Australian Postal Corporation v David John Holton

[2011] APO 103

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Australian Postal Corporation v David John Holton [2011] APO 103

Patent:2007100419

Title:Method and system for electronic delivery of essential mail items

Patentee:  David John Holton

Opponent:  Australian Postal Corporation

Delegate:  Xavier Gisz

Decision Date:  20 December 2011

Submissions Filed:                   28 July 2011, 24 October 2011, 28 November 2011

Catchwords:  PATENTS – request under subregulation 5.5(1) – application for dismissal of opposition to amendments under section 102 – application for dismissal rejected

Representation:  Patentee:  Watermark Patent and Trade Marks Attorneys, Victoria

Opponent:Allens Arthur Robinson Patent & Trade Marks Attorneys, Victoria

IP AUSTRALIA

AUSTRALIAN PATENT OFFICE

Patent Application:                   2007100419

Title:Method and system for electronic delivery of essential mail items

Patentee:  David John Holton

Date of Decision:  20 December 2011

DECISION

The Application for Dismissal of Opposition is rejected. The opposition can continue.

I award costs in accordance with Schedule 8 of the Patents Regulations 1991 against the patentee, David John Holton.

REASONS FOR DECISION

Background

1. Innovation Patent Application 2007100419 (the Patent) was filed by David Holton (the Patentee) on 21 May 2007 as a divisional application from international patent application PCT/AU2007/000054 (WO2007/079550).

1. The Patent was certified on 28 August 2007. On 14 May 2008 the Australian Postal Corporation (the Opponent) filed a Notice of Opposition to the Patent.

1. On 30 September 2010, following the evidentiary stages of the opposition under s 101M, a Delegate of the Commissioner of Patents issued a decision Australian Postal Corporation v David John Holton [2010] APO 22, finding the claims invalid for lack of novelty and innovative step. The Delegate allowed the Patentee to propose amendments to the claims to address the Delegate's findings.

1. In response to the Delegate's invitation, the Patentee requested leave to amend the Patent, in accordance with a Statement of Proposed Amendments dated 29 November 2010. Leave to amend was allowed and advertised in the Official Journal on 21 April 2011.

1. On 21 July 2011, the Opponent filed a Notice of Opposition to the Amendments. On 28 July 2011, the Patentee filed an Application for Dismissal of the Opposition. The Opponent served its Statement of Grounds and Particulars (the SGP) in support of the opposition on 21 October 2011. The Patentee provided submissions in support of its request for dismissal on 24 October 2011. The Opponent provided submissions for rejecting the request for dismissal on 28 November 2011.

Relevant Law

1. The present opposition relates to an amendment under section 104. Therefore the only available grounds for opposition to an amendment under section 104 are given in section 102 which states:

(1)   An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

(2)   An amendment of a complete specification is not allowable after the relevant time if, as a result of the amendment:

(a)a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment; or

(b)the specification would not comply with subsection 40(2) or (3).

(2A)     For the purposes of subsection (2), relevant time means:

(a)   in relation to an amendment proposed to a complete specification relating to a standard patent—after the specification has been accepted…

1. An opposition may be dismissed pursuant to regulation 5.5 of the Patents Regulations 1991 which states:

(1)  An applicant may:

(a) within 1 month of being served with a copy of a statement by an opponent under paragraph 5.4(a); … request the Commissioner in the approved form to dismiss the opposition.

(2) As soon as practicable after a request is made, the Commissioner must inform the opponent of the request having been made.

(3) The Commissioner may dismiss the opposition whether or not the applicant has requested dismissal of the opposition.

1. Office practice in relation to dismissal of oppositions is set out in Les Laboratories Servier v Apotex Pty Ltd [2008] APO 11, where the delegate noted:

   “a proceeding may be dismissed where a party has “no reasonable prospect of successfully prosecuting the proceeding” (see for example Garrett v Macks [2006] FCA 601, White Industries Aust Ltd v Commissioner of Taxation [2007] FCA 511, Boston Commercial Services Pty Ltd v GE Capital Finance Australasia Pty Ltd [2006] FCA 1352, Rogers v Asset Loan Co Pty Ltd & Ors [2007] FCA 195, Vans, Inc. v Offprice.Com.Au Pty Ltd [2006] FCA 137, E. & J. Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 136, and Alphapharm Pty Ltd v Merck & Co Inc [2006] FCA 1227).”

