5 February 2015
`
`MINTER ELLISON
`Level 23, Rialto Towers
`525 Collins Street
`MELBOURNE VIC 3000
`Australia
`
`Patent Oppositions
`
`Application Number:
`
`2011201135
`
`Applicant Name:
`
`ESCO Corporation
`
`Applicant Ref:
`
`1069200
`
`Opponent:
`
`Ronneby Road Pty Ltd, CQMS Pty Ltd & Caterpillar Inc.
`
`Dear Madam/Sir
`
`Please find attached a copy of a Decision of a Delegate of the Commissioner of Patents.
`
`Yours Faithfully
`
`Deanne Brucic
`Patent Oppositions, Hearings and Legislation
`Phone: 0262837963
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2013 Page 1
`
`

`

`IP AUSTRALIA
`
`AUSTRALIAN PATENT OFFICE
`
`Ronneby Road Pty Ltd v ESCO Corporation
`CQMS Pty Ltd v ESCO Corporation
`Caterpillar Inc. v ESCO Corporation
` [2015] APO 3
`
`
`2011201135
`
`Wear assembly
`
`ESCO Corporation
`
`(1) Ronneby Road Pty Ltd
`(2) CQMS Pty Ltd
`(3) Caterpillar Inc.
`
`R Subbarayan
`
`5 February 2015
`
`5 November 2014, in Canberra
`
`PATENTS - opposition to grant of patent – novelty, inventive step,
`clarity, fair basis and sufficiency – prior use supported by
`photographs – none of the grounds made out – costs awarded
`against opponents
`
`Patent applicant: Mr Stephen Burley of Counsel assisted by Mr
`Stephen Worthley and Mr Wayne McMaster of Minter Ellison
`Opponent 1: Mr Barry Newman of Armour IP
`Opponent 2: Did not appear
`Opponent 3: Mr Craig Smith of Counsel assisted by Mr Bret
`Connor and Mr Jonathan Schnapp of Freehills
`
`
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`Patent Application:
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`Title:
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`Patent Applicant:
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`Opponents:
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`Delegate:
`
`Decision Date:
`
`Hearing Date:
`:
`Catchwords:
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`Representation:
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`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2013 Page 2
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`

`

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`
`
`IP AUSTRALIA
`
`AUSTRALIAN PATENT OFFICE
`
`
`2011201135
`
`Wear assembly
`
`ESCO Corporation
`
`5 February 2015
`
`
`
`
`Patent Application:
`
`Title:
`
`Patent Applicant:
`
`Date of Decision:
`
`DECISION
`
`All three oppositions fail. The claimed invention is novel, inventive, clear, fairly based, sufficient
`and a manner of manufacture. Costs according to Schedule 8 awarded against each of the three
`opponents.
`
`REASONS FOR DECISION
`
`BACKGROUND
`
`1. Patent application 2011201135 in the name of ESCO Corporation (ESCO) was filed on 15 March
`2011 as a divisional application of AU2007241122. Through this parent application it claims an
`earlier priority date of 30 March 2006. Following examination, the application was advertised as
`accepted on 8 November 2012. The application has been opposed under section 59 of the Patents
`Act by three different opponents, namely Ronneby Road Pty Ltd (hereinafter “Ronneby”), CQMS
`Pty Ltd (hereinafter “CQMS”) and Caterpillar Inc. (hereinafter “Caterpillar”). The three
`oppositions were heard together in Canberra on 5 November 2014. Prior to the hearing, CQMS
`advised that they would not be appearing at the hearing or filing written submissions.
`
`GROUNDS OF OPPOSITION
`
`2. The three opponents have opposed the grant of the patent on the following grounds:
`
`Ronneby:
`
`CQMS:
`
`Caterpillar: Novelty, Inventive Step, Clarity, Fair Basis, Manner of Manufacture and Utility.
`
`Novelty, Inventive Step, Clarity, Fair Basis and Manner of Manufacture.
`
`Novelty, Inventive Step, Clarity, Fair Basis and Full Description.
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2013 Page 3
`
`

