ATF Mining Electrics Pty Ltd v Rynand Pty Limited - [2005] APO 15

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. 704930 in the name of ATF Mining Electrics Ltd

Title: Load Control Module

Action: Request under Patents Regulation 5.5(1) by ATF Mining Electrics Ltd for dismissal of an opposition made under Subsection 104(4) by Rynand Pty Limited

Decision: Issued 01 April 2005.
Abstract

A request for dismissal of a S104 opposition was made. While the S104 opposition was not dismissed in its entirety, some of the particulars were directed not to be available at the hearing of the S104 opposition. Furthermore, one ground of the S104 opposition was withdrawn on the day of the hearing.
As both parties were partially successful, no award of costs was made.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No.704930 by ATF Mining Electrics Pty Ltd and a request under Patents Regulation 5.5(1) by ATF Mining Electrics Ltd for dismissal of an opposition made under Subsection 104(4) by Rynand Pty Limited.

BACKGROUND

Patent application 704930 in the name of ATF Mining Electrics Pty Ltd (herein after called ATF) was filed as a PCT application of PCT/AU94/00492 by Metal Manufacturers Limited and was accorded AU74853/94. The PCT application claimed priority from an earlier Australian provisional PM0808 filed on 24 August 1993. The application proceeded to acceptance and was subsequently advertised as accepted on 6 May 1999. On 6 August 1999, Bramco Electronics (herein after called Bramco) filed a notice of opposition and on 22 November 1999, ATF requested recordal of an assignment dated 17 June 1999 from Metal Manufacturers Limited to itself.
A decision on the substantive opposition has issued as ATF Mining Electrics Pty Ltd v Bramco Electronics [2003] APO 47 (31 October 2003). ATF was given 60 days within which to propose suitable amendments. Subsequently, a S104 request was filed on 29 December 2003 and advertised on 30 June 2004.
Rynand Pty Ltd (herein after called Rynand) filed a notice of opposition to the section 104 amendments on 1 September 2004. On 29 November 2004, the statement of grounds and particulars was filed. On 14 December 2004, ATF filed a request for dismissal of the opposition to the S104 amendments.
A hearing was set down for 15 February 2005 at Canberra. Mr John Walsh, patent attorney, of Walsh & Associates attended on behalf of ATF. Also in attendance was Peter Cockbain from ATF. Connie Karathomas, patent attorney from FB Rice appeared by telephone on behalf of the opponent, Rynand.
Both parties presented written submissions.
STATEMENT OF GROUNDS AND PARTICULARS FOR S104
Each ground was particularised. For the sake of simplicity, I will refer to the nomenclature as used by ATF in its submissions.
Ground 1
Section 104(5) - Section 102(2)(a)
A claim of the specification would not in substance fall within the scope of the claims of the specification before the amendment.
Particular 1: Section 104(5) - Section 102(2)(a)
The claims do not meet the requirements of Section 102(2)(a) as the claims of the specification would not in substance fall within the scope of the claims of the specification before the amendment.
G1P1              The new phrase “load protection data” as introduced into claim 1 is not restricted to the “operating parameters of the load” as previously stated in the claim.
G1P2              The new phrase “load protection data” as introduced into claim 1 is not restricted to “predetermined” information as previously stated in the claim.
G1P3              The new phrase “load operating data” as introduced into claim 3 is not restricted to “predetermined conditions” as previously stated in the claim.
Ground 2
Section 104(5) - Section 102(2)(b) — Section 40(3)
The proposed amendments result in the specification not complying with paragraph 40(3) of the Patents Act 1990.
Particular 2: Section 104(5) - Section 102(2)(b) — Section 40(3)
The claims do not meet the requirement of Section 40(3) since all the claims are not clear and succinct.
G2P1              The phrase “load protection data” as introduced into claim 1 is not clear.
G2P2              The phrase “load protection data” as introduced into claim 1 is not fairly based on the specification.
G2P3              The term “transmit” as introduced into claim 1 is not fairly based on the specification.
G2P4              The phrase “load operating data” as introduced into claim 3 is not clear.
G2P5              The phrase “load operating data” as introduced into claim 3 is not fairly based on the specification.