2. Relevant to the present matter, the delegate in Servier (supra) concluded several key principles as follows:

·“An opposition need not be “clearly untenable” or “manifestly groundless” in order for it to be dismissed. An opposition may be dismissed if it is considered to have no reasonable prospects of success.

·In determining whether or not there is a real prospect of success, consideration is given as to whether there is a real rather than fanciful issue to be decided. The onus will initially be on the applicant to show that the opposition has no reasonable prospects of success, but the onus may shift to the opponent to explain its case if a real issue is not self-evident. This will not involve an in-depth consideration of the substantive opposition, but may involve sufficient analysis to determine if a prima facie case has been established.

·A dismissal will generally be inappropriate where expert evidence is required to determine an issue. However, this does not preclude dismissal of an opposition where there is a clear deficiency in the case to be argued, such as a technical divergence of a citation and the application or where an opposition involves issues of construction and expert evidence is not necessary to clarify technical terms or other matters that are in doubt.

·Evidence of an “ambivalent character” will generally be sufficient to establish a reasonable prospect of success. However, if the evidence is only one-way, or can clearly lead only to a single conclusion, then a proceeding may be dismissed. If no particulars have been provided in relation to a ground of opposition then it may be considered to have no reasonable prospects of success.

·Care must be taken not to cause an injustice to a party by dismissing an opposition.”

10.  It is the established practice of the Commissioner that an opposition can be dismissed either in whole or in part (see L'Air Liquide, Societe Anonyme pour l'Etude et l'Exploitation des Procedes Georges Claude v Commonwealth Industrial Gases Ltd (1991) 24 IPR 77).

11.  The question of when an opposition has no reasonable prospects of success is determined by considering the statement of grounds and particulars, which briefly outlines and circumscribes the case for the opponent.  The statement identifies the material facts necessary for the particular grounds of opposition (see Mobay Corporation v The Dow Chemical Company (1992) 24 IPR 379).

The amendments

12.  A marked-up version of the amendments to the independent claims is provided below. The words added to the claims are indicated by underline, while the deleted words are indicated by strikethrough.

1.A method of providing a trusted an electronic mail service for the delivery of essential mail items to a subscriber in electronic form, the method including the steps of:

providing a delivery server having an associated database containing for storage of subscriber details;

receiving a registration application from a prospective subscriber, the registration application including predetermined minimum subscriber information and being associated with corresponding proof-of-identity data and/or documentation;

authenticating the identity of the prospective subscriber using the proof-of-identity data and/or documentation;

creating for the authenticated subscriber a unique subscriber account, and

storing corresponding subscriber details in the database;

the delivery server subsequently receiving from the subscriber a nomination of at least one service provider from which the subscriber wishes to receive considers to be a source of essential mail items in electronic form, and storing said nomination in the database in association with the subscriber details;

establishing a trusted communications channel between the delivery server and a service provider computer system;

the delivery server receiving essential mail data from the service provider via said communications channel;

the delivery server verifying that the subscriber wishes to receive an essential a mail item corresponding with the essential mail data in electronic form, by comparison with subscriber details and nominations stored in the database; and

in the event that said verification is successful, the delivery server delivering the essential mail item to the subscriber in electronic form.

4.A delivery server for the delivery of essential mail items for [sic] providing a trusted electronic mail service to a subscriber in electronic form, the delivery server including:

a database containing subscriber details including at least one nominated service provider from which the subscriber wishes to receive essential mail items in electronic form, wherein the subscriber details are obtained by:

receiving a registration application from the subscriber, the registration application including predetermined minimum subscriber information and being associated with corresponding proof-of-identity data and/or documentation;

authenticating the identity of the subscriber using the proof-of-identity data and/or documentation;

creating for the authenticated subscriber a unique subscriber account, and storing corresponding subscriber details in the database; and

receiving from the subscriber a nomination of at least one service provider which the subscriber considers to be a source of essential mail items, and storing said nomination in the database in association with the subscriber details;

means for establishing a trusted communications channel with a service provider computer system;

means for receiving essential mail data from the service provider via said communications channel;

means for verifying that the subscriber wishes to receive an essential a mail item corresponding with the essential mail data in electronic form, by comparison with subscriber details and nominations stored in the database; and

means for delivering the essential mail item to the subscriber in electronic form, in the event that said verification is successful.

