towing vehicle (not shown). The brake controller may be in communication with a remote head 12, used by the user to control a gain control, and for displaying status information. The braking controller may also include an input 15 from the towing vehicle brake light circuit for indicating when the brakes of the towing vehicle are applied.[41].

1. The brake controller 10 includes a multi-axis inertial sensor or accelerometer 14, which is generally described as including "plural sensor axes in an undefined orientation"[42], or as including "a multi-axis accelerometer"[43] . The brake controller 10 includes a microprocessor or microcontroller 16 that uses the sensor data from the inertial sensor 14 to estimate a braking deceleration, and to activate the trailer brakes 13 as a function of the estimated braking deceleration. The microcontroller includes memory 17 to store algorithms for estimating the braking deceleration[44].

1. It is stated that the brake controller controls activation of the braking system "in a manner that is relatively insensitive to acceleration of said vehicle in a lateral direction"[45], and relatedly it is said to be relatively insensitive to the orientation of the inertial sensor, such that it is not necessary to prescribe a specific mounting orientation relative to the towed or towing vehicle[46].

1. The specification then describes certain exemplar algorithms. The specific details of these are somewhat involved[47], but there are a couple of details worth noting. It involves (in part) certain rotations to transfer between an exterior reference frame, a vehicle reference frame, and an accelerometer reference frame. Importantly for our purposes, one of the first underlying assumptions in the model is that the rotation matrix between the towing vehicle reference frame and the accelerometer reference frame Qacc is unknown, but fixed[48]. That is, the detailed solution of D4 relies on the assumption that the accelerometer does not rotate relative to the towing vehicle. The other notable point is that D4 treats the measured acceleration as comprising[49]

where is the acceleration due to braking, is acceleration due to gravity, is centripetal acceleration, is measurement noise, and is an offset associated with gain non-linearity and cross-axis sensitivity. These are all vector terms, and from the detailed description each have units of ms-2, i.e. linear acceleration.

1. Given the obvious similarities between D4 and the present application, it is unsurprising that there are only a couple of specific points that are in dispute, and the applicant was satisfied to focus their defence on three points. It will be sufficient to focus on the integers I have labelled as 1.1.1 and 1.1.2 (which the applicant refers to as the signal limitation), 1.3.2 (the "relatively insensitive" feature), and 1.3.3 (the "need not be fixed" feature).

At least one inertial sensor adapted to sense inertial measurements in more than three sensor axes, including at least one of angle or rotation rate sensing (claims 1, 27, and 28)

1. For this feature, the opponent relies[50] upon the following extract from D4:

"Brake controller 10 is adapted to operate brakes 13 based on sensed deceleration of the towing vehicle. Brake controller 10 includes a multi-axis inertial sensor/accelerometer 14 for sensing deceleration to the towing vehicle along a plurality of directional axes"[51] (opponent's emphasis).

1. The opponent also relies on the following comment from Mr Mottrom:

"At paragraph 48 of the Law Declaration, Dr Law does not agree that the brake controller of D4 comprises an inertial sensor as claimed in the opposed application and therefore does not disclose all features of Claim 1. Dr Law acknowledges that the brake controller of D4 comprises a 'multi-axis inertial sensor', but asserts that there is no disclosure in D4 that the sensor axes include one of angle or rotation rate sensing. I disagree, and refer to D4 [the passage cited above], which describe essentially the same conceptual sensors"[52].

1. While the above establishes D4 discloses multi-axis accelerometers (with which I agree, as set out in my summary of D4 above), I do not follow how this leads to the feature of sensing in more than three axes, or to the feature of at least one of those axes being an angle or rotation rate axis. To this second point, the opponent submitted that "a multi axis sensor integrates three inertial sensors to measure motion and orientation across several axes". The evidence they appear to rely on for this statement is Mottrom#2 at 20, but what appears to be the relevant portion states that:

"I understand a multi axis sensor to be a single unit that comprises multiple individual sensors, rather than a single sensor that can measure multiple axes."[53]

1. The only relevant comment I can find anywhere in Mr Mottrom's declarations that comments whether or not D4 discloses sensing angle or rotation rate is the portion I have quoted above, where he suggests that D4 discloses "essentially the same conceptual sensors".

1. While I would tentatively agree there is some degree of conceptual similarity between the multi-axis accelerometer of D4 and the presently claimed inertial sensors, there are significant differences. As I have discussed above, what D4 discloses is the use of multi-axial accelerometers for measuring linear acceleration in multiple axes. D4 is not explicit as to the number of sensor axes, but given the rotations applied it appears assumed the measured acceleration is resolved into three components (see also D4 column 4 line 1-2, defining the accelerometer reference frame), which would imply three measurement axes. I can find no disclosure (explicit or implicit) of a fourth measurement axis, nor of any measurement axis being an angle or rotation rate sensing axis.

1. As such, the opponent has not demonstrated that either integer 1.1.2 or integer 1.1.3 have been disclosed by D4. Claims 27 and 28 each define essentially identical features.

