Acushnet Company v Spalding and Evenflo Companies Inc
[1997] APO 60
•20 November 1997
official notice
decision of a delegate of the commissioner of patents
Application : No. 657005 in the name of ACUSHNET COMPANY
Title: Golf Ball
Action: Opposition by SPALDING AND EVENFLO COMPANIES INC. and an objection to the grant of an application to serve further evidence.
Decision: Issued .
Abstract
Application refused. Reasons provided for the application did not satisfactorily explain the need for the further evidence.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 657005 by Acushnet Company, opposition thereto by Spalding and Evenflo Companies, Inc. and an objection to the grant of an application to serve further evidence
background
Patent application 657005 was filed on 20 October 1992 by Acushnet Company (the applicant). It was advertised accepted on 23 February 1995. Spalding and Evenflo Companies, Inc. (the opponent) filed a notice of opposition to the granting of a patent on the application on 23 May 1995 and served a statement of grounds and particulars on 23 August 1995. Service of the evidence in support was completed on 26 February 1996
On 13 August 1996, a request to amend the complete specification was filed by the applicant. On 30 April 1997, the amendments were allowed. As a result of a direction of the Commissioner, the time for serving of evidence in answer was extended until after the amendments were allowed. Service of the evidence in answer was completed on 27 May 1997.
On 12 May 1997, the opponent filed an application to serve further evidence. The applicant indicated that it objected to the grant of such an application.
Evidence in reply was served on 26 September 1997. I note here that, at the hearing, Mr Royal indicated that part of this evidence in reply was in fact the further evidence the opponent was seeking to serve.
The application to serve further evidence was heard in Canberra on 3 October 1997. Both parties appeared by telephone. Mr Raymond Hind, patent attorney of Davies Collison Cave, Melbourne, represented the applicant and Mr Malcolm Royal, patent attorney of Phillips Ormonde & Fitzpatrick, Melbourne represented the opponent.
THE APPLICATION TO SERVE FURTHER EVIDENCE
The application for serving further evidence refers to an accompanying declaration for an indication of the nature of the evidence and the reasons for making the application. The accompanying statutory declaration has been made by Michelle Hedges, a registered patent attorney with Phillips Ormonde & Fitzpatrick. The declaration indicates that the reason for applying to serve further evidence is that further evidence is needed to address the differences between the claims as amended by the amendments which were allowed 30 April 1997 and the claims as accepted. The declaration asserts that this further evidence will demonstrate that these differences do not result in the novelty or inventiveness of the amended claims.
No further evidence was filed with the application.
SUBMISSIONS
Both parties provided oral submissions at the hearing. Mr Hind, for the applicant, filed written submissions on 5 June 1997.
The main thrust of Mr Royal’s submissions on behalf of the opponent was that the amended claim 1 now included selected features from either claim 4 or claim 5 as well as the feature from claim 6 i.e. amended claim 1 did not contain all of the features from claim 4 or all of the features from claim 5. As a result the scope of claim 1 could not have been predicted at the evidence in support stage. What could have been predicted was a new claim 1 which contained all of the features of claim 4 or all of the features of claim 5 and the feature of claim 6 but this did not happen. The further evidence was needed to address the changed scope of claim 1.
I was referred by Mr Royal to Asahi v Grace, an unreported Patent Office decision on patent application 624994, dated 13 December 1994. In this decision, Mr Royal pointed out that the delegate, in discussing the issue of amending the statement of grounds and particulars subsequent to the allowance of amended claims, discussed the need for an opponent to consider only the most obvious of possible amendments to the claims when formulating the statement of grounds and particulars initially.
Mr Royal pointed out that the further evidence had already, in fact, been served nominally as part of the evidence in reply. Two of the statutory declarations served as evidence in reply formed the further evidence. The reason for the application for serving further evidence was in case the delegate at the substantive opposition hearing decided that these declarations were not appropriate evidence in reply.
Mr Hind argued that the amendments do not raise any new issues. Indeed, s102 requires that the amended claims fall within the scope of the claims before amendment. The amended claims only included features which were in the claims before amendment. Original claim 6, when read in the light of the explanation in the specification on page 3, lines 1 and 2, disclosed all the features in amended claim 1
In Mr Hind’s view, the opponent had been aware, for some time, of the proposed amendments and yet the further evidence had only been served on 26 September 1997 which was some 5 months after the filing of the application for serving further evidence. The opponent has not acted with diligence. Consequently, I should not grant the application to serve further evidence.
