Airsense Technology Limited v Vision Systems Limited

[2004] APO 4

OFFICIAL NOTICE

EX TEMPORE DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Application  :          No. 689484 by Airsense Technology Limited,

Title:         Smoke Detection System

Action:          Opposition under Section 59 by Vision Systems Limited, and the matter of a summons to witness.

Decision:          Issued  23 Feb 2004

[Date of hearing: 20 Feb 2004]

Abstract

Summon to witness in respect of a declarant resident in the United Kingdom. Declarant sought to appear by videoconference rather than travel to Australia. Opponent wanted to have the declarant present in person for the cross-examination.

Declarant sought to not appear in person because

(i)he was the principal of a small business, and absence would unduly affect his business, and

(ii)he had an aversion to flying.

Reasons provided were not accepted as constituting a lawful excuse for not appearing. However the possibility that the witness may have a genuine medical or psychological condition that would effectively prevent him from undertaking the travel to Australia could not be excluded – and this would constitute a lawful excuse if appropriate medical evidence was provided.

PATENTS ACT 1990

EX TEMPORE DECISION OF A DEPUTY COMMISSIONER OF PATENTS

Re:Patent Application No. 689484 by Airsense Technology Limited, opposition under Section 59 by Vision Systems Limited, and in the matter of a summons to witness.

BACKGROUND

1. This matter relates to a summons to witness in respect of a Mr David Mitchell that I executed on 11 February 2004. Mr Mitchell is resident in the United Kingdom. He has sought to not appear in person, but to appear by video link. The opponent, who requested the summons, has insisted upon his personal appearance.

2. The patent application relates to a smoke detection system. Included in the grounds of opposition are allegations of lack of entitlement to the invention – with allegations of part or whole inventorship by another person, or inventorship by the named inventors but when employed by a different company.

3. The opponent has sought summons to witness for three of the applicant’s declarants – Mssrs Barrett, Fox, and Mitchell. While the applicant has raised issues in respect of all three, only the summons in respect of Mitchell remains in dispute.

4. At an earlier hearing conducted last Tuesday, I expressed the view that it was appropriate for Mitchell to appear in person. But I was not satisfied that the offer to pay reasonable expenses was made in the full knowledge of what those expenses might be. I also indicated that (absent a lawful excuse) it would be open in the event of non-appearance for the decision-maker to draw adverse inferences from that non-appearance. I invited the parties to further discuss the issues and attempt to resolve them – failing which I indicated that I was prepared to resume the hearing at short notice. This has now occurred. [The applicant was represented by Mr B. Hess of counsel; the opponent was represented by Dr J. Emerson of counsel.]

5. The situation as it now stands is:

   ·    An offer of reasonable expenses commensurate with the circumstances relating to Mr Mitchell has been made. This includes business class airfares of approximately $9000, $250/night for accommodation for 3 nights, and loss of earnings as assessed by an independent assessor. No issues arise in relation to this offer;

   ·    Mr Mitchell has provided reasons for non-appearance in person – but has indicated a willingness to be examined via video conference facilities;

   ·    The opponent asserts that the reasons do not constitute a lawful excuse for not appearing (in person);

   ·    The opponent wants the issue of lawful excuse dealt with today, as (they assert) they do not want the basis on which a lawful excuse is claimed to become a ‘moving target’.

6. The reasons given for non-appearance (see below) clearly involve a significant element of hearsay – which raises questions about the basis on which I should proceed today. Following some discussion, counsel for both parties agreed that I should proceed to make my determination “as if the statement had been made by Mr Mitchell”.

7. The issue that requires determination is whether the reasons that have been provided constitute a lawful excuse for non-appearance. The significance of this is as follows – noting that the witness is outside of jurisdiction for the purposes of s.179 of the Patents Act 1990:

   ·    If there is no lawful excuse for non-appearance, it is open to the decision-maker to not only accord relevantly low weight to the evidence of that person, but also to draw adverse inferences. [Clearly, this would not be in the applicant’s interests.]

   ·    If there is a lawful excuse for non-appearance, the evidence of that person may be given the otherwise-appropriate weight. And it is not open to draw any adverse inference from the non-appearance of the witness.

8. The opponent is insisting upon personal attendance by the witness. Given the extensive travel that would be required by Mr Mitchell, I think there needs to be a good reason to require his personal attendance vis-à-vis using videoconference. The opponent asserts that they intend to seriously challenge the credibility of the applicant’s witnesses, including Mr Mitchell. From the general discussion of the nature of the proposed cross-examination, I am satisfied that the cross-examination is intended to seriously investigate issues of credibility. I am also satisfied that cross-examination in person would be highly preferable to one conducted over a video link. Therefore I do not consider the offer to appear by video link is sufficient in the present case to constitute appearance before the Commissioner.

