10 March 2009

Not using (but keeping) Pioneer

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Leading the expert

PAC Mining has successfully appealed the finding that it infringed Esco’s patents for wear assemblies protecting excavating buckets, but failed in its appeal against the finding that the patent was valid.

The point that mainly struck my eye was that PAC Mining’s independent expert’s attack on the patent as obvious failed:

The primary Judge took the view that the value of Prof Wightley’s evidence was compromised by reason of the circumstance that, from the outset, he had been exposed to the shortcoming to which Toplok was perceived to be subject, and to the terms of Jones I, as well as to those of the patents in suit. In other words, Prof Wightley, from the outset, knew the problem, and he knew the solution. The authorities make it clear that the caution with which his Honour approached the evidence of Prof Wightley was both justified and desirable: Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19; (1977) 137 CLR 228, 242; Alphapharm 212 CLR at 423-424 [21]; Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 ALR 202, 215 [46]. At this level of analysis, nothing put on behalf of the appellants on appeal has cast any doubt upon the approach which his Honour took. Within the confines of that approach, the matter of obviousness was essentially one of fact. We are not persuaded that his Honour erred in declining to be satisfied that Prof Wightley’s evidence, of itself, warranted the conclusion that the adjustment assembly introduced by Jones II and Jones III was obvious.

The Full Court went on to find no error in the trial judge’s assessment of the inventor’s evidence.

PAC Mining Pty Ltd v Esco Corporation [2009] FCAFC 18 (Sundberg, Jessup and Middleton JJ)

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