ABB Engineering Construction Pty Limited v a. Goninan & Co Ltd
[1997] APO 65
•11 December 1997
official notice
decision of a delegate of the commissioner of patents
Application : No. 657639 in the name of ABB Engineering Construction Pty Limited
Title: Cam mechanism for discharge of bulk material from vehicles
Action: Application for extension of time to serve evidence in support of an opposition to the grant of a patent by A.Goninan & Co Ltd
Decision: Issued .
Abstract
The principles that govern an extension of time to serve evidence in support are:
a)the power is discretionary;
b)an explanation of the delay is a relevant consideration, but not mandatory;
c)the public interest in determining a serious opposition on its merits is a relevant consideration;
d)the interests of the opponent are a relevant consideration; and
e)the interests of other parties are a relevant consideration.
[page 2-3]
In deciding the significance of evidence
. it is only necessary that the evidence is likely to be important, and
. if a part of the evidence is significant, then the evidence as a whole is significant.[page 3]
The opponent did not provide a satisfactory explanation of the delay. [page 4-5]
The evidence relates (at least in part) to the question of what was common general knowledge. This is a question that is likely to be important with regard to the ground of inventive step. Consequently, the evidence is likely to be important, and the public interest favours extending the time for serving the evidence. [page 6-8]
On balance, it is appropriate to extend the time for serving evidence. [page 9]
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 657639 by ABB Engineering Construction Pty Limited, and an application for extension of time to serve evidence in support of an opposition to the grant of a patent by A.Goninan & Co Ltd.
background
Patent application number 657639 was filed on 14 September 1993 by EPT Pty Ltd, who subsequently changed its name to ABB EPT Construction Pty Limited, and more recently to ABB Engineering Construction Pty Limited (hereafter referred to as “ABB”). The application was advertised accepted on 16 March 1995. A notice of opposition to the grant of a patent was filed by A.Goninan & Co Ltd (hereafter referred to as “Goninan”) on 16 June 1995, and a statement of grounds and particulars was served on 18 September 1995.
Evidence in support was due to be completed by 18 December 1995. Goninan filed a first application for an extension of time to serve evidence in support on 11 December 1995. ABB objected to the extension and the matter was heard by a Delegate of the Commissioner on 20 February 1996. The delegate issued a decision on 21 March 1996 (the “first decision”) granting a limited extension to 15 March 1996 to validate evidence then served in the form of a statutory declaration by Mr Smith.
On 14 March 1996 Goninan filed a second application for a further extension of time to 15 June 1996 to serve evidence in support. ABB objected to the second extension and the matter was heard on 29 April 1996. The delegate issued a decision dated 24 May 1996 (the “second decision”) refusing the extension. Goninan sought a review of this decision by the Federal Court under the Administrative Decisions (Judicial Review) Act. On 23 May 1997 Sackville J ordered that the decision of the delegate be set aside, and the matter remitted for determination according to law. The matter was reheard in Canberra on 24 November 1997. ABB was represented by Mr D.Catterns QC, assisted by Mr G.Halford, patent attorney of Halford & Co, Sydney. Goninan was represented by Mr P.Kerr, assisted by Mr A.Chernov of Allen Allen & Hemsley, Sydney.
The evidence in question (in the form of declarations by Messrs Stark, Jeffcoat and Williams) was served on 24 April 1996.
decision
The law on extensions of time
The time for serving evidence in support of an opposition is 3 months from the date of serving the statement of grounds and particulars (regulation 5.8). This time can be extended under regulation 5.10(2):
(2) The Commissioner may:
(a) on the application of a party in the approved form; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
extend the time within which the party may take a step prescribed in this Chapter, not being a step that is taken under regulation 5.3 or paragraph 5.4(1)(a).
This provision must be read in conjunction with regulation 5.10(5):
(5) The Commissioner must not give a direction under subregulation (1) or grant an application under subregulation (2) or (4) unless the Commissioner:
(a)if he or she proposes to grant an application by a party - is reasonably satisfied that the other party has been notified of the application; and
(b)if he or she proposes to act on his own motion - ensures that the parties are notified of the proposed action; and
(c) in either case:
(i)gives the parties a reasonable opportunity to make representations concerning the application or proposed action; and
(ii)is reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances.
It is clear that, as a prerequisite to any decision, the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. An extension can then only be granted if the Commissioner is reasonably satisfied that it is appropriate.
The operation of the extension of time provisions was considered by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. From these decisions it is clear that the principles that govern extensions of time to serve evidence in support are:
a)The power is discretionary: Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at 247-8, Goninan at 220)
b)Explanation of delay: The reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at 247)
c)The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at 222)
· In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at 225-6)
· The Commissioner must also consider whether an extension should be given to permit the filing of any evidence which is immediately available. (Goninan at 225) Logically, this is only relevant if the Commissioner determines that the extension sought is not justified.
