Aquatron Robotic Technology Ltd v Zodiac Pool Care Europe
[2016] APO 88
•20 December 2016
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Aquatron Robotic Technology LTD v Zodiac Pool Care Europe [2016] APO 88
Patent Application: 2010342370
Title:Submerged surface-cleaning apparatus provided with an accelerometric device detecting gravitational acceleration
Patent Applicant: Zodiac Pool Care Europe
Opponent:Aquatron Robotic Technology LTD
Delegate:Dr A. Lim
Decision Date: 20 December 2016
Hearing Date: Written submissions completed on 25 November 2016
Catchwords: PATENTS – extension of time to file evidence in answer – regulation 5.9(2) – whether applicant has acted promptly and diligently at all times – whether there are exceptional circumstances that warrant an extension – whether a request for a Notice to Produce an article is an exceptional circumstance for filing evidence – extension granted
Representation: Patent attorney for the applicant: FB Rice
Patent attorney for the opponent: Wadeson
IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2010342370
Title:Submerged surface-cleaning apparatus provided with an accelerometric device detecting gravitational acceleration
Patent Applicant: Zodiac Pool Care Europe
Date of Decision: 20 December 2016
DECISION
I grant an extension of time to file evidence in answer until 08 February 2017.
I award costs according to Schedule 8 against Aquatron Robotic Technology LTD.
REASONS FOR DECISION
This matter relates to a request for an extension of time to file evidence in answer and is determined under regulation 5.9 of the Patents Regulations as amended on 15 April 2013 by the Intellectual Property Legislation Amendments (Raising the Bar) Regulation 2013 (No 1) (the Amendment Regulation).
Background
Patent application 2010342370 in the name of Zodiac Pool Care Europe (Zodiac) was advertised on 05 November 2015, and a notice of opposition to the grant of a patent was filed in the name of Aquatron Robotic Technology LTD (Aquatron) on 05 February 2016.
Aquatron filed a statement of grounds and particulars on 05 May 2016 and, subsequently filed, a schedule of documents to accompany the statement on 10 May 2016. Evidence in support was completed on 05 August 2016.
Zodiac filed a request on 19 August 2016 to record a change to the agent in regard to the present application 2010342370. The agent was changed to FB Rice, the patent attorneys representing Zodiac in the current opposition.
Zodiac filed a request on 05 September 2016 seeking the Commissioner to issue a notice to Aquatron to produce articles. The request was made pursuant to paragraph 210(1)(c) of the Patents Act 1990 (the Act), requiring production of a swimming pool cleaner ULTRAMAX JUNIOR Robot, model no. ROB-UMXJR00 (referred to in Aquatron’s evidence in support, and herein referenced as ROB-UMXJR) and a second swimming pool cleaner which is identical to ROB-UMXJR or has identical control system to that of ROB-UMXJR. Zodiac requested one ROB-UMXJR to be delivered to the offices of its patent attorneys (FB Rice) in Sydney so that Zodiac’s Australian expert can inspect the pool cleaner with what Zodiac described as limited testing facilities. The second pool cleaner was requested to be delivered to Zodiac’s head office in the United States of America (U.S.A.) where Zodiac stated it has suitable testing facilities.
In a letter dated 19 September 2016, Aquatron agreed for a single ROB-UMXJR pool cleaner to be made available to Zodiac with the following conditions:
“1. Zodiac inspect the cleaner using conventional non-destructive techniques, and otherwise take appropriate precautions, to ensure that the cleaner is not damaged or destroyed; and
2. at Zodiac's expense, the cleaner be returned to the opponent (Aquatron) upon Aquatron's request, in the same condition it left Aquatron's premises.”
Aquatron submitted in the letter dated 19 September 2016 that it was not appropriate for a second pool cleaner to be made available to Zodiac’s experts in U.S.A. because there are only two anticipatory pool cleaners of the type referred to in Aquatron’s evidence in support in Aquatron’s possession. Aquatron submitted these two pool cleaners are therefore of great evidentiary value for the purposes of opposition proceedings in Australia and similar proceedings in other jurisdictions. Aquatron also submitted that there is no simple route to obtain further samples of anticipatory cleaners.
A delegate of the Commissioner advised Zodiac on 22 September 2016 that it was reasonable and sufficient that a single ROB-UMXJR pool cleaner be made available to Zodiac. A Notice to Produce a single ROB-UMXJR pool cleaner was issued to Aquatron on 22 September 2016, requiring delivery of the pool cleaner to the offices of FB Rice in Sydney by 24 October 2016.
After a number of communications between Zodiac and Aquatron regarding delivery arrangements— these communications being listed in Zodiac’s chronology of events which is reproduced below — the ROB-UMXJR pool cleaner was delivered to the offices of FB Rice in Sydney on 14 October 2016.