5.A method of a subscriber receiving an essential electronic mail item from a service provider via a trusted electronic mail service, the method including the steps of:

the subscriber submitting a registration application including predetermined minimum subscriber information along with associated corresponding proof-of-identity data and/or documentation, whereby the identity of the subscriber is authenticated using the proof-of-identity data and/or documentation, a unique subscriber account is created, and corresponding subscriber details are stored in a mail service database;

the subscriber transmitting, to a delivery server having an associated with the database database containing subscriber details, a nomination of at least one service provider from which the subscriber wishes to receive considers to be a source of essential mail items in electronic form, wherein the delivery server stores said nomination in the database in association with the subscriber details; and

the subscriber subsequently receiving an essential a mail item from the nominated service provider in electronic form,

wherein delivery of the essential mail item to the subscriber is effected by the delivery server executing the steps of:

establishing a trusted communications channel with a service provider computer system;

receiving essential mail data from the service provider via said communications channel;

verifying that the subscriber wishes to receive an essential a mail item corresponding with the essential mail data in electronic form, by comparison with subscriber details and nominations stored in the database; and

in the event that verification is successful, delivering the essential mail item to the subscriber in electronic form.

Time of Filing the Request for Dismissal

13.  The Patentee notes in their submissions of 28 July 2011:

“Regulation 5.5(1)(a) provides that a request for dismissal of an opposition may be made 'within one month of being served with a copy of a statement by an opponent under paragraph 5.5(a)’.

Accordingly, it is normal for an application for dismissal of opposition to be made only after a Statement of Grounds and Particulars of Opposition has been filed. We submit, however, that this is not a necessary requirement under the regulations.”

14.  Although filing an Application for Dismissal of Opposition before the SGP has been served is unconventional, it is still considered to have been properly made within the prescribed time period.

The Grounds and Particulars of the Opposition

15.  The crux of opposition to the amendments is found in paragraphs 1.4 to 1.6 of the SGP.

16.  The first sentence of paragraph 1.4 of the SGP states:

“As a result of the amendments proposed, the scope of the claims is defined by reference to a "trusted electronic mail service" (claims 1 and 4) and "receiving an electronic mail item via a trusted electronic mail service" (claim 5), rather than by reference to an "electronic mail service for the delivery of essential mail items to a subscriber in electronic form" and "receiving an essential mail item from a service provider", as recited in the claims prior to amendment.”

17.  Paragraph 1.5 of the SGP states:

“Deletion of certain features of claimed integers or steps broadens the claim scope in respect of those integers or steps. As a result of the amendment, the scope of the claims extends beyond methods and systems for the delivery and receipt of "essential mail items", to encompass methods and systems for the delivery of any mail items, irrespective of their form or content, or whether they are "essential" or not.”

18.  Paragraph 1.6 of the SGP states:

“A trusted communication method or service that incorporated all of the features of the claims as proposed to be amended, but was used only to deliver "nonessential" mail items, would not have fallen within the scope of the claims before amendment. Such a method or service would not have provided the essential integer of an "electronic mail service for the delivery of essential mail items". However, such a service would fall within the scope of the claims in their amended form, as the service could be accurately characterised as a "trusted electronic mail service". Accordingly, as a result of the amendment, at least one claim of the specification does not in substance fall within the scope of the claims of the specification before amendment, and the proposed amendments are therefore not allowable.”

Patentee’s submissions

19.  The core of the Patentee’s submissions of 24 October 2011 is considered to be as follows:

“At paragraphs 1.3 and 1.5 of the opponent's particulars, it is contended that the claims are broadened by the amendments, so as to permit the delivery of any mail items, irrespective of their form or content, or whether they are 'essential' or not.

Firstly, this is plainly untrue. The amended claims require that the subscriber provide 'a nomination of at least one service provider which the subscriber considers to be a source of essential mail items, and storing said nomination In the database in association with the subscriber details'. Subsequently, the server will only deliver those mail items corresponding with such nominations.

This is entirely commensurate with the construction of the term 'essential mail items' relied upon by the Delegate in reaching a decision in the substantive opposition proceedings. In particular, at paragraph 29 of the Delegate's decision, it is stated that 'a mail item may be considered "essential" if it is of particular interest, value or importance to the recipient, and includes solicited mail such as utility bills, telephone bills, bank statements, government documents and other items prepared by trusted service providers.'

