Aristocrat Technologies Australia Pty Ltd v IGT - [2007] APO 7

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 761822 in the name of IGT

Title: Method for Operating Gaming Devices

Action: Opposition under Section 59 by BALLY GAMING, INC, an objection to an application under Regulation 5.10(2) for an extension of time in which to serve evidence in answer, and an application under Regulation 5.10(1) for directions for the conduct of the opposition

Decision: Issued 09 February 2007.
Abstract
The extension of time was not allowed and, consequently, it was not necessary to determine
whether the directions sought by the opponent were appropriate in the circumstances.
The present extension application is the sixth made by the applicant in which to serve evidence in
answer and represents a total extension sought of 18 months. The reasons given by the applicant
to justify the total extension demonstrate a serious lack of progress in finalising the evidence in
answer which has been unsatisfactorily explained. Despite the grant of multiple extensions of
time, the applicant has only recently served a single declaration as partial evidence in answer,
and it is clear from the present extension application and submissions made at the hearing that
even if granted there is no prospect of the evidence in answer being concluded within the
presently sought extension period. Additionally the applicant is only now looking to amend the
specification which does not attest to a serious undertaking by the applicant to defend the
opposition.
The balance of the public interest also favoured closing off the time for serving
evidence in answer. Nevertheless, a short extension of time was allowed for the applicant to
serve whatever evidence it may have at hand.

PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 761822 in the name of IGT, opposition under section 59 by Bally Gaming, Inc, an objection to an application under regulation 5.10(2) for an extension of time in which to serve evidence in answer, and an application under regulation 5.10(1) for directions for the conduct of the opposition

BACKGROUND

Patent application 761822 was filed on 28 April 1999 by Acres Gaming, Inc (Acres). The application was advertised accepted on 12 June 2003 and is now proceeding in the name of IGT.
Bally Gaming, Inc (Bally) filed a notice of opposition to the application on 11 September 2003 and a statement of grounds and particulars on 11 December 2003. The application has also been opposed by Aristocrat Technologies Australia Pty Ltd (Aristocrat). On 25 May 2005 the Commissioner directed that the Bally and Aristocrat oppositions be joined. Relevantly, the effect of this direction is that evidence served by either opponent will be deemed to be served by the other opponent. IGT in its turn need only serve one set of evidence in answer which will be deemed to be served in respect of both oppositions.
Bally completed the service of its evidence in support on 11 May 2005 after having been granted five extensions of time. The last of these was unsuccessfully opposed (see Acres Gaming Inc vBally Gaming Inc [2005] APO 19). Evidence in answer was initially due for service on 11 August 2005, but this time has already been extended unopposed on five occasions. Part of the evidence in answer was served during the fifth period of extension. On 13 November 2006 IGT requested a sixth extension of time to 11 February 2007. Bally objected to this extension and I heard the matter in Canberra on 12 December 2006 concurrently with an application by Bally for directions for the further conduct of the opposition.
IGT was represented by Mr Richard McCormack of counsel instructed by Mr Boris Golja of the patent attorney firm Wray & Associates, and Bally was represented by Ms Tracey Hendy of the patent attorney firm Freehills Patent & Trade Mark Attorneys. Both parties appeared by telephone, and provided written submissions prior to the hearing.
RELEVANT PROVISIONS
The Commissioner is empowered under regulation 5.10 to issue directions relating to the conduct of opposition proceedings, and to extend the time within which a party may take a step prescribed by Chapter 5, including the service of evidence in answer. Regulation 5.10(5) relevantly provides that before granting an extension of time or giving a direction, I must be reasonably satisfied that the extension or the direction is appropriate in all the circumstances.
The principles applicable to the broad discretion conferred by regulation 5.10 to grant extensions of time were considered by the Federal Court in Ferocem Pty Ltd v Commissioner of Patents 28 IPR 243, A Goninan & Co Ltd v Commissioner of Patents 38 IPR 213, and National Starch &Chemical Company v Commissioner of Patents 50 IPR 398.
