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…

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 7
Decision Date: 9 February 2007

CaseChat Overview and Summary

The matter before the court involved an opposition to a patent application for a method of operating gaming devices interconnected by a computer network. The applicant, IGT, sought a sixth extension of time to serve evidence in answer, while the opponent, Bally Gaming, Inc., objected to the extension and sought directions for the conduct of the opposition. The court had to decide whether to grant the extension and, if not, whether to provide directions for the completion of the evidentiary stage.

The court found that IGT's reasons for the delay were unsatisfactory and that the balance of the public interest favoured closing off the time for serving evidence in answer. The applicant's conduct demonstrated a lack of progress in finalising the evidence, and there was no prospect of the evidence in answer being concluded within the presently sought extension period. The public interest in determining a serious opposition on its merits required the court to form a view on the nature and significance of the evidence that IGT sought to adduce. While the evidence being pursued by IGT might be relevant, the need to bring some finality to the time for serving evidence in answer carried more weight. Therefore, the court did not grant the extension but allowed a short extension of time for IGT to file any evidence it may have at hand.

The court awarded costs against IGT for the unsuccessful extension application. The patent attorneys for the applicant were Freehills Patent & Trade Mark Attorneys from Melbourne, VIC, and for the opponent, Wray & Associates from Perth, WA.

Orders