G2P6              Claim 1 is not fairly based as it does not include the limitation that the first signal is provided from the sensor unit to the controller.
G2P7              Claim 1 is not fairly based as the first signal to be transferred from the sensor to the controller is not limited to being at start up.
G2P8              Claim 1 is not fairly based as it does not include the limitation that the first signal is provided in response to a request from the controller.
Ground 3
Reg 22.2C - fee item 222 of Schedule 7 of the Patents Regulations 1990
The request for leave to amend the complete specification is taken not to have been made or filed.
Particular 3: Reg 22.C - fee item 222 of Schedule 7 of the Patents Regulations 1990
G3P1 “The request for leave to amend the complete specification together with the required fee item 222 was filed out of time. The Delegate of the Commissioner of Patents stated in the decision dated 31 October 200[4]3 that the applicant had 60 days from the date of the decision to propose suitable amendments. The amendments [were filed 29 December 2003] and the fee was paid on 10 May 2004 outside the allowed 60 day period.”
REQUEST FOR DISMISSAL
On 15 December 2004, ATF requested dismissal of the above opposition under Regulation 5.5(1). Their reasons for the request are as follows:
“1. A case for opposition under S104(5) - S102(2)(a) and S102(2) is not demonstrated by the particulars in the Statement of Grounds and Particulars.
2 The Statement includes particulars which cannot support the stated grounds of opposition. The particulars relate to two identified claims whereas the grounds are stated to relate to all claims. The particulars are therefore inadequate and do not enable the Applicant to understand the case it has to answer in relation to all claims.
3 The Statement refers to grounds and particulars under S102 which relate to subject matter already given detailed consideration and which was the subject of a finding by this tribunal in the decision of 31 October 2003. The Opposition is manifestly groundless and cannot succeed because the particulars relate to specific claim terminologies the meanings, scope and context of which were the subject of that decision.
4 The Statement of Grounds and Particulars includes a ground under Regulation 22.2C which is not an allowable ground of opposition under S104(4) & (5). The only allowable grounds of opposition under S104 are those available under S102.
5 The Statement includes particulars which go beyond the amendments. Certain particulars relate to claim 1 as a whole and are not limited to the specific amendments made to that claim.”
DECISION
In relation to fee payment (G3P1), Rynand queried the situation and was subsequently informed in an official letter dated 10 February 2005 that as the invitation to pay (ITP) was not issued as required by regulation 22.2C(1)(b), then regulation 22.2F(2) applied rather than the provisions of regulation 22.2C(2). As the fee was paid on 10 May 2004, which is in line with the provisions of regulation 22.2F(5), Rynand were advised that no further issue arose. Rynand subsequently withdrew ground 3 in its submissions of 15 February 2005.
Law on Dismissal: dismissal of the whole of the opposition
The grounds for dismissing an opposition are similar to the grounds for summary dismissal which are described in General Steel IndustriesInc v Commissioner for Railways (N.S.W.) and others (1964), 112 CLR 125:
“It is sufficient for me to say that these cases uniformly adhere to the view that the plaintiff ought not to be denied access to the customary tribunal which deals with actions of the kind he brings, unless his cause of action - if that be the ground on which the court is invited to exercise its powers of summary dismissal - is clearly demonstrated. The test to be applied has been variously expressed; “so obviously untenable that it cannot possibly succeed”; “manifestly groundless”; “so manifestly faulty that it does not admit of argument”; “discloses a case which the court is satisfied cannot succeed”; “under no possibility can there be a good cause of action”; “be manifest that to allow them (the pleadings) to stand would involve useless expense.”
“At times the test has been put as high as saying that the case must be so plain and obvious that the court can say at once that the statement of claim, even if proved, cannot succeed; or “so manifest on the view of the pleadings, merely reading through them, that this is a case that does not admit of reasonable argument”; “so to speak apparent at a glance.”