1. While the opponent's novelty case fails at this point, for completeness I will briefly touch on the other disputed features.

in a manner that is relatively insensitive to sensed forces other than the braking deceleration (claim 1), and corrected for sensed forces other than the braking deceleration (claim 27)

1. The opponent's submissions were largely directed to the words of claim 1, but the same logic would seem to apply to claim 27. The opponent relies on the following passages of D4:

"Brake controller 10 includes a microprocessor or microcontroller 16 that is responsive to the sensed deceleration to supply power to trailer brakes 13 that may be a function of the sensed deceleration. Microcontroller 16 is adapted to execute one or more algorithms stored in an associated memory such as RAM and/or ROM 17 to facilitate measurement and/or validation of direction and/or calculation of acceleration and/or braking force in a forward or towing direction."[54]

"In particular the brake controller is adapted to control activation of the towed vehicle braking system in a manner that is relatively insensitive to acceleration of the vehicle in a lateral direction and to orientation of the inertial sensor without prescribing a mounting orientation of the brake controller relative to the towing or towed vehicle."[55]

1. It should be noted here that the opponent's argument here seems to have been premised on the construction of "forces other than the braking deceleration" as comprising any such forces, rather than all such forces. However, this is actually not necessary for this part of the opponent's argument. In addition to the points of D4 highlighted by the opponent, as I discussed above, D4 models the measured acceleration as

1. As such, the "other sensed forces" of D4 are and . D4 then provides compensation for each of these undesired components[56]. As such, D4 does disclose that the braking control signal is generated in a manner that is relatively insensitive to/compensates for all of the other sensed forces. Having said that, I will briefly return to this point in a moment.

thereby adapting the brake controller to be mounted in orientations that need not be fixed relative to the towed vehicle or a towing vehicle (claims 1 and 27)

1. The opponent's position on this feature is inextricably linked with the construction dispute I discussed above. To summarise, since the opponent arrived at the construction that the claim includes "brake controllers that are either unfixed or fixed, or capable of being both fixed and unfixed"[57], which they say includes D4, which they accept is fixed[58].

1. For completeness, I note there was a brief comment in the opponent's submissions where they allege D4 is unfixed[59]. From context this appears to be a typo, but just in case it was not: as I set out above, my reading of D4 is that the brake controller disclosed assumes as its starting point that there is no relative rotation between the brake controller and the vehicle, i.e. they are fixedly mounted together.

1. As I have already gone through in the construction section, what this feature requires is that the brake control is capable of being mounted in orientations which need not be fixed. It is not material whether or not the brake control is fixed or not, just that it is capable of being mounted in an unfixed orientation. As I have discussed in my summary of D4, D4 assumes that the orientation of the brake controller is fixed relative to the towing vehicle. The calculations that follow do not work if the brake controller orientation changes relative to the vehicle. As such, there is nothing in D4, or the opponent submissions, which would lead me to believe D4 was capable of being mounted in an unfixed orientation.

1. For completeness: There is always a need to consider how the features of a claim interact, and the current case is a good example of this. As I showed above, D4 disclose the feature of 1.3.2 in isolation, that is it generates a braking control signal in a manner relatively insensitive to all the forces sensed by D4 other than the braking deceleration. However, when that feature is read in conjunction with 1.3.3 (capable of mounting in orientations which need not be fixed), it is clear that the invention claimed would experience and sense additional forces associated with accelerations of the inertial sensor relative to the vehicle. To the extent that 1.3.2 should be read as referring to all other sensed forces, the claimed brake controller must account for more forces than those disclosed by D4.

1. For the reasons given above, I am not satisfied that D4 discloses anything falling within the scope of the independent claims. The opponent has not demonstrated that any of the claims lack novelty.

1. The inventive step requirement is set out in subsection 18(1)(b)(ii), which relevantly states:

"(1) Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:

(b) when compared with the prior art base as it existed before the priority date of that claim:

1. While both parties provided submissions[60] on the legal principles of inventive step, it will suffice to note that they both relied on the reformulated "Cripps question" set out by Aktiebolaget Hassle v Alphapharm Pty Ltd[61]:

"That way of approaching the matter has an affinity with the reformulation of the 'Cripps question' by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [57]. This Court had been referred to Olin in the argument in Wellcome Foundation [58]. Graham J had posed the question [59]:

'Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the -CF3 substitution in the '2' position in place of the -C1 atom in chlorpromazine or in any other body which, apart from the -CF3 substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?' (Emphasis added)

1. As noted above, while the SGP initially proposed a range of particulars for inventive step, the opponent's written submissions on inventive step (with respect to the independent claims) narrow to just the following:

"Brake controllers were sold in Australia before the priority date.

Components of brake controllers included various sensors such as accelerometers, magnetometers and gyroscopes were known before the priority date. Common algorithms were known and established for processing the sensor data as was the use of the Kalman or extended Kalman filter in brake controllers.

The Opposed application sought to provide a brake controller that was more 'versatile' and could be mounted outside of the towing vehicle. The Opposed application even acknowledges the preexisting systems that carried these features.