These principles do not demand an imperative compliance with particular requirements, but rather as said by Burchett J in Ferocem involve:
“a balancing exercise, in which competing considerations must be taken into account. There are the interests of the persons directly concerned in the application and opposition in question. There are also public interests, which are not necessarily all ranged on the same side. They include the expeditious disposal of matters in the Patents Office, and questions of cost, of efficiency, and of insistence upon the professional standards being maintained by those who deal with the office. But they also include, as Kitto J pointed out in Kaiser Aluminium & Chemical Company v Reynolds Metal Co (1969) 120 CLR 136 at 143, ‘the public interest that a serious opposition by a person entitled in fact to oppose the grant of a patent should be dealt with on the merits, rather than that it should be shut out in consequence of a failure in procedure, lamentable though the failure may be’”.
In Goninan Sackville J said that in order to give proper consideration to the public interest in opposition proceedings being determined on their merits, it is necessary to consider the nature of the evidence for which the extension of time is sought and the significance of that evidence for the opposition. In National Starch Goldberg J went further in saying that, in the absence of direct material on the point, the significance of the evidence sought to be adduced might be determined from:
- the technical nature of the invention apparent on the face of the specification;
- the technical nature of the documents referred to in the statement of grounds and particulars;
- the statement of grounds of opposition and the particulars relating to each ground;
- the role and importance of experts in an opposition proceeding; and
- statements in submissions by the party seeking the extension on the nature of the evidence to be relied upon.
In Mobay Corporation v The Dow Chemical Company 24 IPR 379 at 389, the delegate of the Commissioner likened the scope of the term “direction” in regulation 5.10(1) to the sense in which it is used in the courts:
“The next point is the fundamental question of what is the scope of the term “direction”? A direction for the conduct of proceedings is a well understood legal device used by the courts to manage the cases in their lists. I note the comments of Sheppard J in E I Du Pont de Nemours & Co v Commissioner of Patents, at 538:
“Judges have power, until the hearing is concluded, to make, and to continue to make, such directions as seem to them best suited properly and adequately to manage the cases in their lists … In complex cases it is usual for courts to hold extensive directions hearings with a view to finding out what the real issues are, what the extent of the evidence will be, what steps may be taken to confine or compress evidence and how long the case will occupy the court’s time.”
Examples of the directions that courts can make can be seen in O 10, r1(2) of the Federal Court Rules. I believe that this is the sense in which the term “direction” is used in the Patents Regulations ...”
It is therefore clear enough that as the administrator of the opposition system, the Commissioner has the power to give a direction with a view to the expeditious and orderly disposal of an opposition proceeding. However, as noted by the delegate, the range of directions that the Commissioner can give are expressly limited by regulation 5.10(1)(a) to those that are not inconsistent with the Act or the regulations.
At 395 the delegate held that the language of regulation 5.10(5) did not confer on the parties to an opposition the right to be informed of and to make representations concerning a specific direction the Commissioner proposes to give:
“A party who comes to the Commissioner seeking guidance should not have to know in advance the direction that it seeks. The subject on which they seek directions must be clear, but the final direction will be dependent on all the facts as put to the Commissioner. For instance, if a party indicates that it seeks directions as to the time limits and formalities for undertaking some course of action, that would be sufficient. The Commissioner could then give the directions that seem appropriate in order to facilitate the smooth operation of the system. To do otherwise would make the process unduly complicated.”
MATTERS FOR CONSIDERATION
There are two applications under regulation 5.10 before me. The first is the application by IGT for an extension of time in which to serve evidence in answer (the present extension application). The second is the application by Bally for directions as to the completion of this evidentiary stage (the application for directions) the need for which would be obviated if I do not grant the extension sought by IGT. Accordingly, the application for directions will, if required, be dealt with following the present extension application.
THE EXTENSION APPLICATION
Reasons for the extension of time
Before considering the reasons given by IGT for the need for the present extension application, it is instructive to set out a summary of the reasons why the earlier extensions were required.
The first extension (11 August 2005)
IGT has identified two potential witnesses but requires further time to assess their suitability to provide expert evidence, and to attempt to locate other possible expert witnesses. Further time is also needed to continue the review and assessment of the large amount of evidence in support served by Bally.