`

`EVIDENCE
`
` 2
`
`3. Evidence filed in respect of the three oppositions is as follows:
`
`Opponent 1 (Ronneby)
`
`
`
`
`
`
`
`
` Evidence in support comprises a declaration by Benjamin Hughes dated 5 August 2013
`with exhibits BH-1 to BH-7.
`
`
`
`
`
`Opponent 2 (CQMS)
`
`
` Evidence in answer comprises a first declaration by Howard William Robinson dated 2
`November 2013 and a second declaration by Howard William Robinson dated 3 January
`2014 with exhibits HWR-1 to HWR-2.
`
`
`
`
`
`
`
` Evidence in support comprises a declaration by Adam Luxton dated 19 July 2013 along
`with exhibits ADL-01 to ADL-13.
`
`
`
`
`
`
`
`Opponent 3 (Caterpillar)
`
`
` Evidence in answer comprises a declaration by Howard William Robinson dated 30
`January 2014.
`
`
`
`
`
`
`
`
`
` Evidence in support comprises a first declaration by Bruce Alexander Leslie dated 19
`September 2013 with exhibit BAL-1 and a second declaration by Bruce Alexander Leslie
`dated 14 October 2013 with exhibits BAL-2 to BAL-3.
`
` Evidence in answer comprises a declaration by Howard William Robinson dated 13
`January 2014.
`
`SPECIFICATION
`
`4. The specification states that the invention pertains to a wear member that is commonly attached
`to excavating equipment, such as excavating buckets, to protect the equipment from wear and to
`enhance the digging operation.
`
`5. Such wear members typically are elongate with an excavating tooth or point at a front end and a
`socket at a rear end. The socket is fitted over a base or nose on the excavating bucket and
`releasably secured thereto with a locking member that is inserted into aligned apertures in the
`socket and base. The wear members are subject to very harsh conditions in use and consequently
`wear out and need to be replaced at regular intervals. The wear member, base and locking
`member together constitute a wear assembly. The present invention is stated to provide an
`improved wear assembly that provides for “enhanced stability, strength, durability, penetration,
`safety and ease of replacement”.
`
`6. The specification then describes a number of aspects of the wear assembly including the
`provision of various stabilizing surfaces to resist the different loads that wear assemblies are
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2013 Page 4
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`

`

` 3
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`subjected to, the shape of the wear member and the construction and arrangement of the locking
`member. However the claims of this divisional application are solely directed to the locking
`arrangement for locking the wear member on the base.
`
`7. The locking arrangement comprises a lock 17 that is fitted within a through-hole 81 in the wear
`member 12. Through-hole 81 has a generally rectangular shape with end walls 85, 87, front wall
`89 and rear wall 91. The lock includes a narrow end 103, a wide end 105, a front face 107 and a
`rear face 109. Narrow end 103 is formed as a pivot member 113 that cooperates with bulb 93 on
`end wall 85 of the through-hole to enable the lock to pivotally swing about bulb 93 between hold
`and release positions. In the hold position it protrudes into the socket into an aligned cavity 83 in
`the base 14 to secure the wear member to the base. In the release position, it still remains secured
`to the wear member but does not protrude into the socket thereby permitting the wear member to
`be removed from or fitted over the base. Latch formations provided in the locking member and
`the wear member ensure that the lock is securely held in the wear member in both the hold and
`release positions. The lock is moved between hold and release positions “without a hammer for
`ease of use and enhance safety” and in a preferred arrangement this is done using a prying tool T.
`Figures 23 and 25 reproduced below show the locking member 17 in the release and hold
`positions respectively.
`
`
`
`8.
`
`
`
`
`
`In a typical wear assembly, the locking member is a separate member that is inserted into the
`aligned openings in the wear member and base at the time of installation to secure the wear
`member to the base. However in the present invention the lock is characterised by being
`“integrally secured to the wear member for shipping and storage as single integral component”. It
`is installed into the wear member in the release position at the time of manufacture and shipped to
`the customer as a single unit. The lock remains secured in the release position within the opening
`in the wear member even when the wear member is not fitted to the base of the excavator bucket
`and this is stated to provide benefits such as “less shipping costs, reduced storage needs, and less
`inventory concerns” and also reduced “risk of dropping or losing the lock during installation”.
`While the lock normally remains integrally sescured within the through-hole in the wear member,
`the specification also states that if required the lock can be completely removed for shipping,
`replacement or installation.
`
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2013 Page 5
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`