· The public interest is not protected merely because some evidence in support has already been served. (Goninan at 225)
d)The interests of the opponent: The interests of the opponent are a relevant consideration. (Ferocem at 247)
e)The interests of other parties: It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at 247, Goninan at 222)
At the hearing there was some discussion as to how I should deal with the significance of the evidence. I am guided by what Sackville J said at pages 225-6:
I do not mean to suggest that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits. But unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings being determined on their merits.”
[emphasis added]
Clearly the question for me is whether the evidence is “likely to be important”. Mr Catterns suggested that I could use an approach like that in Porter v Arbortech Investments Pty Ltd (1994) 31 IPR 169 at 174: would the evidence clearly anticipate the claimed invention. Porter involved special facts: a request to amend a statement of particulars to include a new citation was considered at the substantive hearing of the opposition. This situation is not directly analogous to the present, so does not really assist me. I think that the clear meaning of “likely to be important” is that it is not enough for me to be satisfied that the evidence “could be important”, but it is not necessary that the evidence “clearly would be important”.
Another issue that needs to be considered is how to deal with the possibility that some parts of the evidence may be significant, while others are not significant. Since it is not open to me extend the time so as to allow only parts of the evidence to be served, there is an “all or nothing” decision that needs to be made. Mr Catterns suggested that I should consider how much of the evidence is significant, and come to a conclusion as to the balance between significant and insignificant parts of the evidence. This would be an extremely difficult approach to apply, and I do not think it would be correct. It seems to me that if a part of the evidence is likely to be important in the opposition proceedings, then that evidence does not become less significant due to the presence of other insignificant evidence. The evidence (considered as a whole) is likely to be of significance if some of the evidence is likely to be of significance.
Application of the facts to the law
The parties in this action have been informed of the application, and have made submissions on the matter. Consequently, the essential prerequisites have been satisfied.
Explanations of the delays
The extension requested is for 3 months, and represents a total extension of 6 months. In considering the explanation of the delay, it is legitimate to have regard to the reasons for the total extension (Goninan at 223).
The reasons given for the first extension (dated 11 December 1995) were:
As is indicated in the Statement of Grounds, reliance is being placed upon the expert evidence in relation to general knowledge in Australia of rail vehicles and specifically the bulk material discharge mechanisms used in rail vehicles in Australia.
At least two Australian experts have been identified by our advisers as being potential witnesses.
Our patent attorneys, Watermark are under our instructions, coordinating preparation of evidence in support with our solicitors Allen Allen & Hemsley in the interviewing of, and collection of evidence from expert witnesses.
Further time is required to conduct the necessary interviews and prepare formal evidence from these interviews, and this coupled with the prospect of the Christmas period and the legal vacation intervening during January 1996, requires further time by extending the deadline to 18 March 1996.
The reasons given for the second extension (dated 21 March 1996) were:
Extensive discussions with four expert witnesses have taken place over the past six months and one declaration will be served on applicant’s attorneys on 15 March 1996. There will be at least two, possibly three declarations served to complete the evidence in support in this matter. One of the Declarants who resides in Brisbane has been frequently unavailable for interview and this has inevitably lead to delays. The other Declarants are in Melbourne and Adelaide, and this has caused further delays in arranging interviews, but which have now been conducted.
A study of the statement of grounds and the declaration to be served will reveal that a serious opposition is being dealt with.
Further time is required to finalise and formalise the evidence that has been collected from expert witnesses.
a declaration by Ms O’Connell in support of the second extension (referred to in the Federal Court decision) states:
6. Because the expert witnesses are located, respectively, in Brisbane, Melbourne and Adelaide, the task of conducting face to face interviews has been very difficult to organise. We have, however, conducted interviews with each of them.
7. The evidence provided by each of the four expert witnesses is complex and has involved extensive research and preparation by both the witnesses and the advisers to Goninan. The Declarations made by each of the witnesses have been extensively redrafted. This has involved corresponding with each of the witnesses and conducting numerous telephone conferences.
8. Each of the expert witnesses has had limited availability as a result of other work commitments.
No new evidence in relation to the reasons for the delay were advanced at the hearing. The explanation of the delay seems to me to be inadequate. Difficulties in arranging face to face interviews with experts and obtaining evidence from them are a fact of life in most opposition proceedings. No evidence of the extent of these difficulties or the efforts actually undertaken has been provided.