The second extension (11 November 2005)
Further time is required to complete the review and assessment of the evidence in support, and to confer with counsel prior to briefing the two expert witnesses (the first expert and the second expert) that have been retained by IGT. Two further potential witnesses have been identified. The first of these has subsequently withdrawn his services due to a conflict of interest. The second is yet to confirm his ability to act for IGT. Further time is required to verify the willingness of this witness, and the suitability of additional potential witnesses identified by IGT, to act on its behalf.
The third extension (13 February 2006)
The preparation of evidence in answer has been hampered by the transfer of Acres’ IP portfolio following its acquisition by IGT. Although the acquisition was formalised in October 2003, “[IGT] personnel are only now being exposed to these oppositions for the first time.”
An appropriate strategy for the collection of evidence in answer has been developed in consultation with counsel following completion of the review and assessment of the evidence in support. The strategy assumes that the second of the further potential witnesses mentioned in the second extension application will not be acting on behalf of IGT. It also takes account of the fact that the additional potential witnesses mentioned in the same application for extension have been deemed unsuitable to provide expert evidence.
IGT has in adopting this strategy sent questionnaires (the first questionnaire) concerning “aspects of alleged prior art and alleged prior use” to the first and second experts. The first expert has recently advised that he will not be responding to the first questionnaire.
Further time is required to obtain a response to the first questionnaire from the second expert and to prepare a declaration based upon that response. “Further information and material pertaining to” the evidence in answer is still to be sent to the first expert and, subsequently, to the second expert. Further time is also required to assess the availability of other potential expert witnesses.
The fourth extension (11 May 2006)
The second expert has responded to the first questionnaire despite serious time constraints due to his work and travel commitments. In addition, information was sought from the second expert relating to the prior art Tabaret gaming system which forms a significant part of the evidence in support.
A review of the second expert’s response to the first questionnaire has revealed the need for further information from him. Some of that information has been received and is being incorporated into a draft declaration pending the receipt of the balance of the information requested.
A second questionnaire has been prepared based on the information received so far from the second expert to properly cover “further aspects of alleged prior art and common general knowledge.” The second questionnaire has been sent to the first expert.
Further time is required to finalise the declaration by the second expert, and to obtain a response to the second questionnaire from the first expert with a view to preparing a declaration for execution by him. Additionally, further time is required to provide the first and second experts with “further material”, including alleged prior art patent specifications relied upon in the evidence in support.
The fifth extension (11 August 2006)
The remaining information sought from the second expert has been received but his draft declaration has not been finalised as anticipated due to an unexpected period of leave by IGT’s principal patent attorney arising from a family medical emergency. However, it is presently anticipated that the draft declaration will be finalised within approximately 1 week.
As a result of his ongoing business commitments, the first expert has still not responded to the second questionnaire. The relevance of his evidence is again emphasised given the reliance placed by Bally on the Tabaret system in its evidence in support.
A new potential expert witness has been identified who prima facie appears to be “extremely knowledgeable about the gaming industry in Australia.”
Further time is required to finalise the draft declaration for execution by the second expert, and to prepare a declaration based upon the response to the second questionnaire from the first expert when received. Further time is also required to provide the first and second experts with “further material from the opponent’s evidence in support”, and to assess the suitability of the new potential witness to give expert evidence.
This brings me to the reasons given by IGT for the need for the present extension application.
The present extension application (13 November 2006)
The draft declaration by the second expert has been finalised and served on Bally as part of IGT’s evidence in answer.
The first expert has provided his response to the second questionnaire. This prompted further discussions with the first expert who indicated he would tender supplementary information in relation to the questionnaire. Only a partial response has been received to date.
The new potential witness mentioned in the fifth extension application (the third expert) cannot suitably provide expert evidence, although it appears that “he may be able to provide information on prior art sources” or provide the information currently awaited from the first expert. The third expert has indicated that he is in hospital, but would “try to provide information to the extent that he was able.”
In the interests of expediting and potentially settling the oppositions by Bally and Aristocrat, it is IGT’s intention to amend the specification including the claims to more clearly define the invention. It is anticipated that a request for leave to amend will be filed within the period of extension presently sought by IGT.