`

` 4
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`9. Another characterising aspect of the invention is stated to be the pivotal movement of the lock
`between hold and release positions about an axis that extends generally longitudinally of the wear
`member for easy use and stability. The sides of the lock are stated to form “a secure and stable
`locking arrangement without substantial loading of the hinge or latch portions of the lock”.
`
`10. The specification ends with 26 claims of which independent claims 1, 6, 9, 13, 19 and 25 are
`directed to the integral connection of the lock to the wear member and independent claim 5 is
`directed to the pivoting arrangement of the lock. The independent claims read as follows:
`
`1. A wear member for attachment to excavating equipment comprising a front end to contact
`materials being excavated and protect the excavating equipment, a rear end, a socket that opens in
`the rear end to receive a base fixed to the excavating equipment, a through-hole in
`communication with the socket, and a lock integrally connected in the through-hole and movable
`without a hammer between a hold position where the lock can secure the wear member to the
`base and a release position where the wear member can be released from the base, the lock and
`the through-hole being cooperatively structured to retain the lock in the through-hole in each of
`said hold and release positions irrespective of the receipt of the base in the socket or the
`orientation of the wear member.
`
`5. A wear member for attachment to excavating equipment comprising a front end defining a
`narrow front edge for penetrating into the ground, a rear end, a socket defined by top, bottom and
`side walls that opens in the rear end to receive a nose fixed to the excavating equipment to define
`an excavating tooth, a through-hole in communication with the socket, and a lock received in the
`through-hole for pivotal movement between a hold position where the lock secures the wear
`member to the nose and a release position where the wear member can be released from the nose,
`wherein the pivotal axis extends in a direction generally parallel to the receipt of the base into the
`socket.
`
`6. A wear member for attachment to excavating equipment comprising a front end to contact
`materials being excavated and protect the excavating equipment, a rear end to mount to a base
`fixed to the excavating equipment, and a lock movable between a hold position where the lock
`secures the wear member to the base and a release position where the wear member can be
`released from the base, wherein the lock remains secured to the wear member in the release
`position irrespective of whether the wear member is mounted to the base or the orientation of the
`wear member.
`
`9. A wear member for excavating equipment comprising:
`a wearable body having a wear surface to contact materials being excavated and protect the
`excavating equipment, and a cavity to receive a base fixed to the excavating equipment; and
`a lock integrally secured to the wearable body for movement between a hold position wherein the
`lock engages the base to hold the wearable body to the base and a release position wherein the
`lock permits installation and removal of the wearable body on and from the base, the lock being
`secured to the wearable body in both the hold and release positions irrespective of whether the
`base is in the cavity or the orientation of the wear member.
`
`13. A wear assembly for attachment to excavating equipment comprising:
`a base fixed to the excavating equipment;
`a wear member including a front end to contact materials being excavated and protect the
`excavating equipment, and a rear end to mount to the base fixed to the excavating equipment; and
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2013 Page 6
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`

