Aristocrat Technologies Australia Pty Ltd v Acres Gaming, Inc - [2004] APO 31

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 752636 in the name of Acres Gaming, Inc.

Title: Method of Operating Networked Gaming Devices

Action: Request of an extension of time to serve evidence in support of an opposition by Aristocrat Technologies Australia Pty Ltd

Decision: Issued 30 November 2004.
Abstract

Extension granted.
The evidence relates to matters that are only partly particularised. Explanation of delay and significance of evidence considered with regard to that part of the evidence. Extension determined in line with the public interest.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 752636 by Acres Gaming, Inc., and a request for an extension of time to serve evidence in support of an opposition by Aristocrat Technologies Australia Pty Ltd

BACKGROUND

Patent application 752636 in the name of Acres Gaming, Inc. (hereafter referred to as Acres) was advertised accepted on 26 September 2002. A notice of opposition was filed by Aristocrat Technologies Australia Pty Ltd (hereafter referred to as Aristocrat) on 24 December 2002. The time for serving evidence in support has been extended until 24 September 2004 without objection. Acres has objected to the latest request to extend the time for service of evidence in support to 24 December 2004. The matter was heard in Canberra on 16 November 2004. Acres did not appear, and filed written submissions prior to the hearing. Aristocrat was represented by Mr Charles Berman, patent attorney of F B Rice & Co, Sydney.
The previous extensions
Evidence in support was originally due to be served by 24 June 2003. A first extension was given to 24 September 2003. Partial evidence was served on 24 September 2003 (in the form of a declaration by Charles Berman, which introduces into evidence a copy of one of the documents particularised in the statement of grounds and particulars). Further extensions were given to 24 December 2003, 24 March 2004, 24 June 2004 and 24 September 2004. Acres did not object to any of these extensions. The latest extension would take the time for serving evidence in support to 24 December 2004.
The reasons for the various extensions seem to relate to difficulties in locating expert witnesses. The first extension stated that a potential (unnamed) witness had been identified. The second extension said a further potential witness (Mr Gosden) had been identified. The third extension stated that Mr Gosden was very busy. The fourth extension stated that “further time is required”. The fifth extension merely referred to “unexpected delays”.
The present extension
The application for extension of time gives the reason for the extension as:
“With reference to the Opponent’s earlier application for an extension of time, the Opponent continues to diligently pursue its preparation of evidence in respect of this matter. As indicated in the previous application for an extension of time, the Opponent encountered unexpected delays. These delays related to locating a suitable witness for the matter. The Opponent has now located a witness, Clive Davies, who has agreed to assist the Opponent in this matter. Mr Davies only recently agreed to assist and the Opponent requires time to brief him fully on the matter. The Opponent’s attorney also has overseas commitments for a part of the time until for which an extension has been requested. Had it not been for these commitments, the required extension would have been for a shorter period.”
Acres objected to this extension, pointing out the history that I have already summarised.
Submissions by the parties
Acres stated that the application for extension of time does not fully explain the reasons why an extension is needed. Aristocrat’s submissions centred on providing the missing explanation. Mr Berman stated that the evidence was nearly complete, and provided a copy of the draft declaration of Mr Davies. Mr Berman advised me that Aristocrat had made a request to further amend the statement of grounds and particulars to introduce new documents referred to in the draft declaration of Mr Davies.
DECISION
The history of the preparation of the evidence in support shows that there have been difficulties in locating a person able to make a declaration on behalf of Aristocrat. Three persons were approached to act as an expert witness.
a)The first expert approached by Aristocrat was unable to provide evidence due to a conflict of interest (the expert has requested that his name be kept confidential).
b)A second expert (Mr Gosden) was then identified, but he was unable to be of assistance to Aristocrat. This was discovered around March 2004, but was not included in the reasons for any of the extensions.
c)A third expert (Mr Davies) has now been identified, and he has prepared a draft declaration. The declaration should be completed before 24 December.
The present extension relates to the third expert, but the overall history is relevant.
The law on extensions of time
The time for serving evidence in support of an opposition is 3 months from the date of serving the statement of grounds and particulars (regulation 5.8). This time can be extended under regulation 5.10(2):
(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).
This provision must be read in conjunction with regulation 5.10(5):
(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 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, and extension of time or the serving of evidence is appropriate in all the circumstances.
Consequently, it is a prerequisite to any decision that the Commissioner must ensure that the other party has been notified, and that both parties have had the opportunity to make representations. In the present case the other party has been notified, and the parties have been given the opportunity to make representations.
An extension can only be granted if the Commissioner is reasonably satisfied that it is appropriate. In exercising this discretion I am guided by the decisions of Burchett J in Ferocem Pty Ltd v Commissioner of Patents (1994) AIPC 91-057; 28 IPR 243, Sackville J in A Goninan & Co Ltd v Commissioner of Patents (1997) AIPC 91-330; 38 IPR 213 and Goldberg J in National Starch & Chemical Co v Commissioner of Patents (2001) AIPC 91-697, 50 IPR 398. The general principles that flow from these decisions are:
a)The power is discretionary:     Regulation 5.10 confers a broad discretion, which cannot be reduced to imperative compliance with particular requirements. It is necessary to give genuine and proper consideration to all relevant considerations. (Ferocem at AIPC 38,208; IPR 247-8, Goninan at AIPC 39,434; IPR 220)