As set out above every integer of claims 1, 2, 3, 4, 6, 7, 8, 27 and 28 is clearly disclosed in D4. These claims therefore also lack inventive step in light of D4, whether or not it is read in light of the common general knowledge in the field."[62] (references omitted)

1. My interpretation of this is that the opponent's primary contention (despite being placed last) is that the invention lacks inventive step for the same reasons as why they say it lacks novelty. This limb of the opponent's case fails for the same reasons their novelty case fails. Beyond this, the opponent seems to be suggesting that, to the extent the invention comprises some combination of brake controllers, accelerometers, gyroscopes, magnetometers, Kalman filters, and mounting outside the vehicle, these are all alleged to be only common general knowledge.

1. As discussed above, a critical deficiency in the opponent's novelty case regarding D4 is that it does not disclose an inertial sensor including at least one axis of angle or rotation rate sensing. I will note at this point that there is a dispute between the parties over whether or not gyroscopes were well known in the art of brake controllers[63], however I do not think it is necessary to conclusively decide that point. Whether or not gyroscopes (or any other angle or rotation rate sensor) were CGK, the opponent has not explained why it would be obvious to combine this with the other features of the independent claims.

1. The opponent made the following comments in respect of certain dependent claims:

"Both Mr Mottrom and Dr Law agree that the choice of each component of the brake controller is driven by the desired outcome and context of the invention. Once the desired outcome is known, the choice of tracking apparatus is then simply made from a pool of known options and would be a standard task for one designing a brake controller."[64]

1. To whatever extent the same logic could apply to the independent claims, the opponent's argument is incomplete. What the opponent needed to show, but has not, is that at least one of the known "desired outcome[s]" would have led the person skilled in the art to choose some specific "tracking apparatus" (Mr Mottrom introduced this term without explanation[65], but I assume it means essentially the same thing as inertial sensor) which falls within the scope of the claim.

1. Given each of the independent claims require features identical to 1.1.1 and 1.1.2, it is unnecessary to address the inventiveness or otherwise of the other features in contention. The opponent has failed to demonstrate that any of the claims lack an inventive step.

1. Section 18(1) of the Act relevantly provides:

Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:

1. It was agreed between the parties[66] that a useful starting point for utility comes from Ranbaxy Australia Pty Ltd v Warner-Lambert Co LLC[67]:

"Under ss 138 and 18(1)(c) of the 1990 Act, it is a ground of invalidity if the claimed invention is not useful 'so far as claimed in any claim'. If the claimed invention does what it is intended by the patentee to do and the end obtained is itself useful, the invention is useful within the meaning of s 18(1)(c). As to the first aspect, the invention as claimed must attain the result promised by the patentee." (citations omitted)

1. Expanding on this, it was also said in Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd[68]

"The 'basic principle' of inutility is that if an invention 'does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention'. What the invention is 'intended' to do is a matter to be gathered from 'title and the whole of the specification'.

Put another way, the two questions are: first, what is the promise of the invention derived from the whole of the specification?; second, by following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee? Further, 'everything' that is within the scope of a claim must be useful, that is, attain the result promised for the invention by the patentee" (citations omitted).

1. As to identifying what the invention is "intended to do", it was also said in Esco Corporation v Ronneby Road Pty Ltd[69]

"Thus, a question of construction of the Specification and the relevant claim or claims arises so as to identify what the patentee 'intended to do' by his or her invention. The answer comes from the whole of the Specification."

1. In addition to these, the applicant also refers to Apotex Pty Ltd v AstraZeneca AB (No 4)[70] at 352, where Jagot J accepted that

"Ultimately, an asserted lack of utility must be established by appropriate evidence, not by mere speculation that the invention will not work or meet the promise set out in the specification."

1. Taken together, these principles set up a fairly simple process: identify what the invention is intended to do (from reading the specification as a whole), and then determine if everything which falls within the scope of the claim achieves this promised result.

1. The opponent submits claims 1, 27, and 28 lack utility. Their submission on lack of utility has two limbs: one related to the "at least one sensor", and one related to the mounting of the brake controller.

1. Regarding the sensor, the opponent's case is that, since it was generally agreed between the experts that a single sensor (such as a single accelerometer) only senses along one axis, it follows that to the extent the claim includes only one sensor (or two, or three), it cannot achieve the promised result of sensing along more than three sensor axes[71]. The applicant's answer to this is that any sensor which does not sense along more than three axes is not included in scope so the issue does not arise[72]. At the hearing, I gently pressed that claiming by result is not a total panacea for utility objections, as it is well established that when the result claimed is plainly not credible (such as perpetual motion machines), the claim will still want for utility. However, this case is not so extreme. I have construed that as used in the present claim, an inertial sensor refers to a sensor module, which may or may not comprise multiple sensor elements. With this construction in mind, the defined result (more than three axes) creates an implied limitation that when only one inertial sensor is present, it must comprise four or more sensor elements. As such, the problem the opponent identifies does not arise.

1. The second limb of the opponent's utility case is that the promised benefit of the application is set out by [0006] of the specification:

"According to an aspect of the present invention, there is provided a brake controller for a towed vehicle braking system, the brake controller adapted to generate a braking control signal to the towed vehicle braking system, the brake controller comprising at least one inertial sensor adapted to sense inertial measurements in more than three sensor axes, including at least one axis of angle or rotation rate sensing, and generate sensor data associated with each of the sensor axes; a processor for processing the sensor data to estimate a braking deceleration; wherein the brake controller is adapted to generate the braking control signal to control activation of at least one brake associated with the towed vehicle braking system based on the braking deceleration in a manner that is relatively insensitive to sensed forces other than the braking deceleration thereby adapting the brake controller to be mounted in orientations that need not be fixed relative to the towed vehicle or a towing vehicle" (opponent's emphasis).