`

` 5
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`a lock integrally connected to the wear member and movable without a hammer between a hold
`position where the lock contacts the base and the wear member to secure the wear member to the
`base and a release position where the wear member can be released from the base, wherein the
`lock remains secured to the wear member in the release position.
`
`19. A wear assembly for excavating equipment comprising a base fixed to the excavating
`equipment and a wear member having (i) a wearable body having a wear surface to contact
`materials being excavated and protect the excavating equipment, and a cavity to receive a base
`fixed to the excavating equipment, and (ii) a lock integrally secured to the wearable body for
`movement between a hold position wherein the lock engages the base to hold the wearable body
`to the base and a release position wherein the lock permits installation and removal of the
`wearable body on and from the base, the lock being secured to the wearable body in both the hold
`and release positions irrespective of whether the base is in the cavity or the orientation of the
`wearable body.
`
`25. A wear assembly for excavating equipment comprising: a base fixed to the excavating
`equipment, the base having a nose free of moving components; a wear member including a front
`end to contact materials being excavated and protect the excavating equipment, and a rear end
`having a socket for receiving the nose to support the wear member on the base; and a lock
`movably secured to the wear member for movement between a hold position where the lock
`engages the base and the wear member to secure the wear member to the base, and a release
`position where the wear member can be released from the base, the lock remaining secured to the
`wear member irrespective of receipt of the nose into the cavity or the orientation of the wear
`member.
`
`ONUS OF PROOF
`
`11. The examination request for this patent application was filed on 15 September 2011. As a
`consequence, substantive amendments of the Patents Act brought about by the Intellectual
`Property Laws Amendment (Raising the Bar) Act 2012 do not apply to the present application.
`This includes the amendment to subsection 60 (3A) that allows the Commissioner to refuse a
`patent application if satisfied on the balance of probabilities that a ground of opposition exists.
`
`12. Consequently the former standard for opposition proceedings applies and the opponent must
`establish that it is clear or practically certain that the patent is invalid (F Hoffman La Roche AG v
`New England Biolabs Inc [2000] FCA 283 at [29], [67]; [2000] FCA 283; 50 IPR 305 at 311,
`319; Commissioner of Patents v Sherman [2008] FCAFC 182 at [18], [22]; [2008] FCAFC 182;
`79 IPR 426; Genetics Institute Inc v Kirin-Amgen Inc [1999] FCA 742; [1999] 92 FCR 106 at
`[17]).
`
`CLAIM CONSTRUCTION AND CLARITY
`
`13. It is a recognised tenet of Australian patent law that each claim must be read as part of the entire
`specification (Electrical and Musical Industries Ltd v Lissen Ltd 56 RPC 23 at 39), and thus the
`meaning of the words used in a claim may be affected by what is said in the body of the
`specification (Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC
`59 at 69). While noting that 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 (Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91; (1961) 106 CLR 588 and
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2013 Page 7
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`

` 6
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`Decor Corporation Pty Ltd v Dart Industries Inc (1988) 13 IPR 385), 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 (see Interlego AG v
`Toltoys Pty Ltd [1973] HCA 1; (1973) 130 CLR 461 at 476).
`
`14. I also note what Middleton J said in Eli Lilly and Company Limited v Apotex Pty Ltd [2013] FCA
`214, 100 IPR 451 at [139]:
`
`
`It is well settled that the Court should, from the outset, approach the task of patent
`construction with a generous measure of common sense. The Court must place
`itself in the position of a person skilled in the relevant art, being the subject matter
`of the patent. From this perspective, the patent is to be read as a whole, in the
`context of the specification and in light of the prevailing common general
`knowledge and state of the relevant art at the priority date.
`
`
`15. The correct approach to the construction of claims was also discussed by Bennett J in H Lundbeck
`A/S v Alphapharm Pty Ltd [2009] FCAFC 70, 81 IPR 228 at [118] – [120]:
`
`
`the words in a claim should be read through the eyes of the skilled addressee in the
`context in which they appear ... while the claims define the monopoly claimed in
`the words of the patentee's choosing, the specification should be read as a whole ...
`it is not permissible to read into a claim an additional integer or limitation to vary
`or qualify the claim by reference to the body of the specification ... terms in the
`claim which are unclear may be defined or clarified by reference to the body of the
`specification.
`
`
`16. More recently in Fei Yu trading as Jewels 4 Pools v Beadcrete Pty Ltd [2014] FCAFC 117 the
`Full Court when considering the proposition that integers in a claim must be construed in
`isolation from other integers stated:
`
`We consider that this approach is fundamentally flawed. The use of integers is
`very much a forensic technique. It provides a structure within which the Court and
`the parties address the factual issues. However, the meaning of each claim must be
`determined by reference to the words, the way in which they are arranged, and in
`the context of the specification as a whole.
`
`
`17. At the hearing it became clear that the anticipation of the claimed invention is likely to very much
`depend on the construction of certain terms in the claims. The main issues in relation to clarity are
`as follows:
`
`“Integrally connected” and “Integrally secured”
`
`18. Each of independent claims 1, 9, 13 and 19 define that the lock is either “integrally connected” or
`“integrally secured” to the wear member.
`
`19. At the hearing both Ronneby and Caterpillar made individual submissions in relation to these
`terms but their main points can be collectively summarised as follows:
`
`
` These terms are not explained or defined in the body of the specification.
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2013 Page 8
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`

