Acres Gaming, Inc v Aristocrat Technologies Australia Pty Ltd
[2005] APO 6
•21 February 2005
OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 750775 in the name of Acres Gaming, Inc.
Title: Method for Crediting a Player of an Electronic Gaming Device
Action: Request for an extension of time to serve evidence in answer to an opposition by Aristocrat Technologies Australia Pty Ltd.
Decision: Issued 21 February 2005
Abstract
The extension was allowed in spite of a lack of an adequate explanation by the applicant for the delays in the evidence in answer period before the third extension.
Since the third extension, the applicant had faced difficulties with the availability of a first expert. A second alternative expert was engaged and significant progress was made.
Given the nature of the evidence that is intended to be served, it was considered to be in the public interest to allow the extension.
Although the extension was allowed, Acres was found to be less than diligent in completing its evidence in answer. Consequently, no award of costs was made.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 750775 by Acres Gaming, Inc., and a request for an extension of time to serve evidence in answer to an opposition by Aristocrat Technologies Australia Pty Ltd.
BACKGROUND
History
Patent application 750775 in the name of Acres Gaming, Inc. (hereafter referred to as Acres) was advertised accepted on 25 July 2002. A notice of opposition was filed by Aristocrat Technologies Australia Pty Ltd (hereafter referred to as Aristocrat) on 24 December 2002. Evidence in support was completed by Aristocrat after three unopposed extensions on 21 November 2003.
Evidence in answer was initially due on 21 February 2004. The time for serving evidence in answer has already been extended to 21 November 2004 following three extension of time applications. Aristocrat has now objected to the fourth extension of time for service of evidence in answer to 21 February 2005.
No evidence in answer has been served by the Applicant as yet.
The matter was heard in Canberra on 3 February 2005. Mr. Boris Golja appeared by telephone on behalf of Acres and filed written submissions prior to the hearing. Mr John Dower, patent attorney of Freehills, Sydney, represented Aristocrat and also provided written submissions at the hearing.
The previous extensions
The first three extension of time applications were brief and scant on detail as follows:
The first extension application stated that “a review and assessment of the evidence in support has commenced but not yet completed”.
The second extension application stated that “the review and assessment of the prior art and statutory declarations forming the opponent’s evidence in support are continuing”.
The third extension application stated that “The review and assessment of the prior art and statutory declarations of the opponent’s evidence in support has progressed and a strategy to address the evidence in support in the applicant’s evidence in answer is being undertaken. This will require the applicant’s evidence to be reduced to declaration form for execution by one or more expert witnesses.”
The present extension
The reasons for the current (fourth) extension are more detailed and seem to relate to difficulties in allocating time to provide the evidence by the expert witness.
The application for extension of time gives the reason for the extension as:
“The review and assessment of the opponent’s evidence in support and the strategy to address it have identified information that is required from an expert witness to address the opponent’s evidence. In addition to assertions made in the opponent’s evidence in support regarding the prior art documents that have been served with the evidence, the opponent’s declarations contain assertions regarding alleged prior use in Australia. The alleged prior use dates back to the mid 1990’s and these assertions will also need to be addressed by an expert witness in the evidence in answer.
The expert witness, who has been retained to provide evidence in relation to this opposition, has been addressing other work demands and so it has not been possible for him to address matters required in relation to the evidence on this opposition. This has arisen from a combination of several factors, including the expert’s normal occupational duties and the fact that the expert has been retained and actively involved in the current extension period, the expert has indicated his unavailability for evidence preparation for periods in the past six weeks, including as a result of work related absence abroad. In that regard, apart from normal occupational duties here in Australia, the expert is, from time to time, required abroad and such absences can be at short notice. These events have significantly hampered the ability to use the expert’s services in this matter. The expert has been canvassed for upcoming availability and has indicated that he will not be available for a period of time later into the new year.
Whilst this extension has been requested to enable the expert to address the matters required and provide the necessary information so that it can be incorporated into declaration form, it has been noted that the expert may be periodically called abroad. Whilst no indication of such absences of the expert being currently scheduled has been given by the expert at this stage, the applicant has nevertheless approached another potential expert and sought to retain that additional expert witness who, as a precaution, may be used as an alternative expert in case the current expert becomes unavailable. The applicant has previously sought to retain other expert witnesses, but was unable to locate someone suitable. The applicant is thus taking steps to ensure that its evidence is progressed to completion as soon as possible.
As the evidence in answer is the only opportunity, in the normal course of events of the patent opposition procedure, for an applicant to defend its accepted application, the applicant should be given opportunity to present its evidence to support its accepted application by way of evidence in answer.
Accordingly, a three month extension of time to serve the evidence in answer (from 21 November 2004 to 21 February 2005) is being requested so as to enable time to obtain the information from the expert so that it can be incorporated into declaration form for the evidence in answer”.