1. The opponent then says that the claimed invention simply defines the scope by reference to this outcome, i.e., an "all means" claim[73]. They then refer to a passage of Mr Mottrom's declaration which they say indicates he did not understand how to adapt the controller to be mounted in orientation that need not be fixed, state the claims do not exclude the brake controller being fixed, and point out claim 28 does not define this feature at all[74].

1. While they could have been clearer, I take it that the thing which the opponent alleges the invention is intended to do is: to be mounted in a non-fixed orientation, and to be adapted to be insensitive to forces other than braking deceleration.

1. The applicant, for their part, seems to argue that what the invention is intended to do is to provide "a more versatile brake controller"[75]. On face value, that is quite vague, and the specification seems to use "versatility" to mean two different things: Firstly, it refers to a versatility of mounting options, including being optionally mounted inside or outside the towing vehicle, such as on the towed vehicle or between the two vehicles, especially preferably on the wiring loom[76], and secondly it refers to a versatility of installation, where it can be installed by a layperson without strict attention to orientation[77].

1. When the specification is read as a whole, I consider that it is directed to brake controllers which detects and account for rotations of the inertial sensor. While the primary purpose of this is presented as being to create a brake controller which is capable of being mounted in orientations which can vary relative to the vehicle(s), I disagree with the opponent in that I do not think this is the only promise being made. I think on a fair reading what the specification is promising is a broader class of brake controllers, which can account for a range of different rotation-related artefacts. While this is practically essential for the unfixed brake controller, the specification also describes it as an extension on and improvement over the prior art horizon methods[78]. As such, what is promised is a brake controller which is capable of, and configured to, measure and account for rotation of the inertial sensor, which may be used to account for a range of extraneous artefacts, inclusive of but not limited to those associated with the inertial sensor being mounted in an unfixed orientation.

1. Having identified what the invention is intended to do, I then turn to the question: does anything falling within the scope of any of the claims not provide this benefit? For this, the opponent relies on a passage from Mr Mottrom where they say "he does not understand how it is achieved that the brake controller is adapted to be mounted in orientations that need not be fixed"[79], but what Mr Mottrom stated in the relevant passage was:

"At paragraph 46, Dr Law disagrees with my assertion that the claim does not specify the means for achieving the outcome where the brake controller is adapted to be mounted in orientations that need not be fixed. Dr Law refers to the 'specifically identified sensors' which measure the inertial measurements. It is not clear to me how this is achieved. Claim 1 describes the sensors as follows;

...at least one inertial sensor adapted to sense inertial measurements in more than three sensor axes, including one or angle or rotation rate and generate sensor data associated with each of the sensor axes ...

The language of the claim suggests that it is possible to sense inertial measurements in more than three sensor axes with one inertial sensor. As discussed above, it is not possible to sense more than one axis using a single sensor. Whilst it may be possible to do so using mathematical calculations to determine estimates, it is clear from the language of the claim, 'generate sensor data associated with each of the sensor axes' that raw data is being utilized. Thus, to measure in three or more axes one would need at least 3 sensors. I understand a multi axis sensor to be a single unit that comprises multiple individual sensors, rather than a single sensor that can measure multiple axes."[80]

1. From which it is clear the thing which Mr Mottrom does not understand how to do is sensing more than three sensor axes with a single sensor. This is clearly premised on the alternative construction of "at least one inertial sensor", which I have not accepted. Setting aside the sensor issue, Mr Mottrom does not identify any further trouble with the brake controller being unfixed. Regardless, the opponent's submissions are premised on a narrower conception of the promised benefit.

1. Each independent claim defines using inertial sensors which measure angle or rotation rate information. Claims 1 and 27 each define the claim scope as being limited to those where the brake controller uses the sensor information to generate brake control signals which are relatively insensitive to/compensated for sensed forces other than the braking deceleration, and claim 28 is defined as generating braking control signals relatively insensitive to changes in road slope. To my mind, these are each consistent with the promise I identified above.

1. Overall, the opponent has not demonstrated that anything falling within scope of any of the claims does not deliver the promised result of a brake controller which measures and takes account of rotation of the inertial sensor.

1. Section 40(2) of the Act relevantly provides:

(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;

1. The relevant principles were well summarised by Burley J in _Cytec Industries Inc v Nalco Company[81]_at [143]-[144]:

"In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker considered at [95] that it involved the following three steps:

(1) Construe the claims to determine the scope of the invention as claimed;

(2) Construe the description to determine what it discloses to the person skilled in the art; and

(3) Decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.

In the present case, the delegate (at [54]) added to these the further questions to be considered, citing Evolva SA [2017] APO 57 at [45]:

Is it plausible that the invention can be worked across the full scope of the invention?