9. The reasons said to constitute lawful excuse are given a letter from the applicant’s attorney late yesterday (19 February). The letter relays information provided from the instructing attorneys in the United Kingdom, as follows:

   “I have discussed the situation with Mr David Mitchell personally and he has explained that he and a Mr Michael Pipe are in a two-man business together, with Mr David Mitchell being responsible for providing technical support for maintenance of smoke/fire detection systems, often solving problems with malfunctioning smoke/fire detection systems, so that he has to be on call virtually 24hrs per day, seven days per week, because Mr Michael Pipe is not technically qualified to carry out that work. Until last autumn, they employed a technical support engineer, so that Mr David Mitchell could, as it were, take time off. Unfortunately, that technical engineer is no longer with them, so that, until they are able to recruit a qualified replacement, Mr Mitchell is having to do all of the technical support himself. What would be highly damaging to their small business would be for customers to ring up in technical emergencies and find that no-one would be available to do the work for over a week and/or that the business recommends that the customers go to a competitor of the business to have the work done! Bearing in mind that, for him to give evidence in person, would involve his being out of the United Kingdom for roughly seven days and also his having to spend a couple of days recuperating when he returns, so as to be in a fit state to carry out reliably his work which obviously carries a great deal of responsibility for other people’s safety, it would seem clearly unreasonable to require him to appear in person when compared with what might be lost to the fairness of the Hearing by having a video conferencing instead.

   He additionally said to me that he cannot face flying long distance, as would be required to fly to Australia and back. He explained to me that he used occasionally to make short flights to various parts of Europe and back, but was never at ease. Then, about a year ago, he flew to the United States of America and back and the flight back was practically a nightmare for him and he promised himself that he would never do it again. My concern is that, if Mr Peter Fox and I persuade him to travel to Australia, not only will he be in no fit state to give evidence when he arrives, but the prospect of the flight back could leave him in no fit state to give evidence at any time after arrival.

   He is willing to swear an Affidavit to the above.”

10.  The reasons fall into two categories. Those dealing with running a small business, and an aversion to flying.

11.  I am unpersuaded by the issues relating to running a small business. I would expect any small business would have arrangements in place to deal with unavoidable absences of the principal. For example, people get sick, have holidays, need to travel, etc. What is expected here is a trip to Australia and back that will entail an elapsed time of 5 days or so. This may be inconvenient, but it is not per se a lawful excuse. Indeed, it is apparent from the above reasons that Mr Mitchell has travelled in the past without adverse consequences to his business.

12.  I am similarly unpersuaded by the issues (as presently stated) in relation to flying. Clearly Mr Mitchell has flown to the USA and back about 12 months ago – so that long-distance flying is within his capabilities. And in this respect it is noteworthy that from a literal reading of the reasons he had no problem with going to the USA – only on the flight home. And the nature of the problems he experienced is not indicated.

13.  Dr Emerson was keen for this matter to be heard today, so that there would be finality in the matter. He sought to exclude the possibility of the witness coming up with ‘further’ excuses for non-appearance. However that situation cannot be achieved in an absolute sense. For example, a witness ‘run over by a bus’ on the way to a hearing will inevitably have a lawful excuse for non-appearance at the hearing – irrespective of what was previously determined.

14.  In the present case, while I am not persuaded that the reasons given in relation to flying constitute a lawful excuse, I cannot exclude the possibility [which, while not being likely, could be read into the reasons] that the witness may have a genuine medical or psychological condition that would effectively prevent him from undertaking the travel to Australia. In circumstances where (for example) the witness had developed a pathological fear of flying, I would think it quite inappropriate to insist on that person undertaking the travel – and in these circumstances a video conference arrangement would be appropriate.

15.  Accordingly, I conclude as follows.

·    The reasons given in the letter of 19 February 2004 do not constitute lawful excuse for non-attendance at the hearing in person;

·    I cannot exclude the possible existence of a medical or psychological condition that would prevent Mr Mitchell from undertaking the travel to Australia;

·    A medical certificate by a qualified medical practitioner of psychologist that clearly and unequivocally states that Mr Mitchell suffers from a specified condition or disorder that prevents him from flying to Australia would prima facie found a claim to lawful excuse for non-appearance.

16.  If such a medical certificate is obtained, it is in the interests of all that it is provided as soon as possible. And if it is obtained, the opponent will then need to decide whether or not it wishes to cross-examine by way of videoconference, so that appropriate arrangements can be made.

COSTS

17.  The parties indicated that either costs of this matter should be costs in the cause, or that there should be no award of costs. I make no award of costs in this matter.

D Herald
Deputy Commissioner of Patents

Date of Hearing     20 Feb 2004
Issued                  23 Feb 2004

Patent attorneys for the applicant  :  Lesicar Perrin, Adelaide

Patent attorneys for the opponent  :  Davies Collison Cave, Melbourne