It is also anticipated that the information yet to be received from the first expert will be provided by him, or the third expert, and a declaration prepared, within the presently sought period of extension. As a back-up, the second questionnaire has been sent to the second expert and it is anticipated that a response will be received from him and a declaration prepared within the same period.
It is further anticipated that the first expert will review and provide commentary on the alleged prior art patent specifications relied upon in the evidence in support so that a declaration can be prepared for him within the presently sought period of extension. However, as a back-up, some of these patent specifications “may” be sent to the second expert “if necessary”.
Following a response to the second questionnaire by the second expert, material on the Tabaret system will be sent to him for comment so that a declaration can be prepared. It is currently anticipated that a substantial amount of this work will be conducted, and possibly concluded, within the extension period sought.
Subsequently, the first and second experts will be sent the “remaining material” from the evidence in support for review and comment so that declarations can be prepared. This material includes non-patent literature, and Bally’s expert evidence on the alleged prior art. However, it is not anticipated that this work will be completed within the extension period sought.
Further time is required to enable IGT to continue the preparation of its evidence in answer as outlined above, and to finalise the amendments to the specification.
The explanation of the delay
The present extension application is the sixth made by IGT and represents a total extension sought of 18 months. In considering the explanation for the delay, it is legitimate to have regard to the reasons given to justify the total extension (Goninan at 223).
IGT has provided several reasons for the delay. It principally relies upon the strategy adopted to gather expert evidence which it is submitted has been necessarily incremental following the decision of the full Federal Court in Minnesota Mining & Manufacturing Co v TycoElectronics Pty Ltd 56 IPR 248. This is apparently a reference to the observations by the full court at [45] concerning the expert evidence which had been led on the question of obviousness:
“The manner in which the evidence of some of the experts in the present case was bought into existence suggests that relatively little weight should be given to certain of that evidence. For example, witnesses were provided with a copy of the patent. They were either provided with a large number of other documents or found them in response to the task that was set them. That is hardly calculated to result in objective evidence as to what the hypothetical uninventive but skilled worker would have done. To give the patent to a prospective witness is tantamount to leading the witness. Further, unless the other documents were part of the common general knowledge in Australia before the priority date, they are not relevant to any question of obviousness.”
Bally has also referred me to the decision of the Federal Court in F Hoffman-LaRoche v New England Biolabs Inc 50 IPR 305 where Emmett J discussed the discretionary power of the court to regulate the admission of further evidence in an appeal from a decision of the Commissioner arising out of an opposition proceeding. The appeal is in the nature of a hearing de novo and, as a consequence, so the submission runs, “all evidence of relevance” should be put before the court. The suggestion again seems to be that it is now prudent for a party to an opposition to prepare its evidence on the assumption that it will be confined to that evidence in an appeal to the Federal Court.

The invention relates to a method for operating gaming devices interconnected by a computer network to a host computer which contains a number of player accounts accessible at the gaming devices. While Bally’s claim that the subject matter of the invention involves “relatively complex technology” seems to overstate the situation, it is clear enough from the statement of grounds and particulars and the evidence in support that IGT is confronted with a number of inventive step issues (including the alleged state of the common general knowledge) which it must address. In these circumstances, it is understandable that IGT would want to gather its expert evidence carefully.
Nevertheless, I do not consider the above decisions of the Federal Court to provide any basis for delay.