Can the invention be performed across the full scope of the claims without undue experimentation?"

1. The parties seem in agreement with these principles[82], although the opponent prefers the more concise wording from Merck Sharp & Dohme Corporation v Wyeth LLC (No 3)[83]

"The heart of the test is: 'Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?'"

1. The opponent has raised three different arguments regarding enablement, each affecting different claims. The opponent's first argument is directed to claims 1-12, and relates to the feature of determining a brake control signal "in a manner relatively insensitive to forces other than braking deceleration." They state that:

"The opposed application purports to claim all means by which the brake controller is rendered relatively insensitive to sensed forces other than the braking deceleration. The opposed application provides only exemplification and descriptions of brake controllers where the insensitivity is implemented by applying a three-dimensional rotation to the determined deceleration vector into a substantially fixed frame of reference before determining the braking deceleration (see e.g. claim 14). Accordingly, the opposed application lacks sufficiency (lack of enablement) across the scope of the claims."[84]

1. The opponent's second argument relates to each of claims 1, 27, and 28, and the feature of "at least one inertial sensor adapted to sense inertial measurements in more than three axes, including at least one axis of angle or rotation rate sensing" (i.e., the integer I labelled as 1.1-1.1.3 and corresponding features of claims 27 and 28). The opponent argues that the opposed application only exemplifies controllers having at least three sensors, comprising at least one multi-axis accelerometer combined with a gyroscope and/or magnetometer[85].

1. The opponent's third argument relates to claim 28, and is very brief:

"Claim 28 does not require that the brake controller 'need not be fixed to the towed vehicle or towing vehicle', so is not supported by the disclosure in the specification."[86]

1. Regarding the first point, the applicant submits that it is permissible for claims to be "functionally defined", and there is no requirement that an applicant must restrict their claim to the preferred embodiment. Further, they say the opponent (or the evidence) has failed to demonstrate that the person skilled in the art would have any difficulty in achieving the defined functional requirements[87]. More specifically, the applicant argues that the opponent mischaracterises the claim, as it ignores the combination of the "Sensing Limitation" and the "Signal Limitation". The applicant submits that when this combination is considered together, the interaction between the two defines a specific capability for the inertial sensor in order to provide necessary sensor data for the signal limitation[88].

1. Regarding the opponent's second point, the applicant again submits the opponent is proceeding from an incorrect construction of the claim, and that once "inertial sensor" is understood as a functional unit rather than a specific sensor element, the question becomes whether the person skilled in the art is able to produce the defined functional result. They submit there is no evidence to suggest the claim extends to anything beyond the capabilities of the person skilled in the art[89].

1. The applicant's written submissions did not explicitly answer the opponent's third point, but from the hearing I understood their position on this was essentially the same as for the second point: the opponent is beginning from a flawed construction, and even allowing for that there is no evidence to suggest the claim encompasses anything which the person skilled in the art could not do.

Claims 1-12: "in a manner relatively insensitive to forces other than braking deceleration"

1. Above, I have construed the relevant specific integers of the claim. Putting it all together, relevant to the opponents first argument, claim 1 encompasses brake controllers which use an inertial sensor according to 1.1-1.1.3 to produce a brake control signal which is relatively insensitive to forces other than braking deceleration, where the relevant "sensed forces" are inclusive of the forces that would be sensed when the brake controller is mounted in non-fixed orientations. To the extent that the claim is not limited to any specific calculation or algorithm, the opponent is correct that the claim encompasses "all means" of using the defined inertial sensor to produce the defined result.

1. Turning to what the specification discloses, my reading of the specification is similar to the opponent: all of the detailed embodiments involve estimating and applying a three dimensional rotation from the inertial sensor reference frame into the vehicle reference frame before determining the braking deceleration. As discussed above, the specification teaches multiple methods for achieving this.

1. So, the opponent's argument can be simplified down to: the claim scope includes methods of generating a braking control signal which is relatively insensitive to other sensed forces which do not involve a rotation.

1. I am not persuaded that this represents an undue burden. To whatever extent that there do exist solutions to achieve the "relatively insensitive" result without utilising a rotation into the vehicle reference frame (noting that the opponent has not identified any such solution), neither expert indicated they thought there would be any problem with the calculation. In fact, Mr Mottrom suggests "the required algorithms are entirely standard and I, or any other skilled person, would have no difficulty in introducing such algorithms"[90], which suggests that these calculations are typical for the art. As such, I am not satisfied that the opponent has shown that the results defined by the claims 1-12 cannot be performed across their whole scope without undue burden.

Claims 1, 27, 28: "at least one inertial sensor adapted to sense inertial measurements in more than three axes, including at least one axis of angle or rotation rate sensing"

1. Turning to the opponent's second point, regarding the "at least one inertial sensor", above I construed that relevant feature defined is a functional inertial sensor module rather than a specific sensor element. The specification describes multiple such arrangements, including multi-axis accelerometers combined with gyroscopes or magnetometers.

1. In terms of whether or not the person skilled in the art could perform the invention across the whole scope of inertial sensors, I note that Mr Mottrom seemed confident that accelerometers, gyroscopes, and accelerometers were well known and that

"once the desired functionality is known, one then chooses from the known pool of design choices and software available"[91].

