Aristocrat Technologies Australia Pty Ltd v IGT - [2007] APO 26

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 754689 in the name of ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD.

Title: Slot Machine Game and System with Improved Jackpot Feature.

Action: Opposition under Section 59 of the Patents Act by IGT and an application under Regulation 5.10(4) by IGT to serve further evidence.

Decision: Issued 9 August 2007.
Abstract

The opponent filed some 30 additional prior art documents as further evidence. The opponent also foreshadowed still further evidence to come from key witnesses in the field who could comment on the additional prior art.
Furthermore the opponent indicated there could be further evidence to come from a notice to produce documents that the opponent desired to have served on the patent applicant by the Commissioner of Patents under section 210(c).
It was found that the further evidence was unlikely to add significantly to the opponent’s case in this opposition. Furthermore this opposition was now at a late stage in proceedings and would be significantly further delayed if this further evidence was allowed.
The application to serve further evidence was refused.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent application 754689 by ARISTOCRAT TECHNOLOGIES AUSTRALIA PTY LTD, and opposition thereto, under Section 59, by IGT, and an application by IGT under Regulation 5.10(4) to serve further evidence.

BACKGROUND

Aristocrat Technologies Australia Pty Ltd (“Aristocrat”) filed patent application 754689 on 8 July 1998. The application claims priority from two Australian provisional applications filed on 8 July and 9 September 1997. Patent application 754689 was advertised accepted on 21 November 2002.
Acres Gaming Inc (“Acres”) filed a notice of opposition on 21 February 2003 to the grant of a patent on application 754689. A statement of grounds and particulars in support of the opposition followed on 21 May 2003.
Acres gained numerous extensions of time to serve evidence in support. The serving of that evidence was completed on 2 March 2005. Aristocrat obtained several extensions of time to serve evidence in answer. On 4 December 2006 Aristocrat advised the Patent Office that it would not be filing any evidence in answer.
On 9 February 2007, IGT filed a request to amend the notice of opposition to record IGT as the opponent. The reason for the request was that the development of the intellectual property in gaming technologies that Acres was involved in had been assigned to IGT. The opposition is now proceeding in the name of IGT.
On 13 April 2007 IGT filed an application to serve further evidence on Aristocrat. IGT also concurrently served two statutory declarations. Both declarations were by Mr Stephen Krouzecky, patent attorney responsible for the conduct of IGT’s opposition. The first declaration is in support of the application to serve further evidence. The second declaration lists and is accompanied by some 30 documents of alleged prior art. In the first declaration Mr Krouzecky further indicated key individuals were being engaged to provide statutory declarations…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2007] APO 26
Decision Date: 9 August 2007

CaseChat Overview and Summary

Aristocrat Technologies Australia Pty Ltd filed a patent application for a slot machine game and system with an improved jackpot feature. IGT opposed the grant of this patent and later applied for permission to serve additional evidence in support of the opposition. The dispute was heard by a delegate of the Commissioner of Patents. The key legal issue was whether the delegate should permit IGT to serve further evidence in the opposition, given the potential for significant delay and the lack of demonstrated significance of the proposed evidence. The delegate considered the public interest in expeditious resolution of patent oppositions, the interests of the parties, and the explanation for the delay in serving the further evidence. After hearing arguments from both parties, the delegate found that the proposed further evidence was unlikely to add significantly to IGT's case and that allowing it would cause undue delay. The delegate refused IGT's application to serve further evidence and awarded costs to Aristocrat. The opposition proceedings, which had already lasted over four years, were nearing conclusion and the delegate did not want to allow further unnecessary delays.

Orders