` 7
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` While the Courts have in the past considered the phrase “integral with” to mean “made of
`the same piece of material”, this is clearly not the case with respect to the lock of the
`claimed invention.
`
` Mr Hughes the expert for Ronneby could not understand the meaning of these terms.
`
` While the end of claim 1 could be said to define the content of “integrally connected” in
`that it requires that the lock and through-hole be cooperatively structured to retain the lock
`in each of the hold and release positions irrespective of the receipt of the base in the
`socket or the orientation of the wear member, claims 13 and 15 separate these
`requirements out and this reinforces that this term must have a separate and independent
`meaning, applying the principle of “presumption against redundancy”.
`
` To the extent, these terms are capable of being understood, it means the same as
`“connected” or “secured” respectively.
`
`
`
`
`
`
`
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`
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`
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`20. The applicant on the other hand submitted that when each of the claims is read as a whole and in
`the context of the specification, it is clear that an “integrally connected” or “integrally secured”
`lock is one that is secured or retained in a hold and release position, such that in practice it is not
`liable to become inadvertently displaced from the wear member or lost during typical shipping,
`handling and operating conditions. That is, the lock is secured or integral to the wear member
`such that, once built, it is part of the wear member.
`
`21. The Oxford Dictionary includes the following meanings for the term “integral”:
`
`
`1. Of or pertaining to a whole. Said of a part or parts: Belonging to or making up an integral
`whole; constituent, component; spec. necessary to the completeness or integrity of the
`whole; forming an intrinsic portion or element, as distinguished from an adjunct or
`appendage.
`
`2. Made up of component parts which together constitute a unity
`
`
`22. The authorities that I have referred to clearly state that claims should be construed in the context
`of the specification as a whole and that where the terms in the claim are unclear or ambiguous, it
`is legitimate to refer to the body of the specification to resolve these ambiguities.
`
`23. While terms such as “integral with” or “integrally formed” could be construed, depending on the
`context, as being made of the same piece of material, here the claims define the lock as being
`“integrally connected” or “integrally secured” to the wear member. In my view the use of the
`words “connected” or “secured” implies that the lock is at least initially a separate component
`which is then in some way connected or secured to the wear member to constitute a whole, the
`whole in this case being the assembly of the wear member and the lock.
`
`24. I am not convinced by the argument that these terms should be construed the same as “connected”
`or “secured” with the word “integrally” providing no further qualification. It is clear from the
`definitions that I have mentioned above, that the term “integral” brings with it the concepts of
`forming or constituting “a whole” and forming an “intrinsic portion”. Applying these definitions,
`in my view these terms clearly require that the lock remain secured to the wear member to
`constitute a whole unit once it is fitted to the wear member. Such a construction is also fully
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2013 Page 9
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`