The Delegate considered a construction of the term 'essential mail items' that was limited to items from service providers nominated by the subscriber to be a 'narrower definition' (see paragraph 32 of the Delegate's decision). The Delegate rejected the arguments, made on behalf of the patentee, that essentiality could be based upon subscriber nominations. Had the Delegate not adopted a broader construction of the term 'essential mail item', then he would not have reached the conclusion that he did at paragraph 49 of the decision, and the claims would presumably have then been found to be novel over the disclosure in US patent application publication no. 2005/0165680 (Keeling).

Notably, the definition of 'essential' relied upon by the Delegate at paragraph 29, and quoted above, is inclusive in scope. While certain categories of solicited mail are identified, the scope of 'essential mail items' is not limited to these categories. According to the construction determined by the Delegate, 'essential mail items' could indeed be items in any ' nominated category.”

Nature of the amendments

1. The Patentee has made the amendments in an attempt to overcome the lack of novelty and innovative step found in the s 101M decision. The Patentee states in their submissions of 28 July 2011:

“All amendments are either of a clarifying nature, or serve to narrow the scope of the claims by the addition of features, integers or method steps. It is therefore manifestly evident that all of the claims as proposed to be amended fall within the scope of the claims of the specification prior to amendment.”

21.  Although the amendments do indeed add features to the claims, the amendments also result in the removal of words from the claims. Notably, the term “essential mail items” has been removed from the preamble of the independent claims. Although the term “essential mail items” remains elsewhere in the independent claims, it is only to the extent that the mail is received from a service provider that “the subscriber considers to be a source of essential mail items” (emphasis added). Thus in the unamended claims the “essential mail items” referred to the type of mail being delivered, whereas in the amended claims the “essential mail items” refers only to the type of service provider sending the mail. Consequently it is not prima facie obvious whether the scope of the claims is narrowed as a result of the amendments.

22.  In my opinion the amendments may have broadened the scope of the claims as the Opponent has argued in the SGP (and in particular paragraph 1.5 of the SGP). Consequently, I find that the Patentee’s arguments presented in their submissions do not clearly prevail over the arguments in the Opponent’s SGP.

Motivation of Opponent in opposing the amendments

23.  The Patentee has questioned the motivations of Opponent in opposing the amendments in their submissions of 24 October 2011:

“The Statement of Grounds and Particulars has been filed and served on the last possible day for doing so, i.e. 21 October 2011.

There is nothing indicated in the statement that would have required three months' consideration after filing the Notice of Opposition, particularly considering that the opponent has been in possession of the proposed amendments since 30 November 2010.

The only conclusion that may be drawn from the opponent's conduct is that its interest lies primarily in delaying the proceedings further, in order to prevent the patentee from obtaining the valid and enforceable patent rights to which it is entitled.”

24.  The SGP was filed within the prescribed period. Exactly when the SGP was served within this prescribed period is not a relevant consideration. Furthermore, I reject the suggestion that the opposition is a frivolous or vexatious attempt to exploit a delay in the process. The opposition appears to raise prima facie legitimate concerns about the invalidity of the amendments.

Is there a reasonable prospect of success?

25.  I have found that the Patentee’s arguments do not clearly prevail over the Opponent’s, therefore I conclude that the opponent has a reasonable prospect of success.

Is expert evidence required to determine the issue?

26.  The Opponent states at paragraph 33 of their submissions:

“At this stage, the Delegate does not have sufficient material and the necessary assistance from the parties – in the form of evidence to be filed – to be in a position to give this matter due consideration and to reach a conclusion.”

27.  I have no reason to doubt this assertion, thus I accept that evidence may be necessary.

Would dismissing the opposition be an injustice?

28.  I have found the opposition appears to raise prima facie legitimate concerns about the invalidity of the amendments. Consequently, denying the Opponent an opportunity to be heard on the matter would be an injustice.

Conclusion

29.  I have found that all the criteria set out in Servier (supra) weigh in favour of rejecting the application for dismissal. Specifically, I have found: 1) the opponent has a reasonable prospect of success, 2) expert evidence may be required to determine the issue, and 3) dismissing the opposition would be an injustice. I therefore reject the application for the dismissal of the opposition.

Costs

30. Both parties submitted that costs should follow the event. I have found that the Patentee is unsuccessful in the action, and I agree that it is appropriate for the costs to follow the event. I award costs according to Schedule 8 against the Patentee, David Holton.

Xavier Gisz
Delegate of the Commissioner of Patents