Evidence in answer was due to be filed on 08 November 2016. On 25 October 2016 Zodiac requested an extension of time for filing evidence in answer, for a period of three months, until 08 February 2017.
The Commissioner advised on 01 November 2016 that she intends to grant Zodiac an extension of time to file evidence in answer. Aquatron (the opponent) objected to the grant of an extension of time on 04 November 2016, and requested to be heard on the matter. It is the grant of an extension of time that is the subject of this opposition. The Commissioner determined that, in the particular circumstance, the hearing would be based upon written submissions.
Aquatron and Zodiac (the applicant) filed a first set of written submissions on 18 November 2016. Both parties subsequently filed a further set of written submissions in response their respective first set on 25 November 2016.
The law
On 15 April 2013, the Amendment Regulation commenced. The Amendment Regulation significantly amended the Patents Regulations (the Regulations) as they apply to patent oppositions. The law governing extensions of time to file evidence in a patent opposition depends upon the date on which the opposition commenced. Where the evidentiary period commenced on or after 15 April 2013 (as in the present case), the extension is governed by regulation 5.9 of the Regulations as in force on 15 April 2013. This follows from regulation 23.36(2), item 2, of the Regulations.
Subregulation 5.9(2) states:
The Commissioner may extend the period only if the Commissioner is satisfied that:
(a) the party who intended to file evidence in the period:(i) has made all reasonable efforts to comply with all relevant filing requirements under this Chapter; and
(ii) despite acting promptly and diligently at all times to ensure the appropriate evidence is filed within the period, is unable to do so; or(b) there are exceptional circumstances that warrant the extension.
Exceptional circumstances are defined in subregulation (5):
In this regulation:
exceptional circumstances includes the following:
(a) a circumstance beyond the control of a party that prevents the party from complying with a filing requirement under this Chapter;
(b) an error or omission by the Commissioner that prevents a party from complying with a filing requirement under this Chapter;
(c) an order of a court, or a direction by the Commissioner, that the opposition be stayed pending the completion of a related proceeding or action under the Act.These provisions have been considered by the Commissioner in TRED Design Pty Ltd v Julie- Anne McCarthy and Bradley McCarthy[1] (the TRED decision) and Merial Limited v Novartis AG[2] (the Merial decision). The principles applied in those decisions, which I accept as correct, are that I must ask myself the following questions:
1. Has the party (and their attorney or agent) made all reasonable efforts to comply with all relevant filing requirements?
2. Was the failure to file the evidence in time despite the party (and their attorney or agent) acting promptly and diligently at all times to ensure the evidence is
filed in time?3. Were there exceptional circumstances that warrant the extension?[1] [2013] APO 57; (2013) 105 IPR 291.
[2] [2013] APO 65; (2013) 105 IPR 133.
I can extend the time for filing evidence only if I am satisfied that the answer to questions 1 and 2 is YES, or if I am satisfied that the answer to question 3 is YES. If I am so satisfied, then I must consider whether there are any discretionary reasons why the extension should not be granted.
As noted in the Explanatory Statement accompanying the Amendment Regulation (the Statement):
"A major cause of protracted proceedings is extensions of the various time periods for providing evidence. The law has developed in such a way as to significantly narrow the Commissioner's discretion to disallow extensions. As a result, oppositions are normally subject to multiple extensions of time and extend over many years, contrary to the interest of the public and parties in resolving oppositions faster.
New subregulation 5.9(2) addresses this issue by introducing a new test for determining whether an extension of time for filing evidence is justified. The Commissioner will not be able to extend time periods unless one of these conditions was made out. The party seeking the extension will bear the onus of convincing the Commissioner of this. Once the conditions in subregulation 5.9(2) are met, the Commissioner still has the discretion to consider whether or not it is appropriate that an extension of time be granted. In applying the test, the Commissioner will not be required to give a direction to extend a period solely because of delays caused by a legal representative failing to act promptly or diligently, by difficulties in obtaining expert evidence that could have been anticipated and acted on or by attempts to settle the proceedings.
Where a party cannot satisfy the Commissioner that an extension is justified under the test, the Commissioner will not have the power to give a short extension to allow the filing of evidence immediately available or to validate evidence filed out of time."
If the Commissioner is satisfied that an extension is appropriate, the Commissioner must then determine the length of the extension (subregulation (3)):
The Commissioner must determine the length of the extended period having
regard to what is reasonable in the circumstances.I note that paragraph (a) of subregulation 5.9(2) is concerned with actions of “the party”, which includes the actions of attorneys or agents[3].
[3] [2013] APO 57; (2013) 105 IPR 291 at [29].
