Arbor Software Corporation v Gentia Software Plc
[1998] APO 24
•30 April 1998
official notice
decision of a delegate of the commissioner of patents
Application : No. 668158 in the name of Arbor Software Corporation
Title: Method and Apparatus for Storing Multi-Dimensional Data in Computer Memory
Action: Opposition by Gentia Software plc and an objection to a request to extend the time for serving evidence in answer
Decision: Issued .
Abstract
The application was not justified by the reasons provided at the time of the application. The possibility of what may be relevant evidence in corresponding US litigation action being available at some time in the future is not sufficient reason for an extension of time to be granted.
No evidence in answer has been provided to date and there is no indication that any such evidence in answer will be filed. The applicant did not appear at the hearing and no submissions were supplied on its behalf. It is not appropriate in all the circumstances to grant the extension of time.
Application not granted.
patents act 1990
decision of a delegate of the commissioner of patents
Re:Patent Application No. 668158 by Arbor Software Corporation, opposition thereto by Gentia Software plc and an objection to a request to extend the time for serving evidence in answer
background
Patent application number 668158 was filed 30 March 1993 by Arbor Software Corporation (hereinafter referred to as Arbor). The application was advertised accepted on 26 April 1996. A notice of opposition to the grant of a patent was filed by Gentia Software plc (known then as Planning Sciences International plc and hereinafter referred to as Gentia) on 26 July 1996. A statement of grounds and particulars was served on 25 October 1996.
Evidence in support was due to be completed by 25 January 1997. Gentia filed three successive applications for an extension of time of three, three, and one month respectively. All three extensions of time were allowed without objection bringing the period for serving evidence in support up to 25 August 1997. Service of evidence in support was completed on this date. On 26 August 1997, Gentia filed an amendment to the statement of grounds and particulars. The amendment was allowed on 10 November 1997.
Evidence in answer was due to be completed by 25 November 1997. Arbor filed an application for an extension of time of three months from 25 November 1997 to 25 February 1998 to serve evidence in answer. The extension of time was granted without objection. On 25 February 1998 Arbor filed a further application for an extension of time of two months from 25 February 1998 to 25 April 1998 to serve evidence in answer. Gentia objected to the extension on 17 March 1998.
The application for extension of time was heard in Canberra on 8 April 1998. Gentia was represented by Mr J Roger Green, patent attorney of Carter Smith & Beadle, Melbourne, via telephone. Arbor was not represented. Mr Chris Mitchell, patent attorney of Davies Collison Cave, Melbourne advised me by telephone on the morning of the hearing that he had not been given any instructions on the matter by his client. At the time of the hearing no evidence in answer had been served.
THE APPLICATION FOR EXTENSION OF TIME
The application, which was filed on 25 February 1998, states the circumstances and grounds as being:
“This Opponent, Gentia Software plc (formerly known as Planning Sciences International plc), is a competitor of the Applicant (“Arbor”) which Arbor believes infringes Arbor’s U.S Patent No. 5359724 (“the ’724 patent”). The ’724 patent issued from U.S. patent application Serial No. 07/860,443 from which the present application claims priority.
There is presently taking place in the United States a patent infringement lawsuit brought by Arbor against Planning Sciences International plc and its related U.S. subsidiary Planning Sciences, Inc. (collectively, “PSI”), and the action is entitled Arbor Software Corporation v. Planning Sciences International plc and Planning Sciences, Inc., Case No., C-96-20297 SW (EAI), pending in the United States District Court for the Northern District of California, San Jose Division. In that action, Arbor asserts that PSI infringes the ’724 patent and PSI asserts that such patent is invalid and not infringed.
Fact discovery in that action concluded on February 20, 1998. In depositions of PSI technical personnel conducted in the United States and United Kingdom by Arbor’s U.S. counsel in February 1998, certain PSI personnel made admissions under oath regarding PSI’s “EIS-EPiC” product that are inconsistent with the arguments relied upon by PSI in its Statement of Grounds and Particulars and Evidence in Support of the present Opposition. PSI’s counsel designated all such testimony as “Confidential” under the protective order entered in the patent infringement litigation, thereby preventing Arbor from providing the specifics of such testimony in its Evidence-in-Answer until deposition transcripts are received and such testimony is declassified. Upon declassification Arbor will evaluate the testimony for submission in its Evidence-in-Answer but needs further time in which to accomplish that in the litigation.