Mr Hind also suggested that, if I decided not to allow the further evidence to be served, it should be withdrawn from the evidence in reply.
DECISION
Subregulations 5.10(4) and (5) of the Patent Regulations 1991 provide the statutory basis for the Commissioner to allow further evidence to be served. These subregulations are as follows:
“(4) The Commissioner may:
(a) on the application of a party; and
(b) on such reasonable terms (if any) as the Commissioner specifies;
permit the party to serve further evidence on the other party.
(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 or her 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.”
From this, I note that I must not grant the application to serve further evidence unless I am reasonably satisfied that the serving of further evidence is appropriate in all the circumstances.
A number of recent office decisions have suggested that the law in relation to the adducing of further evidence in relation to the Patents Act 1952 is appropriate to the requirements of subregulations 5.10(4) and (5) of the Patent Regulations 1991. Mr Royal referred me to Sandoz Ltd v Fujisawa Pharmaceutical Co Ltd 27 IPR 421 where the delegate proposed a number of requirements that could be taken into account in assessing all the circumstances for the appropriateness of the further evidence. Mr Hind also addressed the present application in the light of these suggested requirements. They are:
1. It must be shown that the evidence could not have been obtained with reasonable diligence at an earlier stage.
2. The evidence must be such that, if given, it would probably have an important influence on the result of the case.
3. The evidence must be such as is presumably to be believed, that is it must be apparently credible, though not necessarily incontrovertible.
4. If the application to serve further evidence was allowed, would this cause unnecessary protraction of the opposition?
5.Would there be injustice caused to the other party if the application was allowed?
1. In relation to the diligence of gathering the evidence, the opponent filed its application to serve further evidence on 12 May 1997 after the amendments were allowed on 30 April 1997. The actual further evidence was served on 26 September 1997 along with the evidence in reply. Mr Hind argued that this clearly represented undue diligence on the opponent’s behalf.
I note that service of the evidence in answer was completed on 27 May 1997 and that service of the evidence in reply was completed on 26 September 1997 after a one month extension of time in which to do so.
However, I also note that the two declarations referred to by Mr Royal as constituting the further evidence were made on 12 and 13 June 1997 by Joseph Stiefel and Barry Nicholson respectively but not served until 26 September 1997 with the evidence in reply.
It seems to me that, on the face of it, the opponent has shown reasonable diligence in collecting the evidence i.e. just over 1 month from the filing of the application for serving further evidence.
Although the opponent has not shown the same degree of diligence in making this evidence available to the applicant (there being well over three months from when the declarations were signed to when they were provided to the applicant), I do not think that the requirement for diligence in obtaining the evidence also includes any requirement for the diligent serving of that evidence.
The opponent is entitled to file an application to serve further evidence without that further evidence accompanying the application. This is what it has done. It has also been diligent in obtaining that further evidence. The fact that the opponent has not acted diligently in providing the applicant with this further evidence may have some bearing on any award of costs but it does seem to have any bearing on this criterion.
2. In relation to the significance of the evidence, Mr Royal contended that the evidence dealt with the change to the scope of the amended claims. This change in scope resulted from the inclusion in claim 1 of one of the two features of either dependent claim 4 and 5 with the feature from dependent claim 6. Mr Royal argued that, because both features from either claim 4 or claim 5 were not included in amended claim 1, the scope of claim 1 had been changed from that of claim 6 when appended to claim 4 or claim 5 when appended to claim 1 of the original claims.
I must say that I have some sympathy for Mr Hind’s position that the claims have only been changed using the wording in the claims as accepted. The distinction that Mr Royal is making is a fine one. I understand, of course, that, in golf ball technology, there exists a narrow art and differences between various golf balls can be quite small although perhaps significant. Notwithstanding Mr Hind’s argument, it seems to me that there is a fine distinction between the claims as accepted and the claims as amended. This difference was not arrived at merely by including subordinate claims into the main claim but by including portions of subordinate claims into the main claim.
Mr Hind also argued that the description clearly envisages that the feature of claim 6 included the feature from claim 4 or 5. However if this is the case then the amended claim 1 includes a feature which is redundant in the light of the other feature.
Therefore I am of the opinion that the scope of the claims has been changed and the evidence, if it deals with this aspect of the amended claims, may have an important bearing on the case.