It is also established that argument in support of dismissal of the opposition should not argue the substantive issues of the opposition; it must establish the opposition as a whole cannot possibly succeed without going into the details of the opposition. See L’Air Liquide, SA pour L’Etude et L’Exploitation des Procede Georges Claude v The Commonwealth Industrial Gases Ltd 24 IPR 77; (1992) AIPC 90-872 and Stack v Commissioner of Patents (1999) 43 IPR 663. Also, in Norwood Industries v Macbird Floraprint Pty Ltd (1992) AIPC 90-912 where it was held that a ground of opposition should not be dismissed merely because some of the particulars said to support it were defective.
Reading through the statement of grounds and particulars I cannot say that they are “so obviously untenable.” As the delegate stated in L’Air Liquid (supra);
“so long as at least one ground has at least one adequate particularization, the opposition should not be dismissed in its entirety”
On this basis, I believe that the opposition as a whole should not be dismissed.
The applicant has also raised a number of specific issues regarding dismissal of individual grounds. I will deal with these issues under the relevant ground in my decision.
Law on Dismissal: dismissal of individual grounds of opposition
It is established that the Commissioner may dismiss a particular ground of opposition where it is unsupported by any of the particulars in the statement of particulars. See L’Air Liquide (supra). But, the Commissioner should not dismiss a ground of opposition merely because it is not supported by some of the particulars. See Norwood Industries Pty Ltd v Macbird Floraprint Pty Ltd 24 IPR 368; (1992) AIPC 90-912 and Genelabs, Technologies Inc v Murex Diagnostics Australia Pty [1996] APO 47 (2 October 1996); 36 IPR 54 36 IPR 54.
I will now consider the grounds and particulars of the opposition and determine whether they should be dismissed.
Ground 1
I think that Ground 1 and its particulars can be considered together. At first glance it would seem that in relation to G1P1, G1P2 and G1P3, the opponent is entitled to argue that as a result of the amendments, the claims (as amended) do not fall within the scope of the claims of the specification before amendment. I believe that there is some scope for this argument to be raised even though the same words are held to be unclear and lack fair basis as per the particulars of ground 2.
ATF further submitted that the ground makes reference to all of the claims whereas the particulars only make reference to claims 1 and 3. Consequently, ATF submitted that it do not know the case it had to answer. As only claims 1 and 3 have been amended, I believe that the submissions should be restricted to these claims. However, if there are any consequent issues with the appended claims then these can be dealt with at the hearing of the S104 opposition. Accordingly, Ground 1 is not dismissed.
Ground 2
In relation to G2P1 to G2P5, ATF argued that a consideration of these matters is simply a re-argument of the substantive decision.
In Moduline Pty Ltd v Electric Cable Duct Systems Pty Ltd [2002] APO 11 (27 March 2002) the matter of reconsidering matters that had already being decided was considered. The delegate followed the delegate from ICI Australia Operations Pty Ltd v Commercial Polymers Pty Ltd [1997] APO 70 (24 December 1997) where it was stated:
"To dismiss an opposition, in whole or in part, on the basis that the opposition would be a rehearing of a previous matter, can only be done where the matter has previously been decided and the issue pressed in the opposition can only involve a reconsideration of the decided matter."
Rynand submitted that the delegate did not consider the terms “load protection data” or “protection data” in his decision. As I believe that there is scope for an argument that the words introduced by the proposed amendments are unclear and lack fair basis, G2P1 to G2P5 can be argued at the hearing of the opposition.