Subsequent to the hearing I received a letter from Mr Kerr stating that he had recently become aware of a change in circumstances since the first hearing of this extension. This change related to possible irregularities in the way that the Patent Office had dealt with an earlier request to amend the specification under section 104. The request to amend was filed on 1 June 1995 and granted on 13 June 1996. A letter advising Goninan that the request had been granted was sent to the Melbourne office of Goninan’s patent attorneys rather than to their Sydney office. I do not believe that these issues have a relevance to the present extension of time, but I am grateful to Mr Kerr for clarifying his statements at the hearing that there had been no change since the first hearing.
I conclude that the explanations given do not provide a satisfactory explanation of the delay. I will turn now to the other factors that I must consider.
The public interest
The public interest in determining a serious opposition on its merits requires me to form a view as to the nature and significance of the evidence that it is sought to adduce. Mr Kerr stated that the evidence in dispute goes to the issues of novelty and inventive step, but he restricted his discussion to inventive step as this is the principle issue addressed. Mr Catterns did not disagree that the evidence relates to inventive step. It is apparent from the evidence as quoted below that, prima facie, it addresses the ground of inventive step. Inventive step is one of the particularised grounds of the opposition.
There was disagreement between the parties as to the significance of the evidence to the ground of inventive step. Mr Kerr stated that the evidence went to establishing matters of common general knowledge. Mr Kerr asserted that although the three declarations are repetitive in some regards, this is because the evidence of one declarant is usually not sufficient to establish that a matter is common general knowledge. In this regard, reference was made to the following cases:
Graham Hart (1971) Pty Ltd v S.W.Hart & Company Pty Ltd [1976-1978] 141 CLR 307 at 329
Minnesota Mining and Manufacturing Co v Beiersdorf (Australia) Ltd [1979-1980] 144 CLR 253 at 292
Beloit Technologies Inc v Valmet Paper Machinery Inc [1997] RPC 489 at 494
I agree that the law establishes that it may be necessary to provide evidence from multiple declarants to establish whether matters are common general knowledge.
Mr Catterns stated that the evidence of the declarants was mostly directed to the ultimate question in inventive step, which is whether the claimed solution would have been obvious, and only slightly addressed the issue of the common general knowledge. The evidence on the ultimate question was characterised as merely “compurgation”, or confirmatory of what was already stated in other declarations.
It is necessary to consider what is said in the declarations in question.
The Stark declaration
The Stark declaration states:
12.I have been asked by the advisers to A Goninan & Co Limited (“Goninan”) to consider how, as at the Priority Date, I would have designed a cam to prevent it being damaged when hit by a locomotive or other object in an unintended manner. I have been told that the cam is question would be used in an automatic bulk materials unloading system, specifically in the context of unloading of a railway wagon. I am asked to assume that the cam has the following features ... [statements of two features then follow]
I am informed that all of these features were, at the Priority Date of the Application, known and used in the unloading of railway wagons both in Australia and overseas.
13.My immediate response to this question is now, and would have been at the Priority Date, ... [Mr Stark’s views are then given]
It seems clear that the Stark declaration does not provide evidence on the common general knowledge, but rather goes to the question of whether the solution is obvious. It is well recognised that this is a “jury question”, which is determined by the hearing officer and not by experts (although the evidence of experts may be helpful). Consequently, I do not consider that the Stark declaration is likely to be important to the ground of inventive step.
The Jeffcoat declaration
The Jeffcoat declaration states:
2.I have been asked by the advisers to Goninan to describe the automatic bulk materials discharge systems which I was aware of as at the Priority Date of the Application for Grant of Letters Patent No 657639 (the “Patent”) in the name of ABB-EPT Construction Pty Limited (“ABB”).
4.The automatic discharge of bulk materials was discussed on many occasions at Queensland Rail and I was aware of a number of such systems. For example I was aware of the use of contact wires on the side of wagons which contacted a voltage source on the side of the track which caused the hopper doors on the wagons to open. I was also aware of the use of hopper doors which were operated by air cylinders which caused the doors to open upon activation by means of a lever.
[The paragraphs 5 to 13 go on to further describe Mr Jeffcoat’s knowledge and experience in relation to automatic discharge systems]
It is clear that the Jeffcoat declaration relates (at least in part) to the question of what is common general knowledge in the area.
The Williams declaration
The Williams declaration states:
2.I have been asked by the advisers to A Goninan & Co Limited (“Goninan”) to describe the automatic bulk materials discharge systems which I was aware of as at the Priority Date of the Application for Grant of Letters Patent No 657639 in the name of ABB-EPT Construction Pty Limited (“ABB”).
[Mr Williams goes on to describe his knowledge and experience in relation to discharge systems. I will quote two paragraphs which are exemplary of the tenor of the whole.]