`

` 8
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`consistent with what is described in the body of the specification. As I have earlier discussed, the
`invention clearly lies in the lock being fitted securely in the release position to the wear member
`such that it cannot fall off and get lost.
`
`25. Each of the independent claims that include one of these terms further defines that the lock
`remains secured or retained to the wear member in the release position. This in my view again
`reinforces the construction that the lock is intended to remain as an integral part of the wear
`member even in the release position.
`
`26. I do not find the argument regarding claims 13 and 15 separating these requirements persuasive.
`The introduction of the limitations of not being received in the socket or the wear member being
`placed in a different orientation only in claim 15 does not it in way affect the meaning that I have
`given to these terms .
`
`27. The meaning of these terms in the claims is clear in that it defines that the lock is connected or
`secured to the wear member to form a unitary component with the wear member. In other words,
`the wear member would normally come with the lock fitted within the through-hole.
`
`“Retained” and “Secured”
`
`28. Each of independent claims 6, 9, 13, 19 and 25 defines that the lock is secured to the wear
`member in the release position irrespective of whether the wear member is mounted to the base or
`the orientation of the wear member, while independent claim 1 defines that the lock is retained in
`the through-hole of the wear member irrespective of the receipt of the base in the socket or the
`orientation of the wear member.
`
`29. Although none of the opponents raised any issues with the construction of the terms “secured” or
`“retained”, the applicant submitted that these terms are not to be read in isolation, but rather in the
`context of the rest of the claim which requires the lock to be integrally connected or integrally
`secured to the wear member irrespective of whether the lock is in the hold and release positions
`and when read in such context, it is clear that these terms should be interpreted as more than a
`mere “connection”. They submitted that I should interpret these terms as requiring that the lock
`will not become loose or come apart from the wear member during typical shipping, handling,
`storing and installation operations.
`
`30. I am inclined to agree. The term “secure” in my view clearly imports the requirement to “fix or
`attach (something) so as not to become loose, give way, fall off, or come apart; to hold firmly in
`place”. (Oxford Dictionary). So even giving the term its plain meaning, it is clear that it defines
`more than a mere connection. Such a construction is also fully consistent with what is described
`in the specification. As I have earlier discussed, one of the aspects of the invention clearly lies in
`the lock being fitted securely in the release position to the wear member such that it cannot fall
`off and get lost and in the opposed specification this is achieved by latch formations provided in
`the locking member and the wear member. What is required by this term is some kind of positive
`retention of the lock to the wear member in the release position such that it will not become loose
`or fall off during use.
`
`31. Some of the independent claims further define that the lock should remain secure irrespective of
`the orientation of the wear member. This in my view again emphasizes the requirement that the
`lock needs to be securely held in place despite any knocks or other forces that it may be subjected
`when the wear member is placed in various orientations.
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2013 Page 10
`
`

`

` 9
`
`
`32. While the applicant has chosen to use the term “retain” rather than “secure” in claim 1, in my
`view this term imports a similar limitation as the term “secure” in the context of the claimed
`invention. Similarly in claim 25, while the claim only defines the “lock remaining secured to the
`wear member” without any specific reference to either the hold or release positions, when read in
`context, in my view it is clear that this refers to the lock remaining secured in both the hold and
`release positions.
`
`Pivotal movement
`
`33. The applicant submitted that the term “pivotal movement” as it appears in claims 2 and 5 is to be
`distinguished from the broader concept of “rotation”.
`
`34. The Oxford Dictionary defines pivot as “to turn on or as if on a pivot” and rotate as “to turn about
`a centre or axis, usually a centre or axis inside the thing that is turning; to perform one or more
`revolutions”.
`
`35. In the opposed application the lock turns on a pivot constituted by the bulb and in that respect it
`clearly falls within the definition of pivotal movement. It does not turn or perform one or more
`revolutions about an internal axis and hence I would not consider its movement as rotation.
`
`Other clarity issues
`
`36. The opponents raised a few other clarity issues in relation to terms such as “a threaded
`adjustment”, “moveable without a hammer”, “moveably secured”, “base is a one piece member
`free of movable components” and “turns about an axis less than a full turn”, but in my view the
`skilled addressee would easily understand what each of these terms mean in the context of the
`invention. These terms are clear.
`
`NOVELTY
`
`37. It is well established that the general test for lack of novelty is the reverse infringement test. The
`classic formulation of this test is that given by Aickin J in Meyers Taylor Pty Ltd v Vicarr
`Industries Ltd [1977] HCA 19 at [20], [1977] HCA 19; 137 CLR 228 at 235:
`
`
`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.
`
`This test is satisfied if the alleged anticipation discloses all the essential features of the invention
`as claimed (see Nicaro Holdings Pty Ltd v Martin Engineering Co [1990] FCA 40; (1990) 91
`ALR 513 at 517). In order to meet this requirement, the prior art must "contain clear and
`unmistakeable directions to do what the patentee claims to have invented" (The General Tire &
`Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 486).
`
`38. In AstraZeneca AB v Apotex Pty Ltd [2014] FCAFC 99, the full Federal Court held:
`
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2013 Page 11
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`