The application for extension of time
I will quote selected passages from the application for extension of time to outline the key issues raised. In relation to the evidence of alleged prior use relied on by Aquatron, the application says:
“Certainly the Statement of Grounds did not provide any verifiable detail of the alleged prior use and there was no indication what sort of evidence of the alleged prior use D4 [the anticipatory pool cleaners] would be provided.
Subsequently the Opponent filed numerous declarations by declarants, in some cases several declarations by the same declarant accompanied by numerous exhibits…….
The declarations which were filed are as follows:
Declarant Date filed Exhibits Wallace 5-8-16 PW1 Schruhm 1 5-8-16 n/a Schruhm 2 5-8-16 n/a Schruhm 3 5-8-16 n/a Mott 5-8-16 BM1 plus video - 00007 Keefe 1 5-8-16 RK1-RK2 Keefe 2 5-8-16 RK3-RK-4 Keefe 3 5-8-16 RK5-RK7 Keefe 4 5-8-16 Briggs 1 5-8-16 Briggs 2 5-8-16 RB1-RB2 Bade 5-8-16 DB1-DB6 Attar 1 5-8-16 BA1-BA12 Attar duplicate 5-8-16 BA1-BA12 The declaration of Benny Attar dated 2 August 2016, in paragraphs 49 onwards, refers to ‘Aquatron's Anticipatory Cleaners’ which are alleged to anticipate claim 1, claim 9 and claim 11 of the opposed patent. In paragraph 50, four different types of models with various variants are alleged to have been sold from mid-2007 onwards in the US and elsewhere. One of those cleaners was the ULTRAMAX JUNIOR Robot - Model no ROB-UMXJR00 or simply the ‘ROB-UMXJR.’ A video of the cleaner has also been filed as evidence.
It is to be noted that there was no indication provided to the Applicant that the Opponent would be relying on a physical pool cleaner such as the ‘ROB-UMXJR’ as part of their evidence-in-support. While a passing reference was made to prior sales of pool cleaners, there was no suggestion that a video of an actual pool cleaner would be adduced as evidence - as opposed to say written evidence such as a brochure, schematic drawings of the electronic circuits of the device.
If substantiated, the ‘ROB-UMXJR’ is clearly the critical item of prior art relied upon by the Opponent. The rest of the Opponent's case relies, in essence, on obviousness arguments. Those arguments are essentially the same as, or similar to, arguments that have already been considered by the Australian Examiner as well as Examiners in the US and Europe examining corresponding applications. Those objections were overcome, and patents granted in both Europe and USA, so the prospects of the Opponent succeeding on those grounds if the Opponent's case on prior use fails, are not strong - the Opponents obviousness case being weak is likely to fail. The alleged prior use is clearly the cornerstone of the Opponent's case.
The issue of whether or not claims 1 and 9 to 11 are indeed anticipated will almost certainly be decided on the basis of that alleged prior use and what function the accelerometer which is alleged to be included in the ROB-UMXJR actually performs. However this cannot readily be determined merely by viewing the video - or even the actual cleaner, without conducting extensive testing of the control circuitry of the cleaner.”
In relation to the Notice to Produce the ROB-UMXJR, the application says:
“It became clear …. subsequent to receipt of the Opponent's evidence that it would be necessary to obtain and test the ROB-UMXJR (‘D4’) in order to determine whether D4 was relevant to the novelty and/or inventive step of the claims.
In order to obtain the sample for testing, the Applicant was obliged to request delivery up of the ROB-UMXJR using a notice to produce. This involved agreeing on and making a request for a notice to produce to IP Australia,….. There then followed a period of correspondence between the parties and the Delegate concerning the conditions and whether it was to be despatched by the Opponent or collected by the Applicant's courier.
The correspondence also limited the Applicant to non-destructive testing, and required the Applicant not to damage the cleaner and to return the cleaner to the Opponent in its original condition.
The Notice to Produce was issued and the cleaner arrived in the offices of FB Rice on 14th October 2016.”
In relation to identifying experts and the nature of the required experts, the application says:
“This is a case where it would have been reasonable indeed necessary for the Applicant to first consider the Evidence in Support before determining appropriate experts to seek in defending the application (See Shelford Services Pty Limited v Baylor Research Institute [2014] APO 20). Indeed until the Evidence in Support was filed the Applicant was unaware that they would need an expert witness who was capable of, and had access to equipment for, non-destructive testing of electronic circuits or has access to facilities or teams of experts who he would be able to sub-contract and the testing to while supervising the testing. Such facilities in Australia are generally limited to universities and the like.