A large portion of the Opponent’s Evidence in Support relates to the Opponent’s own EPiC computer software, and thus to properly prepare Evidence-in Answer the Applicant must address the submissions made by the opponent’s declarants in relation to that product and documentation. Accordingly, further time is required, in view of the circumstances set forth above, to serve Evidence in Answer.”
SUBMISSIONS
Mr Green provided me with a written copy of his submissions made over the telephone at the hearing. As noted above, Arbor were not represented at the hearing and therefor I have no submissions on the patent applicant’s behalf to refer to.
The substance of the opponent, Gentia's case can be summarised as:
The patent infringement lawsuit in the US is not relevant to the present opposition to the patent application in Australia;
The public interest is not served by extensions of time on the ground that testimony in US litigation is required to be evaluated. Such extensions significantly delay the determination of the opposition;
There has been an undue delay, per se, in putting the evidence in answer together;
There has not been a full and frank disclosure of why a delay has occurred, and;
The applicant has not demonstrated that it is significantly progressing the proceedings.
DECISION
The law on extensions of time under Regulation 5.10
The time for serving evidence in answer to an opposition is three months from the date on which evidence in support is served. This time may be extended under regulation 5.10:
(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).
Regulation 5.10(5) provides:
(5) The Commissioner must not ... grant an application under subregulation (2)
... unless the Commissioner:
...
(c) ...(i) gives the parties a reasonable opportunity to make representations concerning the application...; and
(ii) is reasonably satisfied that ... an extension of time or the serving of further evidence is appropriate in all the circumstances.
A thorough consideration and summary of the law, as it stands, on the extension of time provisions was given by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) 28 IPR 243 and more recently by Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) 38 IPR 213. It is clear from these decisions that regulation 5.10 confers a broad discretion, which cannot be reduced to an imperative compliance with particular requirements. On the contrary it is necessary to give proper, genuine and realistic consideration to all relevant aspects of the case. Relevant aspects include:
(a)The provision of an explanation or justification for the delay in completing the evidence in answer
The reasons why the evidence was not served in time are a relevant consideration, but a satisfactory explanation is not a mandatory requirement.
(b) The public interest
The public interest in determining a serious opposition on its merits is a relevant consideration. There is also the efficient and orderly administration of matters before the Patent Office to consider.
(c) The interests of the parties involved in the opposition
Disadvantages to either the applicant or opponent are relevant considerations.
If I am to be reasonably satisfied that an extension of time is appropriate in all the circumstances, then I must take into account all matters relating to the above aspects when deciding the issue.
Application of the law to the facts
(a) The provision of an explanation or justification for the delay;
In the absence of any representation or submissions at the hearing Arbor can only rely on the grounds and circumstances given in the application for extension of time to provide an explanation or justification for the delay in serving evidence in answer. Furthermore in considering all the circumstances in this matter the grounds of the first successful application for extension of time are relevant. I concur with Mr Green on his points in this regard.
The circumstances and grounds given in the first application for extension of time are:
“In view of the complex and voluminous nature of the opponent’s Evidence-in-Support, further time is required for consideration of the evidence and case put forward by the opponents in order to obtain expert opinion thereon for preparation of Evidence-in-Answer.”
The only light that the first application sheds on the circumstances of this case is that it was sought for completely different reasons which did not suggest or imply the current grounds for extension. Some demonstration on behalf of the applicant of their diligence in progressing opposition proceedings, in the form of serving partial evidence or at least an indication of their progress in a consistent approach to obtaining evidence would, as is often the case in opposition proceedings, contribute to providing an explanation or justification for the delay. There has been no such demonstration.