I have quickly perused the two statutory declarations that Mr Royal has identified as comprising the further evidence. The Stiefel declaration, dated 12 June 1997, makes no specific mention of the amended claims. Its main purpose seems to be to deal with the fact that, although the measurements of a golf ball referred to in a previous declaration by My Stiefel do not all fall within the parameters set out in original claims 4 and 5, such differences are insignificant. It is clear that this evidence does not relate in any way to the amended claims insofar as the scope of the claims has been amended. Thus this further piece of evidence will not have an important influence on the result of the case for the reasons given by Mr Royal. Given the nature of the evidence, I am not convinced that it would have a major influence on the case for any reason. It merely provides further interpretation of earlier evidence. It introduces no new documentary evidence.
The Nicholson declaration does refer to the amended claims and makes some assertions about the amended claims in relation to the earlier evidence served in support. However, the declaration also deals with a similar point as that dealt with in the Stiefel declaration and as such appears not to be dealing with matter which arose only as a result of the amendment. Thus the Nicholson declaration in part deals with the amended claims but in part also deals with matter which has nothing really to do with the change in scope of the amended claims. I have a similar view to that of the Stiefel declaration in relation to this declaration. The evidence, on the face of it, hardly seems to be such that it would have an important influence on the case.
In summary, I believe that, on the face of it, the evidence would not have an important influence on the result of the case neither in relation to the amended claims as Mr Royal has suggested nor for any other reason.
3. I have no reason to doubt that the evidence, itself, is credible. The evidence has been provided by two of the declarants who provided evidence in support and who also have provided evidence in reply.
4. I believe that there invariably must be a protraction of the opposition if the application was allowed. I would be bound to provide the applicant with an opportunity to respond to this further evidence whereas, if the amendment was not allowed, the opposition could be set down for hearing in the near future. The question is whether or not this protraction is unnecessary. In the time frame of an opposition, the period of 1 month does not seem to be all that lengthy especially if the delegate is able to reach a more appropriate decision because of the extra material before her or him. Such a protraction would therefore seem not to be unnecessary.
I find that in the overall time frame of the case, there will be no unnecessary protraction of the case.
5. In relation to the question of injustice to the other party, Mr Royal raised a number of ingenious arguments. He suggested that it was the applicant who had caused any injustice by amending the claims to change their scope and thus putting the opponent at a disadvantage after evidence in support had been completed. He also argued that the opponent was in fact doing the applicant a favour by seeking to include the evidence as further evidence and not evidence in reply. According to Mr Royal, the applicant was now able to respond to this further evidence whereas such a response would not be possible if the evidence was served as part of the evidence in reply.
Mr Hind did not agree.
Mr Royal’s arguments are appealing and I believe that there would be no injustice to the applicant if the application were allowed in respect of the fact that the applicant would be provided with an opportunity to respond to this further evidence. However, where injustice has occurred is in the fact that the opponent has not adequately provided satisfactory reasons for the need to serve this further evidence. As I have previously indicated, on the face of it, the evidence does not appear to be such as to have a major bearing on the outcome of the case.
In relation to the reasons for the application, Mr Royal also suggested that the reason for the application was to ensure that the evidence would be considered by the delegate hearing the substantive opposition even if the evidence could not be considered to be strictly in reply. While I can well believe that this is the main motivation of the opponent, I do not believe that this is sufficient reason of itself to warrant the Commissioner exercising the power provided by subregulation 5.10.
Taking all the circumstances into account, I do not believe that the opponent has satisfied me that the serving of further evidence is appropriate.
CONCLUSION
I have decided that I must not grant the application to serve further evidence because I am not reasonably satisfied that the serving of the further evidence is appropriate in all the circumstances.
Mr Hind argued that, if I refused to grant the application, I should direct that the relevant evidence should be withdrawn. Whether or not I have the power to do so, I do not believe that this is a reasonable course of action. The evidence has nominally been served as part of the evidence in reply. I do not believe that my findings in this decision change that.
Subject to any appeal of this decision, I will have the substantive opposition set down for hearing as soon as is appropriate.
COSTS
The opponent has been unsuccessful in its application. This, together with the fact that the actual evidence in question was served the day before the hearing, leads me to the conclusion that costs should be awarded against the opponent. I award costs against Spalding & Evenflo Companies, Inc.
R Hallett
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies Collison Cave, Melbourne
Patent attorneys for the opponent : Phillips Ormonde & Fitzpatrick, Melbourne
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