Experts in the area of swimming pool cleaners are relatively difficult to obtain as there are a limited number of companies manufacturing swimming pool cleaners. There are very few experts that could be considered to be independent that are not currently working for the Applicant or the Opponent or for companies who are related to or associated with either party through distribution agreements, close associations or the like. Even rarer would be an expert witness who was capable of, and had access to equipment for, non-destructive testing of electronic circuits or has access to facilities or teams of experts who he would be able to sub-contract and the testing to while supervising the testing. The expert that the Applicant has been able to engage has current employment and therefore the number of hours per week that they are able to work on the evidence is limited.”
In relation to the extension necessary to provide time to test the cleaner, the application says:
“14th October is approximately three weeks prior to the deadline for filing the Applicant's Evidence in Answer and it is clearly impossible for the Applicant to identify what testing is required following an examination of the cleaner, carry out that testing and file their Evidence in Answer.”
and
“It will take time for the expert to conduct/supervise the testing of the cleaner, review and analyse the results prior to the preparation of a declaration.”
and
“Based on experience and in the light of the exceptional requirement to conduct non-destructive testing of a physical cleaner, the Applicant and its agents believe its experts will require 3 additional months to complete the Evidence in Answer. As well as the non-destructive testing requirement, this takes into account the large volume of the Evidence in Support and the expert's current employment responsibilities.”
Has the party made all reasonable efforts to comply with all relevant filing requirements?
In the TRED decision, the delegate noted[4]:
“In deciding whether a person has made all reasonable efforts to comply with all relevant filing requirements, it is necessary to understand the actions that they have taken (for instance, what was done, when it was done, how it was done, by whom it was done) covering at least the period in question, and the nature of the evidence that they are preparing.”
[4] [2013] APO 57; (2013) 105 IPR 291 at [40].
In the Merial decision, the Deputy Commissioner noted:
"…that the requirement in paragraph 5.9(2)(a)(i) is intended to import a consideration of the reasonableness of the relevant party’s conduct over the totality of the opposition proceedings rather than its compliance with the particular evidentiary period in question…"[5]
and
“If it [the relevant party] has acted promptly and diligently in relation to the preparation and filing of the evidence in answer it will necessarily have also made all reasonable efforts to comply.”[6]
[5] [2013] APO 65; (2013) 105 IPR 133 at [16].
[6] [2013] APO 65; (2013) 105 IPR 133 at [17].
From the above-quoted passages from Zodiac’s application for an extension of time, I accept that preparing evidence in answer to respond to the alleged prior use by Aquatron’s anticipatory pool cleaners, in particular ROB-UMXJR, is significant to Zodiac. From Zodiac’s chronology of events (reproduced below), Zodiac adopted a strategy for obtaining and testing ROB-UMXJR in order to conduct tests relevant to preparing evidence in answer. I am satisfied the strategy is reasonable.
The specific matters discussed below with regard to prompt and diligent also include matters of reasonableness. It is appropriate to discuss the two matters together.
Was the failure to file the evidence despite acting promptly and diligently at all times?
In Fugro Airborne Surveys Corp v Geotech Airborne Limited the delegate stated that a chronology of the steps taken is usually a good starting point to assess whether a person has acted promptly and diligently[7]:
"A party seeking an extension of time will assist the Commissioner (and advance their own cause) if they provide information about what they did, when they did it, and how long those actions took. When considering such information, it is relevant to consider whether there have been any significant unexplained delays. The presence of significant delays without a reasonable explanation is the antithesis of acting promptly and diligently. "
[7] [2014] APO 23 at [20].
It is, however, seldom helpful to have a chronology without an explanation. As shown by Sportingbet Australia v Tabcorp International Pty Ltd, a lengthy chronology may fail to reveal why things were done, or why things were not done[8]. The Commissioner will be assisted by an explanation — a narrative that explains the strategy being followed, how the events fit into that strategy, problems confronted and how the strategy was modified as necessary. As stated in Clarus Therapeutics, Inc. v Lipocine, Inc[9]:
"What is missing is a narrative that puts those actions into context. For example, that explains the objective of the evidence gathering activities to the extent that efforts toward and failure to achieve that result can be understood. In not providing this Clarus appears to be expecting the Commissioner to read between the lines and potentially does not appreciate that it bears the onus of satisfying the Commissioner."
[8] [2014] APO 21; (2014) 107 IPR 161.
[9] [2014] APO 50; (2014) 108 IPR 404 at [21].
When the facts are understood, the question is whether the evidence preparation was undertaken promptly and diligently. That assessment must have regard to the full range of commitments the person has, and there is no requirement for a person to do the impossible. In the TRED decision the delegate said[10]:
"A person needs to act reasonably, and it is not reasonable that a person do the impossible. The focus has to be on what the person actually did, and whether they acted reasonably, promptly and diligently."