` 10
`
`Sufficiency of disclosure is a cardinal anterior requirement in the analysis of
`whether a prior art document anticipates a claimed invention. It is only after the
`stage of assessing the sufficiency of disclosure – which involves a determination
`about whether a prior document has “planted the flag” as opposed to having
`provided merely “a signpost, however clear, upon the road” or, perhaps, something
`less – that the notion of reverse infringement comes into play as the final and
`resolving step of the required analysis. It is not the first step of the required
`analysis; nor is it the only step.
`
`ADAMIC (AU 766917 or US 2002/0000053 or US 6959506)
`
`39. Adamic is relied on by all three opponents and is directed to a locking mechanism for securing a
`wear member on a base. It discloses a wear member 1 having a socket I to receive a base fixed to
`the excavating equipment, a through-hole 5 in communication with the socket. A pin retainer is
`inserted into a through-hole and held non-rotatably therein. In the embodiment shown in figures 8
`and 9, the retainer has a band portion 10 that snaps into a groove in the through-hole 5 to secure
`the retainer within the through-hole. The pin retainer is threaded internally. A threaded lock pin
`13 is placed in the pin retainer by screwing it into the retainer and may be tightened to extend
`through the through-hole 5 and into a recess 7 in the base 3 (support structure) to thereby secure
`the wear member to the base. It also states that the lock pin may be “placed into the retainer prior
`to installation of the wear member on the support structure as long as the inner end of the pin is
`flush with the interior surface of the wear member”. To unlock the wear member it states that the
`pin may be unscrewed “until its inner edge is flush with the inside surface of the wear member or
`it may be fully removed”.
`
`40. The opponents submitted that the teaching in Adamic of placing the lock pin into the retainer
`prior to installation such that the inner end is flush with the interior surface constitutes the release
`position and in this position the locking pin is integrally connected or integrally secured to the
`wear member.
`
`41. The applicant argued that although Adamic states that the locking pin need only be unscrewed to
`bring it flush with the interior surface to remove the wear member from the base, it also clearly
`contemplates fully removing the locking pin. There is also no disclosure of storing or transporting
`the wear member with the locking pin held in the release position and therefore it clearly does not
`disclose the feature of the lock being integrally connected or integrally secured to the wear
`member.
`
`42. While there is some teaching in Adamic that the locking pin could be placed into the retainer
`prior to installation and could be unscrewed to a release position without fully removing the pin,
`in my view that is not the same as “integrally connected” or “integrally secured” in the manner
`that I have construed these terms. There is no disclosure of the wear member being always fitted
`with the locking pin to form a unitary component. It is clearly possible and contemplated in
`Adamic to remove the pin fully from the wear member. In fact that appears to be the general
`teaching of Adamic with the teaching of partially screwing in the pin into the wear member just
`prior to installation being a possible alternative. There is no teaching in Adamic about fitting the
`wear member being always supplied with the locking pin securely fitted in the wear member.
`
`43. I also note that there is no single distinct release position for the locking pin. While I accept that
`the position in which the inner end of the locking pin is flush with the interior surface can be
`considered to be the release position, I note that this is but one among many positions in which
`
`Caterpillar v. ESCO IPR2015-00409
`ESCO Exhibit 2013 Page 12
`
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` 11
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`the wear member can be removed from the base. The release