MinterEllison acts for Allied Pumps, an independently operated business in Western Australia. Along with several other hydraulic services products, Allied Pumps supplies generators to the mining sector.
Overview of the proceeding
In 2016, UON filed a patent for a generator. The purported invention was that, unlike a typical 'fixed-speed' generator, the generator could change speed to provide a variable electrical output for a connected electrical load. This is referred to as a 'variable-speed generator', or 'VSG'. UON markets its VSG as a Generator Motor Controller (GMC) Dewatering Trailer.
Jumping ahead (spoiler alert), there were two major issues for UON. The first was that VSGs had already been invented. The second was that UON exploited the claimed invention before it filed a patent.
UON directed a patent towards a VSG used specifically for 'dewatering submersible pumps', where the VSG was also controlled using a water level sensor. This was likely an attempt to distinguish the claimed VSG from VSGs already in use to control electric submersible pumps in the oil and gas production industry.
Having already successfully opposed grant of UON's standard patent application, in 2021 Allied Pumps filed for revocation of UON's innovation patent (the 197 Patent). UON cross claimed for infringement.
The decision
Fast forward to late-2023. After a hard fought dispute between the parties that involved 15 expert witness affidavits, 13 lay witness affidavits, more than two weeks in Court, and several rounds of discovery documents, Justice Downes found in favour of Allied Pumps.
Justice Downes found that UON's patent was invalid for lack of novelty in light of UON's prior use of the patented invention before it filed a patent. This decision turned on whether two VSGs that UON hired out to Roy Hill were configured to perform water level control, and were connected to a water level sensor. UON denied that the VSG was configured in this manner or was connected to a water level sensor.
Justice Downes also found that UON's patent was invalid for lack of novelty in light of several documentary disclosures. This decision turned on the construction of two phrases; "dewatering submersible pump" and "sensor arranged to measure borehole water level". These issues will be discussed in a separate article.
UON's cross-claim for infringement was also dismissed. UON did not appeal the decision and the patent has now been revoked.
The claimed invention
The dispute centred around a patent for a power and control system used to vary underground water levels to assist in mining operations. The claimed system included a 'dewatering submersible pump' disposed in a borehole, and a VSG that controlled the speed of the pump in response to changes in water level.
Prior use at Roy Hill Mine
Before filing the patent, UON hired two VSGs to Roy Hill (the Roy Hill VSGs). In this proceeding, UON denied that the Roy Hill VSGs were configured to perform water level control. It also denied that the Roy Hill VSGs were connected to a water level sensor.
Roy Hill used the VSGs for its own trial. Roy Hill wanted to determine the viability of using VSGs to power submersible bore pumps at Roy Hill mine.
Allied Pumps' case
Allied Pumps alleged that several acts in relation to the Roy Hill VSGs constituted a prior use of the claimed invention. This included UON's commissioning of Roy Hill VSGs, training provided by UON to Roy Hill staff, and a test performed by Roy Hill employee Mr Richard Pilson.
The claims of the 197 Patent are limited to a VSG that is able to perform water level control. Therefore, for Allied Pumps to invalidate the 197 Patent, it needed to prove that the prior use by UON was of a VSG that was configured to perform water level control.
UON's defence
UON denied that the Roy Hill VSGs were configured for water level control. It also denied that the Roy Hill VSGs were connected to a water level sensor. As a (slightly awkward) fallback position, UON submitted that if the VSGs were configured for water level control, the use of the invention was for the purposes of a reasonable trial, and therefore the disclosure was covered by a novelty grace period (i.e., it would not invalidate the 197 Patent).
Justice Downes ultimately found that there was a level sensor connected to the Roy Hill VSGs.
Was the prior use by UON for trial purposes?
The Patents Act provides several novelty grace periods. If a grace period applies, the Court can disregard an act that may otherwise invalidate a patent for novelty. One such grace period is for the reasonable trial of an invention in public. UON contended, in the alternative that, if the Roy Hill VSGs were found to have been connected to a level sensor and configured for level control, then this must be disregarded for the purpose of assessing novelty.
Justice Downes found that the use of the Roy Hill VSGs was not for the purposes of a reasonable trial. Downes J found that the prior use of the VSGs by UON at Roy Hill Mine invalidated the 197 Patent.
Cross-claim for infringement
UON claimed that Allied Pumps infringed the 197 Patent, alleging that Allied Pumps had a reason to believe that the VSGs it supplied to BHP would be put to an infringing use. UON also claimed that Allied Pumps instructed BHP to put the VSGs it supplied to BHP to an infringing use.
Ultimately, UON failed to establish infringement by Allied Pumps. Justice Downes dismissed UON's cross-claim for infringement.
The MinterEllison Intellectual Property team secured an important win for Allied Pumps. Of particular note was that Allied Pumps established that UON had disclosed the claimed invention in public before it filed a patent. This was remarkable in a situation where UON, the patentee, denied having done so and the evidentiary burden was on Allied Pumps.
MinterEllison was expertly supported throughout this proceeding by Tony Bannon SC, Tom Cordiner KC, Megan Evetts, Amy Surkis, Clare Cunliffe and Alistair Mann.
Please reach out at any time to discover more about our work in strategic patent litigation.