1. Dr Law states that he disagrees with this, but since he then elaborates that,

"Whether one or more of an accelerometer, gyroscope or magnetometer would be used in any particular brake controller would depend entirely on the context and the functional outcome sought for that controller."[92]

it would seem whatever disagreement there is, they agree that they would be able to select appropriate sensors to sense whatever was required.

1. So while part of the opponent's comments on this point are entangled with their alternate construction of "at least one sensor", which fails for the reasons discussed previously, the portion which relates to the specification only enabling some specific combination of sensors fails because the evidence tends to suggest that the person skilled in the art could perform the invention across the whole scope without undue experimentation or need for further invention.

1. Finally, turning to claim 28, the opponent's argument here is, at face value, a support argument rather than an enablement argument. However, it has been said that the two grounds are "two sides of the same coin"[93]. Following the rubric from Cytec: Claim 28 is (relevantly) defined as a brake controller comprising an inertial sensor with more than three sensor axes, including at least one angle or rotation rate axis, and adapted to use the information from this sensor to generate braking control signals in a manner that is relatively insensitive to changes in road slope. As I have discussed under utility, the description discloses brake controllers which are capable of, and configured to, measure and account for rotation of the inertial sensor. As discussed under utility, while I would agree with the opponent a primary purpose of this is for brake controllers which are mounted in unfixed orientations, my reading of the specification is that this is not an essential feature of the invention, as the disclosed brake controllers may be used to account for a range of extraneous artefacts, of which changes in road slope is one example. No argument has been advanced for why the person skilled in the art would be unable to do this (other than the points already discussed in the context of claim 1).

1. Overall, the opponent has not demonstrated any reason why the specification does not provide a sufficient enabling disclosure of the invention defined by any of the claims.

The claim or claims must be clear and succinct and supported by matter disclosed in the specification.

1. In Merck, Burley J explored the requirement of support at [546]-[547]:

"In CSR Building Products Ltd v United States Gypsum Company [2015] APO 72, Dr S D Barker adopted the summary provided by Aldous J in Schering Biotech at 252 - 253, which has been often followed in the United Kingdom (emphasis added):

'...to decide whether the claims are supported by the description it is necessary to ascertain what is the invention which is specified in the claims and then compare that with the invention which has been described in the specification. Thereafter the court's task is to decide whether the invention in the claims is supported by the description. I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be a sufficient support. The word "support" means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.'

That approach encapsulates broadly the claim support obligation under s 40(3). To it may be added the requirement that the technical contribution to the art must be ascertained. Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breadth of the monopoly claimed."

1. In CSR Building Products Limited v United States Gypsum Company[94] that was referred to with approval in Merck, the delegate, Dr Barker, formulated the following test in order to determine whether a claim is supported by the description:

• Construe the claims to determine the scope of the invention as claimed,
• Construe the description to determine the technical contribution to the art, and
• Decide whether the claims are supported by the technical contribution to the art.

1. The opponent also draws attention to the following passage from Merck:

"It may be seen that for the claim breadth to be supported (or justified), it must correspond to the 'technical contribution to the art'. In Biogen, the House of Lords was concerned with whether or not a claim was entitled to priority from an earlier application within s 5(2)(a) of the UK Act, and so the claim support obligation was clearly in issue. It was considering a complicated claim to a product, being a molecule identified partly by the way in which it had been made, and partly by what it did. On the facts, the patentee could not claim either the product (a recombinant DNA molecule involving fragments of the "Dane particle"), as it had already been made, or the process involved (recombinant DNA technology enabling expression in a cell), as it had already been invented. Lord Hoffmann said at 50 - 51 that the question:

...is not whether the claimed invention could deliver the goods, but whether the claims cover other ways in which they might be delivered: ways which owe nothing to the teaching of the patent or any principle which it disclosed.

It will be remembered that in Genentech I/Polypeptide expression the Technical Board spoke of the need for the patent to give protection against other ways of achieving the same effect 'in a manner which could not have been envisaged without the invention'. This shows that there is more than one way in which the breadth of a claim may exceed the technical contribution to the art embodied in the invention. The patent may claim results which it does not enable, such as making a wide class of products when it enables only one of those products and discloses no principle which would enable others to be made. Or it may claim every way of achieving a result when it enables only one way and it is possible to envisage other ways of achieving that result which make no use of the invention."[95]

1. The opponent's submissions for support essentially rely upon the same arguments as advanced for sufficiency[96]. The applicant took a similar approach[97].

1. Expanding slightly, the opponent argues that the technical contribution relates to

"brake controllers where the insensitivity is implemented by applying a three-dimensional rotation to the determined deceleration vector into a substantially fixed frame of reference before determining the braking deceleration".[98]

1. I consider that to be a too narrow phrasing of the technical contribution. My reading of the specification is that the technical contribution of the present application involves the realisation that by extending the prior art inertial sensor measurements of three dimensional linear acceleration to additionally include angular or rotation rate information allows for brake controllers which can account for additional extraneous forces/artefacts, such as those which arise when the brake controller is not mounted in a fixed orientation relative to the vehicle (i.e., for claims 1 and 27) or those associated with changes in road slope (for claim 28). Applying a rotation is a part of implementing this contribution, but such mathematical manipulations are not new, and do not form part of the technical contribution. It follows that the claims do not lack support merely because they do not limit to three dimensional rotations.

