Acres Gaming, Inc. v Bally Gaming, Inc - [2005] APO 19

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 761822 in the name of Acres Gaming, Inc.

Title: Method for Operating Gaming Devices

Action: Application by Bally Gaming, Inc. for an extension of time under Regulation 5.10(2) to serve evidence in support, and objection thereto by Acres Gaming, Inc.

Decision: Issued 15 April 2005
Abstract

The opponent cited the withdrawal of an expert witness and the need to locate and retain further declarants as a major reason for needing the extension of time.
The extension of time to serve evidence in support under regulation 5.10(2) was granted. The opponent had provided a satisfactory explanation of the need for the extension sought. The public interest in having the opposition determined on its merits, together with the interests of the opponent, also favoured the granting of the extension of time.
Costs awarded against the objector.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 761882 in the name of Acres Gaming, Inc. and an application under Regulation 5.10(2) for an extension of time to serve evidence in support of an opposition, by Bally Gaming, Inc.

BACKGROUND

Patent application 761882 in the name of Acres Gaming, Inc. (Acres) was filed on 28 April 1999 and advertised accepted on 12 June 2003. A notice of opposition to the grant of the patent was filed by Bally Gaming, Inc. (Bally) on 11 September 2003. A statement of ground and particulars was served on 11 December 2003, and amendments to this were allowed on 18 June 2004.
Bally applied for four extensions of time in which to serve evidence in support, and these were granted without objection. Acres has objected to the latest request to extend the time for service of evidence in support to 11 May 2005.
The matter was heard in Canberra on 24 March 2005. Mr Greg Noonan, patent attorney of Freehills Patent & Trade Mark Attorneys, Melbourne, appeared by telephone on behalf of Bally. Mr Boris Golja, patent attorney of Wray & Associates, Perth, appeared by telephone on behalf of Acres. Both parties filed written submissions prior to the hearing.
THE APPLICATION FOR AN EXTENSION OF TIME
The circumstances in which, and the grounds upon which the application for extension of time was made are given as follows:
“Since our last application for an extension of time, we have received executed declarations from three experts (first second and third experts) plus an executed declaration from the British Library and my own declaration is ready for execution. In our last application for an extension of time, we indicated that our second expert to whom we sent the draft questionnaire, indicated he was no longer available to complete the questionnaire. We were only advised of his withdrawal on 17 November 2004, even though he was sent the questionnaire back in July and had reviewed some of the main prior art some time before that. Until 17 November 2004, he was prompted…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2005] APO 19
Decision Date: 15 April 2005

CaseChat Overview and Summary

In the case of Acres Gaming, Inc. v Bally Gaming, Inc., Bally Gaming, Inc. sought an extension of time under Regulation 5.10(2) to serve evidence in support of its opposition to a patent application held by Acres Gaming, Inc. The opposition was filed on 11 September 2003, and the applicant, Acres, objected to the latest request for an extension of time to serve evidence in support. The matter was heard on 24 March 2005, with both parties submitting written evidence prior to the hearing.

The legal issues the court needed to decide included whether Bally Gaming, Inc. provided a satisfactory explanation for the need for an extension of time and if granting the extension would be in the public interest. The court considered the law on extensions of time, which requires the Commissioner to be reasonably satisfied that a direction, an extension of time or the serving of further evidence is appropriate in all the circumstances. The court also took into account the public interest in having the opposition determined on its merits and the interests of both parties.

The court found that Bally Gaming, Inc. had provided a satisfactory explanation for the need for an extension of time, as they had experienced difficulties in gathering evidence due to the withdrawal of an expert witness and the need to locate and retain further declarants. The court also found that the public interest in having the opposition determined on its merits, together with the interests of the opponent, favoured the granting of the extension of time.

Accordingly, the extension of time to serve evidence in support under regulation 5.10(2) was granted. Costs were awarded against the objector, Acres Gaming, Inc.

Orders