[10] [2013] APO 57; (2013) 105 IPR 291 at [51].
Encounters of delays are not fatal to an extension of time if the person did what was reasonable to overcome the delays. In Shelford Services Pty Limited v Baylor Research Institute the delegate said[11]:
"Any significant gaps or delays in a chronology, where relevant action would generally be expected, should be explained. The nature of the delay and what was done to attempt to mitigate the delay would be a relevant consideration for an extension of time. An explanation of the unforeseen and what was done to mitigate that would generally be considered favourably."
[11] [2014] APO 20 at [19].
However, a person must explain the circumstances in which they were operating in order for the Commissioner to take them into account. In the TRED decision, the delegate said[12]:
"I do not accept that I should simply accept that it was not possible to prepare the evidence any sooner, without some information that would enable me to form that opinion for myself."
[12] [2013] APO 57; (2013) 105 IPR 291 at [51].
Once these matters are understood, it must be kept in mind that "promptly and diligently" is not setting a standard of perfection. In Osmose New Zealand v Zelam Limited, the delegate said[13]:
"While it might have been possible to carry out some activities faster, the time taken is not outside the range of prompt and diligent given the work that was involved."
[13] [2014] APO 49; (2014) 108 IPR 398 at [22].
Zodiac submitted the following chronology of events in its application for extension of time:
Date Action 5 August 2016 Opponent files all their Evidence in Support fourteen (14) declarations on the same day 17 August 2016 Telecon Applicant's agent, Applicants US attorneys (two), Applicant's to discuss assessment of Opponent's evidence and choice of experts 17 August 2016 Email to Zodiac re accelerometer part number shown in video and other matters 19 August 2016 FB Rice write to IP Australia requesting change of agent for opposed patent application 22 August 2016 Change of agent allowed by IP Australia 26 August 2016 Email correspondence with Applicant's US attorney re possible expert witness and possible additional experts, and possibilities for examining prior art cleaner shown in video; 31 August 2016 Telecon update on opposition with Applicant's agent plus applicants US patent attorneys to discuss opposition including expert witness and notice to produce 31 August 2016 Email to US attorney re notice to produce and nature of request to be made 1-3 September 2016 Various email correspondence with Applicant's US attorneys re details of notice to produce, drafting of notice for review by Applicant, and emails concerning expert witness and expert witness's access to testing equipment 5 September 2016 Applicant's agent files request for notice to produce - two options are provided for consideration by Delegate 12 September 2016 IP Australia issue letter advising intent to issue notice to produce enclosing draft notice to produce 13 September 2016 Applicant's attorneys prepare and file two draft notices to produce covering both options requested in the original letter 19 September 2016 Opponent responds to request for notice to produce 22 September 2016 IP Australia issue notice to produce 22 September 2016 Telecon Zodiac and expert witness to discuss inter alia expert's ability to conduct tests on prior art cleaner in Australia 23 September 2016 IP Australia issue further letter to Applicant clarifying notice to produce 23 September 2016 IP Australia issue further letter to Applicant clarifying notice to produce 27 September 2016 Email from Opponent's agent re choice of courier 29 September 2016 Applicants agent advises Opponent's agent they have no preference for particular courier after consultation 29 September 2016 Opponent writes to Applicant re Notice to Produce 4 October 2016 Applicant's agent sends reminder email to Opponent's agent re quote for courier 6 October 2016 Further telecom between Zodiac and expert concerning opposition 7 October 2016 Applicants agent contacts expert witness to arrange meeting 14 October 2016 Pool cleaner is delivered to FB Rice Sydney 17 October 2016 Meeting Applicant's agent and chosen expert in Sydney. Expert instructed to consider and advise on what testing of pool cleaner will be necessary and what facilities will be required to conduct testing plus address other issue and questions The chronology above provides me with information about what actions Zodiac did, when Zodiac did them and how long those actions took in its strategy for preparing evidence in answer. The passages I have quoted above from Zodiac’s application for extension of time provide a narrative that assists my understanding of how the actions fit into the strategy.
Issues relating to seeking a Notice to Produce and obtaining ROB-UMXJR
The chronology of events shows that after receiving evidence in support, Zodiac’s patent attorneys in Australia and USA made efforts to discuss several matters which included the anticipatory pool cleaners that were referred to in the evidence in support, possibilities of examining the pool cleaners, possible additional experts, access to equipment in order for the experts to test the pool cleaners and the nature of the request seeking the Commissioner to issue a notice to Aquatron to produce the anticipatory pool cleaners. On 05 September 2016, Zodiac filed two different draft notices to produce for the Commissioner to consider. I consider that filing a request seeking the Commissioner to issue a Notice to Produce the anticipatory pool cleaners is part of Zodiac’s strategy to prepare evidence in answer. I am satisfied that the request seeking a Notice to Produce from the Commissioner and the efforts Zodiac made towards the request are all reasonable.