It is true that the full court in 3M v Tyco questioned the objectivity, and hence probative value, of evidence relating to obviousness from expert witnesses who did not speak as the hypothetical skilled but non-inventive worker. IGT submit that the ramifications of this decision are such as to compel a party to collect expert evidence in relation to the question of obviousness in a step-wise fashion so as to avoid prematurely exposing expert witnesses to material that may colour their opinion. As I understand it, the inference I have been asked to draw is that following this protocol will inevitably protract the collection of evidence. However, I do not see this as being an implication of the observations made by the full court. The court seemed to instead question the relevance of any evidence on questions of obviousness and inventive step not only because of the possible misuse of hindsight, but also because these questions involve questions of law and are ultimately for the court to determine, irrespective of the opinion expressed by any number of experts. In doing so the full court was following a long line of decisions dating back at least to British Celanese Ltd v Courtaulds Ltd 52 RPC 171 at 196 where Lord Tomlin stated:
“The area of the territory in which cases of this kind an expert witness may legitimately move is not doubtful. He is entitled to give evidence as to the state of the art at any given time. He is entitled to explain the meaning of any technical terms used in the art. He is entitled to say whether in his opinion that which is described in the specification on a given hypothesis as to its meaning is capable of being carried into effect by a skilled worker. He is entitled to say what at a given time to him as skilled in the art a given piece of apparatus or a given sentence on any given hypothesis as to its meaning would have taught or suggested to him. He is entitled to say whether in his opinion a particular operation in connection with the art could be carried out and generally to give any explanation required as to facts of a scientific kind.
He is not entitled to say nor is Counsel entitled to ask him what the Specification means, nor does the question become any more admissible if it takes the form of asking him what it means to him as an engineer or as a chemist. Nor is he entitled to say whether any given step or alteration is obvious, that being a question for the Court.”
Further to this, I can find no support in Hoffman-La Roche v New England Biolabs for the notion that the Federal Court would not entertain the admission of evidence beyond that which was before the Commissioner. Rather, as confirmed by Emmett J at [67]-[68], the parties to an appeal would be permitted appropriate opportunity to adduce further evidence designed to demonstrate, with the requisite degree of clarity, whether or not a patent, if granted, would be valid.
Either way, the fundamental vice with IGT’s submission is that it overlooks the expectation by the Commissioner that the parties to an opposition pursue the collection of their evidence with due diligence. As noted by the delegate in ExxonMobil ChemicalPatents Inc v The Associated Octel Company Limited [2003] APO 3:
“… the primary responsibility of the Commissioner is to ensure that the evidence in opposition proceedings is provided in as short a time as is reasonably possible, consistent with ensuring that the parties have every reasonable opportunity to provide full evidence in support of their case, and upon the insistence of proper professional standards. That this is so is apparent from the comments of Burchett J in Ferocem Pty Ltd v Commissioner of Patents …”
It would, as a consequence, hardly be satisfactory for a party to seek an extension of time for the reason only that evidence nominally for the purposes of a hearing on the opposition had been gathered with an eye to future court proceedings which may never eventuate.
Interestingly, the delegate in Acres v Bally was similarly unconvinced when this same reason was given as justification for the delay by Bally to serve its evidence in support of the opposition.
Moreover, an analysis of the reasons given by IGT to justify the total extension suggests to me that IGT is not progressing the preparation of its evidence with the diligence expected:
- IGT took until the third period of extension to complete its review and assessment of the evidence in support, engage the services of counsel, and devise a strategy for collecting repudiating evidence. This seems an extraordinary length of time. Prima facie, the evidence in support is not overly complicated or voluminous, and its review and assessment was apparently conducted by IGT’s principal patent attorney, and not by legally unqualified personnel. In addition, it is not at all clear why IGT was slow to formulate a strategic defence of the opposition when it had been given fair warning of the case to be answered by the statement of grounds and particulars filed over two years earlier.
- It is not clear why the alleged prior art specifications were apparently not forwarded to the first and second experts until the fifth period of extension at the earliest, especially considering that IGT has been in possession of this material for well over a year.
- No explanation has been given as to why IGT was continuing to search for suitable experts as late as the fifth period of extension which is when the third expert was identified as a potential witness.
- The second questionnaire was prepared following the receipt of certain information from the second expert during the fourth period of extension, yet was apparently not sent to him for completion until the fifth period of extension at the earliest. No explanation has been given for the delay in taking this step.
- It is not clear why IGT has apparently only now decided to amend the specification, particularly as this decision was allegedly made “in the interests of expediting and potentially settling” the opposition. It is also not clear whether the evidence still under pursuit by IGT places any express reliance on the amendments it intends to make.
- IGT apparently has no definite proposal with regard to the third expert. This seems inconsistent with an intent to progress its evidence diligently.