6.My design experience and knowledge at that time related principally to the PTC’s fleet and the information which was generally available in literature and supplier’s brochures. At about that time, we were interested in the woodchip business and conducted a fairly extensive feasibility study into the design of a specialised wagon for this traffic. The proposed method of discharge was via bottom doors which were to be pneumatically operated in a similar fashion to the Westrail Woodchip Fleet.
8.The non-manual methods of unloading wagons which I was aware of at the Priority Date were:
(a)pneumatic discharge with aeration using a shore based air supply;
(b)top discharge using tippler wagons such as for Leigh Creek in South Australia and the original Newport Power Station in Victoria;
(c)grabs and modified backhoe unloading of “open wagons”;
(d)vacuum-pneumatic for plastic pellet removal.
It is clear that the Williams declaration relates (at least in part) to the question of what is common general knowledge in the area.
It seems to me that some of the evidence of Jeffcoat and Williams goes to the question of what information was common general knowledge. This question is likely to be important with regard to the ground of inventive step. As a consequence I conclude that the evidence is likely to be of importance to the ground of inventive step, and consequently the evidence as a whole is likely to be important. However, I need to briefly consider two matters that Mr Catterns raised in relation to these declarations. Firstly, the Jeffcoat declaration refers to things that he observed at Taconite Harbour. Mr Catterns questioned whether this was being put forward as common general knowledge in Australia. It appears that Mr Jeffcoat is explaining how he gained some of his knowledge, which does not remove his later evidence from the category of relating to common general knowledge. Secondly, the Williams declaration refers to a document called “Progressive Railroading 1990-1991 Car and Locomotive Yearbook” [paragraph 10]. Mr Catterns stated that this document appeared to be referred to for the purpose of a citation in its own right, but had not been particularised in the statement of particulars. It might be that this document will be argued as a citation at the substantive hearing, in which case the hearing officer will have to consider the fact that it is not particularised. Alternatively, if the document is argued merely as evidence of the common general knowledge, then it is not necessary for the document to be particularised (see Borden Inc v Elkem A/S (1992) AIPC 90-893). In either case, any problems that flow from this evidence are matters that are normally within the opposition process. Even if some parts of the evidence are later found to be either unimportant or irrelevant, that does not change the fact that some of the evidence is likely to be important.
Mr Kerr stated that there is no further evidence in support that the opponent wishes to rely upon. I am satisfied that the evidence is likely to be of significance. In reaching this conclusion I am in no way prejudging how this evidence will be viewed at the hearing of the substantive opposition.
The public interest thus favours extending the time for serving evidence.
The interests of the opponent
Mr Kerr stated that if this evidence were not included in the opposition then the opponent may be precluded from effectively arguing its case on the ground of inventive step. The interests of the opponent clearly favour extending the time.
The interests of other parties
Mr Catterns stated that because the evidence in support was all available now, there would be no further detriment to the applicant as a result of delay. However, Mr Catterns suggested that there would be detriment to the applicant in the form of a new territory of evidence that it would have to answer. This argument was based on an analogy with Diamond Scientific Co v CSL Ltd (1992) AIPC 90-927 (which referred to detriment as a consequence of an amendment to the statement of particulars). Any such detriment involved is minor, and a normal part of the opposition process.
The effect of the delay on the efficient and orderly administration of the Patent Office is regrettable, but represents a comparatively minor inconvenience in this case.
Balance of considerations
I have found that Goninan have not provided a satisfactory explanation of the delay. This is regrettable, but does not decide the matter. I have found that the public interest and Goninan’s interest favour having the evidence available, and that there is no significant disadvantage to ABB. All of the evidence in question has been finalised and served upon ABB, and copies have been filed at the Patent Office. On balance, it is appropriate to extend the time so as to validate the service of the evidence in question.
Conclusion
The time for serving evidence in support is extended until 15 June 1996. Consequently, the evidence in the form of declarations by Stark, Jeffcoat and Williams form part of the opposition.
The time for serving evidence in answer shall run from the date of this decision.
Costs
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations (see American National Can Co. v W.R. Grace & Co.-Conn (1994) AIPC 91-063; 29 IPR 292).
Goninan have succeeded in their request, despite the fact that they have not made out a proper case for an extension of time. Instead, the public interest in determining the opposition on its merits is a significant consideration in my decision. Consequently, it is not appropriate to award costs against ABB. I believe it is more appropriate to award costs against Goninan.
I award costs in accordance with Schedule 8 against A.Goninan & Co Ltd.
Dr S.D.Barker
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Halford & Co., Sydney
Patent attorneys for the opponent : Watermark, Sydney
2
1
0