Aristocrat objected to this extension, pointing out that:
The applicant had not set out any substantive reasons for the delays;
No progress seems to have been achieved during the first three extensions;
There was no indication of whether the alternative expert had actually been retained during the current extension; and
Opposition proceedings were being delayed by relying on an expert whose availability the applicant knows to be in doubt.
SUBMISSIONS BY THE PARTIES
At the hearing, Aristocrat further submitted / argued that:
The applicant’s review of evidence in support and strategy took nine months which is unreasonably long given that most of the documents in the statement of grounds and particulars were known to the applicant as they were included in the information disclosure statement provided by the applicant during prosecution of the application;
No attempt was made by the applicant to identify or contact witnesses and no progress was reported during the first three extensions; and that the applicant should have started gathering evidence and engaging witnesses immediately after the statement of grounds and particulars was filed where the prior use was identified;
It appears that a witness was retained only during the third extension;
It is untenable to rely on a witness during this late stage who applicant knows to be unavailable;
Applicant is only taking steps to locate an alternative witness at this late stage;
No firm undertaking by applicant as to when the evidence in answer will be filed and it appears that in all likelihood it will not be completed by 21 February 2005;
Prima facie review of opponent’s evidence in support indicates opponent has strong case and it is in the public interest that invalid patents do not remain on register for an indefinite period; and
Given applicant’s tardiness, it is not unreasonable to assume that applicant was not interested in mounting a serious defence.
10. Acres submissions at the hearing were focused on explaining the difficulties encountered in gathering the evidence in answer. Acres submitted that:
The applicant has encountered difficulty in identifying witnesses to provide evidence owing to the small pool of experts and opponent’s high profile in Australia; key personnel that were with the applicant corporation at the time of the alleged prior use are no longer working for the applicant; and a previously used expert does not have appropriate background;
The applicant was unable to assess the substance of prior art use allegations about two years ago because details of particular acts were not provided in the statement of grounds and particulars and a mere reference to DACOM 6000 Crown Casino project documentation was insufficient given that documentation was bulky and this was also made difficult by the fact that key personnel were no longer working for the applicant;
The first retained expert has been too busy with his normal work including another opposition for the applicant and has been required to travel abroad and may need to in future at short notice; hence the applicant will be relying on this witness only as backup to provide supporting declaration(s) to be filed in further evidence as necessary; and
Another expert who had been sought to be retained when the current extension was applied for has now been retained and a substantial part of the evidence in answer should be filed by 21 February 2005.
RELEVANT LAW
11. 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):
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, and extension of time or the serving of evidence is appropriate in all the circumstances.
12. Consequently, it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. In the present case the opponent has been notified, and both parties have been given the opportunity to make representations.
13. An extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. The general principles that flow from these decisions 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 AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
b)Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247). 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 AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
c)The public interest: The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 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 AIPC 39,438; IPR 225-6)
* The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
* The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d)The interests of the party seeking the exercise of discretion: The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247)
DECISION
Explanation of the delay
14. Acres has been allowed three extensions so far during evidence in answer in this opposition and this is the fourth extension application.
15. The first three applications effectively stated that more time was required to complete the review and assessment of the opponent’s evidence in support and to determine strategy. No substantive reasons were provided by Acres in support of the first three extension applications.
16. At the hearing, Acres provided the following reasons for the delays:
key personnel had left the applicant corporation since the early 1990’s when the prior use is alleged to have occurred; and
the identification of experts for the applicant’s evidence in answer had proved difficult because of (a) the opponent’s dominance in Australia; (b) the small pool of experts in Australia; and (c) the pool having reduced even further because of other oppositions between the parties.
17. While these may have been real issues at some stage during the evidence in answer, I note that they were not advanced by the applicant during the first three extensions.
18. I further note that at no stage has Acres provided an indication of any efforts that were made to contact key DACOM 6000 project personnel that had left the applicant corporation or advanced any reasons for not having done so. At the hearing, Mr Golja was also unable to unequivocally state at what stage the applicant had attempted to first contact and engage witnesses.
19. I can only conclude on the basis of this evidence that in all likelihood, the applicant did not attempt to engage expert witnesses or contact previous employees before the third extension.
20. In any case, I do not consider that the problems identified by the applicant amount to unusual circumstances justifying an extension of time under Regulation 5.10. In fact, the applicant’s familiarity and prior involvement with most of the evidence in support should have assisted the applicant with addressing that evidence.
21. The applicant’s conduct before the third extension does not appear to be consistent with that of an applicant diligently prosecuting their case during an opposition.
22. Since the commencement of the third extension, the applicant has faced a number of difficulties relating to the availability of the first witness. Acres provided some detail in the fourth extension application and submitted details of further progress achieved at the hearing. I note that the opponent had also faced difficulties with availability of witnesses during evidence in support.