- The present extension application refers to the continuing need for time to enable IGT to conclude the preparation of its evidence in answer. Specifically, further time is needed to prepare a declaration based on evidence from the second expert concerning the Tabaret system, and to provide the first and second experts with the remaining evidence in support for review and comment. At best, IGT expects to complete only one of these tasks within the period of extension now sought.
This situation appears quite unsatisfactory. I would expect the preparation of evidence to be well advanced at this late stage of proceedings, particularly given that IGT procured the services of the first and second experts some 12 months ago, and has had the material in question available to it for an even longer period of time.
Bally has submitted that the reasons advanced by IGT to justify the total extension demonstrate a serious lack of progress in finalising its evidence which has been unsatisfactorily explained.
I agree. None of the material before me is suggestive of any deliberate attempt on the part of IGT to delay proceedings. However, aside from the concerns I have expressed above, I note that despite the grant of multiple extensions of time, IGT has only recently served partial evidence in answer consisting of a single declaration by the second expert (the Spencer declaration) and four exhibits. The Spencer declaration is largely in the form of a response to the first questionnaire which was forwarded to the second expert several months earlier. Furthermore, it is clear from the present extension application that even if granted there is little or no prospect of the evidence in answer being concluded within the presently sought extension period. While this is suggestive of a lack of candour on the part of IGT, I am conscious that the present extension application must be considered on its merits (Ferocem at 248).
IGT has in this connection also attempted to justify the delay by pointing to the difficulties it has encountered in pursuing evidence from the first and second experts due in part to their competing commitments including overseas travel.
However, activities of this kind have been repeatedly rejected by the Commissioner as constituting extenuating circumstances in the context of opposition proceedings. See in this regard Eleven Lighting Pty Limited v Interium Pty Ltd [2002] APO 25, Imarx PharmaceuticalCorp v Mallinkrodt Medical Incorp [2001] APO 10, Lessafre et Cie v Burns Philip Research &Development Pty Ltd (1997) AIPC 91-360, and Minproc Technology Pty Ltd v CommonwealthScientific and Industrial Research Organisation 35 IPR 48. As stated, for example, in Minproc at 51:
“… I am also mindful of the ongoing work commitments of experts in other activities besides the need to provide commentary on evidence. However I do not think that these situations are different from the normal occurrences in opposition proceedings. Analysis of the [evidence], drafting declarations, forwarding them to experts … reviewing the evidence and declarations, awaiting replies, and prioritising other work commitments are routine activities in opposition proceedings. Normal timing provisions in the patent regulations make allowances for all these circumstances. I do not think these activities, alone, justify an extension of time.”
In IGT’s case I see nothing to suggest that the delay in obtaining evidence from the first and second experts is due to circumstances that are out of the ordinary.
In Henkel Corporation v Makhteshim Chemical Works Limited [2000] APO 51, the delegate took into account the business commitments of specialist medical practitioners when deciding that the delay in completing the evidence sought to be adduced had been satisfactorily explained. However, apart from the delegate’s primary reliance on other factors in reaching this decision, none of the material before me indicates that a unique field of technology is involved here.
I am additionally not persuaded that the transfer of responsibility for Acre’s IP portfolio to IGT, or the unplanned absence of its principal attorney, justify the delay. After all, IGT formally acquired Acres in 2003 which is the same year Bally filed its notice of opposition. This indicates to me that IGT has not, as expected, worked diligently with whatever resources are available to it (see, for example, Zenon Environmental Inc v Memcor Australia Pty Ltd [2006] APO 24). In addition, the short absence of two weeks by IGT’s principal attorney seems insignificant given the length of the delay that has transpired to date.
Overall, then, I consider that IGT has not provided a satisfactory explanation of the delay.
This is not, however, a mandatory requirement and therefore does not foreclose proper consideration of other relevant factors (Ferocem at 248).
The public interest
As made clear in Ferocem, the public interests are not all ranged on the same side. While these interests are certainly in favour of seeing matters before the Commissioner pursued diligently, they must be balanced against the need to ensure that a serious opposition is dealt with on its merits.