ATF further submitted that G2P6, G2P7, and G2P8 were raising issues that did not arise as a result of the amendment. I would agree with this submission, as I cannot see any relationship between these particulars and the amendments to the claims. Clearly, to further consider the fair basis of these claims would be either reconsidering issues that had already being decided or raising fresh allegations that do not arise as a result of the amendments; neither of which is permissible. In my view, these particulars are manifestly untenable and I direct that they not be available to the opponent at the hearing on the s104 opposition: Concorde Trading Pty Ltd v Croner Trading Pty Ltd [1994] APO 31 (4 May 1994); 29 IPR 507, CSIRO v CEM Corp [1994] APO 25 (29 March 1994); 29 IPR 72; (1994) AIPC 91-066 and Diamond Scientific Co v CSL Ltd [1992] APO 55 (29 September 1992); (1992) AIPC 90-927.
Ground 3
This was withdrawn on the day of the hearing. As discussed above, as no issue remains to be considered under this ground, no further comment needs to be made.
Conduct of the Opponent
ATF submitted that the conduct of the opponent in the case should be a relevant consideration in my decision as some of the particulars were clearly irrelevant and hence must have being framed in bad faith. The particulars in question, G2P6, G2P7, and G2P8 have already been discussed and I am in agreement with that aspect of ATF’s submission in which these particulars are characterised as irrelevant. However, I do not agree that they point to ulterior purpose or bad faith. Mr Walsh further submitted that the history of the case including the present action was evidence that pointed to an ulterior purpose. However, Mr Walsh for ATF correctly, in my view, pointed out that ulterior purpose was difficult to establish in practice. Rynand submitted that there was no evidence of bad faith in its proceedings. Reviewing theses submissions, I am not convinced that there is sufficient evidence for me to come to the conclusion pressed by Mr Walsh. Accordingly, I find that the opponent does not have a case to answer.
The issue of conduct of the opponent was discussed in the case of Fysh Pty Ltd v Wesley Jesssen Corporation [1998] APO 74 (31 December 1998), in which a number of grounds of dismissal were raised. Ground 6 of that dismissal action is relevant.
“6.The Commissioner in his discretion should refuse to allow the amendments as provided under section 104(3) due to the conduct of the applicants.
In his decision, the delegate stated:
“The discretion allowed under the 1990 Act is somewhat different in character and I note the combined effect of Regulations 10.2 to 10.5 and Regulation 5.3(4) which states that:
“A person must not oppose the allowance of a proposed amendment of a complete specification, except on the grounds that the amendment is not allowable under section 102 of the Act (“what amendments are not allowable?”)”
Hence, I find that the conduct of a party is not relevant to the Commissioner’s consideration under Section 104(3) and as Ground 6 does not go to the allowability of the amendments under Section 102, it is obviously untenable. That is not to say that the conduct of the parties may not be considered subsequently in an award of costs or by the Delegate in the final Section 59 determination in the event that a further opportunity to amend is contemplated. Here I refer to the decision of Deputy Commissioner Herald in Queensland Plumbing Pty Ltd v Trade Waste Diversion Pty Ltd AIPC 90-992 at 39,390 who found that, if the issue of alleged false suggestion was a relevant consideration, it was in the discretion of the Section 59 Delegate in allowing the applicant to amend the application.
I am in complete agreement with the delegate in this matter and conclude that conduct of the opponent is not a relevant consideration in the dismissal action but may be considered in an award of costs.
CONCLUSION
I find that Ground 1 and G2P1 to G2P5 are not to be dismissed. However, in relation to Ground 2, particulars G2P6 to G2P8, I direct that they are not available to be argued at the S104 opposition. Ground 3, as already indicated, has being withdrawn.
Consequently, pursuant to regulation 5.10(1)(b) I direct that the time for service of evidence in support of the opposition as determined by regulation 5.8(1A) be extended to 3 months from the date of this decision.
COSTS
Costs normally follow the event. In this case both parties have being partially successful. In relation to the submission that the opponent possessed an ulterior purpose, I expressed the view that there was insufficient evidence to establish this in the current action. Consequently, I do not think that there needs to be any adjustment to the award of costs. Hence, I make no award of costs.
G.M.Cox
Delegate of the Commissioner of Patents
01 April 2005
Patent attorneys for the applicant : Walsh & Associates, Sydney
Patent attorneys for the opponent : F B Rice & Co, Sydney