23. At the hearing, Mr. Golja informed me that the applicant has now engaged an alternative witness who has made substantial progress and should soon be in a position to provide an indication of when evidence may be completed. Acres has also indicated that a substantial part of evidence should be filed by 21 February 2005.
24. I have found that Acres has provided a satisfactory explanation for the delays since the third extension while the reasons provided for the delays before the third extension are far from satisfactory.
25. In determining this objection, I am obliged to consider the effect any unjustified delays have had on the parties. Clearly, the delays before the third extension were detrimental to the public interest. They have acted to thwart the expeditious disposal of matters in the Patent Office thus protracting the state of uncertainty for the public in relation to the patent application during opposition. They have also adversely affected the efficient and orderly administration of the Patent Office. To Aristocrat, the delays have clearly been a disadvantage. In my view, these are significant considerations forming parts of the balance of considerations as specified by Ferocem Pty Ltd v Commissioner of Patents in this case.
Nature and significance of the evidence
26. The public interest in determining a serious opposition on its merits is a relevant consideration. 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 [A Goninan & Co Ltd v Commissioner of Patent (supra)]. At the hearing, Acres submitted that their evidence will include expert declarations to address the prior art and allegations of prior use based on DACOM 6000 that were identified in the evidence in support and go directly to the grounds of opposition raised in the statement of grounds and particulars. Aristocrat has submitted that the opponent has a strong case, in particular as regards the prior use evidence is concerned. Given applicant’s prior involvement in DACOM 6000, any expert evidence filed on behalf of the applicant relating to DACOM 6000 in particular at least will be crucial to the applicant’s defence case and likely to lead to a better and/or more just opposition outcome.
The interests of Acres
27. The interests of Acres clearly favour the allowance of further time so that all relevant evidence can be considered at the opposition and Acres has a real opportunity to defend their application. Thus, the interests of Acres lie heavily in favour of an extension of time.
The interests of Aristocrat
28. The interests of Aristocrat favour the opposition being resolved expeditiously. Consequently, their interests lie against allowing an extension of time.
The balance of considerations
29. Acres has not provided adequate justification for the delays before the third extension. These delays have been clearly contrary to the public interest. However, since the third extension, Acres seems to be diligently making progress towards completing their evidence in answer. Acres has indicated that they are likely to serve a substantial part of their evidence during the requested extension and it appears that they are close to completing evidence in answer. Acres has also indicated that the evidence in answer will address the prior art and prior use allegations and go directly to the grounds of opposition raised in the statement of grounds and particulars. It will be in the public interest if Acres continues to be diligent and is able to complete their evidence within a reasonable timeframe.
30. Acres has not filed any evidence in answer to date. If the extension is refused, there is a real possibility that Acres will file a divisional application to salvage their claims. This will have the effect of protracting matters indefinitely. I believe that this will neither be in the opponent’s interest nor in the public interest.
31. On balance, I believe that the public interest lies in allowing Acres the requested time to file the evidence. The interests of Aristocrat and Acres appear to be opposed, and largely offsetting. Aristocrat may be somewhat disadvantaged if the extension is granted, but any disadvantage must be considered in light of the three extensions that Aristocrat were allowed during evidence in support. The interests of the Patent Office are not a very significant consideration at this stage. In the present case, the matter should be determined in line with the public interest and the extension allowed.
32. At the hearing, Mr. Dower cited Galagen v. Northfield Laboratories Pty Ltd at 2001 APO 30 in arguing that the requested extension should be refused. Although there are some similarities between the two cases, the situation in Galagen is distinguished in respect of at least one relevant consideration, in that the delegate had reached a conclusion that the conduct of the applicant was inconsistent with a serious prosecution of the opposition. In the current matter, while I believe that the applicant has been less than diligent before the third extension, I do not think there has been any deliberate attempt to stall the opposition proceedings and the applicant appears to be making progress towards completing their evidence.
33. Mr Dower has submitted that if an extension were to be granted, given the applicant has not provided a satisfactory explanation for the delays, strict bounds should be set to ensure timely completion of evidence in answer. I share Mr. Dower’s concern for timely completion of evidence in answer, noting that any future extension applications must also be subject to the balance of considerations as dictated by Ferocem Pty Ltd v Commissioner of Patents (supra). For this reason, without meaning to prejudice the outcome of any future application for extension of time, I advise the applicant that given the balance of considerations at this stage, a further extension is unlikely to be granted without adequate supporting reasons.
Conclusion
34. I allow an extension of time until 21 February 2005 to allow Acres to serve evidence in answer.
Costs
35. Both parties submitted that costs should follow the event. While the applicant has succeeded, I have agreed with most of the concerns raised by the opponent. In the circumstances, I do not believe that an award of costs is appropriate.
Jagdish Bokil
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Wray & Associates, Perth
Patent attorneys for the opponent : Freehills, Sydney
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