There can be no doubt from the statement of grounds and particulars and the evidence in support that a serious opposition is in train. In Kaiser Aluminium, Kitto spoke of the public interest in ensuring that a serious opponent is not shut out because of a failure in procedure, but it is clear enough from cases such as SDS Digger Tools Pty Ltd v Pasdonnay Pty Ltd [1995] APO 57 that the public similarly has an interest in the ability of an applicant to mount a serious defence to the opposition rather than have the defence shut out because of a procedural failure. However, IGT’s delay in preparing its evidence and the failure to satisfactorily explain the delay does not to my mind attest to a serious undertaking by IGT to defend its patent application. The present extension application will bring the total time IGT has had to mount a serious defence to 21 months, and yet despite the resultant delay in proceedings has only filed the Spencer declaration and is only now looking to amend the specification.
The public interest in determining a serious opposition on its merits requires me to form a view as to the nature and significance of the evidence that IGT seeks to adduce. I am guided here by what Sackville J said in Goninan at 225-6:
“I do not mean to suggest that the evidence has to be scrutinised in the same way as would occur at a hearing on the merits. But unless the delegate forms a view as to the issues addressed by the proposed evidence, and whether that evidence is likely to be important in the opposition proceedings, it is difficult to see how proper consideration can be given to the public interest in having such proceedings being determined on their merits.”
In its statement of grounds and particulars Bally asserts that the claimed invention is not novel and does not involve an inventive step, and it is readily apparent from a review of the evidence in support that Bally intends to rely heavily on expert evidence as to what information, including details of the Tabaret system, may be regarded as common general knowledge in the gaming industry in Australia to substantiate these assertions. It is well settled in law that the state of the common general knowledge must be determined on the basis of evidence from suitably qualified experts. When considered against this background, the need for IGT to pursue evidence from its own experts of what was known by the person skilled in the relevant art, and the potential relevance of that evidence to a determination of the opposition on its merits, becomes apparent.
The orderly progress of opposition proceedings is also important to the public interest. The fate of the application has been uncertain for a considerable period of time and, if granted, the extension now sought by IGT will cause a further delay. It is also clear that the present extension application will not be the last. In fact I was advised during the course of the hearing that IGT did not expect to complete its evidence until as late as the end of May 2007. It is clearly not in the public interest to prolong the opposition process indefinitely, and I therefore think that the need to bring some finality to the time for serving evidence in answer carries more weight than the likely importance of the evidence being pursued by IGT.
The interests of the parties
Clearly, IGT’s interests would be best served by granting an extension of time to enable it to continue to mount its defence to the opposition. On the other hand, I accept that Bally could be disadvantaged by a further protraction of proceedings if I grant the extension presently sought by IGT. However, I note that Bally’s own actions have not demonstrated any real urgency in bringing the matter to a close. Any undue effect on Bally must I think be considered in the light of the five extensions that it was granted to finalise the evidence in support.
Thus I find that the interests of the parties are finely balanced and are of little weight in my overall considerations.
CONCLUSION
I have found that IGT has not provided a satisfactory explanation of the need for the present extension application. I have also found that the balance of the public interest favours closing off the time for serving evidence in answer.
I am accordingly not satisfied that an extension of time is appropriate in all the circumstances. Consequently, I do not need to turn my attention to the application for directions.
Given IGT’s conduct to date, it could be inferred that evidence in answer would not be forthcoming even if the present extension application was allowed. Nevertheless, it is in the public interest to allow a short extension of time for IGT to file any evidence it may have at hand.
I therefore allow IGT seven (7) days from the date of this decision to serve whatever evidence is immediately available.
COSTS
The power of the Commissioner to award costs is discretionary, so I must take all relevant considerations into account.
In matters before the Commissioner, costs usually follow the event. In the present case I have found that the extension of time presently sought by IGT is not appropriate in all the circumstances. I therefore award costs against IGT.
O L Haggar
Delegate of the Commissioner of Patents
09 February 2007
Patent attorneys for the applicant: Freehills Patent & Trade Mark Attorneys, Melbourne, VIC
Patent attorneys for the opponent: Wray & Associates, Perth, WA