Aquatron submitted that waiting one month (from 05 August 2016 to 05 September 2016) to request for the anticipatory pool cleaner is neither prompt nor diligent, nor does it illustrate that reasonable efforts have been made[14]. Zodiac submitted that it first had to consider the evidence in support filed by Aquatron before considering what steps it should and could take in light of that evidence[15]. Furthermore, Zodiac also noted that there was a change of its patent attorneys at the time efforts were being made to address evidence in support. I am satisfied that the efforts, which have been discussed above, that Zodiac made towards requesting for the Notice to Produce are consistent with Zodiac acting reasonably, and promptly and diligently. The change in patent attorneys during the evidentiary time period is part of the context of the case I will consider. I find no discernible delays caused by the change in patent attorneys.
[14] The opponent’s written submissions, dated 18 November 2016, at page 7.
[15] The applicant’s written submissions, dated 25 November 2016, at page 3.
Zodiac submitted that Aquatron’s conduct delayed the delivery of the pool cleaner after the Notice to Produce was issued and it had foreshadowed in a letter to IP Australia that any undue delays in receiving the pool cleaner will inevitably delay preparation of evidence in answer[16]. It appears that Aquatron had a different understanding of the delivery arrangements it was required to undertake to produce ROB-UMXJR. As a consequence, there was some delay in the delivery of ROB-UMXJR to Zodiac. However, the delay is not unexplained. I have noted that the application for extension of time and the chronology above demonstrate Zodiac’s efforts to communicate with Aquatron to facilitate delivery of ROB-UMXJR.
[16] The applicant’s written submissions, dated 25 November 2016, at pages 3 to 4.
Issues relating to testing ROB-UMXJR
Aquatron submitted that offers were made to Zodiac, by way of a cover letter dated 05 August 2016, that accompanied its evidence in support, to obtain further details regarding the anticipatory pool cleaner[17]. These offers included coming to a mutually agreeable arrangement for inspection of the anticipatory pool cleaner in Israel, providing further video and/or images of the anticipatory pool cleaner and a Skype or similar conference arranged between the engineers of the parties.
[17] The opponent’s written submissions, dated 18 November 2016, at page 4.
Zodiac submitted that Aquatron’s offers were of little assistance as the opposition is being conducted in Australia, Zodiac’s expert witnesses are based in Australia and it is necessary for Zodiac to have the physical pool cleaner in order to conduct the necessary tests[18]. As quoted above, Zodiac’s application for extension of time said it regards the basis of the alleged prior use to be determined by what function the accelerometer of ROB-UMXJR actually performs, and this cannot be readily determined merely by viewing the video that is part of the evidence in support, or even the actual pool cleaner, and extensive testing of the control circuity of the cleaner needs to be conducted. I consider Zodiac’s explanation in regard to conducting its own tests on the physical pool cleaner reasonable.
[18] The applicant’s written submissions, dated 25 November 2016, at page 3.
Aquatron submitted that the relevant testing to be conducted on ROB-UMXJR is trivial and obvious to any electronics engineer[19]. Aquatron further submitted that given the triviality of the testing, Zodiac had ample time after delivery of ROB-UMXJR, on 14 October 2016, to conduct the tests and prepare the evidence in answer that was contingent on the results of the testing[20]. An unsigned declaration stating the triviality of the tests was filed with Aquatron’s written submissions dated 18 November 2016. I will consider the content of the unsigned declaration as statements forming part of Aquatron’s submissions rather than as a declaration.
[19] The opponent’s written submissions, dated 18 November 2016, at pages 5 to 7.
[20] The opponent’s written submissions, dated 18 November 2016, at page 7.
Zodiac submitted[21]:
“It is also noted that a key focus of the Attar Declaration [this being part of the evidence in support] is the video and the physical cleaner shown in the video which [sic] paragraphs 53 onwards. In paragraph 68 and 69, Benny Attar makes statements about the function he alleges the accelerometer performs but these statements merely follow the wording of the claims and are not supported by any hard evidence or corroborated in any way. Critically the Attar declaration does not really explain why the accelerometer is present in the cleaner when the cleaner already includes a separate tilt sensor. There is certainly evidence relating to the sale of the pool cleaner. There is a circuit diagram of NAC Card (Exhibit BA-8) but no associated explanation of the working of the circuit. There is a product sheet produced by the manufacturer of the MXA2500J/K accelerometer. That certainly sets out what the accelerometer could do – it does not, of course provide any guidance whatsoever as to what function, if any, the accelerometer as installed in the cleaner is actually configured to perform.