If the court proceedings in the US are to be taken into account as contributing to a satisfactory justification for the delay in serving evidence in answer, then those proceedings must be clearly shown to be relevant to the gathering of evidence in answer by Arbor. Although US and Australian patent law are similar in some respects, some of the issues pertinent to this opposition are viewed differently in the two jurisdictions. If there were some evidence to show that the testimony sought to be evaluated was dealing with an issue of patent law that was legislated in identical fashion in the US and Australia, then the likelihood of the applicant successfully demonstrating that the US proceedings were relevant and therefor, inter alia, a justification for the delay would be enhanced but not necessarily secured. Similarly, if there was any evidence to show that the “EIS-EPiC” product being dealt with in the US litigation is the same as the EIS-EPiC system in the evidence in support, the applicant’s argument may carry more weight. However, there is nothing before me to support this. At best, I can say that the US litigation and any evidence originating therefrom may be relevant in this regard. I do not think that this is sufficient to justify the delay in filing any evidence in answer.
I therefore believe that the applicant has not satisfactorily explained why there has been a delay in gathering any evidence in answer at all. Even if the matter of the US proceedings was entirely relevant, this does not explain such a delay.
(b) The public interest
It is in the public interest for the opposition to dealt with on its merits. Furthermore it is in the public interest to balance the dealing of the opposition on its merits with the expeditious disposal of matters in the Patent Office, and questions of costs, of efficiency, and of insistence of standards being maintained.
The substantive opposition case of the opponent is now before all parties. There is no evidence in answer to this opposition case. The only possible semblance of evidence in answer is an as yet unobtainable evaluation of testimony of the opponent on matters before a US court not shown to be relevant to the opposition. Furthermore, I agree with Mr Green's observation that the testimony does not appear to relate directly to the evidence in support. As the US litigation action is being conducted under foreign legislation which may well differ significantly to the law under which the present opposition is proceeding, then the evaluation of testimony consisting of “admissions ... inconsistent with ... arguments relied upon by PSI in its Statement of Grounds and Particulars and Evidence in Support” (emphasis added) may not comply with the requirements of evidence in answer.
There is no guarantee that the US litigation will reach a stage where declassification of the testimony will occur in a reasonably short period. Further to this there is no evidence to suggest that the applicant will have such testimony evaluated in prompt fashion considering that the opposition process has been in train now for some twenty months.
Therefore, it seems to me that the public interest would be best served by allowing the present opposition to proceed to hearing rather than wait for an indefinite period of time for the possibility that the material associated with the US court action may be released and, at best, may possibly be relevant to the present matter.
(c) The interests of the parties involved in the opposition
Clearly the interests of the opponent, Gentia, are served by not allowing the extension of time and proceeding with the substantive opposition as no evidence in reply is warranted.
The interests of the applicant, Arbor may be best served by granting the extension of time. There is no evidence in answer on file to date. The interests of the applicant are clearly not served by entering a substantive opposition without such. However, the applicant has had ample time to address this situation.
CONCLUSION
I have found that Arbor have not provided a satisfactory explanation of the delay. I have found that the public interests and the interests of Gentia favour refusing the grant of the extension and closing off the period for serving evidence so that the opposition can proceed in an expeditious manner on its own merits. Any disadvantage to Arbor has come as a result of its own actions or lack thereof. On balance, the extension sought by Arbor is not appropriate in all the circumstances of this case. As the applicant was not a party to the hearing, I am not able to determine if the applicant has any evidence in answer readily at hand to serve. Therefore, I do not think it is appropriate to allow a short period of time on the off-chance that the applicant might have any such evidence as was suggested by Burchett J in Ferocem Pty Ltd v Commissioner of Patents (supra). The time for serving evidence in answer therefore ceased on 25 February 1998. As a consequence, and in light of there being no evidence in answer on file, there will be no need for a period of serving evidence in reply. Therefore, the substantive opposition will be set down for hearing as soon as possible.
COSTS
The power of the Commissioner to award costs is based on section 210 and regulation 22.8. The power to award costs is discretionary, so I must take into account all relevant considerations. Arbor has failed in its application prima facie and in the absence of representations elaborating on the application. Gentia has succeeded in its objection to the granting of an extension of time. I consider it appropriate to award costs against Arbor.
I award costs in accordance with schedule 8 against Arbor Software Corporation.
R. Hallett
Delegate of the Commissioner of Patents
Patent attorneys for the applicant : Davies, Collison Cave, Melbourne
Patent attorneys for the opponent : Carter, Smith & Beadle, Melbourne
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