Aristocrat Technology Australia Pty Ltd v IGT - [2008] APO 9

ABSTRACTS OF DECISIONS
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No.769093 in the name of IGT

Title: Bonusing Apparatus and Method for Gaming System Providing Flexibility and Interest

Action: Opposition by Aristocrat Technologies Australia Pty Ltd and costs in proceedings where an application is withdrawn following allowance of S104 amendments

Decision: Issued 4 April 2008.
Abstract

Award of costs where the opposition was withdrawn after the amendments were allowed.
Decided from the submissions of Aristocrat that withdrawal of the opposition was predicated on the allowance of the amendments. It is also apparent that some of the amendments were substantial in nature as they further defined the invention.
While a broad view of the situation could be taken in which it is reasonable to associate the amendments with the opposition, this proposition can be rebutted. In this case, the rebuttal took the form of a lack of nexus of the statement of grounds and particulars and the evidence with the amendments. Unless it is manifestly obvious otherwise, analysis of the facts of the case would be required.
Decided that it is not possible to determine the merits of the case without review. Consequently, no award of costs was made: Sensis Pty Ltd v Super Internet Site System Pty Ltd [2006] APO 27 followed.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. 769093 by IGT, opposition by Aristocrat Technologies Pty Ltd and costs in proceedings where the application is withdrawn following allowance of S104 amendments.

BACKGROUND

Patent application 74817/00 was filed by IGT and is the national phase application of WO 01/19475. The application was advertised as accepted on 15 January 2004. Opposition by Aristocrat Technologies Pty Ltd (hereinafter called Aristocrat) was filed 15 April 2004. Evidence-in-support was completed on 29 March 2006 after 8 extensions of time were granted and evidence-in-answer was completed on 28 February 2007. On 28 March 2007, Aristocrat filed a notice of intent to serve evidence-in-reply. Further extensions of time were granted to 28 August 2007 for the filing of this evidence.
On 25 October 2006, IGT filed a request under S104 to amend the specification. Allowance of the request was advertised on 28 June 2007. On the 31 August 2007, Aristocrat filed a notice of withdrawal of the opposition.
On 15 October 2007, IGT filed its claim for costs in the matter. On 9 November 2007, a delegate of the Commissioner indicated that he intended to award costs against the opponent as he considered that the opponent had “effectively surrendered” to the applicant. On 27 November 2007, Aristocrat filed its submission on costs and submitted that cost should be awarded against IGT. A delegate of the Commissioner agreed with this submission and indicated in a letter dated 4 January 2008 that in the absence of any submissions from the applicant, the Commissioner would award costs in this opposition in accordance with the practice as laid out in paragraph 3.13.6.5 of the Manual…

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: [2008] APO 9
Decision Date: 4 April 2008

CaseChat Overview and Summary

Aristocrat Technology Australia Pty Ltd filed an opposition against IGT's patent application 769093 for a "Bonusing Apparatus and Method for Gaming System Providing Flexibility and Interest." The opposition was later withdrawn by Aristocrat following the allowance of substantial amendments to the specification by IGT under section 104 of the Patents Act 1990. IGT subsequently applied for costs in the proceedings, and the Commissioner's delegate initially indicated an intention to award costs against Aristocrat, considering the withdrawal of the opposition as a surrender. Aristocrat argued against this, asserting that the amendments were substantial and not driven by the opposition.

The legal issues before the court were whether the substantial amendments to the specification could be reasonably seen as a result of the opposition and whether an award of costs was appropriate given the withdrawal of the opposition. The court considered the principles laid out in the Manual of Practice and Procedure, which suggest that if the opposition led to the amendment, costs should be awarded against the applicant. However, if the amendment's connection to the opposition was not clear, no award of costs should be made. The Commissioner's delegate noted that while the amendments were substantial and the chronology suggested a connection to the opposition, a lack of nexus between the opposition's grounds and the amendments required a closer examination of the facts, which would not be appropriate without a trial on the merits.

The court concluded that without a clear nexus between the opposition and the substantial amendments, it was not possible to determine the merits of the case without a review of the evidence. Following the precedent set in Sensis Pty Ltd v Super Internet Site System Pty Ltd [2006] APO 27, the Commissioner's delegate determined that no award of costs was appropriate. Each party should bear its own costs. This decision highlights the need for a clear connection between opposition proceedings and substantial amendments for a cost award to be justified.

Orders