Without wishing to cast aspersions on the Opponent’s evidence, Opposition proceedings are inter partes proceedings, the Applicant is entitled to test out and challenge the Opponent’s evidence and is not obliged to unconditionally accept the opponent’s witness’s assertions as to the function of the accelerometer. This function is absolutely critical to the outcome of the Opposition and the Applicant should be entitled to test it.”
[21] The applicant’s written submissions dated 25 November 2016 at pages 2 to 3.
I understand that Zodiac and Aquatron have different opinions on what tests need to be conducted on ROB-UMXJR and the complexity of the tests. I am satisfied that it is reasonable for Zodiac to consult its expert witnesses regarding appropriate tests required to prepare its evidence in answer. The chronology of events demonstrate that Zodiac met with its expert witnesses soon after receiving ROB-UMXJR and instructed the experts to advise on appropriate tests required, the testing facilities required and other matters related to conducting the tests. I am satisfied that Zodiac adopted an approach that is consistent with Zodiac acting reasonably, and promptly and diligently in consulting its expert witness in regard to tests on ROB-UMXJR.
Zodiac submitted:
“…, the cleaner was sent to the Applicant’s attorneys without three missing [sic] components. Yet further, the control power unit which is necessary to power up the cleaner was not and has still not been supplied to the Applicant, so even today the Applicant cannot ascertain how, if at all, any accelerometer functions when the cleaner is operating.”[22]
and
“It is also noted that the Opponent has also failed to supply the control unit necessary to run the cleaner which meant that it was not possible to test the cleaner ‘in operation’ despite the fact the power supply ‘could easily be reinstated’ according to the Opponents letter of 19 September 2016. We note that letter was the first indication from [sic] the Applicant that the cleaner is non-operational and that we are advised of that fact only after the IP Australia issued the intent to issue the Notice to Produce.”[23]
and
“In this regard is noted that the Opponent’s evidence in support failed to disclose that the cleaner is non-functional.”[24]
[22] The applicant’s written submissions dated 25 November 2016 at page 4.
[23] The applicant’s written submissions, dated 25 November 2016, at page 5.
[24] The applicant’s written submissions, dated 25 November 2016, at page 6.
I understand that as at 25 November 2016 Zodiac was still not able to make the ROB-UMXJR functional because of the control power unit had not yet been supplied. The efforts both parties undertake to resolve the functionality of ROB-UMXJR will be taken into account for any further application for extension of time.
Issues relating to identifying experts and the nature of the required experts
Zodiac’s submissions regarding expert witnesses have been quoted above. Aquatron submitted[25]:
“Zodiac suggests4 that an expert in the area of swimming pool cleaners is required to conduct the relevant testing. That is manifestly not so.
The alleged invention is characterised by rudimentary electronics. Any competent electronics engineer would be well placed to perform the relevant tests.”
[25] The opponent’s written submissions, dated 18 November 2016, at page 7.
I am satisfied that it is reasonable for Zodiac to consult expert witnesses in the area of swimming pool cleaners to facilitate the preparation of evidence in answer. I am also satisfied that it is reasonable to expect that expert witnesses to have other commitments and therefore available to prepare evidence for only limited periods of time per week. The requirement on Zodiac’s experts to conduct tests using non-destructive techniques is part of the context of the case I will consider.
Issues relating to volume of evidence
Zodiac submitted in its application for an extension of time that there is an unusually large volume of evidence in support to be considered and an unusually large number of declarations from an unusually large number of declarants. The volume of evidence is a part of the context of the case and therefore a relevant consideration.
Overall
In Merial Limited v Norbrook Laboratories Limited, the delegate said[26]:
“The question of whether a party has been prompt and diligent at all times is assessed by looking at the behaviour of the party as a whole.”
[26] [2015] APO 56 at [24].
It seems clear to me that upon considering the evidence in support filed by Aquatron, Zodiac was reasonably quick to identify the alleged anticipatory pool cleaner, ROB-UMXJR, as significant towards the ground of prior use that is being contended in concurrent opposition proceedings. I have previously found that Zodiac had adopted a reasonable strategy for obtaining and non-destructively testing ROB-UMXJR in order to prepare evidence in answer. I am satisfied that the strategy was implemented in a manner that has been prompt and diligent at all times.
I do not consider that there have been any significant unexplained delays. It seems to me that the evidence preparation has been proceeding in an appropriate manner. Therefore, I conclude that Zodiac has been unable to file evidence in answer in time despite Zodiac acting reasonably, and promptly and diligently.
Were there exceptional circumstances that warrant the extension?