b)Explanation of delay: The reasons why the evidence was not served earlier are a relevant consideration, but a satisfactory explanation is not a mandatory requirement. (Ferocem at AIPC 38,207-8; IPR 247)
c)The public interest:     The public interest in determining a serious opposition on its merits is a relevant consideration. (Goninan at AIPC 39,435-6; IPR 222)
*         In order to do this, it is necessary for the Commissioner to form a view as to the nature of the evidence that it is sought to adduce, and the significance of that evidence for the opposition proceedings. (Goninan at AIPC 39,438; IPR 225-6)
*         The significance of the evidence is assessed having regard to any relevant material available, not just the evidence itself. (National Starch at [33])
*         The public interest is not protected merely because some evidence has already been served. (Goninan at AIPC 39,438; IPR 225)
d)The interests of the party seeking the exercise of discretion:   The interests of the party seeking the exercise of discretion are a relevant consideration. (Ferocem at AIPC 38,208; IPR 247)
e)The interests of other parties: It is relevant to consider the disadvantage to the other party of delays in determining the opposition, and the effect of delays on the efficient and orderly administration of the Patents Office. (Ferocem at AIPC 38,208; IPR 247, Goninan at AIPC 39,436; IPR 222)
Explanation of the delay
The delay was due to the difficulty in obtaining a declaration from a suitable expert. Two experts proved unable to provide a declaration, and it appears to have taken some time to locate a third expert. Mr Berman stated that it has been difficult to locate experts due to the fact that there are few companies involved in the field of bonusing systems on linked gaming machines. I accept that this is a reasonable explanation. However, it is apparent that the declaration of Mr Davies will go to matters that are not presently included in the particulars of the opposition (hence the request to amend the statement of grounds and particulars). I note that an explanation of delay is relevant if it relates to matters that are referred to, directly or by clear implication, in the particulars (see Schering-Plough Animal Health Ltd v Crompton Corp (2003) 60 IPR 193). Logically, so long as the explanation relates (at least in part) to matters that are referred to in the particulars, then the explanation is relevant.
A quick reading of the draft declaration shows that it relates to a description of the “Computa Game” system. The “Computa Game” system is not mentioned in the particulars. However, the particulars recite a list of ten pieces of common general knowledge, which it appears may be embodied (to some degree) in the “Computa Game” system. It is reasonable to conclude that the evidence that is being prepared relates (in part) to matters that are referred to in the particulars. I am satisfied that a satisfactory explanation of the delay has been provided, although the full details only became fully apparent at the hearing.
Nature and significance of the evidence
The public interest in determining a serious opposition on its merits requires me to form a view of the nature and significance of the evidence that the opponent will serve. The evidence relates to matters that are only partly particularised. To the extent that the evidence relates to matters of common general knowledge, the evidence is clearly capable of being significant to the opposition. To my mind, this is enough to establish that the evidence is likely to be significant.
To the extent that Mr Davies’ declaration relates to matters that are not particularised, the significance of this part of the evidence necessarily relates to whether it is likely that those matters will become part of the opposition as a result of amendment of the statement. The amendment to the statement of grounds and particulars largely consists of the addition of references to the “Computa Game” system. The information before me does not enable me to come to a view on whether the amendment is likely to be allowed. On the basis of the previous paragraph, I conclude that the evidence is capable of being significant (at least in part), and it is in the public interest to allow the extension of time.
The interests of Aristocrat
The interests of Aristocrat clearly favour the allowance of further time so that all relevant evidence can be considered at the opposition. The evidence that is foreshadowed represents the vast bulk of the opposition. The interests of Aristocrat lie heavily in favour of an extension of time.
The interests of Acres and the Patent Office
The interests of Acres favour the opposition being resolved expeditiously. Consequently, their interests lie against allowing an extension of time. The effect of the delay on the efficient and orderly administration of the Patent Office lies against allowing the extension, but this is not a significant consideration.
The balance of considerations
I have been given an adequate explanation for the delay, and the nature of the evidence that will be served suggests it is in the public interest to allow the extension. The interests of Aristocrat and Acres appear to be opposed, and largely offsetting. The interests of the Patent Office are a minor consideration. In the present case the matter should be determined in line with the public interest, and the extension allowed.
Conclusion
I allow an extension of time until 24 December 2004 in order for Aristocrat to serve evidence in support.
Other matters
Mr Berman stated that it should be possible to complete Mr Davies’ declaration by 24 December. It is clear that a further declaration serving to introduce copies of the citations will also be prepared, and Mr Berman said that this will also be served by 24 December. No other evidence was foreshadowed by Mr Berman. I expect Aristocrat to take all steps necessary to ensure that evidence in support is finalised by 24 December.
Costs
Aristocrat has been successful in their request for an extension of time. Other relevant matters are that the reasons for the extension were only fully explained at the hearing. In these circumstances, Acres acted reasonably in objecting to the extension, and they should be awarded costs. I award costs in accordance with Schedule 8 against Aristocrat.
Dr S.D.Barker
Delegate of the Commissioner of Patents
30 November 2004
Patent attorneys for the applicant : Wray & Associates, Perth
Patent attorneys for the opponent : F B Rice & Co, Sydney