1. For completeness, the opponent's submissions on support regarding the "at least one sensor" and "mounting in an orientation which need not be fixed" also fail for substantially the same reasons as sufficiency (i.e., the opponent is proceeding from an incorrect construction).

1. Overall, the opponent has not demonstrated that any of the claims lack support.

1. For the reasons set out above, the opponent has not made out any of the grounds of opposition. The opposition is unsuccessful, and the application may proceed to grant.

1. It is usual for costs to follow the event, and I see no reason to depart from that here. Consequently, I award costs according to schedule 8 against the opponent, Jones Tulloch Pty Ltd.

1: A brake controller for a towed vehicle braking system, the brake controller adapted to generate a braking control signal to the towed vehicle braking system, the brake controller comprising:

at least one inertial sensor adapted to sense inertial measurements in more than three sensor axes, including at least one axis of angle or rotation rate sensing, and generate sensor data associated with each of the sensor axes;

a processor for processing the sensor data to estimate a braking deceleration;

wherein the brake controller is adapted to generate the braking control signal to control activation of at least one brake associated with the towed vehicle braking system based on the braking deceleration in a manner that is relatively insensitive to sensed forces other than the braking deceleration thereby adapting the brake controller to be mounted in orientations that need not be fixed relative to the towed vehicle or a towing vehicle.

2. A brake controller according to claim 1, wherein the inertial measurements further include acceleration in addition to at least one of rotation rate or angle.

3. A brake controller according to claim 1, wherein the brake controller is adapted to be mounted outside of the towing vehicle.

4. A brake controller according to claim 1, wherein the brake controller is adapted to be mounted in the towed vehicle or between the towing vehicle and the towed vehicle.

5. A brake controller according to any one of claims 1 to 3, wherein the brake controller is adapted to be mounted on and substantially supported by a wiring loom.

6. A brake controller according to any one of claims 1 to 5, wherein the orientation of the brake controller is changing in at least one of a pitch, roll or yaw direction.

7. A brake controller according to any one of claims 1 to 6, wherein adapting the brake controller to be insensitive to forces other than braking deceleration involves compensating for one or more extraneous acceleration components when generating the braking signal.

8. A brake controller according to any one of claims 1 to 7, adapting the brake controller to be insensitive to forces other than braking deceleration involves compensating for one or more rotation rate components when generating the braking control signal.

9. A brake controller according to any one of claims 1 to 8, wherein the at least one inertial sensor includes a multi-axis accelerometer and a gyroscope.

10. A brake controller according to any one of claims 1 to 8, wherein the at least one inertial sensor includes a multi-axis accelerometer and a magnetometer.

11. A brake controller according to any one of claims 1 to 8, wherein the at least one multi-axis inertial sensor includes a multi-axis accelerometer, a gyroscope and a magnetometer.

12. A brake controller according to any one of claims 1 to 8, wherein the at least one inertial sensor includes two multi-axis accelerometers, wherein a first multi-axis accelerometer is positioned so as to be spatially separated from a second multi-axis accelerometer.

13. A brake controller according to claim 7 and 9 to 12, when dependent on claim 7, wherein the brake controller has a fixed frame of reference and a moving frame of reference and the processor uses a digital filter to estimate changes between the fixed frame of reference and the moving frame of reference to determine a measured deceleration vector.

14. A brake controller according to claim 13, wherein the insensitivity to forces other than braking deceleration is implemented by applying a three-dimensional rotation to the determined deceleration vector into a substantially fixed frame of reference before determining the braking deceleration.

15. A brake controller according to claim 14 wherein the three dimensional rotation is determined from a principle components analysis (PCA) of gyroscope or acceleration data.

16. A brake controller according to claim 14 wherein lateral basis vector of the three dimensional rotation is determined using cross correlation of yaw rate and accelerometer measurements.

17. A brake controller according to any one of claims 7 or 9 to 12 when dependent on claim 7, wherein compensating for extraneous acceleration components includes applying a first estimation algorithm.

18. A brake controller according to claim 17, wherein the extraneous acceleration component is due to a change in road slope in one of the longitudinal or lateral directions and wherein the application of the first estimation algorithm ameliorates an effect of gravity.

19. A brake controller according to claim 17 or 18, wherein the first estimation algorithm is a Kalman filter or an extended Kalman filter.

20. A brake controller according to claim 19, wherein the first estimation algorithm is updated with horizontal components of acceleration with an increased variance estimation while the vehicle is undergoing significant acceleration.

21. A brake controller according to claim 19 or 20, wherein auxiliary vehicle data such as wheel speed is an additional input to the first estimation algorithm.

22. A brake controller according to any one of claims 8 or 9 to 12 when dependent on claim 8, wherein compensating for rotation rate components includes applying a second estimation algorithm to the sensor data to estimate errors due to rotation rate components.

23. A brake controller according to claim 22, wherein applying the second estimation algorithm comprises applying an adaptive filter.