In order to argue that exceptional circumstances exist in this case, Zodiac submitted[27]:
“It is submitted that the requirement for the applicant to request a notice to produce the cleaner and to subsequently test the cleaner is outside the normal evidentiary process. Notices to produce documents are rare. Notices to produce objects for testing are rarer still. I would guess that the issuance of a notice to produce a physical object for testing necessary to the preparation of the Applicant’s evidence, is a unique and therefore unusual and exceptional occurrence.
….., the cleaner was out of the Applicants control until 13 October 2016, just three weeks before the deadline for filing Evidence-in-Answer which is an unreasonable period of time to provide the Applicant to have an expert test the cleaner and report of the results of those tests. Indeed, because the cleaner finally sent by the Opponent is incomplete and lacks critical components (such as the control unit) even now the Applicant is prejudiced severely in its efforts to test how the cleaner operates.”
[27] The applicant’s written submissions, dated 25 November 2016, at page 6.
While it is not necessary to consider this argument, given my conclusion above, I will make the following observations in light of the submissions of the parties.
In the TRED decision, the delegate said that exceptional circumstances were[28]:
“matters outside the normal evidentiary process, and outside the control of the party, where it would be unreasonable to insist on a party filing their evidence.”
[28] [2013] APO 57; (2013) 105 IPR 291 at [64].
While the request seeking a Notice to Produce articles from the Commissioner is not a relevant filing requirement under Chapter 5 of the Regulations, the request for the Notice is part the context of the case that I need to consider. It was for the purposes of preparing evidence required for the concurrent opposition proceedings that Zodiac requested a Notice to Produce. I think it is reasonable to consider that the Notice to Produce ROB-UMXJR is part of Zodiac’s strategy to prepare evidence in answer. I have adopted this approach above.
While request for a Notice to Produce may not often be sought from the Commissioner, this does not mean that such a request is to be regarded as an exceptional circumstance for the purposes of filing evidence. Having regard to the facts of the present case, I consider that a request for a Notice to Produce ROB-UMXJR is not an exceptional circumstance for the purposes of filing evidence.
Regarding Zodiac’s submission that ROB-UMXJR was out of its control until the time of receiving the pool cleaner, I have taken into account Zodiac’s efforts to communicate with Aquatron in facilitating the delivery of ROB-UMXJR in my approach above.
Discretionary matters
An extension of time is not automatic once the mandatory requirements of paragraph 5.9(2)(a) or 5.9(2)(b) have been met. The Commissioner “may” extend the period for filing evidence. I can see nothing in the conduct of Zodiac that would lead me not to exercise the discretion.
Other matters submitted by Aquatron
Aquatron submitted two other matters that I should consider. These are (a) Aquatron asserts that Zodiac never intended to file the evidence within the period[29], and (b) Zodiac was at all relevant times able to file its evidence in answer in time because Aquatron asserts that Zodiac has no reasonable need for anything beyond trivial testing of ROB-UMXJR which any competent electronic engineer could accomplish and report on within an hour or two[30].
[29] The opponent’s written submissions, dated 18 November 2016, at pages 4 to 5.
[30] The opponent’s written submissions, dated 18 November 2016, at pages 5 to 7.
These are specific issues relating to the conduct of Zodiac, and as such could be relevant to whether Zodiac has been prompt and diligent. In my approach above, I have considered the conduct of Zodiac when I assessed whether Zodiac (1) made all reasonable efforts to comply with all the relevant filing requirements referred to in paragraph 5.9(2)(a)(i), and (2) acted promptly and diligently at all times to ensure evidence in answer is filed in time. I am satisfied that I have taken into account the relevant conduct of “the party who intended to file evidence” as required by paragraph 5.9(2)(a). I have also previously found that it is reasonable for Zodiac to consult expert witnesses it in the area of swimming pool cleaners to determine suitable tests required to prepare its evidence in answer.
Conclusion
I am satisfied that an extension of time is appropriate.
Finally, I need to consider what length of extension is reasonable in the circumstances. Zodiac has requested for a three-month extension until 08 February 2017. I am satisfied it will take time for the expert to conduct tests on ROB-UMXJR, review and analyse the results and then prepare the evidentiary declarations. Having regard to the tests that still need to conducted and Zodiac has said ROB-UMXJR was still not functional as at 25 November 2016 (this being the time of completion of the written submissions for this opposition), I consider it reasonable to extend the time for filing evidence in answer by three months.
Costs
Zodiac has been successful in obtaining an extension of time. It is normal for cost to follow the event, and I see no reason to depart from this norm. I will award cost in accordance with Schedule 8 of the Patents Regulations against the opponent, Aquatron.
Dr A. Lim
Delegate of the Commissioner of Patents
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