24. A brake controller according to claim 23, wherein the second estimation algorithm performs predictive equalisation from one or more inertial components with respect to a deceleration component.

25. A brake controller according to claim 23 or 24, wherein applying the second estimation algorithm comprises applying a least mean squares equalizer.

26. A brake controller according to claim 17, wherein the application of an adaptive filter to the sensor data to compensate for rotation rate components precedes the application of the first estimation algorithm to compensate for extraneous acceleration components.

27. A brake controller for a towed vehicle braking system, the brake controller adapted to generate a braking control signal to the towed vehicle braking system, the brake controller comprising:

at least one inertial sensor adapted to sense inertial measurements in more than three sensor axes, including at least one axis of angle or rotation rate sensing, and generate sensor data associated with each of the sensor axes;

a processor for processing the sensor data to estimate a braking deceleration;

wherein the processor is adapted to compensate for at least one of extraneous acceleration components and rotation components in the sensor data such that the brake controller is adapted to generate the braking control signal to control activation of at least one brake associated with the towed vehicle braking system based on the braking deceleration that has been corrected for sensed forces other than the braking deceleration thereby adapting the brake controller to be mounted in orientations that need not be fixed relative to the towed vehicle or a towing vehicle.

28. A brake controller for a towed vehicle braking system, the brake controller adapted to generate a braking control signal to the towed vehicle braking system, the brake controller comprising:

at least one inertial sensor adapted to sense inertial measurements in more than three sensor axes, including at least one axis of angle or rotation rate sensing, and generate sensor data associated with each of the sensor axes;

a processor for processing the sensor data to estimate a braking deceleration;

wherein the brake controller is adapted to generate the braking control signal to control activation of at least one brake associated with the towed vehicle braking system based on the braking deceleration in a manner that is relatively insensitive to changes in road slope.

29. A brake controller according to claim 28, wherein application of a first estimation algorithm ameliorates an effect of gravity rotated into the forward or lateral directions due to road slope.

30. A brake controller according to claim 28 or 29, wherein the first estimation algorithm is a Kalman filter or an extended Kalman filter with at least one input coming from said angle or rotation rate measurement.

31. A brake controller according to claim 30, wherein the first estimation algorithm is updated with horizontal components of acceleration with an increased variance estimation while the vehicle is undergoing acceleration.

32. A brake controller according to claim 30 or 31, wherein auxiliary vehicle data, including wheel speed, is an additional input to the first estimation algorithm.

[5] Opponent's submissions (OS) at 7.

[7] Specification at [0002]-[0003]. I note briefly the specification uses "force" and "acceleration" somewhat interchangeably.

[15] Specification at [0049]-[0050].

[16] Specification at [0051]-[0075].

[21] Specification at [0092]-[0093].

[23] [2005] FCAFC 90; 222 ALR 155 (Jupiters) at [67].

[24] [1961] HCA 91; 106 CLR 588

[25] [2005] FCAFC 224 (Pfizer)

[26] Ibid at 250, citing Nesbit Evans Group Australia Pty Ltd v Impro Ltd [1997] FCA 1092; 39 IPR 56 and Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183.

[27] Macquarie Dictionary Online, entry for "sensor".

[32] OS at 31-32, my phrasing and emphasis.

[33] Applicant's written submissions (AS) at 24 makes the argument that it is a plurality, at the hearing it was said to be all.

[34] Specification at [0003]-[0004].

[35] Contrast [0049]-[0075] for compensating for the gravity vector with [0076]-[0091] relating to compensating for rotation rate components.

[37] [1977] HCA 19 at [20]; (1977) CLR 228 at page 235; [1977] HCA 19; 13 ALR 605 at page 611.

[45] D4 column 2 line 66 to column 3 line 1.

[54] D4 column 3 line 37-45, cited by Mottrom#1 at page 26, relied upon by OS at 29.

[55] D4 abstract, relied on by OS at 30-32.

[61] [2002] HCA 59; 212 CLR 411 at [51]- [53].

[63] Mottrom#1 at 25; Law#1 at 32; Mottrom#2 at 11.

[67] [2008] FCAFC 82; (2008) 77 IPR 449 at 141.

[68] [2016] FCAFC 29; 245 FCR 485 at 120-121.

[69] [2018] FCAFC 46; 358 ALR 431 at 199.

[70] [2013] FCA 162; 100 IPR 285

[71] OS at 82-83, citing Law#1 at 24 and Mottrom#2 at 8.

[76] Specification at [0004], [0094]

[78] Specification at [0048], [0073]

[81] [2021] FCA 970 (Cytec).

[83] [2020] FCA 1477; 155 IPR 1 (Merck) at 525, quoting from Novartis AG v Johns & Johnson Medical Ltd [2010] EWCA Civ 1039; [2011] E.C.C. 10

[90] Mottrom#2 at 15, noting he was talking in the context of US2015081184 (referred to as D6).

[91] Mottrom#2 at 28-29, reiterating similar comments from Mottrom#1 at 142.

[94] [2015] APO 72 (CSR)

[96] OS at 103-105, noting that regarding the "at least one sensor" argument also combines some of the comments presented for utility.